WIPO Arbitration and Mediation Center


Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.Email Ltd

Case No. D2014-0805

1. The Parties

The Complainant is Government Employees Insurance Company of Chevy Chase, Maryland, United States of America (“US”), represented by Burns & Levinson LLP, United States of America.

The Respondent is G La Porta, yoyo.email / Yoyo.Email Ltd of Dunstable, Bedfordshire, United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <geico.email> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2014. On May 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2014. The Response was filed with the Center on June 19, 2014.

On June 28, 2014 the Complainant filed a Supplemental Filing. On July 7, 2014 the Respondent filed an Amended Response/Supplemental Filing which it filed again, with one additional paragraph, on July 12, 2014.

The Center appointed Wolter Wefers Bettink, Bradley A. Slutsky and David E. Sorkin as panelists in this matter on August 4, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has decided to accept the Supplemental Filings of both parties as they provide further information that is useful for making a decision.

4. Factual Background

The Complainant is an insurance company, established in the United States of America, that has provided insurance services since 1936. The Complainant holds a number of trademarks, registered in the United States, which feature the name GEICO (the “Trademarks”), the oldest registration having been filed in 1962 with a date of first use in 1948. The Complainant has over 11 million customers and insures more than 16 million vehicles and has over 27,000 employees.

The Respondent has incorporated its company in the UK on March 31, 2014 for the purpose of operating an e-mail recording service, providing independent evidence of when an e-mail was sent and when it was received.

The Respondent has registered the domain name <geico.email> (the “Domain Name”) on April 25, 2014. The Domain Name currently resolves to a parked website that features links to the Complainant’s website, as well as the websites of various third parties offering competing insurance services.

Before filing the Complaint, counsel for the Complainant contacted the Respondent to request that it cease its use of the Trademarks and transfer the Domain Name to the Complainant, which the Respondent has refused.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is identical to the Trademarks and that the generic Top-Level Domain (gTLD) extension should be disregarded when considering the issue of whether the Domain Name is identical or confusingly similar to the Trademarks.

According to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection or affiliation with the Complainant and it has not received any license or consent, express or implied, to use the Trademarks in a domain name or in any other manner. Furthermore, the Complainant believes that the Respondent has never been known by the Domain Name.

The Complainant points out that the Domain Name is parked and features links to both the Complainant’s website and the websites of its competitors, while the website indicates that the Domain Name is available for sale. These current uses suggest, according to the Complainant, that the Respondent plans to either hold the Domain Name and generate click-through fees, or offer to sell the Domain Name for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Name, which are not legitimate interests under the Policy.

Furthermore, the description of the Respondent’s business plan according to the Complainant suggests that the Respondent is planning to offer or capitalize on email services associated with famous companies and brands, including the Trademarks. This cannot be considered a bona fide offer of goods or services, the Complainant contends.

The Complainant asserts that the Respondent registered the Domain Name in bad faith by doing so with knowledge of the Complainant’s rights in the Trademarks and with an intent to profit off of those rights. In any case, the Complainant submits, a simple domain name search and other searches of the United States Patent and Trademark Office (USPTO) records and the Internet would have revealed the Complainant’s rights in and extensive use of the Trademarks.

In addition, the Complainant puts forward, any future business plans of the Respondent to use the Domain Name with email delivery services would be a bad faith attempt to trade off the goodwill of the Trademarks and there is no conceivable contemplated use of the Domain Name by the Respondent that would not be infringing the Complainant’s rights in the Trademarks.

According to the Complainant, the Respondent’s planned use of the Domain Name would require that the Complainant engage in the Respondent’s email delivery service, allowing it to link (through the Domain Name) to the Complainant’s servers that would be used for recorded communications with the Complainant. However, the Complainant states that it has no interest or intent to participate in the Respondent’s email delivery platform and that the Respondent’s holding the Domain Name hostage to force it to do business with the Respondent is not legitimate and evidences the Respondent’s bad faith in registering and using the Domain Name.

B. Respondent

The Respondent has described, in summary, its business model as follows:

- People and companies who want to send recorded e-mails and subscribe to the Respondent’s service will obtain an email address connected to the Respondent’s domain name <yoyo.email>.

- If a subscriber sends an email using its <yoyo.email> address, this is routed through a user interface on the Respondent’s server, where its origin and destination are recorded.

- If the recipient is also a subscriber, receipt of the email can also be recorded.

- The Respondent aims to build up a directory of companies it assumes would value the service.

- In particular, the Respondent is aiming at larger companies and companies in particular fields such as the Complainant (an insurance company) whom the public may wish to contact by email.

- The Respondent has acquired a number of domain names in the “.email” gTLD containing the name or a trademark of such companies to convince them to use the service.

- If such a company does not subscribe to the service the domain name is used as a technical link to send emails via the Respondent’s server to the company, so that the sending of the email is recorded.

The Respondent denies that the Trademarks and the Domain Name are identical or confusingly similar as a subscriber to its service (or a member of the public) does not see or come into contact with the Domain Name, which is used as a “behind the scene technical link”.

The Respondent further asserts that it has a right and legitimate interest in using the Domain Name as an Internet address as part of the technical process enabling subscribers to send recorded emails to the Complainant and vice versa. The Respondent asserts it has made considerable preparations for its business prior to being notified of the dispute, consisting of purchase of .email domain names and setting up its service. According to the Respondent it uses the Domain Name for a bona fide offering of goods and services, using it as a technical link between its email server and the Complainant’s email server as part of its service, which it submits is a legitimate extension of its other businesses in security, including Internet and social media.

The Respondent also claims a right or legitimate interest for fair use of the Domain Name under paragraph 4(c)(iii) of the UDRP, without intent to mislead consumers for commercial gain, as it will provide a channel for sending emails between the two parties and producing an independent record that emails were sent and received and users will not be misled about the nature or the origin of the service and how it works.

This constitutes fair use, the Respondent asserts, as the Complainant’s name is not being used as a trademark to sell or promote goods and services, but as part of an address and as a technical link or interface to link the sending and receiving email servers.

The Respondent also puts forward that its intended use of the Domain Name does not tarnish the Trademarks, as emails passing between the Complainant and consumers will not be seen by the public and use of the Domain Name is not intended to denigrate or criticize Geico in any way, but to enhance its service and efficiency.

The Respondent emphasizes that it will not claim or give the impression that it is the Complainant or any other email addressee. The Respondent asserts that the Domain Name would be on the Respondent’s server in the same way that a telephone number and a mail address might be in a telephone or mail directory. It points out that there is no reason why it would suggest that the Respondent is the Complainant, or that it is the Complainant that provides the service, as an important value of the system is its independence from the senders and recipients of emails.

The Respondent submits that it has never intended to sell, rent or transfer the Domain Name, and that it was not aware of the contents of the holding page that the Registrar connected to the Domain Name, in particular that it contained a box inviting offers for the Domain Name and links to websites of competitors of the Complainant. According to the Respondent it has, after becoming aware of the parking page and its contents through the Complaint, instructed the Registrar to remove it but this was not possible due to the Domain Name (and the connected website) being “frozen” by the Registrar in accordance with the Policy.

The Respondent further asserts that it has not registered the Domain Name to prevent the Complainant from reflecting the Trademarks in a corresponding domain name. It points out that the Complainant has numerous other domain names incorporating its Trademarks. According to the Respondent, the Complainant could have registered the Domain Name in the Sunrise period to the exclusion of all others, and by not doing so waived its right to priority.

The Respondent also states that it did not register the Domain Name primarily to disrupt the business of a competitor as (i) the Respondent is not a competitor of the Complainant; (ii) its primary purpose was and is to use the Domain Name in its service; (iii) it would suffer if the Complainant’s business was disrupted; while (iv) the Complainant already has the ability to email, so business cannot be disrupted by the Respondent’s registration of the Domain Name.

The Respondent submits that it does not intend to use the Domain Name as a trademark, but as an email address, and will not be attracting business by using the Complainant’s name or Trademarks, attempting to solicit business, competing or giving the impression that it is competing or engage in any form of cybersquatting. The success of the system that the Respondent is keen on establishing, it asserts, depends on an agreement with large users of emails whom it hopes to be able to convince, when the system is fully functioning, that it is in their interest to use the Respondent’s email courier system to provide records of the sending and receipt of emails and to enlist users who will value having the Respondent’s email service and similar verification of having sent and received their own emails.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name is comprised of the GEICO name incorporated in the Trademarks and the “.email” gTLD, and is therefore identical to the Trademarks. See Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637. For the purpose of this element it is not relevant whether the public sees or is confronted with the Domain Name. Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (“The fact that the disputed domain name might, on the Respondent’s assertion, never be used in a manner associated with any website, or might never be viewed or come to the attention of a consumer on the Internet, is of no relevance to the question whether a disputed domain name is or is not identical or confusingly similar to a trademark.”); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding confusing similarity despite the fact that “[t]he domain name <telstra.org> does not resolve to a web site or other on-line presence.”); Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (“there is an important distinction between the domain name on the one hand and the Website on the other. The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website.”); Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776 (“The question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the disputed domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the disputed domain name on its face is ‘confusingly similar’ to the Complainant’s mark.”).

B. Rights or Legitimate Interests

The Complainant has laid out the required prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.

The Panel notes that paragraph 4(c) of the Policy indicates examples of evidence that the Respondent may provide to demonstrate its rights to and legitimate interests in the Domain Name in responding to a Complaint. The Complainant should provide prima facie evidence that no such right or legitimate interest exists. The Panel finds that the Complainant has provided (and the Respondent has not refuted) evidence that it has not consented to use of its Trademarks in the Domain Name.

Furthermore, the Panel finds that registering the Domain Name in order to convince the Complainant to use the Respondent’s service, as the Respondent has submitted, implies that the Respondent uses the Domain Name – and thereby the Trademarks incorporated in the Domain Name - to leverage its service and persuade the Complainant to use that service. This does not give rise to rights or legitimate interests. Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730 (“this Panel agrees with the Sheraton panel that it is not legitimate for Respondent to seek to put itself in a position where trademark owners like Complainant are induced to sign up for Respondent’s service (which is planned somehow to make money) because Respondent holds a domain name entirely incorporating that owner’s distinctive trademark.”); Foot Locker Retail, Inc. v. yoyo. email et al., NAF Claim No. 1565344 (“[Respondent] concedes that it has sunk substantial economic costs into the development of the system and that it intends to recover those costs, by whatever means it may elect, through exploitation of the profit-making potential the system affords. Because the system is built on a foundation that includes Complainant’s domain name, this is enough to establish that the system is commercial in character and that Respondent intends to obtain commercial gain from the use of Complainant’s marks in its domain name.”); The Coca-Cola Company v. Masud Osman, WIPO Case No. D2001-0618 (“Respondent alleges that he was using the domain names to present a proposed marketing plan to Complainant. Complainant refused to adopt or even consider Respondent’s plan. Respondent was never licensed to use Complainant’s mark, or the disputed domain name including Complainant’s mark. Since Respondent was not authorized to use Complainant’s mark there was no legitimate interest of any kind by Respondent.”). In addition, the Respondent’s description of its service indicates that it could - and the Respondent has not explained why it could not - operate its email service by inviting the Complainant to participate with a “.email” domain name of its own choice, registered by the Complainant.

The Respondent has not clarified why the Domain Name would be necessary for its service and why it could not choose any other domain name, not incorporating the Trademarks, to channel recorded e-mails to the Complainant. Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., supra (“the Respondent does not necessarily have to register the disputed domain name and other domain names consisting of well established trademarks to establish his service.”) In particular, as the Respondent states that emails from subscribers to its service are recorded anyway, regardless of the recipient’s email address, there appears to be no technical reason for choosing the Domain Name, leaving aside whether, if such a technical reason exists, this would constitute a legitimate interest which this Panel deems not to be the case here.

Based on the above, the Panel finds that the Domain Name is not (intended to be) used for a bona fide offering of goods or services. See Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, supra (“Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. For the Panel to hold otherwise i.e. that the Respondent’s interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur. Apart from the aforementioned ground, there is nothing on the facts that warrants a finding that the Respondent has rights or legitimate interests in the dispute domain names. … There is also little in the Respondent’s submissions that explains why to deploy its intended service it needs to own both <sheraton.email> and also such subsidiary names as <sheratonparklane.com>. Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names”); Deutsche Lufthansa AG v. yoyo.email et al., NAF Claim No. 1552833 (“To register another’s well-known trademark as a domain name and using that domain name connecting to a web service with the specific goal to earn money from active users and advertising connected to the use of the trademark related web service, cannot be considered as legitimate interest.”); Lockheed Martin Corporation v. yoyo.email et al, NAF Claim No. 1563665 (“Although Respondent has made demonstrable preparations to use the domain names, the use is not for a bona fide offering of goods and services as Respondent’s commercial business uses Complainant’s word marks.”).

The Panel concludes that the Respondent does not have a right or a legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

The Panel notes that the wording of paragraph 4(b) of the Policy indicates that the situations mentioned there are examples of bad faith registration and use and do not exclude that another combination of facts may be considered to constitute such bad faith.

In this case, the Panel finds that the following facts are relevant for such a finding:

- the Respondent was aware of the Trademarks when registering the Domain Name;

- the Domain Name incorporates the Trademarks in their entirety;

- the Trademarks are not descriptive or generic;

- the Respondent has registered the Domain Name to promote its services to subscribers who are customers of the Complainant or otherwise have a desire to communicate with the Complainant by email;

- the Respondent has registered the Domain Name also to seek to convince the Complainant to subscribe to its services; and

- the success of the Respondent’s system depends in part on subscriptions by companies such as the Complainant.

The Panel believes that this combination of facts in this case is sufficient for a finding that the Domain Name has been registered and is being used in bad faith. See Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, supra (“Respondent admits that it deliberately registered the disputed domain names, as it makes clear that a purpose of owning it was to oblige the Complainant to join its system. It professes to do this as part of a free service, but nonetheless it seeks to extract a benefit from the Complainant by the preemptive registration. The Panel would be reluctant to lend its approval to the registration of a domain name incorporating another party’s trademark for the purpose of being able to establish a system or scheme in relation to which the trademark owner becomes a supplicant. This would set the clock back on the Policy in a way that was never intended. Therefore the Panel holds that the disputed domain names were registered and used in bad faith.”); Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., supra (“In the Panel’s opinion, the Respondent registered the disputed domain name, which corresponds to the Complainant’s well-known STATOIL Marks, to oblige the Complainant to join its system and therefore to benefit from the Complainant by the preemptive registration. Furthermore, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.”); Deutsche Lufthansa AG v. yoyo.email et al., supra (“As the Respondent has registered the disputed domain name with clear knowledge of the Complainant’s prior trademark rights, with the specific goal to use the disputed domain name to get more users of the Respondents services and thereby earn money, this is clearly both bad faith registration and use.”) This is reinforced by the finding that, as set out under 6.B. above, it would appear the Respondent can offer the contemplated email service without the Domain Name or by inviting the Complainant to participate in its service by using a “.email” domain name registered by the Complainant.

On the basis of the above, the Panel concludes that the Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <geico.email> be transferred to the Complainant.

Wolter Wefers Bettink
Presiding Panelist

Bradley A. Slutsky

David E. Sorkin
Date: August 18, 2014