WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email
Case No. D2014-1539
1. The Parties
Complainant is Bank of Scotland Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Crowell & Moring, LLP, Belgium.
Respondent is Giovanni Laporta, Yoyo.Email of Traverse City, Michigan, United States of America (“United States”), represented by Traverse Legal, PLC, United States.
2. The Domain Name and Registrar
The disputed domain name is <halifax.email> which 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 September 9, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 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 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2014. The Response was filed with the Center on October 8, 2014.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on October 20, 2014. This Panel finds that it was properly constituted. This 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. In accordance with the Rules, paragraphs 6(f) and 15(b), this Panel was required to forward this Decision to the Center by November 3, 2014.
4. Factual Background
Complainant has rights over the HALIFAX trademark for which it holds the following trademark registrations: (i) No. 000042788 with the European Office of Harmonization in the Internal Market, classes 9, 36, 37, of October 19, 1998; and (ii) No. 1289571 with the Intellectual Property Office of the United Kingdom, class 36, of October 1, 1986.
The disputed domain name was created on April 10, 2014
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant is in the business of financial services and is a subsidiary of the Lloyds Banking Group.
The HALIFAX mark is very well-known all over the world, as shown by the results on search websites such as “www.google.com”. Complainant actively promotes its HALIFAX mark through its website linked to the domain name <halifax.co.uk>. Complainant’s HALIFAX mark is registered in numerous countries in classes 9, 36, 37, 39 and used in relation to Complainant’s financial services business. Complainant has used its mark ever since October 1, 1986. Complainant uses the HALIFAX mark in its external communication and branding, e.g., on its company websites accessible through “www.halifax.co.uk,”1 on the products it sells, on billboards, advertisements, etc.
The disputed domain name incorporates Complainant’s HALIFAX mark in its entirety. The disputed domain name is identical to the mark in which Complainant has rights. It is well established that the addition of a generic top-level domain (“gTLD”) can be disregarded when comparing the similarities between a domain name and a mark. Therefore, the “.email” gTLD does not prevent a finding of confusing similarity under the Policy.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not commonly known by the disputed domain name. Respondent has not acquired trademark or service mark rights and Respondent’s use and registration of the disputed domain name was not authorized by Complainant. In the absence of any license or permission from Complainant to use its widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed
The disputed domain name does not resolve to any content. Such use does not constitute a legitimate or fair use according to the Policy.
Respondent is a known cybersquatter, as shown by numerous UDRP and Uniform Rapid Suspension System (“URS) cases.2 In these cases, Respondent submitted that it has rights or legitimate interests in the disputed domain names based on its intended use of the names as technical links as part of its email directory and security service. The appointed panels in those cases quite rightfully held that such intended use does not create any rights or legitimate interests in domain names that are identical or confusingly similar to trademarks and that the intended use does not justify the registration of the disputed domain names, as there is no need to acquire the domain names for the alleged intended purpose.
The disputed domain name was registered and is being used in bad faith.
At the time Respondent registered the disputed domain name, Respondent must have known of Complainant and its marks. This is shown by the following elements of fact: (i) Complainant’s marks are well-known all over the world, and especially in the United Kingdom, and Respondent resided in the United Kingdom until recently, as shown in the historical WhoIs records of the disputed domain name; (ii) a simple trademark search at the time of the registration of the disputed domain name would have revealed Complainant’s mark registrations, and a simple search on the Internet would have revealed Complainant’s presence and marks. As a result, Respondent could not reasonably have been unaware of the fame of Complainant’s HALIFAX mark at the time of registration of the disputed domain name.
It has previously been held in UDRP cases that knowledge of a corresponding mark at the time of the domain name registration suggests bad faith. As there is bad faith pursuant to the Policy when Respondent knew or should have known Complainant’s trademark rights, and nevertheless registered a domain name incorporating such mark, in circumstances where Respondent itself had no rights or legitimate interest in said mark, it is clear that Respondent registered the disputed domain name in bad faith.
By registering the disputed domain name, Respondent prevents Complainant from reflecting its mark in a corresponding domain name. It appears that Respondent also registered other domain names that prevent owners of other trademarks or business names from reflecting their marks in corresponding domain names. These other domain names are identical or confusingly similar to names in which third parties have rights. This clearly evidences that Respondent has engaged in a pattern of preventing owners of trademarks from reflecting their marks in corresponding domain names. This evidences bad faith registration and use in the present case.
The disputed domain name resolves to a webpage without any content. The passive holding of a domain name can amount to bad faith registration and use. The passive holding of a domain name amounts to bad faith when it is difficult to imagine any plausible future active use of the disputed domain name by Respondent that would be legitimate and not infringing of Complainant’s well-known mark or which would not violate unfair competition and consumer protection legislation. In view of the well-known character of Complainant’s mark, it is impossible to imagine any plausible legitimate use of the disputed domain name by Respondent.
Respondent is clearly targeting companies from the financial sector. Respondent also registered the domain name <lloydsbank.email>, which refers to Lloyds Bank Plc, a subsidiary of the same group as Complainant. This clearly shows that Respondent knows and is targeting Complainant. Moreover, it cannot be excluded that Respondent uses the disputed domain name for fraudulent activity, that is, by profiting of the likely confusion with Complainant’s mark for phishing activities.
Previous UDRP panels found that Respondent’s intended use amounted to bad faith use under paragraph 4(b)(iii) of the Policy. They considered that: (i) Respondent registered domain names so that the trademark holder would be obliged to use its service; (ii) it was likely that Respondent is attempting to divert traffic from the trademark holders’ websites for commercial gain; and (iii) even if Respondent’s proposed service is to be free at the point of use, Respondent clearly intends to financially benefit from use of the 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 a complainant’s trademark suggests at the very least an endorsement of, or affiliation with, Respondent’s service by complainants, as decided in other UDRP cases against Respondent.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent’s assertions may be summarized as follows.
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”. When a trademark is used by the back-end, non-public software in a pure “machine linking” function, such use is not considered an actionable trademark use. More specifically, when a domain name comprising a trademark is used in a backend, non-public directory, such use of the trademark is not a trademark use.
The verification software that Respondent has developed will utilize web addresses comprising trademarks in a similar way as was discussed in the United States court decision U-Haul Intern., Inc. v. WhenU.com, Inc., 279 F. Supp. 2D 723 (E.D. Va. 2003). In U-Haul, the web addresses comprising trademarks were stored in a back-end database and only used internally by the SaveNow program to present an ad that did not display U-Haul’s trademark. Similarly, Respondent asserts that the disputed domain name will only be used in the back-end, nonpublic, process of verifying and routing emails. Thus, similar to the Court’s conclusion in U-Haul, as long as Respondent does not sell the trademarked web addresses to its customers, does not display the trademark to consumers, and does not use the trademarks to identify the source of its goods or services, a court would hold that Respondent’s use of the disputed domain name is not a trademark use.
It is not just the presence of the “.email” gTLD in the disputed domain name that shows that it is not identical or confusingly similar to Complainant’s marks, but it is Respondent’s use of the disputed domain name as a back-end, nonpublic directory. Such use of the disputed domain name as a mark is not considered to be a mark “used in commerce” as it is invisible to consumers.
Respondent is developing a legitimate and lawful business model around the new “.email” gTLD platform. No third party, consumer or anyone else outside Respondent employees ever sees the disputed domain name. Since Respondent is simply providing certification of email services, it is acting as a “courier” and not selling the disputed domain name itself. It is impossible to claim trademark infringement since there is literally no trademark use of the disputed domain name. Prior panelists have engaged in little more than speculation and conjecture about Respondent’s business model, its intentions and relied on unsupported statements in prior decisions, which in all cases were never argued, alleged and certainly not supported by any evidence. Some panelists simply disagree with Respondent’s business model as the basis for their decisions. These panelists have abused their role, ignored the UDRP and ignored ICANN’s express goal of creating innovation in the new gTLD space in “steamrolling” Respondent.
Respondent has rights and legitimate interests in the disputed domain name.
Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services under the Policy. Specifically, Respondent is providing certification of email services, which will be free for both the sender and receiver of emails. By using the disputed domain name as a backend, non-public email server in order to route emails for the storing of metadata, Respondent is in no way trying to divert traffic intended for Complainant’s website to its own for commercial gain. Complainant’s trademark rights are not harmed and Complainant is not required to pay for the certification of email services provided by Respondent. The “www.yoyo.email” website is under development and should be launched in beta soon. Respondent has filed legal proceedings both in the United States and the United Kingdom detailing its business model, providing exhibits which include business plans for its model and seeking a court order that its business model is legitimate and lawful.
Respondent is making a legitimate fair use of the disputed domain name, with no intent to profit from it. Respondent is simply using the disputed domain name as a back-end email server to route and store email metadata, not to host any website.
Respondent has never intended to profit in any way related to use of the disputed domain name as a trademark. Respondent has not used the disputed domain name to date to profit from advertising connected to the use of the trademark-related web service. Nor is there any evidence, beyond speculation or regurgitated undocumented hearsay from prior panel decisions, to support any future intent to use the disputed domain name in such a way. The fact that Respondent intends to be a for-profit business in general from the use of the many generic domain names it has registered, in no way supports the leap that it intends to profit from the disputed domain name or Complainant’s trademarks.
Respondent applied on August 1, 2014, for a community trademark registration for YOYO.EMAIL with the European Office of Harmonization in the Internal Market in classes 35, 38, 42 and 45. This further demonstrates Respondent’s legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in good faith.
Respondent is not using the disputed domain name for commercial gain or to defraud the public by creating a false impression that the disputed domain name is Complainant’s genuine Internet name. Respondent did not register the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring its registration to Complainant.
Respondent has previously, when legal counsel has offered Respondent $1,000 to purchase another domain name, refused the offer and stated that “selling domain names is not the reason why domain names were registered, so I respectfully have to decline your offer”. Further, Respondent did not register the disputed domain name for the purpose of disrupting the business of Complainant, but instead to provide a “new way” in email verification. As Respondent uses the disputed domain name in a way hidden from public view there is no likelihood of confusion with Complainant’s mark.
Because bad faith is a subjective state of mind, administrative decisions concerning alleged Policy violations look to all surrounding circumstances, not just those listed in the Policy, to infer bad faith. Panels have inferred bad faith based on a respondent’s use of complainant’s mark on the website under the domain name at issue, similarity and inherent distinctiveness of complainant’s mark, and respondent’s knowledge of complainant’s existence prior to registration. A respondent’s knowledge and bad faith is particularly inferable when respondent uses the domain name consisting of complainant’s notorious trademark. Panels will not award a transfer of a domain name to a complainant if complainant’s arguments of bad faith are merely speculative and do not make a clear case of bad faith registration. Complainant bears the burden of showing Respondent’s bad faith in registration of the disputed domain name. Record of a respondent’s prior involvement in a domain name dispute does not alone demonstrate such respondent’s bad faith. Respondent, here, does not possess the bad faith intent to mislead or divert consumers. All the evidence is to the contrary.
Respondent was successful in an appeal under the URS for the disputed domain name <stuartweitzman.email> where the majority of the appeal Examiners determined that “Complainant has NOT demonstrated all three elements”. One Panelist had found in an earlier URS appeal that Respondent acted “lawfully” when registering other “brand.email” domain names in his dissent.
Respondent’s legal proceedings3 establish a legitimate business interest and lack of bad faith intent to profit supporting a denial of Complainant’s request. Respondent is not a cybersquatter. Respondent’s previous reponses have been severely misinterpreted. There has been no use of the disputed domain name, and no offer to sell and no bad faith activity of any kind. It has only been a few months since Respondent registered the disputed domain name. Respondent’s business model is being launched. 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. Respondent has a proven track record in developing new ideas and Respondent’s CEO has some 22 granted patents that demonstrates Respondent often finds new solutions to day to day problems.4 Respondent should be allowed to launch its service so the registration and use become clear. If at any point Respondent violates, in fact, the UDRP or trademark law then consequences will follow.
Respondent requests the Complaint be denied.
6. Discussion and Findings
A. Preliminary Issue: Court Proceedings
The Response and its enclosures make reference to two separate legal proceedings initiated by Respondent: (i) a complaint for declaratory judgment filed on August 29, 2014, with the United States District Court for the District of Arizona, by Yoyo.Email LLC against Playinnovation Ltd, and (ii) a money claim online form filed on September 4, 2014, with the HM Courts & Tribunals Service, County Court Business Centre, of the United Kingdom, by Yoyo.Email Limited (with stated domicile at Unit 2 Eastern Avenue, Dunstable, Bedfordshire LU5 4JY) against The Royal Bank of Scotland plc, relating to certain domain names other than the disputed domain name.5 Complainant is not a party to such two separate legal proceedings. Respondent did not request the suspension or termination of this administrative proceeding, but merely relied on the statements contained therein. Having due consideration to those legal proceedings, this Panel, pursuant to paragraph 18(a) of the Rules, has decided to proceed to a decision in this case.
The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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.
B. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the HALIFAX mark.
The disputed domain name consists of the HALIFAX mark in its entirety and the gTLD “.email”. Since the addition of a gTLD after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark (see, for instance, Boehringer Ingelheim International GmbH v. Jiaai EAC International Co., Limited, WIPO Case No. D2014-0372, and Koninklijke KPN N.V. v. Marijn Vlug, WIPO Case No. D2014-1116). Based on the above, it is clear that the disputed domain name is identical to Complainant’s mark.
Whether Respondent is using either Complainant’s mark or the disputed domain name as a mark or as a mark in commerce is irrelevant under paragraph 4(a)(i) of the Policy.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name, that Complainant has not authorized Respondent to make any use of its HALIFAX mark, that Respondent lacks trademark or service mark rights in the disputed domain name and that there is no active website to which the disputed domain name resolves. Respondent did not rebut such assertions.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name.6
Respondent first contended that it “is developing” a legitimate business model around the “.email” gTLD, while on the other hand Respondent contends that it “is providing” certification of email services. Further it asserts that the “www.yoyo.email” website is under development and should be launched in beta soon.
Respondent also contends that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services. The Policy requires Respondent to show “demonstrable preparations”, meaning that Respondent should be able to produce evidence that, in fact, shows preparations are underway to use the disputed domain name for a bona fide offering. As set forth in other cases, mere statements of intentions do not constitute demonstrable preparations.
Respondent apparently intends to evidence such demonstrable preparations with the following: (i) the legal proceedings referred to above; (ii) the certificate of incorporation of Yoyo.Email Limited, a private limited company registered on March 31, 2014, under the laws of England and Wales; (iii) a WhoIs record for the “yoyo.email” domain name, created on March 28, 2014, where the registrant appears to be Domain Manager/yoyo.email; (iv) a form of community trademark application with the European Office of Harmonization in the Internal Market, of August 1, 2014, by Giovanni Laporta as applicant (with stated domicile at 467 Whippendell Road, Watford, Hertfordshire, WD18 7PS, United Kingdom) for the registration of YOYO in several classes; (v) a list with hundreds of domain names allegedly registered by Respondent under the “.email” gTLD, which show several domain names that include well-known marks of third parties; (vi) a sheet of stated demonstrable preparations that reads: “(a) spending money on buying the domain names Yoyo has in the .email space; about [GBP] 50,000 ([USD] 82k) (b) having 4 (+ 3) staff members working on the project. They all work exclusively on the YOYO project now, and have been since the 28 March 2014 (c) conceptualising the website user interface (d) setting up YOYO domain name (28 March) (e) setting up the company's office (31 March) (f) designing logos and a web holding page [“www.yoyo.email”]; (g) spending about [GBP] 100,000 ([USD] 170,000 approx.) to date. (July 3 2014)”.
In this Panel’s view, none of the above constitutes “demonstrable preparations” to use the disputed domain name in connection with a bona fide offering of goods or services. In this respect, this Panel agrees with the views expressed in the following three cases, among others:
(a) Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682: “Respondent’s factual assertions, if true, demonstrate only that he intended to use the Disputed Domain Name for a fan site. Intentions are not ‘demonstrable preparations’ to use a domain name [...] once Complainant has established his prima face case, ‘concrete evidence,’ not intentions, is necessary to overcome that presentation”;
(b) Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003: “whatever demonstrable preparations Respondent has made generally, there is [a] serious question with respect to whether those preparations are in connection with a bona fide offering of services. The Panel is not questioning the bona fide of a social network for students and alums. However, Respondent’s plan is based in large measure upon registering Domain Names using other people’s legally established trade and service marks without license or permission from the owners of those marks. That is certainly true at least with respect to Pepperdine’s marks in this case”; and
(c) AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485: “Although Respondent states in his affidavit that he registered the domain name ‘with the intent to develop vanity domain services’, Respondent has not provided any documentary evidence whatsoever to substantiate that assertion. Given that paragraph 4(c)(i) of the Policy requires Respondent to show ‘demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services,’ the Panel concludes that the mere assertion of such an intention, even in the form of an affidavit, is insufficient. Instead, once Complainants make a prima facie showing, Respondent has to submit concrete evidence of at least demonstrable preparations in order to rebut Complainants’ showing that Respondent has not used, nor does it plan to use, the domain names in connection with the bona fide sale of goods or services”.7
This Panel considers that Complainant established prima facie that Respondent has no rights or legitimate interests in the disputed domain name and that, in rebuttal, Respondent did not present adequate, sufficient and convincing evidence to overcome Complainant’s case. Thus, this Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
D. Registered and Used in Bad Faith
Complainant asserts that Respondent’s registration and use of the disputed domain names is in bad faith.
Circumstances demonstrating registration and use in bad faith are not limited to those specifically set forth in paragraph 4(b) of the Policy. In any event, it seems that Respondent’s conduct falls under paragraph 4(b)(ii) of the Policy (registration of a domain name in order to prevent the owner of a mark from reflecting that mark in a corresponding domain name, where respondent has engaged in a pattern of such conduct).
Complainant has evidenced that its HALIFAX mark was registered in the United Kingdom in 1986 (that is, such trademark registration pre-dates the registration of the disputed domain name by 28 years). It is undisputed that Respondent’s HALIFAX mark has been broadly used in the United Kingdom and on the Internet. It has been established that Respondent is, or was previously, domiciled at the United Kingdom, as per the community trademark application form and the WhoIs report for the “yoyo.email” domain name attached to the Response.
Complainant contends that Respondent must have known of Complainant and its mark at the time of registering the disputed domain name, which Respondent chose not to rebut.
Taking into consideration the above, it is abundantly clear that Respondent was aware of the existence of Complainant and Complainant’s mark at the time Respondent registered the disputed domain name. In fact, based on its alleged business model, it seems to this Panel that Respondent deliberately targeted Complainant’s HALIFAX mark, just as Respondent has registered other domain names which incorporate third parties’ marks.
It seems to this Panel that Respondent is trying to justify its misappropriation of third parties’ marks (some of them well-known internationally) based on its purported business model. This Panel agrees with the Panel in Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145: “Respondent fails to recognize that though his concept for a business may be legitimate, he cannot build his business on the back of another’s rights. Such registration and use of this domain name and thousands of others which include other brands indicate bad faith as intended under the Policy. The way he explains his business, he would not have a business [with respect to confirming emails to Sanofi] if he did not utilize the disputed domain name containing Complainant’s trademark. Whether or not his customers see the back-room features, he is exploiting Complainant’s mark for a commercial purpose”.
Thus, there are several factors in this case that, in the aggregate, lead to a finding of bad faith in the registration and use of the disputed domain name:8 (i) Complainant’s mark was registered long before the registration of the disputed domain name (and particularly in the United Kingdom, country where Respondent is also domiciled as set forth above); (ii) Complainant’s mark is well-known; (iii) Respondent is using Complainant’s mark in the disputed domain name without Complainant’s authorization; (iv) Respondent’s registration of over 100 domain names that, on their face, might also infringe third parties’ rights since they include well-known marks;9 (v) Respondent’s business model is based on exploiting third parties’ marks; and (vi) several prior UDRP decisions against Respondent.
In light of all the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name <halifax.email> be transferred to Complainant.
Date: November 3, 2014
1 According to the WhoIs record attached to the Complaint, Complainant’s affiliate, Lloyds Bank Plc, is the registrant of the domain name <halifax.co.uk> which was created in August 1996.
2 Complainant cites approximately 18 cases.
3 Respondent refers to a complaint for declaratory judgment filed with the United States District Court for the District of Arizona, of the United States, by Yoyo.Email LLC against Playinnovation Ltd, and a money claim online form filed on September 4, 2014, with the HM Courts & Tribunals Service, County Court Business Centre, of the United Kingdom, by Yoyo.Email Limited against The Royal Bank of Scotland plc.
4 Respondent presented a list of several patents where the inventor and/or applicant is named Giovanni Maria Laporta. Absent an explanation, this Panel notes that such name differs from the Respondent named merely as Giovanni Laporta.
5 This Panel notices that such claimants, although with the same name, seem to be different entities (LLC vs. Limited).
6 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
8 See Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598: “[a] second factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s mark. Respondent registered the [<]nikesportstravel.com[>] and [<]niketravel.com[>] Domain Names on May 14, 1999, long after Nike registered the NIKE mark. Respondent had substantial constructive notice of the NIKE mark […].”; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith.”; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713: “[t]he registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy.”.
9 Just for instance: <adidas.email>, <budweiser.email>, <cacharel.email>, <danone.email>, <esteelauder.email>, <ferrerorocher.email>, <gatorade.email>, <johnniewalker.email>, <lenovo.email>, <michelin.email>, <nescafe.email>, <oscardelarenta.email>, <pringles.email>, <qualcomm.email>, <raymondweil.email>, <splenda.email>, <tagheuer.email>, <whiskas.email>, etc.
10 P.D. On November 6, 2014, after this Decision had been prepared and forwarded to the Center, the Center received by email an untimely, unsolicited Supplemental Filing from Respondent, attaching a declaratory judgment issued by the court in the Playinnovation proceeding cited in Section 6.A of this Decision. As mentioned in Section 6.A, Complainant is not a party to the Playinnovation proceeding. In any event, it appears to this Panel that such “declaratory judgment” is actually in substance a settlement agreement between the parties to that proceeding and therefore does not, as Respondent would have it, constitute a judicial determination that Respondent’s business model is consistent with the UDRP.