WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AA Brand Management Limited v. Giovanni Laporta, Yoyo.Email Ltd.
Case No. D2014-1444
1. The Parties
Complainant is AA Brand Management Limited of Basingstoke, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Demys Limited, UK.
Respondent is Giovanni Laporta, Yoyo.Email Ltd. of Traverse City, Michigan, United States of America, represented by Traverse Legal, PLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <theaa.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 August 22, 2014. On August 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 24, 2014. The Response was filed with the Center on September 24, 2014.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 30, 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
Complainant belongs to the AA (Automobile Association) group of companies based in the UK providing car insurance, driving lessons, breakdown cover, loans and motoring advice.
Complainant has provided evidence that it is the registered owner of the following national UK trademarks for AA:
- Word-/device mark AA, UK Trademark No. 362557; Registration Date: July 16, 1914; Status: Active;
- Word-/device mark AA, UK Trademark No.887681; Registration Date: December 1, 1965; Status: Active;
- Word-/device mark: AA, UK Trademark No.1215082; Registration Date: November 18, 1988; Status: Active;
- Word-/device mark AA, UK Trademark No.1266043; Registration Date: December 14, 1990; Status: Active;
- Word-/device mark AA, UK Trademark No. 1285867; Registration Date: July 10,1992: Status: Active;
- Word-/device mark AA, UK Trademark No.1286102; Registration Date: May 8, 1992; Status: Active;
- Word-/device mark AA, UK Trademark No.1286099; Registration Date: June 10, 1994; Status: Active.
Respondent is an individual domiciled in the United States of America who is developing a business model around the new generic Top-Level Domain (gTLD) “.email” to be operated by the private company Yoyo.Email Ltd., incorporated under the laws of England and Wales on March 31, 2014.
The disputed domain name <theaa.email> was registered one day before said company’s incorporation, namely on March 30, 2014, and redirects to a website at “www.theaa.email”, without any content.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent requests that the Complaint be denied.
5. Parties’ Contentions
Complainant asserts that the predecessor to the AA group of companies started its business in 1905 with approximately 100 members. Membership has grown to about 15 million and the AA group currently employs about 7,500 staff. The group is valued at approximately GBP 3.35 billion. Moreover, Complainant recites that its group’s web presence at <theaa.com> is extensively used in marketing to the public and is ranked 288th in the UK in terms of traffic. Complainant further notes that it is commonly known as “The AA” and submits that it enjoys unregistered or common law rights in the term “The AA” as evidenced by a number of third party newspaper articles taken from a variety of publications between 2010 and 2014 which refer to Complainant as “The AA”.
Complainant suggests that the disputed domain name is confusingly similar to its AA trademark since it is customary in UDRP proceedings to ignore the gTLD, namely “.email”, which is required for technical reasons only.
Complainant further claims that Respondent has no rights or legitimate interests with respect to the disputed domain name since: (1) Respondent has registered a large number of domain names incorporating third party company names and trademarks, including the disputed domain name, in order to establish a business related to the provision of e-mail services and any use of the disputed domain name – whether commercial or otherwise – could not confer a legitimate interest on Respondent’s activities given the confusing similarity of the disputed domain name to Complainant’s AA trademark in terms of a bona fide use, (2) Respondent is obviously not named or commonly known as “(The) AA”, nor does Respondent own any trademark rights in such term, nor is he a licensee of Complainant, nor has he received any permission or consent from Complainant to use its AA trademarks; and (3) Respondent himself describes how he intends to commercially exploit the disputed domain name, and thus did not register it for any legitimate noncommercial or fair use.
Finally, Complainant suggests that the disputed domain name was registered and is being used in bad faith since Respondent intentionally attempted to attract, for commercial gain, Internet users his online location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his e-mail service as per paragraph 4(b)(iv) of the Policy. Complainant understands that Respondent has targeted a very large number of famous brands and trademarks under the “.email” gTLD and that, therefore, Respondent obviously planned on making use of the disputed domain name as part of this business offering.
Respondent states that he does not specifically respond to every statement and allegation raised in the Complaint individually, but that the following arguments demonstrate that all of Complainant’s statements and allegations are without merit:
(1) Prior UDRP panels have concluded that Respondent is engaged in cyber-squatting, despite the lack of evidence supporting such finding, thus Respondent’s previous responses have been severely misinterpreted.
(2) Respondent is developing a legitimate and lawful business model around the new “.email” gTLD platform; while there are various aspects to this business model, the one relevant to trademarks is to use the disputed domain name as a backend, non-public e-mail server in order to route e-mails for the storing of Metadata which would allow Yoyo.Email to certify delivery and potentially receipt; no third party, consumer or anyone else outside Yoyo employees ever sees the disputed domain name; it is impossible to claim trademark infringement since there is literary no trademark use of the disputed domain name.
(3) Respondent’s use of the disputed domain name is not identical or confusingly similar to Complainant’s marks since Respondent is not actually using the disputed domain name as a mark “in commerce”.
(4) The fact that there is no evidence that a respondent uses or plans to use a domain name in connection with a bona fide offering of goods or services does not demonstrate bad faith; Respondent here needs to use the disputed domain name to offer a credible service and does not possess a bad faith intent to mislead or divert consumers.
(5) The speculation and supposition about Respondent’s motives is insufficient to support a finding that the UDRP has been violated; Respondent has invested tremendous time and money to developing a lawful business around the “.email” gTLD and Respondent should be allowed to launch that business so that registration and use become clear.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <theaa.email> is confusingly similar to the AA trademark in which Complainant has shown itself to have rights. The disputed domain name incorporates the AA trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in numerous UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the Panel finds that the mere addition of the article “the” is not capable of dispelling the confusing similarity arising from the incorporation of Complainant’s registered trademark into the disputed domain name. Against this background, the Panel need not decide whether Complainant, besides its registered trademark rights in AA, also enjoys unregistered (common law) trademark rights in “The AA”.
As far as Respondent’s argument that the disputed domain name is not identical or confusingly similar to Complainant’s AA trademark since Respondent “is not actually using the disputed domain name as a mark in commerce”, the Panel points to the consensus view of UDRP panelists that the threshold test for identity and/or confusing similarity under the first element of the UDRP involves a straightforward comparison between the trademark and the disputed domain name (see WIPO Overview 2.0, paragraph 1.2) to be made objectively and regardless of whether or not the disputed domain name is in fact being used (see e.g. O2 Holdings Limited v. Yoyo.email/Giovanni Laporta, WIPO Case No. D2014-1399).
Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
On the basis of Respondent’s own statements, the Panel is convinced that Respondent has neither been commonly known by the disputed domain name nor has made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
It remains, therefore, for the Panel to analyze whether or not Respondent may claim rights or legitimate interests in the disputed domain name because it used the same in connection with a bona fide offering of goods or services (Policy, paragraph 4(c)(i)) or whether there are other circumstances in the case at hand which demonstrate such rights or legitimate interests within the broader meaning of the non-exclusive case scenarios set forth by paragraph 4(c) of the Policy.
Respondent’s business model has lately been the subject of a number of UDRP decisions by WIPO panels, inter alia: Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; Merjeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730; 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, as well as O2 Holdings Limited v. Yoyo.email / Giovanni Laporta WIPO Case No. D2014-1399.
Those cases identified the weakness in Respondent’s line of argumentation in that nothing had been put before the respective panels to justify or even to explain why Respondent actually has to register and own thousands of domain names under the gTLD “.email” containing third party trademarks (many of which are well-known, if not famous) to run its business model.
In the case at hand, Respondent points to the fact that while there are various aspects to its business model, the one relevant to trademarks is “to use the disputed domain name as a back-end, non-public e-mail server in order to route e-mails for the storing of metadata which will allow Yoyo.Email to certify delivery and potentially receipts”. Respondent argues that “no third party, consumer or anyone else outside Yoyo employees ever sees the domain name at issue and that, therefore, it is impossible to claim trademark infringement since there is literally no trademark use of the domain name”.
The Panel accepts that the disputed domain name, if used as part of Respondent’s business model, will not be visually perceived by Internet users. It is still undisputed in the case at hand, if not expressly confirmed by Respondent’s own allegations, that the disputed domain name will be used at least in a technical sense to route e-mails which are somehow associated with Complainant’s trademark AA. Respondent has not brought forward any evidence or argument as to why such a technical or even hidden use of Complainant’s trademark should be considered bona fide, considering that the disputed domain name is an unauthorized, independent use of Complainant’s AA trademark. On the contrary, it is also undisputed that Respondent was totally aware of Complainant’s trademark when registering the disputed domain name just as he was aware of all the other third party trademarks which are reflected in the thousands of “.email” domain names registered by Respondent. Respondent’s business model quite obviously is built upon an intended (technical) connection between his domain names, inclusive of the disputed domain name, and the third party trademarks reflected therein. Many UDRP panels have held that offering goods or services cannot be found bona fide when the user of the domain name at issue would not choose such name unless he was at least seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067) or if respondent was inevitably on notice of the existence of the third party’s business and trademark and, therefore, took the attendant risk of conflict with the third party trademark (see Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941). On this basis, the Panel agrees with a number of other panels “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”. The Royal Bank of Scotland, supra. Respondent’s registration of Complainant’s (well-known) trademark as a “.email” domain name and his use of it as part of a for-profit business model because of that trademark’s value and good will cannot be considered to convey to Respondent rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
It is undisputed that Respondent has registered thousands of domain names reflecting third party trademarks, inclusive of Complainant’s AA trademark, in the “.email” gTLD space, and thus that Respondent has engaged in a pattern of conduct, which prevents the owners of those trademarks, inclusive of Complainant, from reflecting their own trademarks in a corresponding .email domain name. See The Royal Bank of Scotland, supra. Such behavior obviously fulfils paragraph 4(b)(ii) of the Policy, which states that registration of a domain name “in order to prevent the owner of a trademark…from reflecting the mark in a corresponding domain name, provided that [respondent] has engaged in a pattern of such conduct” is evidence of the registration and use of a domain name in bad faith.
The Panel wishes to reconfirm that bad faith within the meaning of the UDRP includes those scenarios, where a domain name owner, in the absence of rights or legitimate interests to the disputed domain name, interferes with the trademark owner’s interests (including where the trademark owner deliberately chooses whether or not to reflect their trademarks in a respective domain name). It is a consensus view among UDRP panels that even the passive holding of a disputed domain name without any active attempt to sell it or to contact the trademark holder does not as such prevent a finding of bad faith but that the panel must examine all the circumstances found to be indicative of bad faith (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2). In the case at hand, the disputed domain name in fact is “passively” used (in some hidden way) and the purpose of using the disputed domain name (in which the Complainant owns trademark rights) is a business model running for pure commercial gain. This taken altogether is, beyond the prerequisites as set forth by paragraph 4(b)(ii) of the Policy, indicative of an acting of Respondent in bad faith under the UDRP.
Therefore, the Panel finds that the third element under the Policy set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 name <theaa.email> be transferred to Complainant.
Stephanie G. Hartung, LL.M.
Date: October 13, 2014