3M Company v. Giovanni Laporta / Yoyo.Email
Claim Number: FA1410001585346
Complainant is 3M Company (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, USA. Respondent is Giovanni Laporta / yoyo.email (“Respondent”), represented by Enrico Schaefer of Traverse Legal, PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email>, registered with Godaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2014; the National Arbitration Forum received payment on October 17, 2014.
On October 17, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@3mdirect.email, postmaster@clarity.email, postmaster@futuro.email, postmaster@microtouch.email, postmaster@nexcare.email, postmaster@post-it.email, postmaster@scotch.email, postmaster@scotchgard.email, and postmaster@vanish.email. Also on October 20, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 10, 2014.
On November 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
On November 18, 2014, Complainant filed a timely Additional Submission.
On November 18, 2014, Respondent filed a timely Supplemental Response.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant uses 3M, CLARITY, SCOTCH, SCOTCHGARD, MICROTOUCH, NEXCARE, POST-IT, and VANISH to promote various products it markets to consumers. Each of the marks is registered with the United States Patent and Trademark Office ("USPTO"). The addition of “.email” to the disputed domain names does not defeat the identical nature of the domain names.
2. Respondent has no rights or legitimate interests in using the <3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email> domain names. First, Respondent has never been known by these domain names. Further, Respondent has never put any of the domain names to active uses.
3. Respondent registered and uses the domain names in bad faith. To start, Respondent is holding these many domains in hopes of preventing Complainant from reflecting its mark in domain names. Further, Respondent knew or should have known of Complainant’s rights in its trademarks prior to registering the domain names.
B. Respondent’s Contentions
1. Respondent runs a legitimate business of registering domain names for use in e-mail addresses, and prior UDRP decisions adverse to Respondent are based on speculation and conjecture. Respondent is not using any of the domain names to profit from advertising or other offers that derive from Complainant’s trademarks.
2. Respondent believes that a United States District Court proceeding involving an unrelated party serves as evidence of its rights for these domain names. See Yoyo.Email, LLC v. Playinnovation, Ltd., CV-14-01922-PHX-JJT (D. Az. Nov. 5, 2014) (Order of Declaratory Judgment, attached as Exhibit 1 by Respondent). In that order, the judge concluded that Respondent’s business model did not violate the UDRP or the Lanham Act, ACPA. This order was also consensual as between the parties.
3. Respondent notes various URS disputes in which it has prevailed—disputes involving a different rule set than the UDRP.
C. Complainant’s Additional Submission
1. The only explanation Respondent provides for its intended business purpose is that it will “use the subject domain name as a backend, non-public email server in order to route emails for the storing of Metadata which will allow yoyo.email to certify delivery and potentially receipt” (Response at 4). This intended business plan, which Respondent has failed to actually perform or make demonstrable preparations to perform, does not constitute a legitimate interest in the disputed domain names and demonstrates Respondent’s bad faith registration of the domain names.
2. In its Response, rather than set out arguments or facts to support the majority of its claims, Respondent cites to a “Declaratory Judgment” from a district court case involving the domain name playinnovation.email (incorporating another company’s mark, PLAYINNOVATION). Respondent filed a declaratory judgment action after losing that domain name in a URS proceeding. However, this “Declaratory Judgment” is in fact a consent judgment (the “Consent Judgment”), and does not reflect any actual findings by the court but rather the parties’ stipulations.
D. Respondent’s Supplemental Response.
1. The Respondent concedes that Judge Tuchi may have not agreed one way or another to the “details” of what was agreed (consented) between the parties in the Declaratory Judgment, but the judge did agree to the technical legalities of what was consented to the Declaratory Judgment.
1. Respondent’s <<3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email> domain names are confusingly similar to Complainant’s 3M, CLARITY, SCOTCH, SCOTCHGARD, MICROTOUCH, NEXCARE, POST-IT and VANISH marks.
2. Respondent does not have any rights or legitimate interests in the <3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email> domain names.
3. Respondent registered or used the <3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email> domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant uses 3M, CLARITY, SCOTCH, SCOTCHGARD, MICROTOUCH, NEXCARE, POST-IT, and VANISH to promote various products it markets to consumers. Each of the marks is registered with the USPTO. The Panel takes note of the following examples of Complainant’s USPTO registrations:
· 3M: USPTO Reg. No. 1,161,913, registered July 21, 1981;
· CLARITY: USPTO Reg. No. 2,145,335, registered March 17, 1998;
· FUTURO: USPTO Reg. No. 435,147, registered Dec. 9, 1947;
· SCOTCH: USPTO Reg. No. 503,709 registered Nov. 9, 1948;
· SCOTCHGARD: USPTO Reg. No. 630,698, registered July 17, 1956;
· MICROTOUCH: USPTO Reg. No. 1,282,227 registered June 19, 1984;
· NEXCARE: USPTO Reg. No. 2,423,613, registered Jan. 23, 2001;
· POST-IT: USPTO Reg. No. 1,046,353, registered Aug. 17, 1976; and,
· VANISH: USPTO Reg. No. 3,058,263, registered Feb. 7, 2006.
The Panel agrees that each of these USPTO registrations illustrates Complainant’s trademark rights in each of the respective marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that in each domain name Respondent creates the addition of “.email” to the disputed domain names does not defeat the identical nature of the domain names. Complainant argues that the <3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email> domain names are thus identical to the marks that lay within them. The Panel agrees with Complainant that in each instance the domain names are identical to the trademarks because tagging on the “.email” TLD is not relevant. See, e.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has never been known by these domain names. The Panel notes how Respondent claims to be a representative of the “Yoyo.Email” business. The Panel agrees that Respondent here is not known by the domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also notes that Respondent has never put any of the domain names to active uses. Respondent agrees that the domain names have no active use, though it has its own rationale as explained in the Response. The Panel notes Exhibit K to the Complaint, showing how there is indeed no active use of the domain names. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the panel agreed that the passive holding of domain names could not be construed as a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, of a domain name. The Panel does not believe Respondent’s planned use is a legitimate one, and it finds that Respondent has no rights in the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent is holding these many domains in hopes of preventing Complainant from reflecting its mark in domain names. The Panel agrees that Respondent’s bad faith is traceable to Policy ¶ 4(b)(ii) bad faith, at the very least based on Respondent’s registration of multiple identical domain names in this single proceeding involving Complainant and its marks. See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Complainant also argues that Respondent’s bad faith under Policy ¶ 4(b)(ii) is desmontrated by prior UDRP findings adverse to Respondent. In so arguing, Complainant points to several decisions where Respondent was found to have registered domain names in bad faith, and the disputed domain names were subsequently transferred. See, e.g., O2 Holdings Ltd. v. Giovanni Laporta, D2014-1399 (WIPO Sept. 24, 2014) (resulting in the transfer of <theo2.email> domain name); see Compl., at Attached Ex. L. The Panel determines that these prior UDRP decisions demonstrate a pattern of Respondent’s bad faith that informs the Panel’s present Policy ¶ 4(b)(ii) determinations. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Further, Complainant argues that Respondent knew or should have known of Complainant’s rights in its trademarks prior to registering the domain names. The Panel acknowledges that in its Response, Respondent claims to be using the domain name for “backend, non-public email server[s] in order to route emails for the storing of Metadata which will allow [Respondent] to certify delivery and potentially receipt.” This Panel believes that Respondent registered these domain names, knowing that Complainant had rights in domain names that are effectively identical to these marks, and the Panel infers Policy ¶ 4(a)(iii) bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mdirect.email>, <clarity.email>, <futuro.email>, <microtouch.email>, <nexcare.email>, <post-it.email>, <scotch.email>, <scotchgard.email>, and <vanish.email> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 26, 2014
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