WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

British Telecommunications plc v. Giovanni Laporta, Yoyo.email Ltd / Domain Controller, Yoyo.email Ltd

Case No. D2015-0981

1. The Parties

The Complainant is British Telecommunications plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by BT Legal, United Kingdom.

The Respondent is Domain Controller, Yoyo Email of Traverse City, Michigan, United States of America (“United States”) / Giovanni Laporta of Toddington, Dunstable, Bedfordshire, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <118500.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 June 9, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 11, 2015. The Center received a communication from the Respondent on June 11, 2015. The Complainant filed a further amendment to the Complaint on June 11, 2015.

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 proceeding commenced on June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. The Center received a communication from the Respondent on June 12, 2015. The Response was filed with the Center on July 2, 2015.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 10, 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

A. Complainant

The Complainant is a company incorporated in England and one of the world’s leading telecommunications providers. The Complainant is the owner of a registration for the trade mark 118500 (the “Trade Mark”) in the United Kingdom. The Trade Mark has been registered and used continuously since 2003 in respect of the Complainant’s directory enquiries or “DQ” services. The Complainant is one of the top two DQ service providers in the United Kingdom, its DQ services offered under the Trade Mark accounting for 26 percent of the market.

B. Respondent

According to the Whois search for the disputed domain name, the Respondent is “Domain Controller, Yoyo Email”, with an address in Michigan in the United States. The Response has been filed in the name of “Yoyo.Email Limited” and signed by “Giovanni Laporta, CEO, on behalf of Yoyo.Email Ltd”.

According to the exhibits filed with the Response, it appears this company is incorporated in England. The Response also refers to and exhibits copies of decisions issued in court proceedings in the United States with “Yoyo.Email, LLC” named as plaintiff and referring to Giovanni Laporta as the CEO of Yoyo.Email, LLC.

The Panel will refer to these persons, collectively, as the Respondent in this decision.

C. The Disputed Domain Name

The disputed domain name was registered on April 25, 2014.

D. Use of the Disputed Domain Name

The disputed domain name has not been used in connection with any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent is highly critical in the Response of the findings of UDRP panelists in previous UDRP proceedings involving (and adverse to) the Respondent.

The Respondent contends that none of the above three elements has been made out by the Complainant.

6. Discussion and Findings

The Complainant must prove each of the following three elements in paragraph 4(a) of the Policy in order to prevail:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and

(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration (which incidentally also predate the date of registration of the disputed domain name by over a decade).

The Respondent makes several claims in relation to the first element of paragraph 4(a) of the Policy, including:

“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 Policy is clear on this issue[…]

The UDRP does NOT say that every registration of a domain name that knowingly includes a matching trademark is a violation of the UDRP. Yet, this is the way some UDRP Examiners are now interpreting the Policy as it relates to Yoyo. This is extremely dangerous precedent and undermines ICANN’s stated goal of innovation with its new gTLD program, and the spirit of UDRP AND raises serious questions in the competence and credibility of UDRP Examiners[…]”.

The Respondent goes on to claim that, because the Complainant did not avail itself of the Sunrise Period to secure registration of the disputed domain name, it can only be assumed the Complainant did not want to purchase the disputed domain name at the time. The Respondent further contends that it paid for and acquired its “business domain assets” legitimately when the Respondent’s domain names went on public sale in keeping with “fair and good use” Policy rules.

Whilst it is true that a registrant does not necessarily require permission from a trade mark owner before deciding to purchase a domain name featuring a matching trade mark, this is irrelevant to the determination under paragraph 4(a)(i) of the Policy, as is the fact the disputed domain name was not registered by the Complainant during the Sunrise Period. The purpose of registration is also irrelevant to the determination of confusing similarity or identity under this element of the Policy.

The disputed domain name is identical to the Trade Mark.

In the circumstances, the Panel has no hesitation in finding that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) 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 trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over a decade. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent argues that it has registered the disputed domain name (together with numerous others comprising third party trade marks) in respect of its proposed business model. The Respondent claims that it intends to use the disputed domain name “as a backend, non-public email server in order to route emails for the storing of Metadata which will allow the Respondent to certify delivery and potentially receipt” of emails.

The Respondent further contends as follows:

“Respondent registered the domain name for a legitimate business purpose, with the good faith intent to comply with all laws, including trademark laws. There has been no use of the domain to date. The intended use is not a trademark use, or public use[…]

The facts are the Respondent purchased all its .email domain names lawfully 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 under the .email gTLD[...]

The initial 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 the respective company (recipient). At this point there can be no confusion as to source and origin as the company (recipient) cannot be confused to who they are. Further, there is absolutely no need for Recipients (the Complainant) to ‘sign up’ for the Respondent’s service.

Further, the service at some point in the future may be extended so that consumers can send emails via any email client software, the intention is to expand consumer choice. However as long as users sent emails using the Respondent’s domain names which pass through its owns email servers Yoyo could still provide an email certified service when emails are then sent from other software email clients...”

As has been pointed out by numerous panelists in previous UDRP decisions involving the Respondent, the Respondent’s business model of deliberately and without authorisation registering domain names comprising third party trade marks, in order to set up its putative email directory and certification service, cannot possibly give rise to rights or legitimate interests for the purposes of the Policy.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent seeks to rely on the decisions in four proceedings involving the Respondent and its putative business model under the Uniform Rapid Suspension (“URS”) system – one in which the Respondent prevailed at first instance, two in which the Respondent was unsuccessful both at first instance and on appeal, but in which there were dissenting appeal decisions, and a further appeal decision in which the majority was in favour of the Respondent – to demonstrate rights or legitimate interests in the disputed domain name in the present proceeding.

The Panel notes that the evidential burden for complaints under the URS is significantly higher (clear and convincing evidence) than under the UDRP (balance of probabilities). Leaving aside the fact each proceeding must of course be determined on the basis of its specific facts, such URS decisions are of no assistance in the present proceeding.

The Respondent also seeks to rely on a declaratory judgment obtained by consent in the United States District Court in the District of Arizona on November 5, 2014 in relation to the Respondent’s application for review of an unrelated URS decision, and a claim form filed by the Respondent on September 4, 2014 in the County Court in England seeking orders that certain unrelated domain names “be removed from lock at the Plaintiff’s registrar GoDaddy and restored to Plaintiff so that Plaintiff may continue to develop its business model and use the subject domain names consistent with its intended use as a non-public, back-end email server as set forth in detailed particulars” (such detailed particulars have not been provided with the Response).

The Panel considers the consent judgment obtained in the US proceedings, and the claim form filed in the English proceedings, are also of no assistance in the present proceeding. Whilst paragraph 15(a) of the Rules provides panels with a broad discretion to decide proceedings on the basis of the Rules and any rules and principles of law that they deem applicable, the Panel agrees with the consensus that UDRP proceedings are, in general, to be decided with reference to the Policy and the Rules, and without reference to national law (see paragraph 4.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

In the circumstances, the Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(ii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“Circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.”

The Panel considers the Respondent’s embryonic business model of registering thousands of third party trade marks as domain names under the .email generic Top-Level Domain (“gTLD”), without authorisation from the trade mark owners, in order to set up an email directory and certification service, also without authorisation from the trade mark owners, clearly amounts to bad faith registration and use under paragraph 4(b)(ii) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <118500.email> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: July 24, 2015