WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank of Scotland Plc v. GYoyo Email / Yoyo.Email Limited
Case No. D2015-1079
1. The Parties
The Complainant is Bank of Scotland Plc of Edinburgh, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Yoyo Email / Yoyo.Email Limited of Traverse City, Michigan, United States of America (the “USA”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <bankofscotland.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 24, 2015. On June 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 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 July 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2015. On July 18, 2015, the Respondent submitted an email communication to the Center. Accordingly, the Center informed the parties on July 30, 2015 about the Commencement of the Panel appointment process. The Respondent filed a late formal Response on August 2, 2015.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 11, 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, founded in 1695, claims to be Scotland’s oldest bank. The Complainant is the registered proprietor of the trademark BANK OF SCOTLAND registered in the UK in international classes 9 from August 1995, in international classes 16 and 36 from August 1997, and in international class 35 from August 2002. It also owns corresponding international trademark registrations.
The Complainant claims to be very well-known all over the world and provides evidence of consistent high ranking in the table of banking brands. Its brand is valued at 1.46 billion pounds sterling and has an AA+ rating. It has a significant Internet presence operating through <bankofscotland.com> and <bankofscotland.co.uk>, domain names owned by its sister company Lloyds Bank plc.
The disputed domain name was registered on March 30, 2014 and does not currently resolve to an active website.
The Respondent is active in the domain name industry and owns directly or through Yoyo several thousand domain names some of which are in the “.email” domain name suffix. The Respondent has been the subject of many adverse decisions under both the Policy and the Uniform Rapid Suspension System (“URS”) in relation to registration of domain names in the “.email” domain name suffix which comprise the trademarks of well-known corporations including the present Complainant (see Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539).
5. Parties’ Contentions
The Complainant asserts that it has continually used the trademark BANK OF SCOTLAND since 1994 and has established rights therein. The Complainant contends that the disputed domain name is identical to its said trademark and asserts that it is well established that the addition of the generic Top-Level Domain (“gTLD”) can be disregarded when comparing the disputed domain name with the Complainant’s trademark.
The Complainant contends that there is a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name because it is not commonly known by the disputed domain name, it has no trademark or service mark rights in the disputed domain, it has not been authorized by the Complainant and there is no actual or contemplated use of the disputed domain name that could reasonably be termed bona fide, fair, or legitimate. The Complainant asserts that the Respondent is a known cybersquatter and cites several prior decisions under the Policy and under the URS, including Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539 cited above, wherein the appointed panels held that the Respondent’s alleged intended use as part of its email directory and security service does not create any rights or legitimate interests in the domain names and does not justify the registration of the disputed domain names as there is no need to acquire the domain names for the alleged intended purpose.
The Complainant contends that at the time of registering the disputed domain name, the Respondent was well aware of the Complainant’s rights and reputation in its BANK OF SCOTLAND trademark. The fact that the Respondent proceeded to register the domain name in the face of that knowledge indicates bad faith registration.
The Complainant contends that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the corresponding domain name and that the several prior cases in which the Respondent has been involved demonstrate a pattern of such conduct. The Complainant further contends that the Respondent is intending to attempt to divert traffic from the Complainant’s website for commercial gain and to suggest at least an endorsement by the Complainant or affiliation of the Respondent’s services with those of the Complainant.
The Respondent has filed lengthy, detailed and complex submissions. Corresponding submissions have been made in several prior cases under the Policy and the URS (see for example Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (Statoil Case) and Bank of SCotaland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539 cited above). The salient points of the principal ones of those submissions may be summarized as follows:
- There has been no use of the disputed domain name to date and the intended use is not trademark use or public use.
- The Respondent purchased the disputed domain name for the purpose of its legitimate technology business. The Respondent explains its business model in the following terms:
“The initial ideas 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 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.”
- The Respondent contends that he is using the disputed domain name as a non-public back end email server to link multiple users to track, record and verify email communications, to provide means for the storage of meta-data and to allow the Respondent to certify delivery and the receipt of emails at the disputed domain name’s address.
- In a declaratory judgment of the United States District Court for the District of Arizona the Court declared, inter alia, that the Respondent has a good faith intent to register, use and traffic the domain name the subject of that proceeding and does not violate the Anti-cybersquatting Consumer Protection Act or the URS or the UDRP Policy and is not trademark use.
- The Respondent cites three URS appeal decisions and a dissenting opinion in a fourth case, where the Complainant was found not to have established the necessary elements of the Complaint.
- It has opinions from a “WIPO examiner” and “leading trademark attorneys” to the effect that its business model does not violate trademark law or the UDRP.
- The fact that it intends to use the disputed domain name in a for-profit business does not support an argument that it intends to profit from the use of the disputed domain name to deceive Internet users.
- In the many complaints under the UDRP which have been decided against it, the panelists have misunderstood and misrepresented its proposed business model and have been biased against it in favour of trademark owners.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated longstanding use and registration of the trademark BANK OF SCOTLAND and has clearly established rights in that trademark by registration in the UK and elsewhere.
The disputed domain name wholly comprises that trademark save for the addition of the “.email” gTLD. It is well established that the addition of the gTLD might be disregarded in comparing the disputed domain name with the Complainant’s trademark.
The Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not commonly known by the disputed domain name and has not been licensed or authorized to use the Complainant’s trademark in the disputed domain name. The Respondent bases its case on preparations which it has made to use the disputed domain name in what it contends is a legitimate business of verifying the sending and receipt of emails and the storing of meta-data and that such use is non-public and does not divert website traffic from the Complainant. The Respondent however gives no clear explanation as to why it is necessary that it should register the domain names of its intended customers. If that were the case it would seem that its potential customer base would be limited to those organizations whose trademarks it has registered as domain names in the “.email” domain name suffix. As noted by the unanimous three-member panel in the Statoil Case cited above:
“The main weakness in the Respondent’s arguments 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 analogy with a directory does not hold: any person may indeed be free to compile a directory of domain names, or telephones or addresses or similar, but need not for that purpose actually own any related domain names, by registration or otherwise. To compile a list or directory of trademarks or company names, or business or trading names, the compiler need not acquire any rights whatsoever in those names. [ ] For the Panel to hold otherwise i.e. that the Respondent’s interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur.”.
As stated in Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145 “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 and use of this domain name and thousands of others which include other brands indicate bad faith as intended under the Policy. The way he explains his business, he would not have a business [with respect to confirming emails to Sanofi] if he did not utilize the dispute domain name containing Complainant’s trademark. Whether or not his customers see the back-room features, he is exploiting Complainant’s mark for a commercial purpose.”
As the Panel agrees with this approach of the UDRP panels cited above, the Panel finds that the Respondent has failed to rebut the Complainant’s contention that it has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is clear that at the time of registering the disputed domain name the Respondent was well aware of the Complainant and its trademark. Indeed the Respondent does not contend otherwise but rather, as noted above, that its purpose in registering the disputed domain name was for use in its legitimate business model. In support of this contention, the Respondent cites the declaratory judgment of the United States District Court for the District of Arizona concerning the domain name <playinnovation.email> and the prior URS appeal decisions discussed above.
As to the declaratory judgment, the first thing to note is that the judgment was a judgment by consent as a result of a settlement reached between the parties. There is no indication of any other terms of a settlement, nor the circumstances in which the settlement was made. As noted by the panel in the decision in the prior dispute between the present parties, Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539 cited above “Complainant is not a party to the Playinnovation proceeding. In any event, it appears to this Panel that such “declaratory judgment” is actually in substance a settlement agreement between the parties to that proceeding and therefore does not, as Respondent would have it, constitute determination that Respondent’s business model is consistent with the UDRP”.
It is important to note here that what is in contest is not whether the Respondent’s model for an email certification and storage service constitutes a legitimate business, it is whether it is legitimate to register domain names incorporating the well-known trademarks of the Complainant and other traders for use in that service. The vast majority of panels in the many cases which have been decided against the Respondent have held that it is not.
With regard to the URS decisions which found in favour of the Respondent, the first thing to note is the onus on the Complainant under the URS is substantially greater than under the Policy. Under the URS, it is necessary that there be no genuine issue of material fact and the Complainant must show that there is clear and convincing evidence to support each element of the Complaint. Under the Policy the requirement is to show that the Complainant’s case is established on the balance of probability. Despite this added burden, the majority of URS cases concerning the Respondent have been resolved in favour of the Complainant.
The Respondent insists that its intended use of the disputed domain name will have no public face. The Panel notes that the disputed domain name does not currently resolve to a web page and no captures are available from “www.archive.org”. It is apparent however from earlier decisions under the URS that this was not always the case.
Whilst the disputed domain name is not currently in active use, it is apparent that it is intended to be used in the future in a way that is commercial and is not a legitimate or fair use. The Panel agrees with the findings of the panels in the vast majority of decisions under the URS and finds that the disputed domain name was registered and is being used in bad faith. Although the disputed domain name does not currently resolve to an active webpage the holding of the disputed domain name, together with the other indications of bad faith amount to passive holding in the sense of the expression used in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent’s registration of the disputed domain name clearly has the effect of preventing the Complainant from reflecting its trade mark in a corresponding “.email” domain name. In all the circumstances of the present case and the large number of corresponding cases with which the Respondent has been involved, the Panel considers that on the balance of probability that was intended by the Respondent and the disputed domain name was registered with that intent. It is clear from the many registrations held by the Respondent in the “.email” domain name suffix which comprise the names and trademarks of well-known entities and the many decisions against the Respondent under the Policy and the URS that the Respondent has engaged in a pattern of such conduct. Bad faith is therefore established in terms of paragraph 4(b)(ii) of the Policy.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <bankofscotland.email> be transferred to the Complainant.
Desmond J. Ryan AM
Date: August 25, 2015