WIPO ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
O2 Holdings Limited v. Yoyo.email / Giovanni Laporta
Case No. D2014-1399
1. The Parties
The Complainant is O2 Holdings Limited of United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Yoyo.Email / Giovanni Laporta of United States of America, represented by Traverse Legal PLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <theo2.email> (the “Domain Name”) 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 August 15, 2014. On August 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on August 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2014. The Response was filed with the Center on September 8, 2014.
The Center appointed William P. Knight as the sole panelist in this matter on September 18, 2014. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant is a member of a group of companies that provide telecommunications services, along with related music and entertainment services, the “O2” brand of which is very well known in the United Kingdom and other countries in which it does business. It has many registrations of the trade mark “O2” but also “THE O2” as a United Kingdom registered trade mark and a Community Trade Mark.
The first Respondent, Yoyo.email Limited, is a company incorporated in the United Kingdom, of which the second Respondent is the principal director. The second Respondent is an inventor, with a particular interest in locking devices, and has another business designing such devices.
The second Respondent’s inventive mind has turned to the issue of providing verifiable email communications. The Respondents are attempting to establish a business of doing this, for which purpose they deem it necessary to register domain names in the “.email” generic Top Level Domain (“gTLD”) incorporating well-known trade marks. So, here, the Respondents have acquired the Domain Name <theo2.email> but they have also registered “.email” domain names incorporating thousands of other well-known trade marks, such as <christies.email>, <disneyworld.email>, <domperignon.email>, <gatorade.email>, <gatwickairport.email> and so on. They also have domain names the purpose of which is not made clear, such as <register.email> and <setup.email>.
While there are existing technical means to track the path of an email and ascertain its fate, the Respondents assert that they wish to establish a simple, free service allowing anyone to contact a particular entity, such as the Complainant, and have a record of that transmission, and of any reply using the service, being kept by an independent third party record-keeper, namely the first Respondent.
The Respondents have no authority from any of the trade mark owners to do this but hope that the virtue of the service will be evident to sufficient numbers of them to make the service worthwhile, incidental to which, through advertising or other means not connected to the specific domain names registered by the Respondents, the Respondents may recoup and profit from the considerable expenses they have incurred already to develop this business model.
The Domain Name presently points to a blank page. The Respondents explain that it is not intended that this or any of the other domain names it has registered (other than <yoyo.email>, presumably) will be visible to the user of the service; rather the Respondents say that it will be used only as a technical, behind-the-scenes link to facilitate the service in some manner.
The Respondents’ business model has been the subject of a series of recent decisions both by WIPO panels and National Arbitration Forum (“NAF”) panels, both under the Policy and, in the case of the NAF panels, the Uniform Rapid Suspension (“URS”) Procedure. The Panel has considered the following decisions:
Deutsche Lufthansa AG v yoyo.email, NAF Claim No. FA1404001552833 (June 18, 2014 – Appeal - Suspension)
Stuart Weitzman IP, LLC v yoyo.email et al., NAF Claim No. FA1404001554808 (June 24, 2014 – Returned)
Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (July 1, 2014 – Transfer)
Playinnovation Ltd. v. yoyo.email et al., NAF Claim No. FA1407001568549 (August 6, 2014 – Appeal - Suspension)
Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (July 16, 2014 – Transfer)
Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730 (July 23, 2014)
NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0770 (August 5, 2014 - Transfer)
Lockheed Martin Corporation v yoyo.email, NAF Claim No. FA1406001563665 (August 6, 2014 – Appeal – Suspension)
Beiersdorf AG v. yoyo.email et al., NAF Claim No. FA1407001571112 (August 7, 2014 – Suspension)
McDermott Will & Emery LLP v. yoyo.email et al., NAF Claim No. FA1406001564796 (August 7, 2014 – Appeal – Suspension)
Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724 (August 10, 2014 – Transfer)
Anheuser-Busch, LLC v. yoyo.email et al., NAF Claim No. FA1407001571472 (August 10, 2014 – Appeal – Suspension)
The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825 (August 11, 2014 – Transfer)
Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.Email Ltd, WIPO Case No. D2014-0805 (August 18, 2014 – Transfer)
Foot Locker Retail, Inc. v. yoyo.email et al., NAF Claim No. FA1406001565344 (August 19, 2014 – Appeal – Suspension)
Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855 (August 23, 2014 – Transfer)
Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email, Claim No. FA1407001568547 (August 25, 2014 – Transfer)
The Hartford Fire Insurance Company v. yoyo.email et al., NAF Claim No. FA1408001574384 (August 25, 2014 – Suspension)
L’Oréal SA v. Yoyo.email, Giovanni Laporta, WIPO Case No. D2014-1172 (September 4, 2014 - Transfer)
eHarmony, Inc. v yoyo.email et al., NAF Claim No. FA1408001575592 (September 4, 2014 - Returned)
After the commencement of these proceedings, on August 29, 2014, the first Respondent or an entity apparently related to the Respondents, Yoyo.Email, LLC, filed a Complaint for Declaratory Judgment in the United States District Court for the District of Arizona against Playinnovation, Ltd. Whilst these proceedings do not share the same parties as those to such Complaint and concerns the URS Procedure not the Policy, the latter refers to the Domain Name in the course of seeking declarations, including declarations, relevantly, that the registration and use of the Domain Name, amongst others, is not a “violation” of the Policy and should be “removed from suspension or returned” to Yoyo.Email, LLC so that it may “continue to develop its business model…”.
5. Parties’ Contentions
The Complainant asserts registered trade mark rights and a substantial reputation, and affirms that it has not granted permission to the Respondents to register the Domain Name.
In the face of the Complainant’s reputation, it simply asserts that the Respondents do not have any apparent rights or legitimate interests in the disputed domain and that, there being no conceivable use of the disputed domain that would not be to capitalize in some manner on the Complainant’s reputation and confuse consumers, the Domain Name must have been registered in bad faith. The Complaint equates being “a domainer” with being a cybersquatter and, given the number of domain names registered by the Respondents, speculates that the Respondents must be using the Domain Name in bad faith.
It is clear from the Complaint that the Complainant was unaware of the Respondents’ history at the time of filing the Complaint.
The Respondents say that they are sorely misunderstood. They say that they have been found by prior panels under the Policy and under the URS Procedure to have engaged in cybersquatting, notwithstanding what they regard as a “lack of evidence’. They say that they are developing a legitimate business model around the new “.email” gTLD “platform”, as described above. They say “it is impossible to claim trademark infringement since there is literally [sic] no trademark use of the domain name.”
6. Discussion and Findings
A. Termination or suspension
The Respondents request that the Complaint be dismissed on the ground that an administrative determination under the Policy “is not the correct legal forum to resolve this particular domain name dispute.”
The Respondents argue that, because of the Complaint filed in the United States District Court for the District of Arizona against Playinnovation Ltd, which touches on the domain name the subject of these proceedings, the Panel should exercise its discretion under paragraph 18(a) of the Rules to suspend or terminate these proceedings, citing McNeil Ohio Corporation v National Advertising, Inc, WIPO Case No. D2001-0409.
Paragraph 18(a) of the Rules provides:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
In Galley, Inc. v. Pride Marketing & Procurement / Richard's Restaurant Supply, Inc., WIPO Case No. D2008-1285, the learned panel, in both the minority and minority opinions, provided very helpful considerations to the exercise of the discretion of the Panel in a matter such as this. Considerations derived from this decision, and other decisions there referred to, are summarized as follows:
1. Panels have frequently exercised the discretion under paragraph 18(a) of the Rules to proceed to a decision despite concurrent or prior court proceedings. Such panels have recognized that doing so does not prevent either party, if dissatisfied with the result, from continuing to seek relief in court.
2. Panels have proceeded to a decision where the concurrent court proceedings:
(a) related to matters different to those which were the subject of the complaint;
(b) because the remedy sought in the court proceeding was different from that sought in the administrative proceeding;
(c) where both the concurrent court proceeding and the administrative proceeding dealt with similar issues about the ownership or use of disputed domain names but the panel is of the opinion that it is neither necessary or advantageous to await a judicial determination of the issues raised in the concurrent proceedings in order to reach a decision strictly under the Policy, such as where the matters before the court in the concurrent proceedings concern a wider range of claims and remedies, and counterclaims and defences, which the parties to the concurrent proceedings are free to pursue unaffected by the determination of the panel;
(d) where the dispute between the parties was broader and more complex than a dispute concerning domain names; but those panels proceeded to deny the complaint without addressing the merits of each element of the Policy in whole or part.
3. The panel may find the matters before the court in the concurrent proceedings useful in assessing the merits of the complaint and response in the administrative proceedings in making a determination under the Policy.
4. Where there is no evidence that the respondent has done any more than merely file proceedings, and no evidence of any substantive or procedural consideration of the merits of the claim by a court, it may be a very long time before even the issues for the court to decide are finalized, let alone a decision or earlier settlement – indeed, it may be that this court proceeding has been filed and not served, and/or may be withdrawn – and it may well be that there will be no decision relevant to the determination to be made under the Policy.
5. It is not necessarily the case that a determination under the Policy can in no way assist, resolve or narrow even part of the dispute between the parties. The determination may be useful in clarifying matters concerning the interpretation of the Policy; see also Newell Operating Company v. HostMonster.Com and Andrew Shalaby, WIPO Case No. D2008-1805 and Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041.
In this case, the court proceedings are not even between the same parties and, by obvious extension, relate to different subject matter from that of the administrative proceeding under the Policy. As a consequence, exceptional circumstances would be required for the termination or suspension of the proceedings, such as in the decision cited by the Respondent, McNeil Ohio Corporation v National Advertising, Inc, in which a third party, the Ford Motor Company, had secured orders from a court of applicable jurisdiction “transferring the domain name to the custody of the Court” pending the outcome of those proceedings. Clearly, such circumstances are not present here; see also Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), WIPO Case No. D2008-1477.
In this case, the court filing upon which the Respondents rely seeks declaratory relief in respect of a number of matters largely extraneous to the Policy, including declaratory relief that the proposed use of “.email” domain names incorporating third party trade marks is not “trademark use” under the United States Lanham Act, 15 USC §1125 nor cybersquatting under the United States Anti Cybersquatting Consumer Protection Act 15 USC §1125(D). The declaratory relief sought also refers to a “breach” of the Policy or the URS Procedure when there is no question of breach, but rather, in this case, interpretation of the Policy as to who should be recorded as the registrant of the Domain Name, a determination that can be made without reference to those extraneous matters.
How the United Sates District Court for the District of Arizona could grant such declarations without the Complainant being party to the proceedings is not clear to the Panel but United States procedural and substantive law on these matters is not for the Panel to know or determine.
For a concurrent court filing to be of such significance as to justify the termination or suspension of an administrative proceeding under the Policy, it should in this Panel’s opinion relate to matters central to the requirements of paragraphs 4(a), (b) and (c) of the Policy. This does not necessarily mean infringement of trade marks but could concern ownership of registered or common law trade mark rights, or the existence of a licence or other contractual, fiduciary or other relationships giving rise to a claim by a registrant to rights or legitimate interests in a domain name or whether there has been registration and use in bad faith, within the meaning of the policy.
Having regard to these matters, and the fact that the Respondents have done no more than merely file proceedings, the Panel is not persuaded that this administrative proceeding should be suspended or terminated.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has trade mark rights in THEO2 for the purposes of the Policy.
The Panel is also satisfied that the Domain Name is identical to the Complainant’s THEO2 trade mark – as indeed it was intended to be for the purpose of the Respondents’ business model. The Panel is satisfied that the dominant component of the Domain Name is the compound word “THE O2”, which is the subject of registered trade marks and has acquired reputation in the field of telecommunications and related services. The gTLD “.email” does not carry any distinguishing weight.
The Respondents’ proposition that, if the Domain Name is invisible in its proposed use of it, then it cannot be identical or confusingly similar is based upon a misunderstanding of the requirement of this part of the Policy. This is a test of side-by-side comparison, made objectively, and has nothing to do with how the Domain Name may be used in fact. Whether actual confusion may arise may be relevant in respect of the Respondents’ rights or legitimate interests or registration and use in bad faith, but it is irrelevant here. In any event, the Panel finds that the Domain Name is identical to the Complainant’s trade mark THEO2.
The Panel finds that the first element of the UDRP is satisfied.
C. Rights or Legitimate Interests
The Respondents object that they should not be required to justify their registration and use of the Domain Name, and earlier findings against them in that regard in respect of other domain names, when, in their submission, there is no evidence that they lack rights or legitimate interests in the Domain Name.
It is clear that the Complaint in this case goes no further, and could have gone no further, than asserting the Complainant’s trade mark rights; that no permission had been given by the Complainant to the Respondents to register the Domain Name; and that, given the rights of the Complainant, the Respondents could not have had rights or legitimate interests and, in their absence, and given the Respondents’ obvious knowledge of the Complainant, no conceivable registration and use could be in good faith. The Complainant might have tried a little harder and done a little bit more research into the public record, but nothing in the Policy requires it to prove a negative or matters which can solely be in the knowledge of the Respondents. It is not unusual at all in courts, as well as in determinations under the Policy, for the evidential burden to shift in these circumstances to a defendant/respondent; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 2.1.
The Respondents’ argument with respect to this criterion is based upon paragraph 4(c)(i) of the Policy. This allows a demonstration of rights or legitimate interests through a showing that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
The proposition of the Respondents appears to be that, because they have devised a system for a verifiable email delivery service using the Domain Name, amongst many others, and that they have taken substantial steps to implement that system for the purpose of a business, then this must satisfy the requirement to show rights or legitimate interests.
This proposition is to misunderstand the requirements of the Policy, read as a whole.
First, the new “.email” gTLD domain name string was delegated on January 2, 2014 and the sunrise period ended on March 15, 2014, soon after which domain names in the “.email” gTLD became available generally for registration – the Respondent says on March 26, 2014. The Domain Name was created on April 17, 2014, after the URS Procedure proceedings in Deutsche Lufthansa AG v yoyo.email, NAF Claim No. FA1404001552833 commenced on April 7. The other claims quickly followed: the proceedings in Stuart Weitzman IP, LLC v yoyo.email et al., NAF Claim No. FA1404001554808 (in which the Respondents were ultimately successful) were commenced on April 18, 2014 and the proceedings in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 commenced on April 25, 2014.
It would be reasonable to conclude that, even if the Respondents were unaware of the umbrage of trade mark owners concerning their business plan on March 26, 2014, they were very quickly made aware. It is the view of the Panel that an experienced business person such as the second Respondent, the guiding mind behind this plan, was undoubtedly aware of the potential objections of trade mark owners and proceeded regardless, perhaps honestly believing in the propriety of his business model; see, for example, Telstra Corporation Limited v. India Yellow Pages, WIPO Case No. D2002-0651. It goes without saying that he was fully aware of the Complainant and its trade mark rights. In any event, it is not clear how much of the preparations of the Respondents preceded the date upon which they became aware of the objections of trade mark owners generally, and of the Complainant in particular.
Furthermore, when paragraph 4(c)(i) of the Policy gives as an example of proof of rights to and legitimate interests in domain name demonstrable preparations to use that domain name or a name corresponding to it, which may be understood to extend to a number of related domain names, in connection with a bona fide offering of goods or services, it would seem to be speaking of a “trade mark use” of a name, one that refers to an offering of goods or services. It cannot be that the sort of business to which the Policy is referring in paragraph 4(c)(i) is one requiring the unauthorized use1 of thousands of unrelated domain names, the vast majority of which are identical to famous trade marks belonging to others. If that were considered to be legitimate, then the Policy may be rendered meaningless, as large-scale cybersquatting would be justified. There needs to be something more than just this.
It is clear that neither of the Respondents is commonly known by the Domain Name (or any name corresponding to it) and that the Respondents’ proposed use of the Domain Name is as part of business (i.e., it is commercial), so neither of the two remaining considerations under paragraph 4(c) of the Policy is invoked.
Furthermore, a number of decisions have made the point that it is insufficient for a respondent to make bald assertions regarding the business in which a good faith legitimate disputed domain name will play a part and its innocence, in the absence of credible supporting evidence of the use being made or proposed; see, for example, Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941. There is no supporting evidence in the Response, other than a list of domain names acquired.
It is not expected that the Respondents should disclose to the world their secret system, but what is disclosed should at least make it credible. There is no explanation of why thousands of domain names must be acquired most of which appear to be identical to a range of famous trade marks – when there must be millions that will never be acquired – and why the Respondents stated purposes could not equally be achieved by, for example, using subdomains of the <yoyo.email> domain. As the learned panel observed in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email; WIPO Case No. D2014-0686:
“The essence of this matter lies in the contention of the Respondent that he is entitled to register the disputed domain names notwithstanding the fact that they include the Complainant’s SHERATON trademark, because he intends to establish a purportedly legitimate email recorded delivery service. The Respondent submits that this is required, along with the acquisition of many other analogous registered “.email” domain names, because otherwise it is not possible to establish the service he intends to operate. The Respondent contends that he is taking all necessary steps to establish the service. 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 trademarks, 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. 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.”
The Panel accordingly finds that the Respondents have no rights or legitimate interests in the Domain Name.
D. Registered and Used in Bad Faith
The Respondents say that they have been found to be “cybersquatters” in the absence of any evidence of their registration and use of the domain names the subject of earlier determinations under the Policy. Again, they have misunderstood the tenor of all the determinations made against them. It has been found, repeatedly, that the Respondents have not demonstrated legitimate interests in the domain names they have acquired, in terms of paragraphs 4(c)(i) and 4(c)(iii) of the Policy2 and that their registration and use of domain names identical to famous trade marks has been found to be in bad faith, within the meaning of the Policy.3
The Policy is concerned only in part with “cybersquatting.” For example, the mere fact of registration of multiple domain names does not in any way suggest a breach of the Policy – there is nothing wrong or inconsistent with the Policy in the business of a “domainer.” However, a domainer must in appropriate circumstances defer to a trade mark owner if he was aware, or ought to have been aware, of the trade mark rights of a complainant and where there is no other conceivable good faith basis for the registration of such domain name (e.g., co-existence or correspondence to a dictionary term used for such purpose); see WIPO Overview 2.0, paragraph 3.4.
The Respondents cannot and do not suggest that they were unaware of the Complainant’s trade marks. Clearly, they registered the Domain Name precisely because it is identical to Complainant’s well-known trade mark.
The Panel respectfully adopts the reasoning of the learned panel in Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email; Claim No. FA1407001568547 on this matter, summing up the prior decisions on the same issue:
“… Respondent has not articulated any reason why it was necessary to register trademarked domains in order to operate its proposed business, and (as noted in previous decisions) it appears that the business could be operated without the use of trademarked domain names. While it is not entirely clear why Respondent chose to operate its business using trademarked domain names, precedent makes it clear that bad faith can be inferred from the facts and circumstances; where the domain names “would have little value to Respondent unless there was to be some reliance on the prospect of confusion,” bad faith may safely be inferred. Pepperdine Univ. v. BDC Partners, Inc., WIPO Case No. D2006-1003 (September 25, 2006).
Here, Respondent spent approximately [USD] 82,000 registering “over 4000” domain names (Response at 7, 16)), many of which appear to have been selected precisely because they were similar or identical to third party trademarks. Despite Respondent’s assertion that the registration of trademarked domain names was useful to “accomplish a number of verified email administrative and technical goals,” Respondent chose not to articulate a single specific goal that this large-scale registration served. This omission is particularly striking in light of the fact that Respondent has had at least eleven opportunities to present some rationale for its pattern of behavior, in the form of eleven separate UDRP and URS challenges. In at least five of these proceedings, adverse decisions noted Respondent’s lack of visible justification for its registration of trademark-containing domain names.”
After this string of adverse decisions, Respondent was clearly on notice that it needed to provide some plausible necessity for registering thousands of trademarked domain names. Given the notable absence of alternative rationales presented here, the most reasonable explanation for Respondent’s insistence on purchasing a huge number of trademarked domain names at significant cost is that Respondent intends to benefit somehow from “the underlying value of Complainant’s trademark… [which] is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services.” Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000). Such behavior constitutes registration and use in bad faith.
To add one further difficulty with the Respondents’ contentions, they have not explained why, if the domain names acquired by them were intended to operate as mailboxes or the like for the owners of the famous trade marks embodied in those domain names, they chose to register <lurpak.email> for the Mejeriforeningen Danish Dairy Board or <cravendale.email>” for Arla Foods amba. It is by no means self-evident that a user of the Respondents’ service would address a communication to a company’s product, rather than the company’s actual name. Were a consumer, even less a person doing business with such a company, to write to a company in the hope that his or her email would end up in the right inbox of these large companies, he or she would not be addressing a branded tub of butter.
The Panel finds that the Respondents have registered and are using the Domain Name in bad faith.
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 name, <theo2.email> be transferred to the Complainant.
William P. Knight
Date: September 24, 2014
1 To be clear, so that the Respondents do not believe that they are misunderstood, the word “use” here does not connote “use in a trade mark sense.”
2 Paragraph 4(c)(iii) does not appear to be relied upon by the Respondents in this case, although, if they did so, the decision would be same.
3 There is, in these findings, no suggestion of moral opprobrium on the part of the Respondents, rather that their purposes and proposed use of these domain names are not consistent with the fundamental principles of the Policy, as explained in this determination.