WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. Giovanni Laporta, Yoyo.Email
Case No. D2014-2156
1. The Parties
The Complainant is Compagnie de Saint-Gobain of Courbevoie, France, represented by Tmark Conseils, France.
The Respondent is Giovanni Laporta, Yoyo.Email of Traverse City, Michigan, United States of America, represented by Traverse Legal, PLC, United States of America.
2. The Domain Names and Registrar
The disputed domain names <saint-gobain.email> and <saintgobain.email> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2014. On December 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015. The Response was filed with the Center on December 26, 2014.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 20, 2015. 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 was established in 1665, and is a world leader on the construction market. It designs, manufactures and distributes building materials. The name “Saint-Gobain” is part of the Complainant’s registered company name since 1954.
The Complainant is the holder of the following trademark registrations (the “SAINT-GOBAIN trademark”):
- The word trademark SAINT-GOBAIN with registration number 3005536, registered in France on July 28, 2000, for goods and services in International classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42 and 45;
- The word trademark SAINT-GOBAIN with registration number 001552843, registered as a Community trademark on December 18, 2001 for goods and services in International classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40 and 42;
- The word trademark SAINT-GOBAIN with registration number 740183, registered as an International trademark on July 26, 2000 for goods and services in International classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40 and 42;
- The combined trademark SAINT-GOBAIN with registration number 1648605, registered in the United States of America on June 25, 1991 for goods and services in International classes 11, 17, 19, 20, 21, 23, 24;
- The combined trademark SAINT-GOBAIN with registration number 2423511, registered in the United States of America on January 23, 2001 for goods and services in International classes 3 and 7; and
- The combined trademark SAINT-GOBAIN with registration number 3546891, registered in the United States of America on December 16, 2008 for goods and services in International classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 17, 19, 22, 23, 24, 27, 37, 38, 40 and 42.
The Complainant has registered the domain name <saint-gobain.com> since December 29, 1995 and uses it for its official company website.
The disputed domain names were registered on March 30, 2014.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the SAINT-GOBAIN trademark, in which the Complainant has rights. The SAINT-GOBAIN trademark is reproduced in the disputed domain names, and the “.email” generic Top-Level Domain (gTLD) is inherent to the operation of the domain name system.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated to the Complainant and has never been authorized to use or register in any way the name “SAINT-GOBAIN”, including as domain names. The Respondent is not commonly known by the disputed domain names, he is not making a noncommercial or a fair use of the disputed domain names, and there is no evidence that the Respondent is using the disputed domain names in relation to the provision of bona fide goods or services. The disputed domain names resolve to a blank page.
Further to a cease and desist letter sent by the Complainant prior to the filing of this complaint, the Respondent claimed that he was using the SAINT-GOBAIN trademark “as a descriptive term” and then “as a business name” to “action, file, and document the recording of sending and receiving of emails, in a lawful and controlled way”. Contrary to what was argued by the Respondent, the Complainant’s well-known SAINT-GOBAIN trademark is not descriptive. It is neither generic, nor even a dictionary word. It has no meaning of its own, neither in English nor in the French language. The referral to the trademark SAINT-GOBAIN successively as “descriptive” and then as a “business name” is contradictory, and demonstrates that the Respondent is fully aware that SAINT-GOBAIN is property of the Complainant. The Respondent has engaged in a pattern of registering domain names in the “.email” gTLD including third party’s well-known trademarks. It has registered almost 4,400 “.email” domain names, 187 of which include well known third party trademarks such as ADIDAS, AIR FRANCE, BUDWEISER, TAGHEUER, etc. Such unauthorized and unsolicited use of domain names is not bona fide commercial use.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant has extensively used the well known SAINT-GOBAIN trademark long before the date of registration of the disputed domain names. The “new email recorded delivery services” allegedly offered by the Respondent under the SAINT-GOBAIN trademark have neither been authorized nor solicited by the Complainant. The reservation and use of the disputed domain names by the Respondent prevents the Complainant from registering the SAINT-GOBAIN trademark in the “.email” gTLD. The Respondent has engaged in a pattern of this conduct in respect of many well known trademarks, which is evidence of use and registration in bad faith under paragraph 4(b)(ii) of the Policy.
The Complainant also submits that the registration of the disputed domain names diverts users from the Complainant’s own website at “www.saint-gobain.com” and cannot reasonably be considered as necessary for the Respondent to conduct his business. In view of this, their registration may well be an attempt to force the Complainant to use the Respondent’s services, which evidences their registration and use in bad faith under paragraph 4(b)(iv) of the Policy. In identical circumstances, the Respondent’s business model has been the subject of numerous UDRP decisions by independent panels, which have all ordered the transfer of the domain name at stake in those cases. In M.FH. Fejleszto Korlatolt Felelossegil v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1743, the Panel found nothing to “justify or even explain why the Respondent actually has to register and own an important number of domain names under the gTLD ‘.email’, containing third party trademarks (many of which are well-known, if not famous) to run his business model”.
B. Respondent
The Respondent submits that there is no legitimate basis, based on actual evidence, for transferring the disputed domain names to the Complainant. The Respondent has registered the disputed domain names for a legitimate business purpose, with the good faith intent to comply with all laws, including trademark laws, and has not used them so far. The Respondent alleges to have purchased all its “.email” domain names lawfully in good faith. The purchase of domain names cannot by itself evidence bad faith intent or bad faith use. Otherwise, there would be no good faith use or fair use in which a registrant can demonstrate its rights in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy. During the “Sunrise Period” trademark holders had an advance opportunity to register domain names corresponding to their marks before these names became generally available to the public. After the Sunrise Period all domain names go on sale to the public. The Policy does not prevent a registrant from purchasing a domain name after domain names go on general sale.
The Respondent alleges that it has not used the disputed domain names to profit from advertising connected to the use of a trademark web service, and does not intend to use them in such a way.
On November 5, 2014, the United States District Court of Arizona entered a judgment on Case No. CV-14-01922-PHX-JJT (this judgment will be referred to as the “Arizona Judgment”). The Court stated that “[p]laintiff’s legitimate purpose seeking to certify the sending and receipt of emails, as described in the Complaint, does not evidence a bad-faith intent to profit from the ‘registration, use or trafficking’ of a domain name.” The Court specifically ordered that the “[p]laintiff has a good faith intent to register, use, and traffic” the specific “.email” domain name at issue in that case, the “[plaintiff’s intended use of [the specific ‘.email’ domain name] as set forth in the Complaint is not trademark use,” and “[p]laintiff’s intended use of [the specific ‘.email’ domain name] as described in the Complaint is not a violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C., § 1125(d) et seq., the Lanham Act, 15 U.S.C. § 1051 et seq., the ICANN [Uniform Rapid Suspension or ‘URS’] and UDRP policy or other law.”
The Respondent submits that it is using the disputed domain names in the same manner as he was with the domain name referred to in the Arizona Judgment – as a non-public, back-end email server used to link multiple email servers, to track, record, and verify email communication. The disputed domain names are used as a backend, non-public email server in order to route emails for the storing of metadata which will allow the Respondent to certify their delivery and potentially receipt.
The Respondent asks that several URS cases also be considered as additional case precedent to the Arizona Judgment.
The Respondent asserts that it is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. The Respondent alleges to have made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of services under the Policy. The Respondent is providing certification of email services, which will be free for both the sender and receiver of emails. The use of the disputed domain names as a backend, non-public email server in order to route emails for the storing of metadata is not public use of the disputed domain names. There is no diversion of website traffic from the trademark holder and no intent to profit related to the use or trafficking of the disputed domain names.
The Respondent submits that it has set up offices and engaged staff including hiring an experienced UDRP panelist and leading trademark attorneys. Both of them have opined that the Respondent’s business model and use do not violate trademark law or the Policy. By providing the free use of its domain names and limiting their use to the routing and capturing of email metadata, the Respondent is making a legitimate fair use of its “.email” domain name portfolio, with no intent to profit from the Complainant or to deceive or attract Internet users for commercial gain by “intentionally creating” confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites or locations or of a product or service on the Respondent’s web sites or
locations.
The Respondent points out that on August 1, 2014 it has filed an application for a Community trademark for YOYO.EMAIL in International Classes 35, 38, 42 and 45. The Respondent’s CEO is a respected inventor with 22 granted patents and a businessman who has a proven track record in the developing innovative ideas. The Respondent’s certified email service is just another of one of those solutions.
The Respondent maintains that a service with a primary objective not to deceive, and that can only work by demonstrating independence from the Complainant so that it can be advertised as an “independent certified email service” is not “bad faith”. The Respondent has never intended to profit in any way relating to the use of the disputed domain names as a trademark. The Respondent has not used them to profit from advertising connected to the use of a trademark-related web service. The Complainant is under the false impression that the Respondent cannot operate any commercial service, directly or indirectly, with its domain names.
The Respondent intends to be a for profit business in general from the use of the many generic domains it has registered, but this does not support a finding that it intends to profit from the disputed domain names or trademark by deceiving Internet users. The Respondent is not using the disputed domain names to defraud the public by creating a false impression that the disputed domain names are the Complainant’s genuine Internet names.
Finally, the Respondent submits that it has not registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant. The Respondent has never approached the Complainant. The Respondent did not register the disputed domain names for the purpose of disrupting the business of the Complainant, but instead to provide a new way in email verification.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the Respondent has registered and is using the disputed domain names in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its trademark rights in the SAINT-GOBAIN trademark. This trademark has been used by the Complainant in many countries for a very long period of time and has become highly reputed. As contended by the Complainant, the trademark has no meaning in the English or French languages and is distinctive.
The Panel notes that a common practice has emerged under the Policy before the advent of the new gTLDs, namely to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.email” part of the disputed domain names. Therefore, the relevant part of the disputed domain name <saint-gobain.email> that has to be analyzed is its “saint-gobain” section, which is identical to the word element of the SAINT-GOBAIN trademark. As to the disputed domain name <saintgobain.email>, its relevant part is the “saintgobain” section. The only difference between it and the SAINT-GOBAIN trademark is that the hyphen between the elements “saint” and “gobain” is omitted. This difference has negligible effect on the overall impression made by this disputed domain name, and is not sufficient to distinguish it from the SAINT-GOBAIN trademark.
In view of the above, the Panel finds that the disputed domain name <saint-gobain.email> is identical to the SAINT-GOBAIN trademark in which the Complainant has rights, and the disputed domain name <saintgobain.email> is confusingly similar to the same trademark. Therefore, the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain names.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not affiliated to the Complainant and has never been authorized to use or register in any way the name “SAINT-GOBAIN”, including as a domain name, that the Respondent is not commonly known by the disputed domain names, is not making a noncommercial or a fair use of them and is not using them in relation to the provision of a bona fide offering of goods or services, but has engaged in a pattern of registering domain names in the “.email” gTLD including third party’s well-known trademarks. The Complainant also submits that the registration of the disputed domain names diverts users from the Complainant’s own website at <saint-gobain.com> and cannot reasonably be considered as necessary for the Respondent to conduct his business. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Respondent has alleged that it is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. The Respondent alleges to have made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of services under the Policy. The Respondent is providing certification of email services, which will be free for both the sender and receiver of emails. The Respondent’s intent is to use of the disputed domain names as a backend, non-public email server in order to route emails for the storing of metadata, which will allow the Respondent to certify their delivery and potentially receipt. The Respondent alleges that it is making a legitimate fair use of its “.email” domain name portfolio, with no intent to profit from the Complainant or to deceive or attract Internet users for commercial gain by “intentionally creating” confusion with the SAINT-GOBAIN trademark. The Respondent heavily relies on the Arizona Judgment for support of its position in the dispute. The Respondent also refers to its application for a Community trademark for YOYO.EMAIL as evidence for its good faith intentions.
Having reviewed the evidence in the case file, the Panel has reached the following conclusions.
Before discussing the substantive issues, the Panel would like to mention the following. The Respondent has used strong words to criticize other panelists and their decisions in previous cases where it was involved. This forum is not an appellate court and the Panel’s mission is not to evaluate the prior decisions involving the Respondent. As required by the Policy and the Rules, the Panel has made its own review of all relevant circumstances and evidence, and has reached its own conclusions on the substance of the dispute.
The first matter that the Panel will discuss is the Arizona Judgment. As evident from it, it is the result of an agreement between the parties to the dispute.1 The terms of this agreement are different from what the Respondent had originally included in its complaint to the Arizona Court, so they must have been the result of a compromise that each party has made in view of the compromise made by the other party. The terms of each settlement make sense only as a whole, and neither party may rely on a part of it, disregarding its other terms. A settlement may only have been achieved with the consent of both parties, and it cannot be imposed on third parties such as the Complainant in this proceeding. Nevertheless, the Respondent has agreed to the terms of the Arizona Judgment and heavily relies on it in this proceeding, so one would expect the Respondent to be prepared to comply with the terms of the Arizona Judgment in respect of the disputed domain names as well. The Respondent has made no such statement in its Response. Its position seems to be that it should be allowed to continue to use the disputed domain names without the limitations imposed by Sections K, L and M of the Arizona Judgment.2 In the absence of any commitment of the Respondent to comply with these limitations, the Panel does not see how the Respondent may rely on the Arizona Judgment in the present dispute.
The Respondent has provided no explanation of how exactly the disputed domain names will be used and why they are necessary for the described service. The Respondent has not started the operation of its system yet, and the only explanation it has offered about how its system would be working is its beta website. However, this website contains only a commercial presentation which provides no details how the alleged system works and what place the disputed domain names have in it. The lack of proper explanation by the Respondent on this issue is strange given that it had been a central issue in the previous proceedings against the Respondent discussed by the parties.
In this situation, the Panel does not understand why the Respondent needs to have a large portfolio of “.email” domain names in order to carry out the services that it has described in the Response. The Internet is based on Internet Protocol (IP) addresses, and domain names (being easy to spell and memorise) were created for human use and are used by humans as substitutes for IP addresses. Every server linked to the Internet has an IP address and possibly (but not necessarily) a corresponding domain name. In view of this, it seems to the Panel that the Respondent may have separate email servers with separate IP addresses to automatically process emails directed to different recipients (email servers are designed to operate without any manual intervention during normal operation), but it does not need to register more than one domain name to operate its system and to establish an Internet interface for interaction with its human customers. The Respondent has explicitly stated that the disputed domain names will remain invisible to Internet users, which excludes the possibility these users to be offered to register email addresses with the disputed domain names. In view of the above and in the lack of an explanation why the disputed domain names are necessary, the Panel considers it more likely than not that the Respondent’s email delivery and certification system does not need them, and that the disputed domain names were registered with a different purpose which remains undisclosed by the Respondent.
An additional circumstance that supports the conclusion that the domain names were registered with a different purpose is that the Respondent has registered two variants of domain names that reflect the SAINT-GOBAIN trademark. A review of the domain names registered by the Respondent3 shows that this is not an isolated case. There are many other examples of duplicate domain names, registered by the Respondent, such as <creditsuisse.email> and <credit-suisse.email>, <7eleven.email> and <7-eleven.email>, <haagendazs.email> and <haagen-dazs.email>, <harleydavidson.email> and <harley-davidson.email>, and the sequences of <bbc1.email>, <bbcone.email>, <bbc2.email>, <bbctwo.email>, <bbc3.email> and <bbcthree.email>, and then <hpconnect.email>, <hpconnected.email>, <hpeprint.email>, <hp-eprint.email>, <hpeprinter.email> and <hp-eprinter.email>. Why would the Respondent need all these duplicate domain names? If their purpose was to be used for email servers, one domain name would suffice, and two or more would only create confusion as to which of them is the correct one. The existence of duplicate domain names is also not compatible with the Respondent’s statement in section 32 of its complaint to the Arizona Court, where the Respondent has stated that “[a]s each brand would be its own server, identification and verification of data, as necessary, by recipient would be easy and straightforward.”4
In view of the above, the Panel finds that the allegations of the Respondent are not credible, and do not justify the registration of the disputed domain names. The Panel is of the opinion that the reason for their registration was different and unfavorable to the Respondent’s case in this dispute, and the Respondent does not wish to disclose it. A more likely reason for the registration of the disputed domain names could be that the Respondent has targeted well known brands5 and has registered different versions of domain names incorporating such brands in view of their attractiveness to consumers and their potential to lead to financial gain.
If, for the sake of the argument, we accept the Respondent’s allegation that it needs to have separate domain names corresponding to the names of the recipients of the emails6 , then it will have to provide to potential customers a list of the companies to which they may send certified emails through the Respondent’s system, and inform them that the list is exhaustive. In the Panel’s view, to gain the confidence of potential customers, the Respondent cannot leave them to perceive its system as a “black box”, but would need to explain to them at least partially how it works and why they should rely on it. Thus, the targeted brands and the brand owners would likely not remain hidden from the customers, which is contrary to the Respondent’s allegation. The eventual customers would be exposed to the brands that the Respondent has registered as domain names. This could affect their behavior to the benefit of the Respondent, and this benefit will come from the popularity of the third party brands incorporated in the Respondent’s domain names. In addition, it may reasonably be expected that the disputed domain names, being identical or highly similar to the highly reputed SAINT-GOBAIN trademark will receive a better ranking in search engine results, especially as these disputed domain names contain no elements to distinguish them from the trademark or to show the lack of relationship between the Respondent and the Complainant, and this again could bring additional online traffic to the Respondent.
In the Panel’s view, in the lack of consent by the brand owners, the above may unfairly benefit the Respondent to their detriment, and is not compatible with a finding that the Respondent has rights or legitimate interests in the disputed domain names.
Taking into account all the above, the Panel has reached the conclusion that the Respondent has not rebutted the Complainant’s prima facie case, and finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The Complainant has provided sufficient evidence to establish the reputation of its SAINT-GOBAIN trademark, which is not denied by the Respondent.
It is also undisputed that the Respondent has registered the disputed domain names with the Complainant and its SAINT-GOBAIN trademark in mind. In Section 32 of its complaint to the Arizona Court, the Respondent states: “Plaintiff registered a large number of brands as ‘[brand].email’ domain names when the <.email> Registry launched in or about March, 2014 …” This statement is telling – the Respondent has targeted brands when choosing what domain names to register.
It is true that during the Sunrise Period trademark owners had an opportunity to register their marks in the “.email” space before domain names in that space became generally available on a first come, first served basis. This does not mean, however, that upon the expiration of the Sunrise Period non-trademark owners necessarily became entitled to register any available <trademark.email> domain names without regard for the UDRP.
The Respondent has not provided a credible explanation for its choice of domain names and for the need to register the disputed domain names and the hundreds of other domain names that also contain well-known or reputed trademarks. No explanation is given why the Respondent needs duplicate domain names that reflect the same trademark in different ways, as it the case here. In Section 27 of its complaint to the Arizona Court the Respondent explains that its domain names will be used only as data storage servers for all emails sent to the respective company. If the purpose for the registration of the disputed domain names was to reflect the name of the recipient of the email messages, then in the case of the Complainant the Respondent should have registered a domain name that reflects the company name of the Complainant, such as <compagniedesaintgobain.email> or <compagnie-de-saint-gobain.email>, and not its trademark, and would not have registered duplicate domain names targeting the same company.
As discussed in the section on rights or legitimate interests, in the Panel’s view in such circumstances it is more likely than not that the Respondent has registered the disputed domain names not for the purposes of its purported email delivery certification system, but for other undisclosed and possibly illegitimate purposes, including an attempt to extract benefit from the popularity of the third party trademarks incorporated in these domain names. The registration of the disputed domain names has prevented the Complainant from reflecting its name and trademark in the “.email” gTLD space, and the Respondent appears to have engaged in a pattern of such conduct, involving many other entities (see e.g., 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; Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730; NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0770. This reinforces a conclusion that the Respondent has registered the disputed domain names more likely than not for illegitimate purposes. Therefore, the Panel finds that on the balance of probabilities the Respondent has registered and used the disputed domain names in bad faith under paragraph 4(b)(ii) of the Policy.
It appears that the Respondent has not actively used the disputed domain names since their registration. In certain circumstances, the passive holding of a domain name may be found to amount to bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). These circumstances include where the subject mark has a strong reputation and is widely known and where the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name. Here, the disputed domain names reflect a trademark that is very well reputed. The Respondent has not demonstrated a credible justification for the use for the disputed domain names, and has not explained why there is a need to wholly incorporate the SAINT-GOBAIN trademark into the disputed domain names for its back-end email verification service. In these circumstances, and in the lack of any credible explanation by the Respondent, the Panel cannot contemplate a good faith use of the disputed domain names that would not effectively extract undue benefit from the Complainant’s goodwill.
Therefore, the Panel finds that the disputed domain names were registered and used in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <saint-gobain.email> and <saintgobain.email> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: February 12, 2015
1 See Section 7 of the Arizona Judgment.
2 These sections require the Respondent, among other things, to include a disclaimer on its “www.yoyo.email” website about its lack of affiliation with the brand owner involved in the Arizona Judgment, and include a similar disclaimer in the metadata for all emails transmitted through the domain name at issue in the Arizona Judgment, as well as to limit the use of the respective domain name only by individuals or entities whose corporate or trade name is or incorporates the brand of the brand owner involved in the Arizona Judgment.
3 See Annex 9 to the Complaint, which has not been disputed by the Respondent.
4 On page 6 of its Response the Respondent states that “[i]n this case, the Respondent is using the subject domain name in the same manner as he was with the domain in [the Arizona court proceedings]”.
5 See in this respect Section 32 of the Respondent’s Complaint to the Arizona Court, where the Respondent states: “Plaintiff registered a large number of brands as ‘[brand].email’ domain names when the <.email> Registry launched in or about March 2014 …”
6 See the explanation in Sections 26 and 32 of the Respondent’s complaint to the Arizona Court.