WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stuart Weitzman IP, LLC v. Giovanni Laporta , Yoyo.Email Ltd.

Case No. D2014-1537

1. The Parties

The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America ("United States"), represented by The Gioconda Law Group PLLC, United States.

The Respondent is Giovanni Laporta,Yoyo.Email Ltd. of Traverse City, Michigan, United States, represented by Traverse Legal, PLC, United States.

2. The Domain Name and Registrar

The disputed domain name <stuartweitzman.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 9, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 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 on September 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2014. The Response was filed with the Center on October 3, 2014.

The Center appointed William R. Towns as the sole panelist in this matter on October 20, 2014. 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 a well-known designer, manufacturer and retailer of women's footwear and handbags. The Complainant owns several United States registrations for the STUART WEITZMAN mark, the first of which was issued by the United States Patent and Trademark Office (USPTO) on March 11, 1986, for handbags and shoes. The record reflects the Complainant's use of the mark in commerce since as early as November 1978.

The Respondent registered the disputed domain name <stuartweitzman.email> on April 12, 2014. The disputed domain name does not currently resolve to any active website. The record reflects that the Respondent to date has registered in the ".email" generic Top-Level-Domain ("gTLD") space some four thousand domain names, including more than a thousand domain names consisting of third-party trademarks, which the Respondent submits are intended solely for use with a business model under development as "non-public, non-consumer facing, back-end email servers" for purposes of certifying delivery and potentially receipt of emails.

A number of the <[brand].email> domain names registered by the Respondent have been the subject of prior proceedings under the Policy.¹ UDRP panels have ordered the transfer of the domain names at issue in all such cases decided to date. In addition, a number of the <[brand].email> domain names registered by the Respondent, including the disputed domain name, have been challenged under the Uniform Rapid Suspension System (URS). All but two of these URS proceedings to date have resulted in the domain names at issue being suspended. ² The Panel notes that the Examiner in the Complainant's URS proceeding on May 10, 2014, ordered that the disputed domain name be suspended, but the claim subsequently was denied in a URS appeal determination.

The Respondent on August 29, 2014, filed a complaint for declaratory judgment in the United States District Court for the District of Arizona, seeking to overturn the suspension of the domain name <playinnovation.email> under the URS. A copy of the federal court complaint and exhibits thereto has been submitted with the Response.

5. Parties' Contentions

A. Complainant

The Complainant maintains that the STUART WEITZMAN mark has been prominently and extensively used and is a highly distinctive trademark symbolizing substantial goodwill. The Complainant submits that the disputed domain name is identical to its STUART WEITZMAN mark, and that the addition of the gTLD ".email" does not distinguish the disputed domain name from the Complainant's mark.

The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant avers that it has not authorized the Respondent to use the Complainant's mark, and that the Respondent has not been commonly known by the disputed domain name. According to the Complainant, the Respondent is not using and has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent's business model has come under scrutiny in a number of decisions under the UDRP and URS, all of which have held that the Respondent's business model is clearly commercial in nature, and entirely dependent upon the Respondent's ability to acquire domain names incorporating third-party marks without the consent of the trademark owners. The Complainant contends that the Respondent, by preemptively registering domain names consisting of third-party marks in the ".email" gTLD space, is attempting to compel the Complainant and other similarly situated right holders to join the system. The Complainant urges the Panel to conclude that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

In light of the foregoing, the Complainant further contends that the Respondent has engaged in bad faith registration and use of the disputed domain name. The Complainant submits that the Respondent beyond question registered the disputed domain name with knowledge of the Complainant's prior trademark rights, with the specific goal of using the disputed domain name for commercial gain to get users for the Respondent's email services, thus exploiting and profiting from the goodwill developed by the Complainant in the STUART WEITZMAN mark and name. The Complainant argues that the Respondent's use of the disputed domain name in this manner will create a false impression that the Respondent's website or the email services offered on the Respondent's website are sponsored, affiliated with, or endorsed by the Complainant.

B. Respondent

The Respondent submits that the Complainant has not proven each of the three elements required in a UDRP proceeding by a preponderance of the evidence. The Respondent asserts that prior UDRP panel decisions finding the Respondent to be a cybersquatter lack evidence to support this finding, and that the basis for these decisions seems to be that registration of a domain name including a third-party trademark is "de facto cybersquatting", the Respondent is critical of the previous UDRP panelists, claiming that the Respondent's submissions have been "severely misinterpreted." The Respondent maintains that its business model is completely lawful under the UDRP and trademark law.

The Respondent does not contest that the Complainant has rights in the STUART WEITZMAN mark, but maintains that the disputed domain name is not identical or confusingly similar to the Complainant's mark because the disputed domain name is not being "used in commerce." According to the Respondent, when a domain name comprising a trademark is used in a back-end, non-public directory, such use is not a trademark use under the Lanham Act. The Respondent submits that the disputed domain name will only be used in the back-end, non-public process of verifying and routing emails.

According to the Respondent, a legitimate and lawful business model is being developed around the new ".email" gTLD platform. The Respondent allows that there are various aspects to the business model, but asserts that the one relevant to trademarks is the use of the disputed domain name as a back-end, non-public email server in order to route emails for the storing of metadata. This, according to the Respondent, will allow Yoyo.Email to certify delivery and potentially receipt of the emails. The Respondent represents that no third party, consumer, or anyone else outside Yoyo.Email employees will ever see the disputed domain name.

The Respondent asserts that demonstrable preparations have been made to use the disputed domain name in connection with a bona fide offering of goods and services – namely, the use of the disputed domain name in providing certification of email services. The Respondent represents this service will be free for both the sender and receiver of emails. The Respondent submits that the "www.yoyo.email" website is under development and should be launched soon.

The Respondent further contends that by limiting the use of the disputed domain name to route and capture email metadata, a legitimate fair use of the disputed domain name is being made. The Respondent states that the Complainant's trademark rights are not harmed, and that the Complainant is not required to pay for the certification of email provided by the Respondent. The Respondent concedes an intention to profit from providing email verification services, and from the use of generic domain names the Respondent has registered, but submits that this in no way supports the "leap" that the Respondent intends to profit from the disputed domain name or the Complainant's trademark.

The Respondent submits that the disputed domain name was registered and is being used in good faith. The Respondent insists that the disputed domain name is not being used to profit from creating a false impression that the disputed domain name is the Complainant's genuine Internet name, and that the disputed domain name was not registered for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant. The Respondent states that an offer from the Complainant to purchase the disputed domain name for USD 1,000 was summarily refused. The Respondent further submits that the disputed domain name was not registered for the purpose of disrupting the Complainant's business. The Respondent asserts that as the disputed domain name is being used in a way hidden from public view, there is no likelihood of confusion with the Complainant's mark.

According to the Respondent, a tremendous amount of time and money have been invested in developing a lawful business on the ".email" gTLD, and the Respondent should be allowed to launch the business model so that the Respondent's registration and use of the disputed domain name becomes clear. The Respondent submits that speculation and supposition about the Respondent's motives in insufficient to support a finding that the UDRP has been violated, and requests that the Complaint be denied.³

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

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

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant's STUART WEITZMAN mark. The Complainant has demonstrated rights in the mark through registration and use, and the Panel notes that the Respondent does not contest the Complainant's rights in the mark.

The Respondent asserts that the disputed domain name cannot be considered identical or confusingly similar because the Respondent is not using the disputed domain name in a trademark sense. The Respondent fails to appreciate the nature of the first element of the Policy. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.⁴ The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

Applying this standard, the disputed domain name is identical to the Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. Although the top-level domain may in appropriate circumstances be considered when evaluating identity or confusing similarity, top-level domains may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is identical to the Complainant's mark, has held the disputed domain name since then, and by all indications intends to use the disputed domain name without the Complainant's permission with a business model providing email delivery and certification services.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use 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 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 Respondent claims rights or legitimate interests arising from use or demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services – namely, the email services referred to above. In addition, the Respondent claims to be making a legitimate fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.

The Panel does not consider that the Respondent's registration and planned use of the disputed domain name is bona fide within the meaning of paragraph 4(c)(i) of the Policy. The Respondent has no right to appropriate the Complainant's mark for use with the Respondent's email service. The Respondent's intentional conduct prevents the Complainant from registering its mark as a domain name in the <.email> gTLD space, and potentially would force the Complainant to be an unwilling participant in the Respondent's commercial enterprise. See Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855 (<cravendale.email>). Further, the Respondent has merely asserted but never clearly articulated why it is required to use the disputed domain name as a behind the scenes technical link to provide its services. This assertion without more plainly is insufficient to demonstrate rights or legitimate interests under the Policy. Id. Even if the Respondent was able to show that the disputed domain name was a necessary technical link for its services, the Panel doubts any legitimate interest would be evident.

The Respondent's assertion to be making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy also is unsustainable. The Respondent's business model, as that term implies and the Respondent concedes, is intended to be a profitable, commercial enterprise. The Respondent's claim that the users of its services will not be charged does not establish otherwise. Moreover, it is not a legitimate or fair use for the Respondent to register domain names comprised of the Complainant's and thousands of other brand owners' trademarks, deliberately undertaken without the trademark owners' consent, to facilitate the creation of a directory of email addresses to support the Respondent's commercial venture. See, e.g., Arla Foods amba v. G. La Porta / yoyo.email, supra.

In sum, and having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel further finds that the Respondent is not making a legitimate noncommercial or other fair use of the dispute domain name. It is undisputed that the Respondent has not been commonly known by the disputed domain name, and that the Respondent has not been authorized to use the Complainant's mark in any manner.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) 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; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent, for purposes of its business model, has registered the disputed domain name and thousands of other domain names comprised of third-party marks in order to prevent the Complainant and other brand owners from reflecting their trademarks in corresponding domain names in the ".email" gTLD space. The record reflects that the Respondent has deliberately engaged in a pattern of conduct demonstrating bad faith registration and use under paragraph 4(b)(ii) of the Policy.

As noted earlier, the Panel has concluded that the Respondent has no right to appropriate the Complainant's mark for use with the Respondent's email service, and that the Respondent's intentional conduct in so doing prevents the Complainant from registering its mark as a domain name in the ".email" gTLD space. In the Panel's view the Respondent's registration and (passive) use of the disputed domain name more likely than not is intended to induce the Complainant to be an unwilling participant in the Respondent's commercial enterprise. The Panel considers this an abusive registration and use of the disputed domain name in circumstances evincing the Respondent's intent to profit from and exploit the Complainant's trademark – a bad faith practice the Policy was created to curb. Even if not intended to force the Complainant to participate in the Respondent's enterprise, overall the Respondent's conduct violates the spirit of the Policy.

Accordingly, the Panel finds that 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 <stuartweitzman.email> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: November 6, 2014

¹ Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730; NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0770; Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724; The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825; Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.Email Ltd, WIPO Case No. D2014-0805; Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855; Dunkin' Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email, NAF Claim No. 1568547 (August 25, 2014); L'Oréal SA v. Yoyo.email, Giovanni Laporta, WIPO Case No. D2014-1172; Groupama SA v. Giovanni Laporta, yoyo.email, WIPO Case No. D2014-1287; Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145; Maplin Electronics Limited v. Yoyo.Email, WIPO Case No. D2014-1346; O2 Holdings Limited v. Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399.

² See Deutsche Lufthansa AG v yoyo.email, NAF Claim No. 1552833 (June 18, 2014 –Suspended); Stuart Weitzman IP, LLC v yoyo.email et al., NAF Claim No. 1554808 (June 24, 2014 – Appeal – Returned); Playinnovation Ltd. v. yoyo.email et al., NAF Claim No. 1568549 (July 8, 2014 – Suspended); Lockheed Martin Corporation v. yoyo.email, NAF Claim No. 1563665 (Aug. 6, 2014 –Suspended); Beiersdorf AG v. yoyo.email et al., NAF Claim No. 1571112 (Aug. 7, 2014 – Suspended); McDermott Will & Emery LLP v. yoyo.email et al., NAF Claim No. 1564796 (Aug. 7, 2014 – Suspended); Anheuser-Busch, LLC v. yoyo.email et al., NAF Claim No. 1571472 (August 10, 2014 –Suspended); Foot Locker Retail, Inc. v. yoyo.email et al., NAF Claim No. 1565344 (Aug. 19, 2014 – Suspended); The Hartford Fire Insurance Company v. yoyo.email et al., NAF Claim No. 1574384 (August 25, 2014 – Suspended); eHarmony, Inc. v yoyo.email et al., NAF Claim No. 1575592 (September 4, 2014 – Returned); eBay Inc. v. Yoyo.Email et al., NAF Claim No. 1581264 (September 29, 2014 – Suspended); Virgin Enterprises Limited v. Yoyo.Email et al., NAF Claim No. 1585811 (October 28, 2014 – Suspended).

³ The Respondent asserts that when a legal proceeding is initiated prior to or during an administrative proceeding under the UDRP, paragraph 18(a) of the Rules gives the Panel the discretion whether to suspend or terminate the proceeding or proceed to a decision. The Respondent and its counsel apparently overlook the fact that paragraph 18(a) applies only "in respect of a domain-name dispute that is the subject of the complaint." The Respondent and its counsel apparently continue to disregard the plain language of paragraph 18(a). On November 6, 2014, the Respondent sent an untimely "additional submission" to the Center relating to the Respondent's lawsuit against Playinnovation, Ltd. (<playinnovation.email>). The Respondent attaches a "Declaratory Judgment" entered by the Court, which the Respondent proffers as a judicial determination that the Respondent's business model does not violate the UDRP. The Respondent's assertion is without merit: It is clear even from a cursory examination of the Court's order that there has been no adjudication on the merits. Rather, the Court has entered an agreed order submitted by the parties, memorializing a settlement agreement entered into between the parties in that case. The Respondent's settlement of a dispute with a different trademark owner concerning a domain name that is not the subject of the instant Complaint has no bearing on this administrative proceeding.

⁴ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.