WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saint-Gobain Isover v. Giovanni Laporta, Yoyo.Email
Case No. D2015-0041
1. The Parties
The Complainant is Saint-Gobain Isover of Courbevoie, France, represented by Tmark Conseils, France.
The Respondent is Giovanni Laporta, Yoyo.Email of Traverse City, Michigan, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <isover.email> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2015. On January 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 January 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2015. The Response was filed with the Center on February 8, 2015.
The Center appointed Sir Ian Barker as the sole panelist in this matter on February 23, 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, a French Corporation, has been designing, manufacturing and distributing worldwide building materials and in particular insulating materials under the trademark ISOVER for 30 years.
The Complainant owns numerous trademarks for ISOVER including registrations in France, the European Union, United States of America and China, amongst numerous other countries. All of these trademarks pre-date the Respondent’s registration of the disputed domain name.
The name Isover has constituted a part of the Complainant’s registered company name since 1978. It also has a domain name, <saint-gobain.com>, registered on December 11, 1996. It also has a United States subsidiary named Saint-Gobain Corporation.
The Complainant gave the Respondent no authority to reflect its trademark in a domain name. The website accessed by the disputed domain name is not fully developed.
The Complainant sent a “cease and desist” letter to the Respondent who replied that he was using the trademark as a “descriptive term” and then “as a business name” for an email certification service which was lawful and controlled.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s trademarks.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant gave him none. The Respondent is not commonly known by the disputed domain name nor is he making a noncommercial or fair use of it nor is he using the disputed domain name in relation to the provision of bona fide goods or services.
The Respondent is engaged in a pattern of registering domain names with the “.email” suffix, including many names which are identical to well-known trademarks. He has registered some 4,400 “.email” domain names. The Respondent has been involved in many cases under the Policy in similar circumstances where he has registered a domain name which is the same as a well-known trademark and many panels under the Policy have ordered the transfer of the domain name.
The Complainant lists some 16 decisions involving the Respondent in identical circumstances. The Respondent’s passive use of the domain name is shown in those cases and cannot and does not constitute a bona fide commercial use sufficient to legitimize any rights the Respondent might have.
The Respondent has registered and is using the disputed domain name in bad faith. The Complainant’s trademark ISOVER has been used extensively, long before the Respondent registered the disputed domain name. The Respondent’s reservation and use of the disputed domain name prevents the Complainant from registering its own trademark under the “.email” extension which is evidence of bad faith use and registration. The Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, and affiliation of the disputed domain name with the Complainant’s registered trademark.
The Response exceeds by far the usual limit for such documents. It runs to some 14 pages of close typing. It seems to reflect the same arguments that can be found recorded in the numerous UDRP decisions describing the modus operandi of the Respondent.
The Respondent criticizes all the previous UDRP decisions which have found against him, claiming that the panels have grossly and typically misinterpreted his situation and have acted purely on speculation about his business model and in breach of the Policy. Panels are criticized for relying on “unsupported evidence” and are typecast as “commercial trademark lawyers” who found it impossible to remain neutral.
The Respondent claims that previous panels misunderstood the Policy particularly the process of the “sunrise period” given exclusively to owners of matching trademarks, after which period, domain names went on sale to the public. The Policy does not prevent a registrant from purchasing a domain name after it went on general sale. He purchased the disputed domain name and others in similar situations by paying for them. He is not using any domain names to profit from advertising connected to the use of a trademark or service mark.
It is difficult from this diffuse document to discern exactly what it is that the Respondent is trying to do. He claims that, Yoyo.Email Ltd. (“Yoyo”), his company (for which a European trademark has been applied) is primarily a consumer-focused service working on behalf of the consumer who is the sender and not the receiver. Yoyo acts as a neutral party and works on behalf of the sender to prove that an email has been sent, much like a mail courier service. The idea is to launch the service as a closed software service which means that users can only send emails via the Respondent’s software. So, initially, the service works as a back-end service where all emails are directed and documented internally by name.
At this point domain names are not seen by the general public, however domain names may be used to forward emails to a company recipient. There can be no confusion as to source and origin as the recipient cannot be confused with the sender. There is no need for the recipients to sign up for the Respondent’s service. That service at some time in the future may be extended so that consumers can send emails via any email client software.
The intention is to expand consumer choice; the Respondent is not a cybersquatter. Nor does he traffic in domain names.
The Respondent contends that the Complainant has failed on all three limbs of paragraph 4(a) of the Policy. Essentially, he asserts that he purchased all his “.email” domain names lawfully, in good faith and that his company is a legitimate technology business. There has been no confusion as to source or origin: the public company owning the trademark cannot be confused because Yoyo is a back-end, non-public email server which routes emails for the storing of metadata. The Respondent uses words that happen to be trademarks but with a non-trademark value and he does not use the trademarks for personal and commercial use.
The Respondent relies primarily on paragraph 4(c)(i) of the Policy. He claims that he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services. Specifically, he is providing certification of email services which will be free for both sender and receiver of emails – a fact which he says has been repeatedly ignored by previous panelists. Further, by using the disputed domain name as a back-end, non-public email server in order to read emails, there is no public use of the disputed domain name, no diversion of website traffic from a trademark holder and no intent to profit by trafficking of the subject domain name. Thus, the Complainant’s trademark rights are not harmed in any way.
The Respondent disputes that he registered and is using the disputed domain name in bad faith. He has never intended to profit in any way relating to the use of the disputed domain name as a trademark. Nor has he used the disputed domain name to profit from any advertising connected with 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 further intent to use the disputed domain name in some way. The Respondent further relies on paragraph 4(c)(iii) of the Policy to assert that there is no intention to profit on the subject by deceiving Internet users or tarnishing the trademark.
The fact that the Respondent intends to be a business with profit derived from the use of many generic names in no way supports the proposition that he intends to profit from the disputed domain name or trademark by deceiving Internet users. The Respondent is not using the disputed domain name to create a false impression that it is the Complainant’s genuine Internet name. The Respondent did not register the disputed domain name primarily for the purpose of selling, leasing or otherwise transferring the disputed domain name registration to the Complainant.
The Respondent produced a Declaratory Judgment issued by the United States Federal Court in the State of Arizona on November 5, 2014. This judgment was given by consent and sought a declaration from the Court that the business model of the Respondent as described in the court documents did not violate the Lanham Act in the United States. The Court record states that the defendant in that case had discussed the allegations therein and effected settlement of claims therein with the plaintiff (a trademark owner). It records “after such discussions the parties, with no admission of liability by any party, agree to the entry of this declaratory judgment pursuant to the terms therein”. The document states inter alia:
(a) the plaintiff had good faith and intent when it registered and used the domain name <playinnovation.email>;
(b) the plaintiff does not have a bad faith intent to profit from the use of or trafficking in the domain name;
(c) the general purpose in 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;
(d) the intended use of the domain name in that case was not a trademark use.
The complaint to which the judge referred to in the declaratory judgment noted the modus operandi as follows:
“When a person sends an email to a company, […], it normally goes through a series of email servers which are often controlled by third parties such as employers or email providers (Gmail, Yahoo, etc).
Certain data, such as time stamps and routing of email […] is stored on email servers but often at times not within the control of either the sender of emails or the recipient of the email. Even when certain email Meta Data is displayed to an email sender or recipient, that data is not, and often cannot be certified, similar to when paper-based certified mail is sent through a currier service […].
In order to provide, certificates of delivery and potentially receipt of an email as well the Email Meta Data, [the Respondent (plaintiff in the litigation)] needed to route, capture and store Email Meta Data on its own email services.
The [Respondent’s] intention at the time of the domain name registration and today is to use the subject domain name <playinnovation.email> as an independent back-end email server controlled by [him] and invisible to consumers to route, capture and store Email Meta Data so that the [Respondent] could certify when the email was sent, and potentially, received.
[He] has not displayed, and does not intend to display, the subject domain name in commerce as part of the advertising of YOYO’s services as defined in 15USC 1127.
[This] model, currently in development, would use domain name[s, such as the Complainant’s], only as a data-storage server, which identifies the server and the meta data, for all email sent to the [Complainant].”
The Respondent claimed in the litigation in Arizona that he had incurred costs of approximately USD 82,000 in registration fees and USD170,000 overall in development of its email services.
The Respondent claims that he had engaged staff and hired both a well-known UDRP panel and a leading trademark lawyer to vouch for the legitimacy of his proposed business. Although there is no statement from the panel, the trademark attorney made an affidavit to the effect that the Respondent’s business model does not violate either trademark law or the Policy. The Respondent has never intended to deceive or attract Internet users for commercial gain by intentionally creating confusion concerning the source et cetera of the website.
It is impossible to claim trademark infringement and those panels that have so found are disagreeing with the Respondent’s business model and “steam-rolling” the Respondent. UDRP panels which have concluded bad faith purely because the Respondent had registered a domain name identical to a well-known trademark are acting incorrectly in deciding the question of bad faith subjectively.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Court Proceedings
The Complainant was not a party to the proceedings in the State of Arizona or the United States Federal Court. Nor is this Panel obliged to follow the decision of that Court. The precedent value of such a decision is not great. This was a settlement of a dispute between the Respondent as plaintiff and a trademark owner as defendant. What motivated them to settle is unknown. The judgment is not the same as if there had been a defended hearing where the evidence and submissions of both sides would have been considered by a judge who would then give a considered and reasoned judgment.
In this Panel’s experience, consent judgments are not normally given the same scrutiny by a Judge as a judgment issued after a full hearing and argument of the facts and law. Judges typically look at the terms of a consent judgment to see that there is nothing illegal or objectionable about it and take the view that, if this is what the parties have made as their bargain, there is no reason why the Court should interfere with that bargain. Consequently, this Panel cannot give much weight to the consent judgment.
Nor can it give much weight to the opinion of the lawyer with experience in domain name disputes who offers an opinion. This Panel has to come to his own decision which he has done. The question of agreeing or not agreeing with his business model is not the question. Whether his proposed modus operandi comes within the criteria of the Policy is what has to be decided. It should also be noted that the Complainant cannot be held to have abandoned its rights under the Policy because it took no action during the “sunrise” period.
B. Identical or Confusingly Similar
The Complaint clearly has rights over the ISOVER trademark which has been registered in many countries. The generic Top-Level Domain (gTLD) “.email” can be generally disregarded when assessing whether a domain name is identical or confusingly similar.
The reasons for the Respondent’s use of the trademark are irrelevant under this criterion, and it is clear that paragraph 4(a)(i) of the Policy has been satisfied since the disputed domain name is identical to the Complainant’s trademark.
The Panel adds that there is no reason to find that the Complainant has forfeited any rights under the Policy, merely because it did not take action during the sunrise period.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name and so the onus shifts to the Respondent to show whether he comes within one or other of the criteria in paragraph 4(c) of the Policy.
Does the Respondent’s modus operandi, i.e., his Community trademark application, his acquisition of hundreds of domain names with the “.email” gTLD which domains are identical to registered trademarks plus his expenditure, constitute demonstrable preparations for a bona fide offering of goods or services? The Panel thinks not. The Respondent has yet to implement his email delivery certification service.
It is difficult to see that there is a bona fide offering when the services are based on using on other people’s established trademarks without license or permission from them. The question whether his business model needs to use the Complainant’s well-known trademark must be addressed when assessing whether the Respondent has rights or legitimate interests in the disputed domain name.
From the Respondent’s lengthy Response, which was replete with argumentation, self-justification and harsh criticism of panels, it is difficult to discern exactly why it is necessary to use the Complainant’s trademark in its entirety particularly when the Respondent is currently passively holding the disputed domain name which currently resolves to a blank and inactive page (although the Respondent claims the website is being developed). This omission seems to have concerned other panels, particularly in Compagnie Générale des Etablissements Michelin v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-2234 for example. This Panel respectfully adopts the view of the panel in that case.
“While long on legal argument and submission, Respondent’s Response is light on evidence. This Panel carefully read the Response, in order to glean exactly what Respondent’s business model is and why it depended on holding or use of Complainant’s well-known MICHELIN Trademark for its operation. At no stage did Respondent address this directly relevant issue, particularly in so far as the Panel is required to assess whether Respondent has rights or legitimate interests in the Domain Name.
Complainant addresses this issue in its Complaint. It notes that previous UDRP panels (set out in Annex 16 of the Complaint) have observed that the ‘main weakness in the Respondent’s argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose’.”
The Respondent has not demonstrated use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence as to why the technical or hidden use of the trademark can be bona fide when the Complainant never authorized such use.
Paragraph 4(c)(iii) of the Policy, on which the Respondent also relied cannot assist him. The proposed service cannot be seen as a legitimate, noncommercial unfair use of the disputed domain name.
The large number of decisions on this point mentioned in the Compagnie Générale des Etablissements Michelin v. Giovanni Laporta, Yoyo.Email, supra so demonstrate.
Paragraph 4(a)(ii) of the Policy has been met.
D. Registered and Used in Bad Faith
Given that the Respondent lacks any owner’s permission or dispensation under the Policy to use such a well-known trademark in which there is no demonstrable preparation to use in connection with a bona fide offering of goods and services, it is not so difficult to infer bad faith despite the imprecations against so drawing that inference found in the Respondent’s Response. There is still no explanation as to why the use of this particular trademark is necessary for the operation of his business.
Circumstances demonstrating registration and use in bad faith are not limited to those set forth in paragraph 4(b) in the Policy. The Complainant’s mark was registered in many countries long before the disputed domain name was registered. The mark has been used extensively worldwide. The Respondent must have been aware of the Complainant’s mark at the time he registered the disputed domain name because it seems that this Complainant, along with many other well-known trademark owners, has been targeted.
This Panel agrees with the statements made in Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145 which was adopted by the Bank of Scotland plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539:
“The 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 use of this Domain Name and thousands of others which include other brands indicate bad faith is intended under the Policy.
The way he explains this business he would not have a business (and with respect to forwarding emails to Sanofi) if he did not utilize the disputed domain name containing the Complainant’s trademark. Whether or not his customers see the backroom features, he is exploiting the Complainant’s mark for a commercial purpose.”
The Respondent’s behaviour fulfils paragraph 4(b)(ii) of the Policy which states that registration of a domain name “in order to prevent the owner of a trademark … reflecting the mark in a corresponding domain name, provided that [the Respondent] has engaged in a pattern of such conduct” is evidence of registration and use of the domain name in bad faith.
Registering a domain name which is identical to a prior trademark may constitute bad faith which can be used as another consideration in deciding the Respondent’s conduct under this criterion. The Respondent appears to overlook the fact that his registration of the disputed domain name prevents the Complainant from registering it, as it might clearly wish to do in the legitimate conduct of its business.
The mere registration of the disputed domain name presupposes in the mind of the average Internet user some connection by the Respondent with the Complainant or some permission from the Complainant to reflect its trademark in a domain name.
Accordingly, paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <isover.email> be transferred to the Complainant.
Sir Ian Barker
Date: March 9, 2015