WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd
Case No. D2014-0724
1. The Parties
The Complainant is Arla Foods amba of Viby J, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is Giovanni Laporta, Yoyo.email Ltd of Dunstable, Bedfordshire, United Kingdom of Great Britain and Northern Ireland (the "UK"), self-represented.
2. The Domain Names and Registrar
The disputed domain names <arla.email> and <arlafoods.email> are 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 5, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 7, 2014, 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 May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response June 10, 2014. On May 30, 2014, the Respondent sent an email communication to the Center requesting an extension to file a Response. After the Complainant's approval, the Center set the new due date to file a Response on June 24, 2014. The Response was filed with the Center June 24, 2014.
On July 7, 2014 and July 12, 2014, the Respondent submitted unsolicited supplemental filings.
The Center appointed John Swinson, Knud Wallberg and David E. Sorkin as panelists in this matter on July 28, 2014. The Panel finds that it was properly constituted. Each member of 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 Arla Foods amba of Denmark. The Complainant is a dairy co-operative owned by approximately 12,300 farmers in Denmark, Sweden, the UK, Germany, Belgium and Luxembourg.
The Complainant holds International Trade Mark Registration No. 731917 for ARLA (registered March 20, 2000) (the "Trade Mark"). Additionally, the Complainant's company name is Arla Foods amba and its service mark is ARLA FOODS (the "Service Mark"). The Complainant has also registered a number of domain names that incorporate the Trade Mark (e.g. <arla.com> since 1996).
The Respondent is Yoyo.email Ltd, a company incorporated under the laws of the UK. The Managing Director of the Respondent, Giovanni Laporta, is "an inventor and established businessman" (the Respondent annexed a statement from the Managing Director). The Respondent submits that it has "devised a system to use domain names and the emails that flow from them, to create a domain name directory and a new system based on that directory to record the sending and receipt of emails. It involves recruiting businesses and others who are large users of emails to be entered in an internet directory and to adopt a recording system for emails in the same way that registered mail registers the sending and arrival of a letter". (See also Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 for a detailed description of the Respondent's service.)
The disputed domain names were registered on March 30, 2014. Currently, there is no website at either of the disputed domain names (a URL "not found" message is displayed).
5. Parties' Contentions
The Complainant makes the following submissions:
Identical or Confusingly Similar
The disputed domain names are identical or confusingly similar to the Trade Mark and the Service Mark, which are arbitrary names with a high level of distinctiveness. The Complainant submits that this finding can be made without reference to the generic Top-Level Domain ("gTLD") ".email".
The Complainant also submits that the gTLD ".email" of the disputed domain names creates the impression that the Complainant's Trade Mark and Service Mark are being used in connection with email services.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain names for the following reasons:
- There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names do not resolve to an active website.
- The Complainant has not authorized or licensed the Respondent to use its Trade Mark or Service Mark.
- The Respondent is not commonly known by either the Trade Mark or the Service Mark.
Registered and Used in Bad Faith
The disputed domain names were registered and are being used in bad faith.
The Complainant, its Trade Mark and its Service Mark are all well known. As such, it is most likely that the Respondent was aware of the Complainant and its marks when it registered the disputed domain names.
Additionally, it is likely that the Respondent detected traffic to the Complainant's websites (at "www,arla.com" and "www.arlafoods.com") and attempted to profit from this traffic. It is also likely that the Respondent registered the disputed domain names to sell them to the Complainant at a price in excess of its out-of-pocket costs.
The Respondent is passively holding the disputed domain names. This does not prevent a finding of bad faith.
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Respondent submits that the ".email" suffix should be included in the comparison, as it is an "integral element" when describing the Respondent's service. As such, the disputed domain names are not identical to the Trade Mark.
The Respondent submits that the disputed domain names are not confusingly similar for the following reasons:
- An Internet user would expect the disputed domain names to refer to an email service for emails to and from the names "Arla" and "ArlaFoods" (which would be the case under the business model described by the Respondent).
- The disputed domain names do not claim to be the Complainant's own email address or service, nor do they purport to be the only way of communicating with the Complainant by email.
- Internet users would not be able to see the disputed domain names (there would be no website resolving to the disputed domain names, they will be a technical link connecting the names "Arla" and "ArlaFoods" with the Respondent's email directory).
Additionally, the Respondent states that "Arla" is not an arbitrary mark. It is a name that people are entitled to use as a private email address. As such, the Respondent should be able to use it as a free private email to any person who can make use of the "Arla" name.
Rights or Legitimate Interests
The Respondent submits that it has a right and legitimate interest in using the disputed domain names as technical links as part of its email directory and security service. It submits that it has made demonstrable preparations to use the disputed domain names for this bona fide purpose (the costs of setting up an office, number of staff and other expenses were outlined in a statement from the Respondent's Managing Director).
The proposed use of the disputed domain names is in line with ICANN's intentions for the new gTLDs (i.e. to "create new options for consumers in the market", produce "a diverse set of applications for new gTLDs" and create "significant potential for new uses and benefit to Internet users across the globe").
The Managing Director of the Respondent already has other businesses in security, including Internet security and social media, and the service associated with the disputed domain names will be an extension of these businesses.
Registered and Used in Bad Faith
The Respondent is not using the disputed domain names as trade marks to sell or promote goods and services, it is using them as email addresses in its email directory and verification service. It is not attempting to disrupt the Complainant's business and is not engaging in cyber squatting (the Respondent makes it clear that misleading the public would have a counterproductive effect on its service). The Respondent has no intention to sell the disputed domain names to the Complainant.
As a final point, the Complainant did not make use of its exclusive opportunity to acquire the disputed domain names during ICANN's Sunrise Period for the ".email" gTLD.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Procedural Matters
The Respondent filed supplemental submissions on July 7, 2014 and July 12, 2014.
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings "with due expedition" and gives the panel the power to "determine the admissibility, relevance, materiality and weight of the evidence". Generally, panels will only accept supplementary filings in "exceptional" circumstances.
The Respondent submits that it provided the additional material "in response to recent URS/UDRP decisions" because it "feels that any adverse case outcome would have been different if the Panel members had clearer facts presented." The supplementary submissions set out several recent URS/UDRP decisions that discuss the Respondent's business model. The additional material does not address the key elements of the Policy that need to be satisfied, or offer evidence that was previously unavailable.
In light of the above, the Panel declines to accept the supplementary submissions as part of the record in this proceeding. (The Panel notes that approach was also taken by the panel in Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (a recent decision dealing with the same Respondent.)
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to the Trade Mark.
The Panel has verified that the Complainant has rights in the Trade Mark.
It is well established that the addition of gTLDs can generally be disregarded when comparing the similarities between a domain name and a trade mark (in respect of the new gTLDs see e.g. Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 and Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). The Panel agrees with this approach and finds that in this case, the ".email" gTLD does not prevent a finding of confusing similarity under the Policy.
The second level of the disputed domain name <arla.email> is identical to the Trade Mark. The second level of the disputed domain name <arlafoods.email> is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety and the addition of the generic term "foods" does not prevent a finding of confusing similarity (see e.g. Guccio Gucci S.p.A. v. Smith Davilv, WIPO Case No. D2012-0052).
In light of the above, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed domain names:
(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 the respondent 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 customers or to tarnish the trademark or service mark at issue.
The statement from the Respondent's Managing Director outlines the activities undertaken by the Respondent in relation to its service (e.g. the costs of setting up an office, number of staff and other expenses). The Panel finds that the evidence provided is insufficient to establish demonstrable preparations to use the disputed domain names for a bona fide purpose.
The Respondent has not been commonly known by either of the disputed domain names, and has obtained no authorization to use the Trade Mark from the Complainant.
The Respondent submits that it has rights or legitimate interests in the disputed domain names based on its intended use of the names in connection with its email service (as described above). Other panels have discussed the Respondent and its business model. Other panels have held that the model does not give rise to rights or legitimate interests and have been dubious as to why the Respondent believes it is entitled to or is required to register domain names consisting of trade marks in order to establish its service. The recent decision Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., supra, extracts the following passage from Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686:
"The essence of this matter lies in the contention of the Respondent that he is entitled to register the disputed domain names notwithstanding the fact that they include the Complainant's SHERATON trademark, because he intends to establish a purportedly legitimate email recorded delivery service. The Respondent submits that this is required, along with the acquisition of many other analogous registered '.email' domain names, because otherwise it is not possible to establish the service he intends to operate. […] 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. […] 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. […]
Further, the Respondent asserts that it has registered many similar domain names, and the evidence before the Panel establishes that these registered domain names commonly incorporate other high profile trademarks. The Respondent submits that without a very large portfolio of such domain names its service cannot be viable. However, this reinforces the fact that the Respondent seeks to be in a position where the trademark owner is deterred from refusing its recorded delivery services, based partly on the Respondent's prior possession of domain names incorporating that very party's own trademark."
In summary, the Respondent's position has been rejected unanimously by every UDRP panel to consider it, and by nearly all of the URS examiners even under a heightened evidentiary standard.
In line with these decisions, the Panel is not persuaded that the Respondent needs to own the disputed domain names in order to operate its purportedly legitimate service.
In the previously cited Statoil ASA decision, the panel refers to the general position regarding vanity email addresses, that is, "the use of a third party trademark in connection with such service is only legitimate if the respective respondent focuses on such service without giving reason to assume that the trademark concerned will be affected by any kind of advertising for third parties' trademarks, such as pay per click advertising". The Respondent refers to commercialization, but it is unclear to the Panel how the Respondent intends to profit from its service. The Panel agrees with the panel in Statoil ASA, which found this to be "an unacceptable threat towards the Complainant".
In light of the above, the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.
It is part of the Respondent's business model to register domain names of "in the same way a telephone or mail directory collects telephone numbers and physical postal addresses". The disputed domain names incorporate the Trade Mark in its entirely. One of the disputed domain names includes "foods", which is the category of products that the Complainant sells. As such, the Panel infers that the Respondent registered the disputed domain names with knowledge of both the Complainant and the Trade Mark.
There is no active website at either of the disputed domain names (both resolve to error pages). The Complainant submits that the Respondent is passively holding the disputed domain names. Passive holding does not prevent a finding of bad faith under certain circumstances (see e.g. Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). The question is whether the Respondent's passive holding of the disputed domain names can be considered registration and use in bad faith, taking into account all the circumstances of the present case.
The Respondent submits that the disputed domain names will be used as a "technical link" (as explained above), in a manner that will not be visible to Internet users. Use as a technical link (or as an email address) can be considered to be use under paragraph 4(a)(iii) of the Policy.
The Panel finds that that the Respondent registered the disputed domain names so that the Complainant would be obliged to use its service. (See Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730).
In respect of this, the Panel endorses the panel's position in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, supra:
"The Panel would be reluctant to lend its approval to the registration of a domain name incorporating another party's trademark for the purpose of being able to establish a system or scheme in relation to which the trademark owner becomes a supplicant. This would set the clock back on the Policy in a way that was never intended."
The Panel is of the view that it is also likely that the Respondent is attempting to divert traffic from the Complainant's websites (e.g. "www.arla.com" and "www.arlafoods.com") for commercial gain.
In light of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith as defined in paragraph 4(b) of the Policy.
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 names <arla.email> and <arlafoods.email> be transferred to the Complainant.
David E. Sorkin
Date: August 10, 2014