WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Power Leisure Bookmakers Limited v. Giovanni Laporta, Yoyo.email
Case No. D2015-0273
1. The Parties
Complainant is Power Leisure Bookmakers Limited of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Giovanni Laporta, Yoyo.email of Traverse City, Michigan, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <paddypower.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 February 20, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. The Response was filed with the Center on March 16, 2015.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 24, 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
Complainant is an Irish bookmaker established in 1988 and currently consists of a chain of over 319 licensed betting shops in the United Kingdom with a net revenue of EUR 145 million in the year 2013 – 2014. Complainant offers in-store and online betting services, which includes sports, politics, current events etc.
Complainant holds European Community Trademark Registration (word) No. 1601624, registered on November 13, 2001 for the mark PADDY POWER in the classes 16, 38 and 41, and the United States Trademark Registration (word) No. 85639479, registered on August 26, 2014 for the mark PADDY POWER in the classes 16, 38, 41 and 45.
Respondent registered the disputed domain name on March 27, 2014.
5. Parties’ Contentions
Complainant has mainly stated the following:
Identical or confusingly similar
The disputed domain name is identical or confusingly similar to the trademark PADDY POWER in which Complainant has rights.
The disputed domain name incorporates in its entirety the PADDY POWER mark with only a few small changes. Upon a straightforward visual comparison the trademark content is wholly visible and recognizable within the disputed domain name. The extension “.email” does nothing to distinguish the disputed domain name from Complainant’s trademark.
No Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is a company incorporated under the laws of the United Kingdom and resolves around a business model which purports to intend to use domain names in conjunction with a back-end, non-public email server to route emails for storing metadata in order to certify delivery and potentially receipt of those messages. Respondent’s business model has been subject to a number of previously decisions under the UDRP and Uniform Rapid Suspension system (“URS”). The issue with Respondent’s business model lies with the fact that Respondent has tried to compile a directory service but has no justification for actually owning any related domains containing third party trademarks. A business that requires the unauthorized use of thousands of unrelated domain names cannot be considered legitimate as the Policy would be rendered meaningless as large-scale cybersquatting would be justified.
Respondent is also able to operate an email address such as “[firstname].[lastname]@paddypower.email” which risk for such an email to be used for fraudulent purposes. In addition, Respondent is registered on the WhoIs information that risks misleading users into believing that Complainant has somehow endorsed Respondent’s email service and will confuse customers into believing that any email address containing the disputed domain name is associated with Complainant.
Complainant has not authorized or consented to Respondent’s registration and use of the disputed domain name, nor has Complainant entered into any agreement whereby Respondent can use the disputed domain for use in connection with such a service.
Registered and Used in Bad Faith
Respondent has both registered and used the disputed domain name in bad faith.
Respondent has registered over 3,400 “.email” domains, many of which contain brand names. The existence of over 25 successful UDRP cases shows that the disputed domain name was registered to prevent the owner of the trademark from reflecting the mark in a corresponding domain and Respondent has engaged in a pattern of such conduct. The disputed domain name was registered for the purpose to get more users for Respondent’s service and thereby earn more money. The disputed domain name was deliberately registered to oblige Complainant to its system and as such seeks to extract a benefit from Complainant by the preemptive registration.
Respondent had knowledge of Complainant’s trademark since the trademark is distinctive and enjoys a very extensive reputation around the world.
The disputed domain name is being passively used and the purpose of the disputed domain name, its business model is running for pure commercial gain. All this is indicative of Respondent’s bad faith.
Respondent has mainly stated the following:
Respondent has purchased all its “.email” domains lawfully and in good faith. It is a legitimate technology business responding to ICANN’s express goal for the new gTLD program and expanding consumer choice on the Internet. Respondent has invested tremendous time and money to developing a lawful business. The purchase by a non-trademark holder of a domain name that includes a matching trademark is not prohibited under the UDRP. Nor does a registrant require permission from any particular trademark holder before deciding to purchase a domain name featuring a matching trademark. The UDRP is not stating that every registration of a domain name which knowingly includes a matching trademark is a violation of the UDRP. The domain names are simply used to store email metadata, which means it doesn’t matter what short hand domain is chosen to represent the company and this type of operation is not bad faith. Respondent uses a service working on behalf of the sender and not the receiver, therefore Respondent is the neutral party that sits between them and works on behalf of the sender as proof of the email that just has been sent, much like regular mail courier services.
The initial idea for Respondent’s service is to launch the service as a closed software service which means that users can only send emails via Respondent’s software, so initially the service works as a back-end service where all emails are directed and documented internally by name. There is no need for recipients to “sign up” for Respondent’s service. Further, the service at some point in the future may be extended so that consumers can send emails via email client software; the intention is to expand consumer choice.
In November, 2014 the US District Court of Arizona issued a declaratory judgment, which among other things 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.”
Rights or Legitimate interests
Respondent has used the disputed domain name in connection with a bona fide offering of services under the Policy. 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 name as a back-end, non-public email server in order to route emails for storing of Metadata, means there is no public use of the disputed domain name, no diversion of website traffic from the trademark holder and no intent to profit related to the use or trafficking of the disputed domain name. Respondent has a legitimate business model under the Policy. There is no intention to deceive or attract Internet users for commercial gain by intentionally creating confusion with Complainant’s trademarks as to source, sponsorship, affiliation, or endorsement of the registrant website or location or of a product or service on the registrant’s website or location.
Respondent has on August 1, 2014 applied for a Community Trade Mark for YOYO.EMAIL in classes 35, 38, 42 and 45. The application demonstrates Respondent’s intention to operate a legitimate business and has legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
Respondent has never intended to profit in any way relating to the use of the disputed domain name, and has not used the disputed domain to date to profit from advertising connected to the use of a trademark‑related web service. Respondent is using a lawful business model and its intended use has not been proven illegal under the UDRP rules.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Respondent has devoted argumentation to the effect of the declaratory judgment issued by the United States District Court of Arizona. The Panel finds the declaratory judgment to be irrelevant for this proceeding, since the judgment results from a motion consensually filed by both sides to the underlying action, and Complainant was not party to the action.
Further, the onus lies with Complainant to present its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name.
The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly Similar
Complainant is the holder of two registered trademarks involving PADDY POWER. The disputed domain name consists of Complainant’s trademark PADDY POWER. The disputed domain name is composed of lower case letters without any space between the words, along with the addition of the generic Top-Level Domain (“gTLD”) “.email”. According to well established consensus among UDRP panels, the gTLD is generally not distinguishing. The minor differences of lower case letters and the lack of inclusion of a space do not prevent a finding of confusing similarity.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the trademark PADDY POWER in which Complainant has rights. The first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
It is established UDRP precedent that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name, then the burden of proof shifts to Respondent to prove otherwise.
The Panel notes that there is no evidence or records showing that Respondent has been commonly known by the disputed domain name or that Respondent has acquired any related trademark or service mark rights. Complainant has asserted that no permission in any way has been granted to Respondent to register or use the disputed domain name. These assertions have not been rebutted by Respondent. On the other hand, Respondent has stated that the disputed domain name is registered and used in a legitimate way and to be a bona fide offering type of business.
Furthermore and with reference to Respondent’s own contentions, Respondent’s purpose for the acquisition of all “email” domain names is to offer an “independent certified email service” that registers emails from the sender to the receiver. For this purpose, Respondent has among other things, apparently spent a considerable amount of money on annual charges, purchasing domain names, employment of staff, and filing of an application for a CTM trademark for YOYO.EMAIL. On the basis of Respondent’s own nuanced assertions, the Panel finds Respondent’s business to be considered as commercial business. The use of the trademarks of third parties in a domain name may also cause confusion as to the commercial origin of the services.
The Panel also notes that Respondent has given no explanations of why third-party trademarks have been included in the purchased domain names under this model. Even though Respondent assures that no payments will be required for his service, the Panel agrees with other panelists and finds a commercial business model, such as Respondent’s, that requires the unauthorized use of unrelated domain names containing third party trademarks cannot be considered legitimate under the Policy. (See, inter alia , 02 Holdings Limited v. Yoyo.email/Giovanni Laporta, WIPO Case No. D2014-1399). Further, the use of Complainant’s trademark to attract customers to the presented service must be considered as a misleading use of Complainant’s trademark, but also for reasons of consumer protection since consumers likely will be confused into believing that any email address containing the disputed domain name is affiliated with, endorsed by or related with Complainant. (See Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855). The Panel finds these patterns to be considered as interruptions with Complainant’s business and they cannot therefore be considered as a fair use of the disputed domain name.
Considering the circumstances submitted by Complainant and Respondent in the case at hand together with the above findings, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not proved otherwise. Therefore, the second element of the paragraph 4(a)(ii) of the Policy is thus fulfilled.
C. Registered and Used in Bad Faith
Firstly, the Panel notes that the disputed domain name was registered several years after the registration date of Complainant’s Community Trade Mark. Respondent is also incorporated under the laws of United Kingdom and the disputed domain name incorporates Complainant’s trademark in its entirety with only insignificant differences. Based on Respondent’s own contentions, it is highly unlikely that Respondent registered the disputed domain name randomly with no knowledge of the trademark. On the contrary, it is implicit from the Response that the Respondent had the trademark in mind when he registered the disputed domain name.
Secondly, it is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark, such as PADDY POWER, with minor differences that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. (See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440).
Thirdly, the Panel finds that Respondent has registered thousands of “.email” domain names, including Complainant’s trademark and third party trademarks, and thus that Respondent has engaged in a pattern of conduct which prevents the owners of those trademarks from using their own trademarks in a corresponding “.email” domain name. The Panel finds, on the basis of all relevant circumstances, Respondent’s pattern of conduct to be considered as cybersquatting (See, inter alia, the Royal Bank of Scotland Group plc., National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, supra, and 02 Holdings Limited v. Yoyo.email/Giovanni Laporta, WIPO Case No. D2014-1399).
Forthly, the disputed domain name is presently “passively” used. It is established in prior UDRP decisions that the mere passive holding of a disputed domain name may be evidence not only of bad faith registration, but also indicative of bad faith use. In consideration of these circumstances, the disputed domain name is used in a “passive” way and for the purpose of using it (even if “back end” use) in Respondent’s business model. Since the business model cannot be legitimate under the Policy, the “passive” use is sufficient evidence of bad faith use.
In consideration of the above circumstances together with those submitted by Complainant and Respondent in the case, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith. Therefore, the third element of the paragraph 4(a)(iii) of the Policy is fulfilled.
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 <paddypower.email> be transferred to Complainant.
Date: April 7, 2015