eHarmony, Inc. v. yoyo.email et al.
Claim Number: FA1408001575592
Complainant: eHarmony, Inc. of Santa Monica, California, United States of America.
Complainant Representative: Fish & Richardson, P.C. of Minneapolis, Minnesota, United States of America.
Respondent: yoyo.email of Dunsatble, International, GB.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Honorable Karl V. Fink (Ret.), as Examiner.
Complainant submitted: August 18, 2014
Commencement: August 19, 2014
Response Date: September 2, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
1.2.6.2. that the Registrant has no legitimate right or interest to the domain name
1.2.6.3. that the domain was registered or is being used in bad faith.
Additional URS sections provide:
5.9 Other factors for the Examiner to consider:
5.9.1 Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves not indicia of bad faith under the URS. Such conduct, however, may be abusive in a given case depending on the circumstances of the dispute. The Examiner must review each case on its merits.
8.4 If the Examiner finds that the Complainant has not met its burden, or that genuine issues of material fact remain in regards to any of the elements, the Examiner will reject the Complaint under the relief available under the URS. That is, the Complaint shall be dismissed if the Examiner finds that evidence was presented or is available to the Examiner to indicate that the use of the domain name in question is a non-infringing use or fair use of the trademark.
8.5 Where there is any genuine contestable issue as to whether a domain name registration and use of a trademark are in bad faith, the Complaint will be denied, the URS proceeding will be terminated without prejudice, e.g., a URS Appeal, UDRP, or a court proceeding may be utilized. The URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.
Respondent has attached to its response a copy of its Complaint in Yoyo.Email, LLC v. Playinnovation, LTD (filed August 29, 2014, United States District Court for the District of Arizona, Case Number CV-14-01922-PHX-PGR). Complainant is not a defendant in that case.
In the U.S. District Court Complaint, Respondent states:
Respondent’s intention is to create a domain name directory and a system based on that directory to record the sending and receipt of emails;
Respondent does not intend to use the subject domain name as a URL/web address or to host a website;
Respondent has not made the subject domain name visible to the general public;
Respondent has not used any trademark protected domain name itself to monetize its service to consumers or trademark owners;
Respondent requests, among other relief, that the court declare Respondent’s business model is a legitimate and lawful business.
After reviewing the URS sections above and the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated by clear and convincing evidence that the domain was registered or is being used in bad faith.
The Examiner hereby ORDERS the following domain name be RETURNED to the control of Respondent.
<eharmony.email>
Honorable Karl V. Fink (Ret.), Examiner
Dated: September 04, 2014
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