WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Giovanni Laporta, Yoyo.Email
Case No. D2014-1743
1. The Parties
The Complainant is M.F.H. Fejlesztõ Korlátolt Felelõsségû, of Budapest, Hungary, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Giovanni Laporta, Yoyo.Email, of Traverse City, Michigan, United States of America ("U.S.A."), represented by Traverse Legal, PLC, U.S.A.
2. The Domain Name and Registrar
The disputed domain name <tezenis.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 October 7, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 October 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2014. The Response was filed with the Center on November 3, 2014. The Respondent filed a supplemental filing on November 6, 2014.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on November 11, 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.
The Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, i.e. the language of the Registration Agreement, which the Registrar confirmed to be English.
4. Factual Background
The Complainant is a company headquartered in Hungary which is associated with the Italian company Calzedonia S.P.A., with which it has developed a network of stores under the TEZENIS brand, selling underwear, knitwear, socks and nightwear for men, women and children. There are more than 300 such stores in Italy and more than 100 in other countries.
The Complainant is the owner of many trademark registrations worldwide, for instance the TEZENIS mark with International Registration No. 812597 registered on September 19, 2003, and the TEZENIS mark with International Registration No. 1035362 registered on March 12, 2010 (together, "the Mark").
The Complainant is also the owner of scores of domain names containing the Mark, its main domain name being <tezenis.it>.
The Respondent is an individual domiciled in the U.S.A. who is developing a business model around the new generic Top-Level Domain ("gTLD") ".email" to be operated by the private company Yoyo.Email Ltd., incorporated under the laws of England and Wales on March 31, 2014.
The disputed domain name was created on April 3, 2014.
5. Parties' Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <tezenis.email>, contains the Mark in its entirety.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never licensed or in any way permitted the Respondent to register or use the Mark in any manner. The Complainant also asserts that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and has never used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
(iv) The Complainant asserts that several UDRP panels have concluded that the Respondent provides no clear explanation why he has to register and own the disputed domain names for his business purpose of independently documenting the sending and receiving of emails.
(v) Finally, the Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but is instead passively holding the disputed domain name for commercial gain after the launch of his Internet business.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.
(i) The Respondent contends he is developing a legitimate and lawful business model around the new ".email" gTLD platform: while there are various aspects to this business model, the one relevant to trademarks is to use the disputed domain name as a backend, non-public email server in order to route emails for the storing of Metadata, which would allow Yoyo.Email to certify delivery and potentially receipt; no third party, consumer or anyone else outside Yoyo.Email employees ever sees the disputed domain name; it is impossible to claim trademark infringement since there is literary no trademark use of the disputed domain name
(ii) The Respondent alleges that his use of the disputed domain name is not identical or confusingly similar to Complainant's Mark since the Respondent is not actually using the disputed domain name as a mark "in commerce".
(iii) The Respondent contends that the fact that there is no evidence that a respondent uses or plans to use a domain name in connection with a bona fide offering of goods or services does not demonstrate bad faith; the Respondent alleges that he needs to use the disputed domain name to offer a credible service and does not possess a bad faith intent to mislead or divert consumers.
(iv) The Respondent asserts that in the absence of evidence, mere speculation and supposition about his motives is insufficient to support a finding that the UDRP has been violated; the Respondent has invested time and money to develop a lawful business around the ".email" gTLD and he should be allowed to launch that business so that registration and use become clear.
(v) The Respondent's responses in other cases have been severely misinterpreted by prior UDRP panels.
(vi) The Respondent requests that the Complaint be denied.
6. Discussion and Findings
A. Procedural Aspects
The Panel notes that the Respondent filed a supplemental filing on November 6, 2014. The Policy contemplates the filing of a Complaint and a Response, and does not take into account the matter of supplemental filings. It is therefore at the discretion of the Panel as to whether any supplemental filings should be admitted as evidence. A summary of the principles concerning supplemental filings applied by prior UDRP panels can be found in Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case D2010, 0776. The Panel has considered the Respondent's supplemental filing (in the form of a declaratory judgment of the United States District Court for the District of Arizona, relating to the domain name <playinnovation.email>) and admits it into the present record, whilst noting that it concerns a domain name unrelated to the disputed domain name in this case.
Under paragraph 4(a) of the Policy, it is the Complainant's burden to establish that all three of the required criteria for a transfer or cancellation of the disputed domain name have been met.
B. Requirements of Paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <tezenis.email>, it is evident that the latter consists solely of the Mark and the gTLD ".email".
Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
As far as the Respondent's argument that the disputed domain name is not identical or confusingly similar to Complainant's Mark since the Respondent "is not actually using the disputed domain name as a mark in commerce", the Panel points to the consensus view of UDRP panelists that the threshold test for identity and/or confusing similarity under the first element of the UDRP involves a straightforward comparison between the trademark and the disputed domain name (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0", paragraph 1.2) to be made objectively and regardless of whether or not the disputed domain name is in fact being used (see e.g., O2 Holdings Limited v. Yoyo.email/Giovanni Laporta, WIPO Case No. D2014-1399).
The Panel finds that the disputed domain name <tezenis.email> is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
There is no evidence that the Respondent is commonly known by the disputed domain name, or a corresponding name, or uses a corresponding name in a business.
The Panel must nevertheless analyze whether or not the Respondent may claim rights or legitimate interests in the disputed domain name because it used the same in connection with a bona fide offering of goods or services (Policy, paragraph 4(c)(i)), or whether there are other circumstances in the case at hand which demonstrate such rights or legitimate interests within the broader meaning of the non-exclusive case scenarios set forth by paragraph 4(c) of the Policy.
The Respondent's business model has lately been the subject of a number of UDRP decisions by independent panels, inter alia: Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; Merjeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730; 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; O2 Holdings Limited v. Yoyo.email / Giovanni Laporta WIPO Case No. D2014-1399; AA Brand Management Limited v. Giovanni Laporta,Yoyo.Email Ltd, WIPO Case No. D2014-1444.
Those cases identified the weakness in the Respondent's argumentation in that nothing had been put before the respective panels to justify or even to explain why the Respondent actually has to register and own an important number of domain names under the gTLD ".email" containing third party trademarks (many of which are well-known, if not famous) to run his business model.
In the case at hand, the Respondent points to the fact that while there are various aspects to his business model, the one relevant to trademarks is "to use the disputed domain name as a back-end, non-public email server in order to route emails for the storing of metadata which will allow Yoyo.Email to certify delivery and potentially receipts". The Respondent argues that "no third party, consumer or anyone else outside Yoyo employees ever sees the domain name at issue and that, therefore, it is impossible to claim trademark infringement since there is literally no trademark use of the domain name".
The Panel expresses no view on whether the disputed domain name, if used as part of the Respondent's business model, will not be visually perceived by Internet users. It is however undisputed in the case at hand, if not expressly confirmed by the Respondent's own allegations, that the disputed domain name will be used at least in a technical sense to route emails which are somehow associated with the Complainant's Mark.
The Respondent has not brought forward any evidence or argument as to why such a technical or even hidden use of the Complainant's Mark should be considered bona fide, considering that the disputed domain name is an unauthorized, independent use of Complainant's Mark.
On the contrary, it is also undisputed that the Respondent was totally aware of the Complainant's Mark when registering the disputed domain name just as he was aware of all the other third party trademarks which are reflected in the thousands of ".email" domain names registered by the Respondent.
The Respondent's business model is clearly built upon an intended, technical connection between his domain names (including the disputed domain name) and the third party trademarks reflected therein.
Many UDRP panels have held that offering goods or services cannot be found bona fide when the user of the domain name at issue would not choose such name unless he was at least seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067) or if the respondent was inevitably on notice of the existence of the third party's business and trademark and, therefore, took the attendant risk of conflict with the third party trademark (see Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941).
On this basis, the Panel agrees with a number of other panels "that it is not legitimate for Respondent to seek to put itself in a position where trademark owners like Complainant are induced to sign up for Respondent's service (which is planned somehow to make money) because Respondent holds a domain name entirely incorporating that owner's distinctive trademark" (The Royal Bank of Scotland Group plc., National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta,supra).
The Respondent's registration of the Complainant's Mark as a ".email" domain name and his use of it as part of a for-profit business model because of that Mark's goodwill cannot be considered to convey to the Respondent any rights or legitimate interests in the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
The Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent acted in bad faith by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In the case at hand, not only is it highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark, but on the contrary, it is implied in the Respondent's Response that he had the Mark in mind when he registered the disputed domain name. See Barney's Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also demonstrate bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
It is undisputed that the Respondent registered thousands of domain names reflecting third party trademarks, including the Complainant's Mark, in the ".email" gTLD space, and thus that the Respondent has engaged in a pattern of conduct which prevents the owners of those trademarks, including the Complainant, from reflecting their own trademarks in a corresponding ".email" domain name. See The Royal Bank of Scotland Group plc., National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, supra.
Such behavior obviously fulfils paragraph 4(b)(ii) of the Policy, which states that registration of a domain name "in order to prevent the owner of a trademark…from reflecting the mark in a corresponding domain name, provided that [respondent] has engaged in a pattern of such conduct" is evidence of the registration and use of a domain name in bad faith.
The Panel stresses that bad faith within the meaning of the UDRP includes those scenarios, where a domain name owner, in the absence of rights or legitimate interests to the disputed domain name, interferes with the trademark owner's interests (including where the trademark owner deliberately chooses whether or not to reflect their trademarks in a respective domain name).
It is a consensus view among UDRP panels that in appropriate circumstances the mere passive holding of a disputed domain name may be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
In the case at hand, the disputed domain name in fact is "passively" used (in some hidden way), and the purpose of using the disputed domain name (in which the Complainant owns trademark rights) is a business model running for commercial gain.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds that this, taken together, supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent's registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <tezenis.email> be transferred to the Complainant.
Date: November 25, 2014