WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guardian News & Media Limited v. Giovanni Laporta, Yoyo.email
Case No. D2014-1656
1. The Parties
1.1 The Complainant is Guardian News & Media Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Olswang LLP, United Kingdom.
1.2 The Respondent is “Giovanni Laporta” and “Yoyo.email”. The identity and location of the Respondent is addressed in greater detail later on in this decision. The Respondent is represented by Traverse Legal, PLC, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <theguardian.email> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on September 24, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2014. The Response was filed with the Center on October 23, 2014. Thereafter, the Respondent submitted an unsolicited supplemental filing on November 6, 2014. The supplemental filling relates to an order made in the United States Arizona District Court dated November 5, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 12, 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
3.5 The Complainant is responsible for the publication both in print and online of “The Guardian” newspaper. It was founded in 1891 as the “Manchester Guardian” and has been known as “The Guardian” since 1959.
3.6 Although “The Guardian” is a well known United Kingdom newspaper, it is one that has a reputation that extends outside of the United Kingdom. It conducts activities online through a website operating from the domain name <theguardian.com>, which has over 90 million unique browsers monthly, of which over 29 million are located in the United Kingdom and over 26 million in the United States.
3.7 The Complainant is the owner of a large number of trade marks around the world that comprise the words “The Guardian”. They include the following:
(i) Community Trade Mark number 2761047 for THE GUARDIAN in 15 different classes and dated July 3, 2002; and
(ii) United States registered trade mark number 4115099 in nine different classes and dated May 25, 1999.
3.8 The WhoIs details for the Domain Name identify “Giovanni Laporta” of “Yoyo.email” as the registrant of the Domain Name. Although the WhoIs details for the Domain Name provide an address in the United States, Giovanni Laporta appears to be the name of an individual located in the United Kingdom.
3.9 The Response filed in this proceeding asserts that the “Respondent” is Yoyo.Email Limited. Although the Response gives a contact address for that company in the United States, this appears to be a company registered in England and Wales on March 31, 2014 with company registration number 08967696.
3.10 Yoyo.Email Limited is not expressly mentioned in the WhoIs details for the Domain Name. However, it appears to be undisputed that Mr. Laporta and Yoyo.Email Limited can be treated as one person for the purposes of this proceeding. Accordingly, the Panel proceeds on this basis and the Panel hereafter simply refers to the Respondent in this respect.
3.11 The Domain Name was registered on March 27, 2014 (i.e. just a few days before the incorporation of Yoyo.Email Limited). It is one of a large number of domain names registered by the Respondent that incorporate the trade mark names of others followed by the “.email” Top-Level Domain (“TLD”).
3.12 Many of these Domain Names have been the subject of proceedings either under the Policy or the Uniform Rapid Suspension System (“URS”). These include:
Deutsche Lufthansa AG v. yoyo.email et al., NAF Claim No. 1552833 (June 18, 2014)
Stuart Weitzman IP, LLC v. yoyo.email et al., NAF Claim No. 1554808 (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)
Playinnovation Ltd. v. yoyo.email et al., NAF Claim No. 1568549 (August 6, 2014)
Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (July 16, 2014)
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)
Lockheed Martin Corporation v. yoyo.email et al.,NAF Claim No. 1563665 (August 6, 2014)
Beiersdorf AG v. yoyo.email et al., NAF Claim No. 1571112 (August 7, 2014 – Suspension)
McDermott Will & Emery LLP v. yoyo.email et al., NAF Claim No. 1564796 (August 7, 2014)
Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724 (August 10, 2014)
Anheuser-Busch, LLC v. yoyo.email et al., NAF Claim No. 1571472 (August 10, 2014)
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)
Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.Email Ltd, WIPO Case No. D2014-0805 (August 18, 2014)
Foot Locker Retail, Inc. v. yoyo.email et al., NAF Claim No. 1565344 (August 19, 2014)
Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855 (August 23, 2014)
Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email, NAF Claim No. 1568547 (August 25, 2014)
The Hartford Fire Insurance Company v. yoyo.email et al., NAF Claim No. 1574384 (August 25, 2014)
L’Oréal SA v. Yoyo.email, Giovanni Laporta, WIPO Case No. D2014-1172 (September 4, 2014)
eHarmony, Inc. v. yoyo.email et al.,NAF Claim No. 1575592 (September 4, 2014 - Returned)
Groupama SA v. Giovanni Laporta, yoyo.email, WIPO Case No. D2014-1287
(September 15, 2014)
O2 Holdings Limited v. Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399
(September 24, 2014)
AA Brand Management Limited v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014‑1444 (October 13, 2014 – Transfer)
Maplin Electronics Limited v. Yoyo.Email, WIPO Case No. D2014-1346 (October 14, 2014)
Stuart Weitzman IP, LLC v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-1537 (November 6, 2014)
Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650 (November 7, 2014)
3.13 The Respondent appears to have adopted a broadly similar explanation of its activities in each of those cases; namely, that they will be used in connection with a service whereby it will be possible to certify delivery and/or receipt of emails.
3.14 In virtually all of these proceedings the Respondent has ultimately lost. As far as the Panel can discern there are two URS appeal cases where the Respondent has been successful, but in one of these cases that same domain name was ordered to be transferred to the complainant in a subsequent UDRP proceeding. The Respondent does not appear to have been successful in any proceeding under the UDRP.
3.15 On August 29, 2014 the Respondent1 filed a complaint in the United States District Court for the District of Arizona against an English company, Playinnovation Limited, in which it sought to overturn a previous suspension of the domain name <playinnovation.email> under the URS. That proceeding also appeared to seek declarative relief that extended to a very large number of domain names incorporating the trade marks of others that were not a party to that proceeding.
3.16 On September 4, 2014 the Respondent filed a Claim Form in the English Courts against The Royal Bank of Scotland plc. In that proceeding the Defendant seeks to overturn the suspension of the domain names <rbs.email>, <rbsbankemail>, <natwest.email> and <coutts.email> under the URS (notwithstanding the fact that all of these domain names are included in the list of domain names identified in the Arizonan proceeding).
3.17 On November 5, 2014, declaratory judgment was entered in the Arizonan proceeding that was broadly favourable to the Respondent. However, this judgment was by agreement of the parties and “with no admission of liability by any party”. The judgment also concluded as follows:
“This Judgment resolves the last pending claim between these parties. As such, the Clerk is directed to administratively close this case.”
5. Parties’ Contentions
5.1 The Complainant describes its history, activities and registered trade mark rights. It also claims to have accrued unregistered trade mark rights in the term “The Guardian”. It maintains that the Domain Name is either identical or highly similar to its registered trade marks, its unregistered rights and its domain names. So far as that assessment is concerned, it contends that the “.email” TLD lacks any real distinctive character.
5.2 So far as the rights or legitimate interests are concerned, it contends that the Complainant did not consent to the Respondent’s registration of the Domain Name, which was registered on a date that post dated the Complainant’s registered trade marks. It also contends that it is “inconceivable” that the Respondent was not aware of the Complainant when registering the Domain Name. It also maintains that the Respondent has not been using the Domain Name in connection with any bona fide offering of goods or services.
5.3 So far as bad faith registration and use is concerned, the Complainant claims that any attempt to actively use the Domain Name would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site among users of the Internet. It is said that such users would inevitably be led to believe that such a web site would be owned by, controlled by, established by or in some way associated with the Complainant.
5.4 Further, the Complainant contends that the Domain Name has been used in connection with a web page promoting 1&1 Domains, and that this shows that the Respondent is intentionally attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s trade mark as to the source of the web site and seeking commercial gain from the advertising revenue generated by the resulting web traffic. (However, the webpages exhibited that purport to substantiate that claim appear to be webpages operating as at September 11, 2014 from a different domain name (i.e. <guardian.email>)).
5.5 The Complainant then claims that even if the Respondent has not received any advertising revenue by reason of that use, then “it can only be assumed that the Domain Name was registered for the purposes of transferring the Domain Name to the Complainant or to a competitor, for valuable consideration.”
5.6 The Complainant also maintains that the registration of the Domain Name prevents the Complainant from reflecting its trade marks in a corresponding domain name and thereby serves to disrupt the Complainant’s business.
5.7 Lastly, the Complainant contends that Domain Name was registered by the Respondent in order to prevent it from reflecting its trade mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct. In this respect it contends that the Respondent is the owner of in the region of 4,500 domain names and that it has been the subject of a number of complaints under the Policy.
5.8 The Respondent submits that the Complainant has not proven each of the three elements required in a UDRP proceeding by a preponderance of the evidence. Although the Respondent accepts that previous UDRP panel decisions have found the Respondent to be a cybersquatter, the Respondent claims that there was in those cases a lack evidence to support this finding and that in those cases the Respondent’s submissions have been “grossly misinterpreted.”
5.9 The Respondent further contends that the basis for these decisions seems to be that registration of a domain name including a third-party trade mark is “de facto cybersquatting” and contends that is not a proper reading of the UDRP.
5.10 The Respondent also maintains that its business model is completely lawful under the UDRP and trade mark law. In this respect it claims that the Domain Name “is included in the declaratory relief requested by the United States District Court”. In this respect it provides an exhibit in the Arizonian proceeding brought against Playinnovation Limited identified above in the Factual Background section of this decision. The Domain Name does indeed appear to be included within the hundreds, if not thousands, of domain names that were initially identified in that litigation.
5.11 The Respondent further complains that the evidence relied upon by the Complainant in this proceeding to support the Complainant’s claim that the Domain Name was being used to promote the activities of 1&1 Domain Names, actually relates to a different domain name.
5.12 So far as the alleged lawful business model is concerned, the Respondent maintains that there are “various aspects” to this model, but asserts that the one relevant to trade marks is the use of the Domain Name as a back-end, non-public email server in order to route emails for the storing of metadata. This, according to the Respondent, will allow the Respondent to certify delivery and potentially receipt of the emails. The Respondent represents that no third party, consumer, or anyone else outside Yoyo.Email employees will ever see the Domain Name.
5.13 The material exhibited to the Response provides this further description of the intended use as follows:
“Step 1. Yoyo users looks for company name. (The domain name for example <firstname.lastname@example.org> is never visible).
Step 2. Yoyo then sends the recorded email to the company by routing the email through the web via the hidden domain name.
Step 3. Yoyo then securely stores the email on its own server and can now independently verify the email has been sent.
Step 4. Yoyo knows when the email has been received because the email routes through its own email server. Embedded links and metadata within the email provides Yoyo with the authentic information and can now independently verify the email has been received.
The Yoyo service as shown can not be possible if the email address for example <email@example.com> was not routing via the Yoyo email server. Yoyo is not using the domain name in any public facing way, so no confusion can ever take place, nor does Yoyo use the <firstname.lastname@example.org> in any trademark way. Yoyo uses the domain name purely as a mechanical link.”
5.14 The Respondent cites United States trade mark case law that is said to support its contention that “[w]hen 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.”
5.15 The Respondent does not appear to contest that the Complainant has rights in its various THE GUARDIAN trade marks, but maintains that the Domain Name is not identical or confusingly similar to those marks because the Domain Name is not being “used in commerce.”
5.16 The Respondent asserts that demonstrable preparations have been made to use the Domain Name in connection with a bona fide offering of goods and services – namely, the use of the Domain Name in providing certification of email services. The Respondent represents this service will be free for both the sender and receiver of emails. The Respondent submits that the “www.yoyo.email” website is under development and should be launched soon.
5.17 The Respondent further contends that by limiting the use of the Domain Name to route and capture email metadata, a legitimate fair use of the Domain Name is being made. The Respondent states that the Complainant’s trade mark rights are not harmed, and that the Complainant is not required to pay for the certification of email provided by the Respondent. The Respondent concedes an intention to profit from providing email verification services, and from the use of generic domain names the Respondent has registered, but submits that this in no way supports the “leap” that the Respondent intends to profit from the Domain Name or the Complainant’s trade mark.
5.18 The Respondent submits that the Domain Name was registered and is being used in good faith. The Respondent insists that the Domain Name is not being used to profit from creating a false impression that the Domain Name is the Complainant’s genuine Internet name, and that the Domain Name was not registered for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant. The Respondent further submits that the Domain Name was not registered for the purpose of disrupting the Complainant’s business. The Respondent asserts that as the Domain Name is being used in a way hidden from public view, there is no likelihood of confusion with the Complainant’s mark.
5.19 According to the Respondent, a tremendous amount of time and money have been invested in developing a lawful business on the “.email” generic Top-Level Domain (“gTLD”), and the Respondent should be allowed to launch the business model so that the Respondent’s registration and use of the Domain Name becomes clear. The Respondent submits that speculation and supposition about the Respondent’s motives is insufficient to support a finding that the UDRP has been violated, and requests that the Complaint be denied.
6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will deal with each of those requirements in turn. Before doing so it is necessary to very briefly comment on the admissibility of the Respondent’s supplemental submission. The Panel notes that what appears to have been a virtually identical submission was not admitted by the Panel in Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, supra. Nevertheless, the Panel considers it convenient to admit it in this case. It contains material that came into existence after the Response was filed and throws useful light on the scope and outcome of the Respondent’s proceeding in Arizona.
A. Identical or Confusingly Similar
6.3 The Panel accepts, and the Respondent does not appear to dispute, that the Complainant has trade mark rights in the words “The Guardian”. The Domain Name can only be sensibly read as those words combined with the generic TLD “.email”. That is sufficient for the purposes of the Policy to establish that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
6.4 The Respondent’s contention that this is not the case because (as is claimed) the Domain Name “is not being used in commerce” is fundamentally misconceived. As is recorded in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion… Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
6.5 Accordingly, the fact that Domain Name is not being used, may not be used and whether or not any intended use is “use in commerce”, is irrelevant. There have been cases where the way in which the domain name has been used has informed the panel when considering whether the test of confusing similarity is satisfied (see, for example, RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089), but ultimately the test is simply one of comparison between mark and domain name.
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 In a recent decision of Stuart Weitzman IP, LLC v. Giovanni Laporta, Yoyo.Email Ltd, supra the panel concluded that the Respondent’s activities did not provide a right or legitimate interest under the Policy for the following reasons:
“The Respondent claims rights or legitimate interests arising from use or demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services – namely, the email services referred to above. In addition, the Respondent claims to be making a legitimate fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.
The Panel does not consider that the Respondent’s registration and planned use of the disputed domain name is bona fide within the meaning of paragraph 4(c)(i) of the Policy. The Respondent has no right to appropriate the Complainant’s mark for use with the Respondent’s email service. The Respondent’s intentional conduct prevents the Complainant from registering its mark as a domain name in the <.email> gTLD space, and potentially would force the Complainant to be an unwilling participant in the Respondent’s commercial enterprise. See Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855 (<cravendale.email>). Further, the Respondent has merely asserted but never clearly articulated why it is required to use the disputed domain name as a behind the scenes technical link to provide its services. This assertion without more plainly is insufficient to demonstrate rights or legitimate interests under the Policy. Id. Even if the Respondent was able to show that the disputed domain name was a necessary technical link for its services, the Panel doubts any legitimate interest would be evident.
The Respondent’s assertion to be making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy also is unsustainable. The Respondent’s business model, as that term implies and the Respondent concedes, is intended to be a profitable, commercial enterprise. The Respondent’s claim that the users of its services will not be charged does not establish otherwise. Moreover, it is not a legitimate or fair use for the Respondent to register domain names comprised of the Complainant’s and thousands of other brand owners’ trademarks, deliberately undertaken without the trademark owners’ consent, to facilitate the creation of a directory of email addresses to support the Respondent’s commercial venture. See, e.g., Arla Foods amba v. G. La Porta / yoyo.email, supra.
In sum, and having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel further finds that the Respondent is not making a legitimate noncommercial or other fair use of the dispute domain name. It is undisputed that the Respondent has not been commonly known by the disputed domain name, and that the Respondent has not been authorized to use the Complainant’s mark in any manner.”
6.8 The Panel agrees with and gratefully adopts the reasoning of the panel in that case. However, the Panel would also add a few words in this respect.
6.9 At the heart of the Respondent’s contentions are claims that its activities are lawful under trade mark law and it relies upon both United States case law, and the proceeding that have been brought in the United States District Court in Arizona and the courts of England and Wales in this respect. These contentions are problematic in a number of respects.
6.10 So far as the litigation in Arizona is concerned, the Panel notes that the Domain Name is mentioned in the documents that the Respondent filed at court and in respect of which declaratory relief was sought. However, the Panel has difficulty in seeing why this is relevant.
6.11 First, the Complainant was not named as a party in that litigation, and there is no suggestion that it was asked to participate in or would be bound by the outcome of that litigation. The fact that a declaration was sought in that proceeding in relation to the Domain Name (among many others) when this is a domain name in which the defendant in that litigation had no interest, is curious to say the least. The Panel (comprising an English lawyer), professes no knowledge of United States law or procedure, but it is aware that in many jurisdictions a court will be unable, or at the very least will be extremely reluctant, to grant declaratory relief that may impact upon the rights of a person who is not a party to that litigation. The reasons for this and the obvious unfairness that might result if this were not so, are obvious. The Panel also notes that the panel in the recent decision of Maplin Electronics Limited v. Yoyo.Email, supra appears for similar reasons to have been reluctant to take any notice of that very same litigation.
6.12 Second, it is notable that the judgment finally entered in the Arizonan litigation was entered by consent, contains no reasoning as to the basis for the declarations granted and is drafted in such a way that it only extends to the domain name <playinnovation.email>. The case has also otherwise been declared closed. As such, it provides the Panel with little or no guidance as to the claimed lawfulness of the Respondent’s activities either generally or so far as the Domain Name is concerned.
6.13 Third, the Panel is puzzled as to what law of the United States has to do with the current case before the Panel, which appears to involve two English entities. Indeed, the Panel similarly does not understand what United States law had to do with the case before the Arizonan courts, which also happened to involve two English entities. The fact that the United States District Court in Arizona had jurisdiction to hear that case is unsurprising (presumably the defendant had consented to that jurisdiction in the preceding URS proceedings). But, of course, jurisdiction is not the same as applicable law.
6.14 So far as the English litigation is concerned, it is similarly unhelpful. In that case the Complainant is not a party, the Domain Name is not even mentioned and there is as yet no judgment. Indeed, from the papers that the Panel has seen, it is far from clear what underlying cause of action is relied upon by the Respondent in that case. None appears to be asserted and presumably the Respondent will have the difficulty of having to deal with the decision of the English High Court in Toth v. Emirates  EWHC 517.
6.15 There is also in the opinion of the Panel an even greater problem with the Respondent’s contention that it has a legitimate interest in the Domain Name because the proposed use of the Domain Name is said to be lawful. That is that this contention assumes that national law is of relevance. As this Panel explained in some detail in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, when it comes to questions of legitimate interests and bad faith, then in the opinion of the Panel reliance upon arguments based on national law are fundamentally flawed. The Panel is instead of the view that the Policy sets out a sui generis set of rules and principles as to what constitutes legitimate interests and bad faith (albeit ones that draw upon general principles of law to be found across different legal systems).
6.16 The Panel accepts that this is a view that is not universally shared among panelists. Nevertheless, it is one that is sufficiently prevalent that paragraph 4.15 of the WIPO Overview 2.0 answers the question “To what extent is national law relevant to a panel assessment of rights and legitimate interests and/or bad faith?” as follows:
“Paragraph 15 (a) of the UDRP provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the UDRP Rules, and any rules and principles of law that it deems applicable. Rooted in generally-recognized principles of trademark law, and designed to operate in the context of the world wide web, the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist). For example, WIPO panels have recognized that bad faith under the UDRP may be assessed by reference to the consistent body of prior UDRP decisions. Where panels have chosen to apply national law in UDRP decisions, they have done so on grounds including the location or nationality of the parties, or where a specific concept of national law is judged germane to an issue in dispute, or bearing in mind, in certain circumstances, the mutual jurisdiction election in the UDRP proceeding that would likely govern the location (and therefore the law) of any subsequent court case.”
6.17 In the circumstances, the Panel concludes that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.18 In Stuart Weitzman IP, LLC v. Giovanni Laporta, Yoyo.Email Ltd, supra the panel concluded that the Respondent’s registration and use of the domain name in issue was in bad faith for the following reasons:
“Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent, for purposes of its business model, has registered the disputed domain name and thousands of other domain names comprised of third-party marks in order to prevent the Complainant and other brand owners from reflecting their trademarks in corresponding domain names in the “.email” gTLD space. The record reflects that the Respondent has deliberately engaged in a pattern of conduct demonstrating bad faith registration and use under paragraph 4(b)(ii) of the Policy.
As noted earlier, the Panel has concluded that the Respondent has no right to appropriate the Complainant’s mark for use with the Respondent’s email service, and that the Respondent’s intentional conduct in so doing prevents the Complainant from registering its mark as a domain name in the “.email” gTLD space. In the Panel’s view the Respondent’s registration and (passive) use of the disputed domain name more likely than not is intended to induce the Complainant to be an unwilling participant in the Respondent’s commercial enterprise. The Panel considers this an abusive registration and use of the disputed domain name in circumstances evincing the Respondent’s intent to profit from and exploit the Complainant’s trademark – a bad faith practice the Policy was created to curb. Even if not intended to force the Complainant to participate in the Respondent’s enterprise, overall the Respondent’s conduct violates the spirit of the Policy.”
6.19 Once again the Panel agrees with and gratefully adopts the reasoning of the panel in that case, which applies equally to the Domain Name. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <theguardian.email>, be transferred to the Complainant.
Matthew S. Harris
Date: November 21, 2014
1 In fact the Plaintiff in this case is identified not as “Yoyo.Email Ltd” or “Giovanni Laporta”, but as “Yoyo.Email LLC”. However, the address given for the place of business of “Yoyo.Email LLC” is the same as the registered office of Yoyo.Email Ltd, and in the Response the Respondent contends that this is a proceeding begun by the Respondent. In the circumstances, the Panel is prepared to assume without deciding for the purposes of this proceeding that this is merely an error in the filling and that Yoyo.Email Ltd was the Plaintiff in this case.