WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Football Association Ltd. v. Domain Controller, Yoyo Email / Yoyo.Email Limited, Giovanni Laporta

Case No. D2015-0851

1. The Parties

The Complainant is The Football Association Ltd. of London, United Kingdom of Great Britain and Northern Ireland, internally represented.

The Respondent is Domain Controller, Yoyo Email / Yoyo.Email Limited, Giovanni Laporta of Michigan, United States of America, internally represented.

2. The Domain Name and Registrar

The disputed domain name <thefa.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 May 18, 2015. On May 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2015, 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 May 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was June 17, 2015. On June 9, 2015, the Center received an email communication from the Respondent. The Response was filed with the Center on June 14, 2015.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 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 is the official governing body of football in England and the oldest football association in the world.

The Complainant has been a member of the Union of European Football Associations since 1954, and the Fédération Internationale de Football Association since 1905.

THE FA is a trademark used by the Complainant in connection with goods and services related with football.

The Complainant owns the following trademarks, among others:

Registration No.

Trademark

Country

Class

Application Date

UK00002307411

The FA

United Kingdom

09, 14, 16, 25, 26, 28, 36, 38, 41, 43.

August 6, 2002

UK00002307413

The FA

United Kingdom

03, 05, 06, 08, 09, 11, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 36, 38, 41.

August 6, 2002

010499291

TheFA (stylized)

European Community

25, 38, 41.

December 16, 2011

UK00002307412

TheFA CUP (stylized)

United Kingdom

09, 14, 16, 20, 21, 24, 25, 26, 28, 29, 30, 32, 36, 41.

August 6, 2002

4535604

THE FA CUP

US

32

September 21, 2012

4535605

THE FA CUP

US

16, 25, 32, 38, 41

September 21, 2012

 

The Complainant owns the following domain name registration:

Domain Name

Registration Date

<thefa.com>

July 20, 1998

 

The disputed domain name <thefa.email> was registered on March 31, 2014.

5. Parties' Contentions

A. Complainant

The Complainant argued the following:

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That it is the legitimate holder of THE FA trademark registrations.

That the addition of the ".email" new generic Top-Level Domain ("gTLD") does not have any impact on the overall impression of the dominant portions of the disputed domain name.

That the disputed domain name is confusingly similar, in sight, sound and meaning to the Complainant's trademarks.

That given the reputation of the Complainant and its trademarks, there is a considerable risk that the public will perceive the disputed domain name as either being owned by the Complainant or commercially related to it.

The Respondent has no rights or legitimate interests in respect of the domain name.

That the Complainant is the rightful owner of the THE FA marks and has the exclusive right to use them in commerce or in connection with the goods and/or services specified in the corresponding certificates.

That the Respondent has not been sponsored by the Complainant or is affiliated with it in any way.

That the Complainant has never given permission to the Respondent for the use of its trademarks, has never commissioned the Respondent to manage the Complainant's email communications and has never licensed the Respondent to use the Complainant's marks for the receipt and transmission of email communications.

That the Respondent has not been commonly known by the disputed domain name and that the Complainant has not authorized the Respondent to register any domain name incorporating the THE FA trademark.

That the Respondent has previously stated (in other cases decided under the Policy) that his registration of domain names has been done in order to provide a service to Internet users for an email and/or an email reply monitoring system, a system that is not up and running and that could not exist without the use of third party trademarks.

That the Respondent mistakenly believes that he is entitled to misappropriate the trademarks of countless companies.

That in the previous cases decided under the Policy, the Respondent has not made it clear why it is necessary to register domain names incorporating well-known trademarks in order to provide his service.

That the rights or interests of the Respondent cannot be established by the nature of the intended or active website to which the specific domain name resolves.

That based on previous UDRP cases given the notoriety of the Complainant's trademarks any use which the Respondent would make of any domain name incorporating the THE FA marks would likely violate the exclusive trademark rights which the Complainant has held in its marks.

That the Respondent's registration of third party trademarks as domain names with the ".email" suffix has prevented numerous companies from using domain names containing their trademarks, and that the Respondent has sought to force the Complainant and other companies into a position where they are unable to refuse participation in the Respondent's [unsolicited] service.

That the Respondent has neglected to explain why he decided to move forward with this particular business model trying to convince UDRP panels to decide in his favor based merely on his vague indication of an intent to build a new business model for the delivery of emails and/or an email reply monitoring system.

The domain name was registered and is being used in bad faith.

That the Respondent knew of the existence of the Complainant's trademarks when he registered the disputed domain name.

That the disputed domain name is currently inactive, a fact constituting passive holding in bad faith.

That the fame and recognition of the Complainant's trademarks and the impossibility of conceiving a good faith use of the disputed domain name by the Respondent are indicative of bad faith.

That the registration by the Respondent of a large portfolio of domain names incorporating well-known trademarks and the fact that the Respondent has been involved in over fifty domain name disputes concerning these domain names demonstrate the Respondent's bad faith because he has been involved in a pattern of conduct in order to prevent the owners of different trademarks from reflecting them in a domain name.

That where the Respondent could have chosen a number of alternative domain names to accomplish his purported business purpose, he instead chose to register a famous trademark as a domain name, thus attempting to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the THE FA trademarks.

That the Respondent's allegations regarding the Yoyo.Email, LLC v. Playinnovation, Ltd. declaratory judgment by the United States District Court of Arizona are irrelevant, because said case is in no way related to the disputed domain name.

B. Respondent

The Respondent argued the following:

That the disputed domain name was registered for a legitimate business purpose with a good faith. That there has been no use of the disputed domain name to date and that the intended use is not a trademark or public use.

That there has been no trafficking of the disputed domain name.

That the Respondent purchased all of his ".email" domain names lawfully and in good faith trying to develop a legitimate technology business expanding consumer choices on the Internet.

That he has invested tremendous time and money in order to develop a lawful business which is under development and should be launched soon. The Respondent indicates that the "Yoyo Beta Site" (in which he plans to provide his services connected with the disputed domain name) is not yet fully functional and is subject to change.

That the only evidence that has been known as a fact is that the Respondent has registered his ".email" domain name assets (which fact cannot constitute bad faith in itself).

That the Policy does not establish that every registration of a domain name that incorporates a matching trademark is in violation of said Policy.

That ICANN and trademark law envision ways in which domain names that include trademarks can be used legitimately.

That the Complainant as holder of the trademark incorporated into the disputed domain name had the exclusive opportunity to secure the disputed domain name during ICANN Sunrise Period and did not do so.

That the Respondent has not used his domain names to profit from advertising connected to the use of a web service.

That all of the domain names of the Respondent (including the disputed domain name) are simply being used to store email metadata, a type of operation that does not constitute bad faith.

That the "Yoyo" service (connected with the apparent use of the disputed domain name) is a consumer focused service working on behalf of email senders, in order to demonstrate that the corresponding email was sent. The Respondent argues that the initial idea is to launch this service as a closed software service in which 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 (the Respondent indicates that at this point domain names are not seen by the general public, but that the domain names may be used to forward emails to the respective company).

That the referred "Yoyo" service uses the disputed domain name as a non-public, back-end mail server used to link multiple email servers to track, record, and verify email communications.

That all of the domain names that the Respondent acquired were purchased (not stolen) when they were released to the public, which is why there is no bad faith in the Respondent's conduct.

That the Complainant has provided no evidence for the basis of this Complaint beyond raw speculation or regurgitated undocumented hearsay from past panel decisions.

That the Complainant can only argue that it is the holder of a trademark that matches the disputed domain name, a fact that does not meet the evidentiary obligation required by the Policy.

That the Respondent is only using words that happen to be trademarks for their non-trademark value.

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

With respect to the confusing similarity between the disputed domain name and the Complainant's trademarks, the Respondent did not respond to the Complainant's allegations.

The Respondent has no rights or legitimate interests in respect of the domain name.

That he is making demonstrable preparations for using the disputed domain name in connection with a bona fide offering of services under the Policy.

That the Respondent is providing certification of email services, which will be free for both the sender and the receiver of the emails.

That there is no public use of the disputed domain name, no intent to profit related to the use or trafficking of the disputed domain name and no diversion of website traffic.

That the site found at "http://yoyo.email/beta" does not constitute evidence showing that the Complainant's trademark rights are being harmed in any way.

That the Respondent has set up offices and retained staff and counsel who have advised him that the Respondent's business model does not violate trademark law, or the Policy.

That the Respondent has applied for a Community Trademark for YOYO.EMAIL, demonstrating that he has every intention to operate a legitimate business that has a legitimate interest in the disputed domain name.

That the CEO of the Respondent's Company is a respected inventor and businessman who has been granted 22 patents, finding innovative solutions to day to day problems.

That the Respondent's model, which is linked to the free operational service of a domain name, which costs the Respondent an annual charge, can never be described as a bad faith intent to profit from, or an unfair use of a given domain name.

The domain name was registered and is being used in bad faith.

That the Respondent has never intended to profit in any way with respect to the use of the disputed domain name as a trademark, and that there is no evidence, beyond raw speculation to support any future intent to use the disputed domain name in such a way.

That paragraph 4(c)(iii) of the Policy clearly says that registrants can operate a commercial service as long as there is no intention to profit from the disputed domain name by deceiving Internet users.

That the fact that the Respondent intends to operate a business which will profit from the use of the many generic domains registered by him, in no way supports the accusation that the Respondent is trying to profit from the disputed domain name by deceiving Internet users.

That the Respondent did not register the disputed domain name for the purpose of disrupting the business of the Complainant, but in order to offer a new system of email verification.

That the Respondent's chosen way to provide his services has not been proven unlawful under the UDRP Rules, a fact that is supported by independent evidence.

That the declaratory judgment issued in the Yoyo.Email, LLC v. Playinnovation, Ltd. case, supra, offered as evidence by the Respondent shows that that the Respondent's model has not infringed the Policy, which is why Respondent is not acting in bad faith.

That the Respondent's lawful rights and legitimate interests over his registered domain names have been ignored in previous decisions issued under the Policy.

That UDRP panels are only looking for bad faith findings in cases filed under the Policy, and that if no such bad faith findings are discovered, then bad faith arguments are likely to be made up during the process.

That the Respondent has not been granted a fair hearing.

That under the Policy, the Complainant has the burden of proof in demonstrating the Respondent's alleged bad faith registration of the disputed domain name.

That the Policy refers to the resolution of conflicts arising of the abusive registration and use of a domain name, not issues regarding whether a panel likes the use of a certain domain name made by a registrant.

That because the Complainant has not proven each of the three elements required by the Policy, and due to the fact that the Complainant relies entirely upon prior adverse cases decided under the Policy, the disputed domain name should not be transferred to the Complainant.

The Respondent concludes that any improper decision that may lead to the wrongful transfer of the Respondent's business assets will be challenged in a national court system.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

As a preliminary matter, the Panel finds, in line with previous UDRP panels, that the Yoyo.email, LLC v. Playinnovation, Ltd. declaratory judgment is irrelevant in this proceeding (see Compagnie Gervais Danone, Société Anonyme des Eaux Minérales d'Evian (SAEME), Société des Eaux de Volvic, Nutricia International BV v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2015-0505).

A. Identical or Confusingly Similar

The Complainant claims that, as a result of its renown and reputation, the THE FA trademarks are widely recognized and well-known. These assertions have not been rebutted by the Respondent.

Moreover, the Complainant has proven to be the holder of trademark registrations for THE FA and THE FA CUP trademarks in the European Community and the United Kingdom (where the Complainant is based and the Respondent's company Yoyo.email LLC appear to be located), and the US (where the Respondent is domiciled).

The disputed domain name <thefa.email> is confusingly similar to the Complainant's THE FA trademarks because it entirely incorporates said marks. It is also confusingly similar to the trademark THE FA CUP.

Previous UDRP panels have stated that, to carry into effect the confusing similarity analysis, a gTLD should not be taken into consideration, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

Even though the disputed domain name comprises a new gTLD that could have a meaning or significance, the fact that said new gTLD refers to emails has little effect on avoiding the confusing similarity between the disputed domain name and the Complainant's trademarks. The use of a generic or descriptive term (such as the term "email") is not likely to prevent the likelihood of confusion (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

Moreover, it is likely that this new gTLD will increase the confusing similarity among consumers, due to the fact that said consumers may think that the disputed domain name is actually associated to the email address of the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks.

The first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant states that it has not authorized, licensed or otherwise permitted the Respondent to use any of its trademarks or any variation thereof, or to register or use any domain name incorporating said trademarks. These allegations have not been rebutted by the Respondent.

The Respondent has not submitted any evidence showing actual bona fide use, or preparations to use the disputed domain name with any bona fide offering of services directly linked to the disputed domain name, nor has the Respondent demonstrated that he is making a legitimate noncommercial or fair use of said disputed domain name.

The Exhibits filed by the Respondent do not support his allegations claiming that his "yoyo.email" service (in which the Respondent will allegedly use several domain name registrations that include a brand plus the new gTLD suffix ".email") constitutes a legitimate business model that gives the Respondent a legitimate interest in registering the disputed domain name. These Exhibits contain affidavits executed by persons who were directly hired by the Respondent.

Exhibits 2 and 6 only prove that the Respondent's CEO has filed an application for the Community Trademark YOYO.EMAIL and that said CEO has filed several patent applications, but does not explain how these documents help the Respondent to prove rights to, or legitimate interests in, the disputed domain name <thefa.email>.

Exhibit 7 in which Mr. Mathews states that the CEO of the Respondent's Company "has invested over one million pounds into the research and development of new Internet technology projects", representing that said CEO is trustworthy and a man of his word, does not provide any specific or objective evidence to demonstrate that the Respondent is using, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademarks.

In addition, Exhibit 10 in which Mr. Schaefer indicates that the registration of domain names which include third party trademarks (for use as back-end email servers to store metadata that can be used to verify the sending of emails) is not a violation of the Policy, does not explain why it is that the Respondent allegedly needs to register domain names that incorporate third party trademarks, in order to be able to operate his "yoyo.email" business. It does not rebut the allegation made by the Complainant, regarding consumer confusion.

The Respondent has not filed evidence showing that he is using (or at least making demonstrable preparations to use) the disputed domain name in connection with a bona fide offering of goods or services or that he is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.

This Panel agrees with previous UDRP decisions which state that there is no explanation as to why thousands of domain names must be registered (many of which incorporate different famous trademarks) in order to achieve the Respondent's business purposes.

The Respondent contends that he is taking all necessary steps to launch his model, but the Respondent has not submitted any evidence showing why he needs to register domain names that incorporate prestigious trademarks, as a prerequisite for running this business. There appears to be no technical reason for the Respondent to presently register domain names that incorporate third party trademarks (see Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; O2 Holdings Limited v. Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399; Laura Ashley Limited, Silentnight Group Limited, BFS Group Limited and, Specsavers BV v. Giovanni Laporta, Yoyo. Email, WIPO Case No. D2014-1983; Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.email Ltd, WIPO Case No. D2014-0805).

The evidence filed by the Respondent seems to focus on the domain name <yoyo.email>, but not the disputed domain name <thefa.email>.

The Respondent has not explained why he needs to incorporate the Complainant's trademarks in the disputed domain name, and then warehouse said inactive domain name. The Panel finds no possibilities for an intended use of said disputed domain name in good faith (see Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195; Netcentives, Inc. v. B.W. Brody Company, WIPO Case No. D2000-0672; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483).

This Panel also agrees with the views of other UDRP panels and does not consider the intended use of the Complainant's trademark THE FA by the Respondent a non-public use. Although the Respondent asserts that he will not use the disputed domain name publicly, the disputed domain name itself is visible to Internet users. There is still a risk of an impression of association, sponsorship or affiliation between the Respondent, and the Complainant and the Complainant's trademarks (see Mace Limited v. Giovanni Laporta, Yoyo.email / Domain Controller, Yoyo email, WIPO Case No. D2015-0754).

There is no evidence on the record that would indicate that the Respondent has any rights to, or legitimate interests in the disputed domain name. The mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092).

In addition, nothing on the record suggests that the Respondent has been commonly known as <thefa.email>.

In the Panel's view, the Respondent in this case is not entitled to register a domain name incorporating the trademarks of the Complainant, because this conduct can cause confusion among Internet users and consumers (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).

The Respondent has failed to file evidence showing that he has rights or legitimate interests to the disputed domain name (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408).

Therefore, the Respondent has not proven to have any rights to, or legitimate interests in <thefa.email>. The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website 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 the Respondent's website or location or of a product or service on its website or location.

The Complainant has filed sufficient evidence to support its allegation that the trademark THE FA is well-known and has a strong reputation (The Football Association Limited v. Websitebrokers Limited, WIPO Case No. D2001-0156).

Previous UDRP panels have held that the use or registration of a domain name which is evidently connected with a well-known trademark, by someone with no connection with said trademark, suggests opportunistic bad faith (see Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited, WIPO Case No. D2007-1641).

The Respondent has engaged in a pattern of conduct which prevents trademark owners to reflect their trademarks in a corresponding domain name. The Respondent has participated in many other proceedings under the Policy as Respondent, and has been found to be lacking rights or legitimate interests, and to have acted (even if by omission) in bad faith. This conduct constitutes bad faith under paragraph 4(b)(ii) of the Policy (see Gruner + Jahr Printing & Publishing Co., G+J McCall's LLC, Rosie O´Donnell and Lucky Charms Entertainment Inc. v. Savior Baby, WIPO Case D2000-1741).

This Panel agrees with the UDRP panels who have decided Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145, O2 Holdings Limited v. Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399, and Suncor Energy Inc. v. Giovanni Laporta and Yoyo.Email, WIPO Case No. D2015-0433, in that the Respondent merely claims that the Complainant cannot prove bad faith registration and use, but did not prove his own rights to, or legitimate interests in the disputed domain name, and in that the Respondent did not explain how he would operate his system without infringing the Policy.

Therefore, this Panel adheres to the opinion that the Respondent has not submitted an explanation as to why he has chosen to entirely incorporate the Complainant's registered trademark in the ".email" domain name space.

The THE FA trademarks have been registered in the United Kingdom, Europe, the US and other jurisdictions by the Complainant. Said trademark registrations have legal effects in the jurisdictions where the marks have been registered, and the corresponding registrations have been published (like in the UK, where the Complainant is domiciled, and the US, where the Respondent declared to have his domicile). Therefore, the Respondent had constructive notice of the registration of the Complainant's trademarks at the time of registration of the disputed domain name (see Advance Magazine Publihers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

Moreover, the evidence filed by the Complainant shows that the Respondent has registered domain names that might include the trademark of other third parties in gTLD spaces other than ".email". For example, this is the case of domain names like <igloolive.com>, <umobile.rocks>, <yoo.rocks> and <epay.uno>, registered by the Respondent. Furthermore, the websites to which these domain names (with the suffixes ".com", ".rocks", and ".uno") resolve display links which direct consumers to information on how to acquire/buy the corresponding domain names, which is not exactly the business model that the Respondent explained regarding his alleged "yoyo.email" service.

The Complainant has argued that the Respondent is passively holding the disputed domain name. As discussed previously, the Respondent has neither used the disputed domain name, nor made any demonstrable preparations to use it in connection with a bona fide offering for goods or services.

Therefore, the Panel will analyze whether the passive holding doctrine is applicable to this case (see Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003).

The circumstances of the case are: (i) that the Complainant's trademark has a strong reputation and is widely known; (ii) that the Respondent has provided no evidence to prove an actual or contemplated good faith use of the disputed domain name; (iii) that the Respondent has not provided any evidence or convincing arguments to demonstrate that, in order to fully implement and operate its "yoyo.email" business, it needs to register domain names that entirely incorporate registered trademarks of third parties; (iv) that the evidence provided by the Complainant proves that the Respondent has registered domain names with suffixes such as ".com", ".rocks", and ".uno" which include third party trademarks with an apparent commercial expectation, differing from the business model that the Respondent has explained regarding his alleged "yoyo.email" service, a fact that proves contrary to the Respondent's own arguments, and (v) that the Respondent has engaged in a pattern of conduct which prevents trademark owners to reflect their trademarks in a corresponding domain name, by registering many domain names that entirely incorporate registered trademarks of other parties (which conduct has been found by other UDRP panels to be in bad faith).

Having analyzed the "Telstra" factors, it is possible to conclude that the Respondent has engaged in passive holding of the disputed domain name, because under the circumstances of the case, there are no possibilities to determine any plausible or active use of the domain name that was not unlawful or could not affect the rights of intellectual property of the Complainant. For these reasons, the Panel considers that the registration and passive holding of the disputed domain name fulfill the criteria for determining that the disputed domain name was registered and is being used in bad faith (see Advance Magazine Publihers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

The third requirement of the Policy has been met.

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 name <thefa.email> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: July 8, 2015