WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta
Case No. D2014-0825
1. The Parties
Complainants are The Royal Bank of Scotland Group plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”), National Westminster Bank plc of London, UK and Coutts & Co. of London, UK, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Domain Manager / yoyo.email / Giovanni Laporta of Dunstable, UK, internally represented but for the Third Supplementary Response represented by Jonathan D. C. Turner, UK.
2. The Domain Names and Registrar
The disputed domain names <coutts.email>, <natwest.email>, <rbsbank.email> and <rbs.email> are 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 19, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 20, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 Respondent of the Complaint, and the proceeding commenced on May 30, 2014. The extended due date for Response was June 26, 2014. The Response was filed with the Center on June 26, 2014. Complainants submitted a supplemental filing (“Supplementary Complaint”) on July 1, 2014, and Respondent submitted supplemental filings (“Supplementary Response”) on July 7, 12, and 30, 2014.
The Center appointed David Perkins, Jane Lambert and David E. Sorkin as panelists in this matter on July 30, 2014. 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 finds that it was properly constituted.
4. Factual Background
4.A.1 Complainants are The Royal Bank of Scotland Group plc (“RBS”) and its subsidiaries, National Westminster Bank plc (“NatWest”) and Coutts & Co. (“Coutts”).
4.A.2 RBS was founded by Royal Charter in Edinburgh in 1727. NatWest was incorporated in the UK in 1968 and was acquired by RBS in 2000. Coutts is a private unlimited company incorporated in London in 1892. All three banks provide financial services worldwide.
Complainants’ Trade Marks
4.A.3 RBS and NatWest own international portfolios of registered trade marks respectively for the marks RBS and NATWEST. Particulars of the European Community trade mark registrations for the three Complainants are as follows.
Classes of goods & services
Dates filed & registered
9; 16; 35; 36; and 42
March 23,1998 registered
9; 16; 35; 36; 38; and 42
March 31, 2005 filed
April 18, 2006 registered
February 7, 2005 filed
April 20, 2006 registered
4.A.4 Complainants assert that RBS and NATWEST are well-known trade marks according to Article 6 bis of the Paris Convention and that COUTTS is a famous trade mark within the financial industry in the UK.
Complainants’ Domain Names
4.A.5 Complainants also have extensive domain name portfolios incorporating the RBS, NATWEST and COUTTS trade marks, lists of which are exhibited to the Complaint. RBS has some 1,200 domain names incorporating the RBS mark, either alone or with suffixes and phonetic equivalents and some 60 domain names incorporating RBSBANK, either alone or with a suffix: for example, <rbsbankline.com>. NatWest has some 420 domain names incorporating the NATWEST mark and Coutts some 185 domain names incorporating the COUTTS mark alone, or with suffixes or phonetic equivalents: for example, “cootes”, “coottes” and “coutts”.
4.A.6 Complainants furthermore operate websites incorporating their respective trade marks, for example, at “www.rbs.com” launched in 1994, “www.natwest.com” and “www.coutts.com” both launched in 1995.
4.B.1 Respondent was incorporated on March 31, 2014. Mr. Giovanni Laporta is the moving force behind Respondent and in his Statement (Appendix 1 to the Response) provides information as to both the nature of Respondent’s business, YOYO, and also his other business interests and the rationale for registering the disputed domain names in connection with that business.
4.B.2 Respondent variously describes its proposed business using the disputed domain names in the following ways:
“The Respondent devised a system to use domain names and the emails that flow from them, to create a domain name directory and a new system based on that directory to record the sending and receipt of emails. It involves recruiting businesses and others who are large users of emails to be entered in an internet directory and to adopt a recording system for emails in the same way that registered mail registers the sending and arrival of a letter; the emails would not be able to be read by Respondent or anyone associated with the system. The Respondent is therefore in the role of a courier of emails” (introduction to the Response).
“The disputed domain name(s) are a behind the scene technical link for Yoyo’s system to connect the domain name(s) with the Respondent’s email directory. The internet user does not use the disputed domain name(s), it uses its own Yoyo email address to send the email to the Complainants that go to the Complainants via the user’s own email client or it may send the email directly via Yoyo’s email website once the user has logged in. No member of the public sees or comes into contact with the disputed domain name(s) anywhere on the Internet” (Response, paragraph 4(a)).
4.B.3 In his Statement Mr. Laporta further describes the business under the heading “Concept of YOYO email” in the following terms:
“The basic idea is to have people join YOYO.
When they join, they obtain a free YOYO email address.
When the member wants to send an email, he or she will select their YOYO email address option that enables them to send an email with their name and YOYO email address, identified as the sender.
The sender simply sends the email in the normal way; it is still addressed to the recipient and goes to the recipient.
The journey that the email takes starts at the sender’s computer, proceeds as an email from the member @yoyo.email, to YOYO’s server through a user interface, and then to the recipient.”
“The system works if both recipient as well as senders email pass through the same email server, i.e. YOYO email server and user interface. For that reason it is necessary to build up a directory of contact names/email addresses and that is where companies in the position of NATWEST and others come in.
It was important to start building up a directory of companies who would value having access to this system so that as well as the system recording if an email had been received by, say, NatWest, the company itself could use the system to have recorded that it had sent an email out and that it had arrived on the date and time in question.
Accordingly, what we have done since devising the system is to acquire at considerable expense a considerable number of domain names in the .email gTLD who are likely to be heavy users of email and who would value having access to the YOYO system. Those of particular interest are larger companies as they have more traffic and companies in particular fields such as NATWEST whom people may wish to contact by email.
When a company joins it is given an email address. This is free; we will not charge for the email address.
In this particular dispute[d] domain name should be viewed as just a ‘domain name’ required to search ‘contacts and send an email’.”
4.B.4 The “Concept of YOYO email” is still further addressed in Respondent’s First Supplemental Response in essentially the same wording but with the following additional wording:
“The YOYO service can record in both directions, in both cases to obtain an independent verification that the email has been sent or received. Hence the brand name YOYO and <.email> as the option of gTLD… To sum up. YOYO is effectively an email courier service, like a courier operates in the real world, YOYO operates online. e.g. <.email> is the ‘carrier’ acting as the ‘courier’.”
4.B.5 The same “Concept of YOYO email” is repeated in the Second Supplemental Response. That Response also explains how the YOYO service works when a company chooses not to join it.
“In cases where a Company should arbitrarily choose not to take part in either the sending out nor receiving in of emails via the Yoyo service, Yoyo email server still puts the domain name to good use to document/receive in emails sent from YOYO service users (the public) and then auto-sends an email to known standard email addresses of the Company. The email will have an embedded link asking the Company to sign and collect the recorded delivery email from the Yoyo email tracking website. The idea, is that for the user (the Consumer), some independent trail of recorded email activity is better than none.”
4.B.6 As noted above, in his Statement Mr. Laporta also provides information relating to his other businesses and exhibits to the First and Second Supplementary Responses a letter from his accountant attesting to the businesses of two of his companies, Sac Systems (Hardware) Ltd. and Laporta Design Ltd. A list of patents where he is the named inventor and applicant (which appear to be mainly in the field of security devices and closures) is also exhibited to those Supplemental Responses.
5. Parties’ Contentions
5.A.1 Identical or Confusingly Similar
5.A.1.1 There are four disputed domain names. Three - namely, <rbs.email>, <natwest.email> and <coutts.email> are identical to Complainants’ registered trade marks. As to the fourth - namely, <rbsbank.email> - Complainants’ case is that the descriptive suffix “bank” does not avoid a finding of confusing similarity. In that respect, Complainants cite Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 and The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121. In the latter, the disputed domain name <rbsonlineuk.com> was held to be confusingly similar to the RBS trade mark, since it was identical to the core component, RBS. Complainants say that as the main core of its business is banking, the addition of the suffix “bank” will tend to strengthen the impression of association with the First Complainant.
5.A.1.2 Complainants say that addition of the generic Top-Level Domain (“gTLD”) “.email” cannot have any impact on the overall impression of the dominant portions of the disputed domain names. Indeed, because Complainants engage extensively in online banking, addition of the “.email” gTLD is, they say, likely to add to confusion by creating the impression that the disputed domain names belong to or are commercially associated with them.
5.A.2 Rights or Legitimate Interests
5.A.2.1 Complainants have not found that Respondent has any trade marks or trade names corresponding to the disputed domain names. Consequently, they say that Respondent cannot claim any right established by common usage (Policy, paragraph 4(c)(ii)).
5.A.2.2 Nor have Complainants licensed or otherwise authorised Respondent to use Complainants’ trade marks.
5.A.2.3 Further, although Respondent has no business relationship with any of Complainants, there is no disclaimer of such lack of relationship on the inactive websites to which the disputed domain names resolve.
5.A.2.4 Finally, given the notoriety of Complainants’ trade marks, Complainants’ case is that any use of the disputed domain names incorporating those trade marks cannot be a bona fide use. Nor, for the same reason, Complainants say, can Respondent’s proposed use of the disputed domain names be either legitimate or fair. In that respect, Complainants cite Deutsche Lufthansa AG v. yoyo.email et al., NAF Claim No. 1552833, which involved the domain name <lufthansa.email> registered by the same Respondent as in this administrative proceeding.
5.A.2.5 In the circumstances, Complainants’ case is that Respondent has no rights or legitimate interests in respect of the disputed domain names.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 Complainants refer to the party-to-party correspondence preceding filing of the Complaint, particularly to Respondent’s statements that:
“No .email domain in our portfolio will ever be used as a website”;
“The service is zero-cost for both sender and receiver. So there is no intent to profit from the domain”; and
“I have invested over £100,000 on legal expenses/resources/domain registrations which I can’t stress enough were all bought in good faith and with best intentions in mind.”
5.A.3.2 Even though the websites to which the disputed domain names resolve are currently inactive, Complainants say that, given the notoriety of their trade marks, any use of the disputed domain names cannot be legitimate.
5.A.3.3 Complainants also refer to Respondent’s extensive portfolio of .email domain names, which incorporate numerous well-known third party trade marks. Those in the financial sector include <americanexpress.email>, <bankofscotland.email>, <lloydsbank.email>, <lloydstsb.email>, <societegenerale.email> and <goldmansachs.email>. This, Complainants say, is indicative of a pattern of conduct to prevent such third-party trade mark owners from reflecting their marks in corresponding domain names. Such conduct is forbidden by paragraph 4(b)(ii) of the Policy.
5.A.3.4 As to paragraph 4(b)(iv) of the Policy, Complainants say that, although Respondent proposes to offer YOYO’s services without charge to sender or recipient, it seems highly probable that Respondent’s reason for registering such famous brands under the “.email” gTLD can only be to use them as an attractive force to bring in customers from those brand owners. Further, if Respondent has invested over GBP 100,000 (paragraph 5.A.3.1 above) in the project, presumably he must intend to generate revenue from it.
5.A.3.5 As to creating a likelihood of confusion with their marks, Complainants refer to a number of cases which they have successfully brought against respondents whose intended use of the marks in domain names was an attempt to legitimise phishing scams. Here, Complainants’ case is that the fact that third parties will be able to use their brands in email addresses - for example, <email@example.com> - will, they say, naturally increase the risk for consumer confusion and the risk of consumers being defrauded by phishing attacks. Consequently, Complainants also assert circumstances falling within paragraph 4(b)(iv) of the Policy.
5.A.3.6 In their Supplementary Complaint filed on July 1, 2014 Complainants explain that it is not necessary - as Respondent submits - for the purpose of recording the sending and receipt of emails to use Complainants’ trade marks in the form of the disputed domain names. In that respect, Complainants refer to the “email delivery proof” service offered by “www.rpost.com” (“rpost”), which uses encryption.
5.A.3.7 Complainants also answer Respondent’s case that, because Complainants did not themselves apply to register the disputed domain names during the Sunrise Period, it is unfair that they are now able to seek transfer of those names in this proceeding.
5.A.3.8 The additional rebuttals in the Supplementary Complaint are noted below in relation to Respondent’s contentions.
5.B.1 The nature of Respondent’s proposed business using the disputed domain names has been summarised in paragraph 4.B above.
5.B.2 Identical or Confusingly Similar
5.B.2.1 As to identicality, Respondent says that the .email suffix is an integral part of the disputed domain names and, as such, should be included in the comparison of those names with Complainants’ trade marks. Consequently, Respondent says that the disputed domain names are not identical with Complainants’ marks. Hence, it is necessary to consider whether they are confusingly similar.
5.B.2.2 As to that, Respondent’s case is that there is no confusing similarity for two reasons. First, Respondent says that most Internet users would understand the disputed domain names to be “involving an email service for emails to and from names such as NATWEST, which it is”. Respondent’s case is that the disputed domain names neither claim that they are Complainants’ own email addresses or services, nor that using them is the only way of communication by email with Complainants.
5.B.2.3 Second, Respondent points out that under the proposed YOYO service Internet users will not see the disputed domain names anywhere on the Internet. Since the disputed domain names will not be available to Internet users, Respondent questions how confusion could arise. As explained in paragraph 4.B above, the disputed domain names are a behind-the-scene technical link for YOYO’s system to connect the domain names with Respondent’s email directory.
5.B.3 Rights or Legitimate Interests
5.B.3.1 Respondent puts its case in the following ways. First, it is not proposing to use the disputed domain names as trade marks. Consequently, Respondent’s case is that it has a right and a legitimate interest to use the disputed domain names as an Internet address as part of the technical process which enables users of the YOYO system to communicate with those domain names by email and thereby to obtain independent verification that the email has been sent and received. For that reason, Respondent says, it is a bona fide use.
5.B.3.2 Second, because such use is not, Respondent says, a trade mark use, it does not require authorisation from the trade mark owner.
5.B.3.3 Third, Respondent says that it has never suggested or implied that the service is provided by Complainants.
5.B.3.4 Fourth, Respondent has made demonstrable preparations to use the disputed domain names before receipt of Complainants’ Cease & Desist letter dated May 6, 2014. In the First Supplementary Response the cost as at July 3, 2014 is estimated at about GBP 100,000, including GBP 50,000 in acquiring the .email domain name portfolio. The remainder of the costs have been spread between a web and graphic designer, two software programmers, a modeller of the interface, and three subcontracted web developers. Logos and the YOYO web holding page and webflow are exhibited.
5.B.3.5 Fifth, Respondent says that its proposed use of the disputed domain names is consistent with ICANN’s aims in creating the new gTLDs, which included “.email.” Further, that use cannot cause any harm to Complainants’ trade marks.
5.B.3.6 Sixth, the aim of the YOYO service is to provide what Respondent terms “a serious solution to a long standing and serious commercial problem, the lack of a viable system of independently confirming or recording the sending and receipt of emails”. That solution necessitates, Respondent says, building up of an email directory of names of potential users of the system in the same way that a telephone or mail directory collects telephone numbers and physical postal addresses, so that consumers are able to direct their communications accurately. This appears to be an amplification of the first element of Respondent’s case, namely that there will not be a trade mark use of the disputed domain names.
5.B.3.7 The above circumstances, Respondent says, demonstrate rights and legitimate interests under paragraph 4(c)(i) of the Policy.
5.B.3.8 Seventh, consistent with the foregoing, Respondent has not acquired the disputed domain names for the purpose of reselling them or using them on websites or in any form of cyber squatting.
5.B.3.9 Eighth, it follows that the proposed use of the disputed domain names is a nominative fair use and so within paragraph 4(c)(iii) of the Policy. That ground is expanded upon in the First Supplementary Response.
5.B.3.10 Ninth, nor, Respondent says, will use of the disputed domain names misleadingly divert consumers or tarnish Complainants’ trade marks. This is because consumers will fully understand the YOYO system before using it. Consequently, this further demonstrates circumstances satisfying paragraph 4(c)(iii) of the Policy.
5.B.3.11 Tenth, Respondent reiterates that, as well as being a fair use, the proposed use of the disputed domain names is a noncommercial use within paragraph 4(c)(iii) of the Policy, since no charge is made either to the sender or recipient of the emails. This is enlarged upon in the First Supplementary Response, where Respondent states as follows:
“There is no intent to sell or rent the domain name to the Complainant for valuable consideration. There is no intent to passively hold the domain name, the Respondent actively uses it to provide its service. There is no intent to advertise the domain name, or gain illegitimately from connected social media or advertising. There is no intent to sell, rent or transfer the domain name to the Complainant for monetary consideration in excess of documented out of pocket costs directly related to the domain name. There is no intent to sell or rent the domain name to a competitor of the Complainant.”
5.B.4 Registered and Used in Bad Faith
5.B.4.1 Following from the extract quoted in the preceding paragraph, Respondent says that paragraph 4(b)(i) of the Policy does not apply to the circumstances of this case.
5.B.4.2 Nor, Respondent says, for the reasons set out in paragraph 5.B.3 above, is it intending to make use of the disputed domain names in contravention of paragraph 4(b)(iv) of the Policy.
5.B.4.3 As to paragraph 4(b)(ii) of the Policy, Respondent says that in registering the disputed domain names it is not preventing Complainants from reflecting their trade marks in corresponding domain names. Indeed, Complainants have registered many domain names incorporating those marks. Further, by not applying to register their trade marks during the “.email” Sunrise Period, Complainants have waived the right to object now.
5.B.4.4 As to paragraph 4(b)(iii) of the Policy, Respondent’s case is that, having regard to the description of the YOYO service explained in paragraph 4.B above, use of the disputed domain names in the YOYO service will cause no disruption to Complainants’ businesses.
5.B.4.5 The Response then reiterates many of the assertions made in relation to rights or legitimate interests. Namely, the YOYO system will not use the disputed domain names as trade marks; it will simply use those marks as an Internet directory; like Google, it is a directory for contact purposes only; consequently, such use will not cause consumer confusion and is a fair use; it is not designed to extract money from Complainants or other users as they will have free access to the system; and the system will promote YOYO’s independence. Based on the foregoing, Respondent submits that none of the circumstances of paragraph 4(b)(i) to (iv) of the Policy apply in this case.
5.B.5 First Supplementary Response
In the First Supplementary Response, Respondent sets out to distinguish over Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (the “Sheraton” case) on the basis that the panel did not find that the proposed use of the domain names in the YOYO system had been adequately explained. The amplification of that system in the First Supplementary Response has been summarised in paragraph 4.B above and in the foregoing sections of this paragraph 5.B.
5.B.6 Second Supplementary Response
This filing addresses three decisions under the Uniform Rapid Suspension (“URS”) adverse to Respondent, namely Deutsche Lufthansa AG v. yoyo.email et al., NAF Claim No. 1552833; Stuart Weitzman IP, LLC v. yoyo.email et al., NAF Claim No. 1554808; and Lockheed Martin Corporation v. yoyo.email et al., NAF Claim No. 1563665. What follows in that Response has, again, been summarised in paragraph 4.B above and the foregoing sections of this paragraph 5.B.
5.B.7 Third Supplementary Response
This filing asserts that the key question before this Panel is, not whether Respondent needs to use the disputed domain names, but whether its proposed use of those names will be in good faith or in bad faith. In that respect, Respondent’s case is that “exploiting the value of another party’s trade marks to support a business is not necessarily in bad faith.” In this case Respondent says that its use is as legitimate as the use made of the name of a company in conventional post. This is a rephrasing of the case summarised in the first Response in paragraphs 4.B and 5.B.3.6 above.
5.C. Complainants’ Supplementary Complaint
5.C.1 It has already been noted that, to provide the solution of independent verification of emails sent and received, it is not necessary to use the disputed domain names. Complainants refer to the encryption solution provide by rpost.
5.C.2 The Supplementary Complaint addresses Respondent’s case that, by not applying to register their trade marks as “.email” gTLDs in the Sunrise Period, Complainants have waived their rights to bring this Complaint (paragraph 5.B.4.3 above). First, Complainants say that it is completely unrealistic and financially unsustainable for trade mark owners to have to register their trade marks “defensively” under all new gTLD extensions. Second, Complainants say that they may, however, in time find a need to use their trade marks under some of the new gTLDs, such as “.email”. This, of course, would be precluded if Respondent is permitted to use Complainants’ trade marks as “.email” domain names for its YOYO service. If Complainants are not permitted to challenge the disputed domain names in this proceeding, that would have the practical effect of giving trade mark owners no other choice but to make defensive registrations. Such was not, Complainants say, ICANN’s intention when it launched the new gTLD program.
5.C.3 The Supplementary Complaint then addresses Respondent’s contention that, in relation to paragraph 4(b)(iv) of the Policy, it is not intending to use the disputed domain names for commercial gain. In that respect, Complainants point to Respondent’s statements, including “The Respondent will commercialise the system by various means which will be explored as the system develops.”
Complainants also assert that, for consumers to be aware of the fact that Respondent is offering the YOYO services in relation to certain third-party trade marks, Respondent will have to promote those services. In so promoting them, Respondent will - Complainants say - be using the disputed domain names to attract, for its own commercial gain, users by creating a likelihood of confusion with Complainants’ marks as to the endorsement of the website or location, as described in paragraph 4(b)(iv) of the Policy.
5.C.4 The Supplementary Complaint then addresses Respondent’s questioning of the distinctiveness of Complainants’ trade marks in paragraph 11 of the Response, where it states:
“YOYO should be free to offer the domain name as a free private email to any person which can make use of the RBS and Coutts names. YOYO can make up many legitimate email address from the domain name it currently owns. For example, firstname.lastname@example.org (whose name is Neil Coutts) email@example.com (whose name is Sarah Coutts) and so on.”
This, Complainants say, clearly shows that Respondent is open to different ways to exploit the disputed domain names and the trade marks contained in those names.
5.C.5 Complainants refer to other trade mark owners that have been the target of what they term as Respondent’s “business idea”. In that respect, Complainants cite cases under both the URS and the UDRP involving Respondent and domain names it has registered as “.email” gTLDs. The cases cited include those addressed in the Second Supplementary Response (paragraphs 5.B.5 and 5.B.6 above) and others, namely NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0770; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730 (the “Lurpak” case); Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724; and Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (the “Statoil” case).
6. Discussion and Findings
6.1 The Policy, paragraph 4(a) provides that Complainants must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which Complainants have rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that disputed domain names have been registered and are being used in bad faith.
6.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain names.
6.3 The Policy, paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 In reaching its Decision the Panel has taken note of the decisions in the Statoil, Sheraton and Lurpak cases. The respondent in those cases is the same Respondent as in this proceeding. Despite Respondent’s effort to distinguish over the Sheraton case (paragraph 5.B.5 above), the Panel considers that decision well made out as will appear from what follows.
6.6 Identical or Confusingly Similar
6.6.1 The dominant parts of the three disputed domain names <rbs.email>, <natwest.email> and <coutts.email> are Complainants’ RBS, NATWEST and COUTTS registered trade marks in which they clearly have rights as required by paragraph 4(a)(i) of the Policy. The addition of the gTLD “.email” does not distinguish those domain names from the trade marks. Accordingly, those three disputed domain names are identical to Complainants’ said registered trade marks.
6.6.2 As to the disputed domain name <rbsbank.email>, the RBS trade mark is the dominant feature and the descriptive word “bank” does nothing to avoid confusing similarity.
6.6.3 In the circumstances the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
6.7 Rights or Legitimate Interests
6.7.1 Like the Lurpak panel, the Panel here agrees with the analysis in the Sheraton case:
“The main weakness in the Respondent’s argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose. The analogy with a directory does not hold: any person may indeed be free to compile a directory of domain names, or telephones or addresses or similar, but need not for that purpose actually own any related domain names, by registration or otherwise. To compile a list or directory of trade marks, or company names, or business or trading names, the compiler need not acquire any rights whatsoever in those names. In most cases it would in fact render the directory pointless if he did. Here the 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.”
6.7.2 Further, in this case Complainants have pointed to the solution provided by rpost to recording the sending and receipt of emails which does not necessitate registration of third-party trade marks as “.email” domain names.
6.7.3 Again, this Panel agrees with the Lurpak panel, where they found as follows:
“Again , 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 trade mark. This Panel concludes, on the present record (as supplemented twice by Respondent), that the juxtaposition of the distinctive trademark LURPAK with the descriptive gTLD “.email” is likely to convey to Internet users the false impression that the Domain Name belongs to or is approved by Complainant.
To register another’s well-known trademark as a domain name and then to use that domain name by connecting it 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 a legitimate interest.”
6.7.4 As to use of the disputed domain names confusing/misleading consumers, Complainants provide the following pertinent example:
“if a third party was to operate an email address such as [firstname].[lastname]@natwest.email, there is indeed a risk that such an email address could be used for a fraudulent purpose, regardless of whether the Respondent claims that the operation of these email addresses will be controlled by the Respondent.”
Such use is, in fact, contemplated by Respondent in paragraph 11 of the Response and commented on in the Supplementary Complaint: see, paragraph 5.C.4 above.
6.7.5 For the reasons set out in the Complaint, Respondent cannot bring itself within any of the circumstances in paragraphs 4(c)(i) to (iii) of the Policy. The Panel concludes, on the present record, the proposed use of the disputed domain names cannot be regarded as a bona fide use, nor is that use a legitimate noncommercial or fair use. In the circumstances, the Complaint satisfies paragraph 4(a)(ii) of the Policy.
6.8 Registered and Used in Bad Faith
6.8.1 The Panel finds that the circumstances in paragraphs 4(b)(ii) and (iv) of the Policy are present.
6.8.2 As to paragraph 4(b)(ii), the Panel finds that the registration of the disputed domain names prevents Complainants from registering domain names corresponding to their trade marks in the “.email” gTLD space. The fact that Complainants can register and indeed have registered domain names corresponding to their trade marks in other gTLD and country code Top-Level Domain spaces is irrelevant. The cases mentioned in paragraph 6.5 above indicate a pattern of such conduct by Respondent.
6.8.3 As to paragraph 4(b)(iv) of the Policy, the Panel has already found that the disputed domain names are identical or confusingly similar to trade marks in which Complainants have rights. Even if Respondent’s proposed service is to be free at the point of use, Respondent clearly intends to benefit from use of the disputed domain names in some way. Thus, the commercial gain requirement is satisfied. The use of domain names that are the same as or similar to Complainants’ trade marks suggests at the very least an endorsement of, or affiliation with, Respondent’s service by Complainants.
6.8.4 Such circumstances are to be taken as evidence of registration and use in bad faith.
6.8.5 The Panel is fortified in its conclusions by the decisions mentioned in paragraph 6.5 above.
6.8.6 It follows that the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <coutts.email>, <natwest.email>, <rbsbank.email> and <rbs.email> be transferred to Complainants.
David E. Sorkin
Date: August 11, 2014