WIPO Arbitration and Mediation Center


Publix Asset Management Company v. Domain Controller, YOYO EMAIL

Case No. D2015-1743

1. The Parties

The Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America, represented by Thomas & LoCicero PL, United States of America.

The Respondent is Domain Controller, YOYO EMAIL of Traverse City, Michigan, United States of America, internally represented.

2. The Domain Name and Registrar

The disputed domain name <publix.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 September 30, 2015. On October 1, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Response was filed with the Center on October 28, 2015. The Complainant submitted a supplemental filing on November 4, 2015. The Respondent submitted a communication in response to this supplemental filing on the same day.

The Center appointed Angela Fox as the sole panelist in this matter on November 9, 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.

Procedural Issues

The first issue to be determined in this proceeding is whether and under what conditions the panel should admit the Parties' supplemental filings.

The Panel has the power to admit supplemental filings under the Rules, paragraph 10(a), under which the Panel may conduct the proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. Rules, paragraph 10(b) requires the Panel to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

In this case, the Complainant's supplemental filing addressed a number of new fact allegations in the Response, including the Respondent's claims regarding the nature of the use it intends to make of the disputed domain name and its reliance on a declaratory judgment of the United States District Court of Arizona in a case relating to a different domain name and a different, unrelated complainant. The Respondent filed its own supplemental response to that, in which it criticized the Complainant's evidence and reasoning and stated that "Yoyo has explained all that it needed to explain why it has purchased the domain name."

In the Panel's view the Complainant's supplemental reply addressed relevant issues arising from the Response which it could not have addressed in the Complaint, and the Panel has found it helpful. The Respondent replied to that supplemental filing. In the circumstances, the Parties have each had an equal opportunity to present their respective cases, and the Panel will take the supplemental filings into account.

4. Factual Background

The Complainant operates a chain of retail grocery stores in the United States under the name and trademark PUBLIX. It is the owner of United States federal trademark registration no. 1,339,762 for PUBLIX for retail grocery store services, details of which were annexed to the Complaint, filed on November 8, 1984 and registered on June 4, 1985. The Complainant's mark has been used in connection with retail grocery store services in the United States since at least as early as December 31, 1930.

The disputed domain name was registered on March 28, 2014. It does not link to any page.

The Respondent's submissions were made by the CEO of Yoyo.Email Ltd., Giovanni Laporta. The Respondent claims that it registered the disputed domain name for use in its plan to offer "certification of e-mail services" using a "backend, non-public email server in order to route emails for the storing of metadata" in order to allow the Respondent to certify delivery and receipt. The Respondent claims that its service is intended to facilitate email communication between consumers and brand owners. The Respondent has appeared in multiple UDRP decisions involving domain names in the ".email" space, and its planned activities as outlined in the Response and supplemental response have been fully summarised in cases including Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686("Sheraton"); Mejeriforeningen Danish Dairy Board v Domain Manager, Yoyo.email, WIPO Case No. D2014-0730("Lurpak); The Royal Bank of Scotland Group plc & Ors. v Domain Manager/yoyo.email/Giovanni Laporta, WIPO Case No. D2015-0825("Royal Bank of Scotland"); and Masco Corporation v Giovanni Laporta, WIPO Case No. D2015-0468 ("Masco").

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to its PUBLIX trademark, which it claims is well-known. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, which is not being used for a bona fide offering of goods or services. The Complainant has not authorised the Respondent to use a domain name incorporating its PUBLIX trademark, and the Respondent is not commonly known by a name corresponding to it. Finally, the Complainant submits that the Respondent registered and has used the disputed domain name in bad faith. The Complainant submits that the Respondent has wrongfully and deliberately appropriated the Complainant's trademark and combined it with a generic Top-Level Domain (gTLD) in order to encourage direct Internet traffic to the disputed domain name based on a false association with the Complainant. In the Complainant's submission, it is difficult to conceive of any use of the disputed domain name by the Respondent that would not cause confusion, and the only explanation for the Respondent's registration of it was to profit from the Complainant's trademark and goodwill. The Complainant submits that the Respondent's passive holding is evidence of bad faith use following the principles outlined in Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

The Respondent denies that there is any legitimate basis to transfer the disputed domain name to the Complainant. It submits that it registered the disputed domain name in good faith for a legitimate business purpose, involving no trademark or public use. It claims to have invested substantial amounts of time and money in developing its business under the ".email" gTLD. It claims that it has no intention to profit from the use or trafficking of the disputed domain name.

The Respondent contends that 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 [the] UDRP AND raises serious questions in the competence and credibility of UDRP Examiners." [Respondent's emphasis.]

The Respondent adds, "It's fair to say ICANN and trademark law envision ways in which domain names which may include trademarks can be used legitimately when guided by Policy rules, by all. If this was NOT ICANN's intention then the disputed domain name should never have gone on general sale without a warning notice written in plain language that domain names featuring trademarks can NOT be purchased by anyone other than a trademark holder and/or by someone that can be commonly known by the domain name."

The Respondent considers that "prior Examiners have engaged in little more than speculation and conjecture about Respondent's business model, and its intentions and relied on unsupported statements in prior decisions, which in all cases were unproven, never argued and certainly not supported by any independent evidence. Contrary to what prior Examiners have reported the Respondent has NOT used its domain names to profit from advertising connected to the use of a trademark web service. Nor is there any evidence, beyond raw speculation or regurgitated undocumented hearsay from prior panel decisions, to support any future intent to use the subject domain in such a way…There is also suggestion that somehow using a brand name as opposed to the corporate name suggests bad faith. Because these domain names are simply being used to store email metadata, it doesn't matter what short hand domain is chosen to represent the company. This type of operation is not bad faith."

On the nature of its activities, the Respondent states: "Yoyo is primarily a consumer focused service working on behalf of the sender (Consumer) and NOT the receiver. Yoyo is the neutral party that sits between sender and receiver and works on behalf of the sender as proof the email has been sent, much like regular mail courier services. Therefore Examiners and Complainants are under the false impression that the Respondent's service could never be a legitimate service without the 'support' of the organizations to which it is directed. This reasoning is illogical, if it were not, it would mean that all mail & parcel courier services throughout the world in order to become legitimate, would need the 'support' from organizations (trademark holders) before accepting mail directed to them."

The Respondent adds that "the initial idea is to launch the service as a closed software service which means that users can only send emails via the Respondents [sic] 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…" [Respondent's emphasis].

The Respondent refers to a declaratory judgment of the United States District Court of Arizona dated November 5, 2014 in an unrelated case, a copy of which was annexed to the Response, which 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" under the Anti-Cybersquatting Consumer Protection Act. It also refers to several Uniform Rapid Suspension System (URS) decisions decided in the Respondent's favour.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the domain name; and

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it is the proprietor of United States registered trademark rights in PUBLIX.

The disputed domain name consists of the word "publix" and the gTLD ".email". The Panel finds that the ".email" suffix does nothing to distinguish the disputed domain name from the Complainant's trademark. The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

The Complainant therefore succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent's claim to a right or legitimate interest in the disputed domain name is based on its claimed intention to use the disputed domain name in the future in respect of an email tracking service that it is developing. Its registration of the disputed domain name is part of a concerted campaign on its part to register a substantial number of domain names in the ".email" space that comprise or incorporate third-party trademarks. However, as the Complainant noted in its supplemental filing, the Respondent has done no more than to make assertions as to its intended future use of the disputed domain name. It has provided no evidence of actual use of, or of actual preparations to use, the disputed domain name.

Moreover, as has been noted by numerous prior UDRP panel decisions involving the Respondent, the difficulty with the Respondent's position is that it has provided no explanation for why its business model requires it to own domain names that are identical to third-party trademarks. The Respondent's analogy with postal or courier services is not apposite; postal and courier services delivering to a company do not acquire rights in an address incorporating the recipient's trademarks in order to make such deliveries. As noted by the panel in Sheraton:

"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 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. In most cases it would in fact render the directory pointless if he did. Here the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. 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."

Similarly, in Masco, the panel observed that the Respondent had failed to present "a sound reason why '.email' domain names incorporating trademarks of third parties are necessary to the functioning of his business model." Given the clear potential for the disputed domain name to mislead Internet users into assuming a connection with the Complainant, the absence of an explanation for why a domain name of this nature is necessary for the Respondent's proposed scheme to work is particularly problematic.

Moreover, the Respondent's claim that it does not intend to profit from the use or trafficking of the disputed domain name is incompatible with its claim to have registered it for use in its planned email certification business. Businesses are conducted for profit and if the disputed domain name was registered for use in the business, it is implausible to say that the Respondent has no intention to profit from it either directly or indirectly. The commercial use of a domain name that is inherently likely to confuse and mislead Internet users cannot be regarded as giving rise to a right or legitimate interest (Sheraton; Lurpak; Royal Bank of Scotland).

The Respondent cannot bring itself within any of the circumstances set out in paragraph 4(c) of the Policy. It has not been commonly known by the disputed domain name, nor is it making a legitimate noncommercial or fair use of it without intent for commercial gain to misleadingly divert consumers or tarnish the trademark at issue. It has not been making use of, and has not made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor has it been authorized by the Complainant to use the Complainant's trademark. The Respondent's claimed intention to use the disputed domain name as part of an email certification service cannot give rise to a right or legitimate interest for the reasons given above.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In the Complaint, the Complainant asserted that its PUBLIX trademark is "extremely well-known in the United States and elsewhere." However, it provided no evidence of the alleged repute of its mark. Had there been any question in this case as to whether the Respondent had actual knowledge of, and was targeting, the Complainant's trademark, the omission of such evidence would have undermined the Complainant's case.

In this case, however, the Respondent has not denied knowledge of the Complainant's PUBLIX trademark. Indeed, on the contrary, it has freely admitted that its business model centers on the registration of ".email" domain names comprising or incorporating third-party trademarks. The Panel concludes that the Respondent was indeed aware of and targeting the Complainant's trademark when it registered the disputed domain name.

Paragraph 4(b)(ii) of the Policy provides that it shall be evidence of registration and use of a domain name in bad faith if the panel finds the following circumstances to be present:

(ii) you have 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 you have engaged in a pattern of such conduct;

In this case, the Respondent has provided no plausible reason why it needed to register a domain name that is identical to the Complainant's trademark in order to carry out its proposed business. Its registration of the disputed domain name prevents the Complainant from registering a domain name corresponding to its trademark in the ".email" space. The multiple decisions against the Respondent in prior proceedings involving ".email" domain names incorporating third-party trademarks amply demonstrate that the Respondent has engaged in a pattern of such conduct. The Panel therefore finds registration and use in bad faith under paragraph 4(b)(ii) of the Policy (in line with the approach of the panels in Royal Bank of Scotland and Masco).

With regard to the declaratory judgement of the Arizona District Court referred to by the Respondent, the Panel notes that, as it is summary in nature, the decision did not explain its reasoning and was adjudicating a case involving different parties and subject matter. Moreover, the declaratory judgement is not binding precedent under the UDRP, which stands on its own and under which panels are typically not applying the law of particular jurisdictions (see Masco).

Similarly, the URS decisions to which the Respondent refers were based on a different standard to that applied under the UDRP. Under the URS a panel must determine whether there is a "clear and convincing" case for immediate relief under the abbreviated URS procedure. A finding that a complainant has not achieved that standard does not mean that it would not succeed under the UDRP (see Masco).

The Panel finds that the Complainant has succeeded under the third element 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 <publix.email> be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: November 16, 2015