MySQL AB v. Giovanni Laporta / Yoyo.Email
Claim Number: FA1412001595391
Complainant is MySQL AB (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Giovanni Laporta / yoyo.email (“Respondent”), represented by Traverse Legal, PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysql.email>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2014; the National Arbitration Forum received payment on December 23, 2014.
On December 16, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mysql.email> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2015 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@mysql.email. Also on December 29, 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 on January 19, 2015.
On January 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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
Complainant owns, promotes, and enforces the distinctive and famous MySQL trademark and its corresponding logo (the “MySQL Marks”) and makes extensive use of them such that they have become globally famous. Created in 1994-95 and first named MySQL in 1996, the MySQL product is one of the world's most widely used open-source relational database management systems. The letters “SQL” stand for the phrase “Structured Query Language” and “My” is the name of one of the co-founder’s daughters. The term “MySQL” has no other recognized meaning in any language and is not a given name or surname in any country or culture.
The MySQL product is used in a wide range of internet website applications on such well-known sites as Google, Facebook, Twitter, YouTube, etc. and often functions without the website user being aware of its existence. As part of its MySQL offering, Complainant also provides a variety of related services including training, developer certification, consulting, and customer support.
In 2008 MySQL AB was acquired by Sun Microsystems and then, in 2009, Oracle Corporation entered into an agreement to purchase Sun Microsystems. The MySQL Marks are extensively promoted by Complainant and its parent company. Since the majority of Complainant’s target customers are developers, programmers, and website designers, Complainant promotes its products and services on the website <www.MySQL.com> and there is a dedicated MySQL page on the www.Oracle.com website. Extensive use has been made of social media, Complainant maintains MySQL sales operations in many countries throughout the world, and print advertisements have appeared in both mainstream and industry-targeted publications.
Complainant generates significant sales revenue as a result of its development, promotion, use, and sale of the MySQL products and services. As a result of Complainant’s long usage and promotion of its MySQL Marks, they have become famous and widely recognized around the world.
The MySQL Marks are also aggressively protected through registration and enforcement. Complainant owns many trademark registrations around the world for the MySQL Marks, including the following:
Mark Goods and Services Reg. No. (Country) Reg. Date
MYSQL Logo Classes 9, 16, 41, and 42 (below) 2792127 (US) 9-Dec-2003 (Filed 6-Jul-2001)
IC 009. US 021 023 026 036 038. G & S: Computer software for information processing, namely, database management and development. FIRST USE: 20010917. FIRST USE IN COMMERCE: 20010917
IC 016. US 002 005 022 023 029 037 038 050. G & S: Computer program manuals in the field of computer software for information processing, namely, database management and development. FIRST USE: 20010917. FIRST USE IN COMMERCE: 20010917
IC 041. US 100 101 107. G & S: Computer education training. FIRST USE: 20010917. FIRST USE IN COMMERCE: 20010917
IC 042. US 100 101. G & S: Consulting services in the field of design, selection, implementation and use of computer software systems for others; installation of computer software; maintenance of computer software; technical support services, namely, troubleshooting of computer software problems. FIRST USE: 20000917. FIRST USE IN COMMERCE: 20010917
MYSQL Classes 41 and 42 (below) 2948540 (US) 10-May-2005 (Filed 4-May-2001)
Goods and Services IC 041. US 100 101 107. G & S: Computer education training. FIRST USE: 20000930. FIRST USE IN COMMERCE: 20000930
IC 042. US 100 101. G & S: Consulting services in the field of design, selection, implementation and use of computer software systems for others; installation of computer software; maintenance of computer software; technical support services, namely, troubleshooting of computer software problems. FIRST USE: 19990608. FIRST USE IN COMMERCE: 19990608
MYSQL Classes 9, 16, 41, and 42 (below) 3397122 (US) 18-Mar-2008 (Filed 6-Dec-2006)
IC 009. US 021 023 026 036 038. G & S: Downloadable electronic publications in the nature of books, articles, newsletters and computer manuals in the field of computer software. FIRST USE: 19961111. FIRST USE IN COMMERCE: 19961111
IC 016. US 002 005 022 023 029 037 038 050. G & S: Publications in the nature of books, articles, newsletters and computer manuals in the field of computer software. FIRST USE: 19961130. FIRST USE IN COMMERCE: 19961130
IC 041. US 100 101 107. G & S: Providing non-downloadable online publications in the nature of books, articles, newsletters and computer manuals in the field of computer software; providing newsletters in the field of computer software via email. FIRST USE: 19961111. FIRST USE IN COMMERCE: 19961111
IC 042. US 100 101. G & S: Providing information online in the field of computer software. FIRST USE: 19961111. FIRST USE IN COMMERCE: 19961111
MYSQL Classes 9, 41, and 42 (below) 2252195 (CTM) 3-Feb-2003 (Filed 25-Jul-2001)
9 Computer software and hardware for information processing, namely, database management and development, all for general use, and user manuals sold as a unit.
41 Training and education services in relation to software.
42 Computer services, namely, design, development, consultation, installation, integration, maintenance, and technical support services for software.
Respondent’s registration of the <MySQL.email> domain violates the Policy.
Preliminary issue – court proceedings: It should be noted that Yoyo.Email LLC had filed two separate legal proceedings involving certain of its .email domains: (i) an action in the United States District Court for the District of Arizona against Playinnovation Ltd., a winning complainant in a URS decision[1], and (ii) a claim for money filed with the HM Courts & Tribunals Service, County Court Business Centre, of the United Kingdom, against The Royal Bank of Scotland plc, relating to certain domain names.
However, the Complainant in the present case is not a party to such legal proceedings and it is not within the jurisdiction of either of the involved court or tribunal to issue any order relating to the <MySQL.email> domain. In Bank of Scotland Plc v. Giovanni Laporta (Yoyo.Email), WIPO Case No. D2014-1539, the Panel agreed with this position stating that “Having due consideration to those legal proceedings, this Panel, pursuant to paragraph 18(a) of the Rules, has decided to proceed to a decision in this case.” As such, these legal proceedings should not hold up the present case.
The <MySQL.email> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <MySQL.email> domain is confusingly similar, on its face, to Complainant’s MySQL Marks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant’s Marks and Respondent by Respondent’s use of the <MySQL.email> domain.
It has been held, in decisions too numerous to mention, that the mere addition of a TLD to a famous trademark does not avoid confusing similarity. See, e.g., Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539 (“The disputed domain name consists of the HALIFAX mark in its entirety and the gTLD ‘.email’. Since the addition of a gTLD after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark”).
Similar to the above-cited decisions, the Respondent in the present dispute initially attracts internet users by employing an identical copy of the Complainant’s MySQL Marks followed by the generic top-level domain “.email”. This particular TLD may actually enhance confusion by making users who type this domain into their browsers or otherwise see the domain think that they are being linked to a website or service that is licensed or authorized by Complainant and related to its email communications.
In past claims against Respondent’s various .email domains it has claimed that its domains will never be seen by the public and are only used for Respondent’s internal processing thus eliminating any chance of public confusion. However, this defense has been soundly rejected by UDRP Panels and, in any case, ignores the nature of this first element of ¶4(a). See, e.g., Stuart Weitzman IP, LLC v. Giovanni Laporta , Yoyo.Email Ltd., WIPO Case No. D2014-1537 (“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. * * * Applying this standard, the disputed domain name is identical to the Complainant's mark for purposes of paragraph 4(a)(i) of the Policy.”)
(c) Respondent has no rights or legitimate interest in the domain name <MySQL.email> domain Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <MySQL.email> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i) and no preparations it may have made in creating its planned email business change that reality. In past cases Respondent has claimed that “because the disputed domain name containing the Complainants' well reputed mark is being used in a back-end, non-public-facing capacity, albeit for a commercial email verification service, that this use is bona fide.” Accor SoLuxury HMC v. Yoyo.Email, Giovanni Laporta, WIPO Case No. D2014-1650. Despite its claim that “[p]rior panelists have engaged in little more than speculation and conjecture about Respondent’s business model”, Bank of Scotland, supra, what the Respondent has failed to explain in well over 30 UDRP and URS cases brought against it, is why it was necessary to register domain names incorporating famous trademarks such as MySQL in the first place? Numerous UDRP panels have come to the conclusion that the Respondent could have registered many other domain names for its technical purpose without copying well known trademarks. See, e.g., The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. DomainManager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730; Groupama SA v. Giovanni Laporta, yoyo.email, WIPO Case No. D2014-1287 (“nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain name for purpose of a certified email service.”). In fact, an Affidavit of Enrico Schaefer, which Respondent emailed to Complainant’s counsel, specifically notes that “there may be other ways to perform some of the functions described in the yoyo.email business model and certified email system….”
In the Accor SoLuxury decision, supra, the Panel considered past decisions against Respondent as well as the facts of that particular dispute and stated:
This Panel is similarly not persuaded by the Respondent's arguments and does not consider that the mere act of using a domain name, particularly one containing a mark that is so well reputed, for a back-end, non-consumer-facing service, is necessarily bona fide. Even if such a use does not amount to trade mark infringement under particular national laws, that is not the test under the Policy, and such registration without a supporting trade mark right or a credible justification does prevent the bona fide owner of an identical mark from registering in the ".email" gTLD space.
Id. Similarly, in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686, the facts are nearly identical to those of the present dispute and, after the Respondent was given great leeway in explaining its planned email service and its legal positions on the various UDRP elements, the Panelist held that:
the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. 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.
Id. The Panelist also noted that Respondent has registered many other domains incorporating other famous trademarks and stated that “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.” Id.
Finally, despite Respondent submitting into evidence, in the Bank of Scotland Plc case, what it claimed to be a declaratory judgment in the US action against Playinnovation Ltd., the decision further noted that “it appears to this Panel that such ‘declaratory judgment’ is actually in substance a settlement agreement between the parties to that proceeding and therefore does not, as Respondent would have it, constitute a judicial determination that Respondent’s business model is consistent with the UDRP.” Id. at fn 10.
Next, Respondent is not known, commonly or otherwise, by the MySQL Marks or the <MySQL.email> domain under Policy ¶4(c)(ii). It is also not licensed to use the MySQL Mark and does not own any trademark or service mark rights in such Marks. It is known only as Yoyo.email or Mr. Giovanni Laporta.
As for Policy ¶4(c)(iii), Respondent’s plans for the <MySQL.email> domain are not a “noncommercial” or “fair use.” Although Respondent has claimed in some past cases that its planned service will be free to users and is thus somehow a fair use of the various complainants’ trademarks, it has already been established, from Respondent’s submissions in other prior cases against it, that its scheme will be monetized in some fashion (perhaps by the use of ads or by data gathering?). Respondent is simply not providing this undertaking out of the generosity of its heart as a free public service. See, McDermott Will & Emery LLP, v. yoyo.email et al., NAF URS Claim No. 1564796 (2014) (Respondent states that “there will be commercialization of the Yoyo website ‘by various means’ which will be explored as the website develops.”); Lockheed Martin Corporation v. yoyo.email et al., NAF Claim No. 1563665 (2014) (“Respondent argues that its proposed email recorded delivery service is a fair use, since the service will be provided free. However, the undisputed record evidence shows Respondent’s intent to monetize the free email service.”); Deutsche Lufthansa AG v. yoyo.email et al., NAF Claim No. 1552833 (“In the Examiner’s view the Respondent has intentionally attempted to attract for commercial gain Internet users to <lufthansa.email> web by creating a likelihood of confusion with the “LUFTHANSA” mark”).
Another fair use argument Respondent has put forth in the past is that its business model will only make a nominative fair use of the disputed domains. However, the reality is that the Respondent is not using the various trademarks in a nominative manner to describe his services but rather to create a false impression that the services are somehow associated with the owners of the various trademarks he has copied, such as Complainant and its MySQL Marks. This precise point was addressed in a concurring decision in Statoil ASA (“Statoil”) v. Giovanni Laporta, WIPO Case No. D2014-0637. There, the concurring Panelist first stated that “the Panel has (correctly) decided not to consider” the fair use issue but then went on to point out that “Respondent's service can be readily identified without using the Complainant's mark as a domain name, and such use would likely create a false impression of sponsorship or endorsement by the Complainant. Both of these considerations preclude the Respondent from asserting nominative fair use.” Id. He concludes with the statement that “in light of the scale of the Respondent's undertaking, I think it is reasonable to infer that he was aware of this likelihood [that his domains give the impression of a commercial connection with the trademark owners], and that he knew or should have known that his planned use of the Complainant's and others' marks would not be defensible.” This conclusion is also reached by both the Beiersdorf AG decision, supra, which holds “Registrant cannot pass the first test of nominative fair use because the product/service it purports to offer can be readily identified without using the marks”, Id. and the Anheuser-Busch decision, supra, in which the Panelist found that “Respondent's defense that he needed to use the [budlight.email] name for an email service does not constitute a legitimate right or interest.” Id. As such, its actions are commercial and do not fall within Policy ¶4(c)(iii).
More properly this situation may be compared to cases involving supposed “vanity” email addresses. In Elorg Company, LLC and The Tetris Company, LLC v. 0x90, NAF Claim No. 114355 (2002), the respondent claimed that it had "rights and legitimate interests" in the <tetris.net> domain name because “the name is offered as a vanity email address for fans of the TETRIS computer game.” Id. The Panelist first addressed respondent’s citation to prior decisions involving vanity email addresses which have allowed such practice but distinguished these as having all turned on the fact that the domains at issue consisted of generic terms or surnames and were not attempting to “capitalize on the trademark value of the terms.” Id. He went on to hold that “the evidence establishes that "tetris" is not merely a surname belonging to and used by many people in a non-trademark sense and that Respondent is using the <tetris.net> domain name in a trademark sense in an effort to attract fans of the game. Accordingly, the Panel finds that Respondent does not have legitimate rights or interests in the disputed domain name.” Id.
In the present case the Respondent is clearly using the name MySQL for its trademark significance in its <MySQL.email> domain and is seeking to commercialize such use. As such, this case is on all fours with the facts of the above-cited prior cases which have consistently been decided against Respondent. The Panel in the present case is encouraged to adopt the reasoning of these past decisions and make a similar holding with regard to ¶4(a)(ii) as it applies to the <MySQL.email> domain.
(c) Respondent Registered The <MySQL.email> domain In Bad Faith Under Policy ¶4(a)(iii).
Respondent intentionally used the Marks without consent from Complainants and was put on actual notice of Complainant’s rights in its globally famous MySQL Marks through Complainant’s extensive use of such Marks which long predate the creation date of the <MySQL.email> domain. Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks and, thus, in bad faith. See, e.g. Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email, NAF Claim No. FA 1568547 (2014) (“Respondent does not contest the fact that it was on actual notice of Complainants’ marks, and (in fact) that it registered the domain name precisely because it corresponded to Complainants’ well-known trademarks.”)
In Statoil ASA, supra, the Panel noted that “Respondent states that he is therefore in the process of collecting domain names of potential users of the system” which leads to the conclusion that it “registered the disputed domain name with full knowledge of the Complainant and its rights.” Id. In holding that the domains were registered and used in bad faith the decision states that:
[i]n the Panel's opinion, the Respondent registered the disputed domain name, which corresponds to the Complainant's well-known STATOIL Marks, to oblige the Complainant to join its system and therefore to benefit from the Complainant by the preemptive registration. Furthermore, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Id.
Nearly identical findings were made in other decisions regarding Respondent’s prior knowledge of complainant’s trademark and its intent to oblige the complainant to join its email system. See, Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730 (“Respondent admits that it deliberately registered the disputed domain names, as it makes clear that a purpose of owning it was to oblige the Complainant to join its system”), citing Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, supra. The fact that the Statoil ASA and Mejeriforeningen decisions were rendered by three-member Panels provides further weight to their holdings
Next, in Starwood Hotels, supra, the Panelist found bad faith noting that “[t]he Respondent has not adequately demonstrated how or why it is that he needs to be the registrant of domain names incorporating other parties’ trademarks to make his intended service functional and viable.” Id. This has been a recurring theme in most of the prior cases against Respondent and it has been summarized in a recent decision as follows:
It seems to this Panel that Respondent is trying to justify its misappropriation of third parties’ marks (some of them well-known internationally) based on its purported business model. This Panel agrees with the Panel in Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145: “Respondent fails to recognize that though his concept for a business may be legitimate, he cannot build his business on the back of another’s rights. Such registration and use of this domain name and thousands of others which include other brands indicate bad faith as intended under the Policy. The way he explains his business, he would not have a business [with respect to confirming emails to Sanofi] if he did not utilize the disputed domain name containing Complainant’s trademark. Whether or not his customers see the back-room features, he is exploiting Complainant’s mark for a commercial purpose”.
Bank of Scotland Plc, supra. In the present case, Respondent has no greater need to use the <MySQL.email> domain than any of the other .email domains which have been transferred or suspended in prior UDRP and URS decisions.
For now, Respondent has no active website affiliated with the <MySQL.email> domain and has merely passively held the <MySQL.email> domain. However, beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, a number of Panels have held that “paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith….” Telstra, supra. The Panel in that case went on to state that “in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”). See also, Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483 and Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250 (collecting cases citing Telstra).
Further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged involving cybersquatted domain names. Policy ¶4(b)(ii). Many UDRP and URS decisions adverse to Respondent have been cited above and attached as Exhibit G hereto is a list of cases brought against Respondent’s email domains. In the Bank of Scotland Plc case, supra, the Panelist found that “it seems that Respondent’s conduct falls under paragraph 4(b)(ii) of the Policy … where respondent has engaged in a pattern of such conduct.” Id. See also, AA Brand Management Limited v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-1444 (“Respondent has engaged in a pattern of conduct, which prevents the owners of those trademarks, inclusive of Complainant, from reflecting their own trademarks in a corresponding .email domain name.”). This shows that Respondent’s current transgression against the MySQL Marks is not an isolated incident but that its poorly conceived plan to offer an ill-defined email service based on famous trademarks is quickly unraveling.
In sum, the facts here strongly demonstrate that Respondent has registered and used the <MySQL.email> domain in bad faith under Policy ¶4(a)(iii).
B. Respondent
There is no legitimate basis, based on actual evidence, for transferring the disputed domain name(s) to Complainant. In fact, the evidence establishes that Respondent registered the domain name for a legitimate business purpose, with the good faith intent to comply with all laws, including trademark laws. There has been no use of the domain to date. The intended use is not a trademark use, or public use. There has been no trafficking of the domain.
A Complainant in a UDRP proceeding must establish three elements to succeed: 1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Registrant does not have any rights or legitimate interests in the domain name; and 3) the Registrant registered the domain name and is using it in “bad faith.”
The facts are the Respondent purchased all its .email domain names lawfully in good faith. It is a legitimate technology business responding to ICANN’s express goal for the new gTLD program and expanding consumer choice on the internet. Respondent has invested tremendous time and money to developing a lawful business under the .email gTLD. See; http://yoyo.email (holding page) http://yoyo.email/beta which is under development and should be launched soon. Please note Yoyo beta site is not yet fully functional and is subject to change. If presented with a splash entry screen please enter access password [redacted] to view live test site.
Prior Examiners have concluded that Respondent is breaking the law, (cybersquatting), based on pure speculation and despite the lack of evidence supporting such a finding. The Respondent’s has been repeatedly misquoted and its previous Responses have been grossly and deliberately misinterpreted and in some cases Examiners have made facts up. Facts such as the “Respondent has readily admitted that it aims is to oblige trademark holders to join it service”. This UNTRUE.
The evidentiary basis of these adverse decisions seems to be because the trademark is included in a domain name and there is no permission from a Complainant, that its defacto cybersquatting. The UDRP says no such thing.
To date. The only evidence that has been known as fact, is that the Respondent purchased its <.email> domain names assets. The purchase of domain names cannot by itself evidence bad faith intent OR bad faith use. The purchase by a non-trademark holder of a domain name that includes a matching trademark is NOT prohibited under the UDRP. Nor does a Registrant require permission from any particular trademark holder before deciding to purchase a domain name featuring a matching trademark. The UDRP Policy is clear on this issue. Otherwise there would be no good faith uses or fair uses in which a Registrant can demonstrate its rights in accordance with Policy Rule 4C (i) and Rule 4C (iii). Effectively making Policy rules useless.
The UDRP does NOT say that every registration of a domain name that knowingly includes a matching trademark is a violation of the UDRP. Yet, this is the way some UDRP Examiners are now interpreting the Policy as it relates to Yoyo. This is extremely dangerous precedent and undermines ICANN’s stated goal of innovation with its new gTLD program, and the spirit of UDRP AND raises serious questions in the competence and credibility of UDRP Examiners.
Prior Examiners have made bad faith findings by simply saying that the Respondent violated the Policy the moment it purchased a domain name which the Respondent was “not commonly known under or held a trademark”. These Examiners have misunderstood ICANN’s intentions and its Policy. The process after the Sunrise Period[2] given exclusively to owners of matching trademarks by ICANN is that all domain names go on sale to the public. The UDRP Policy does not prevent a Registrant who does not fall under either illustration from purchasing a domain name after domain names go on general sale, if this was NOT ICANN’s desire then the Policy would have said so. It does not. It’s fair to say ICANN and trademark law envision ways in which domain names which may include trademarks can be used legitimately when guided by Policy rules, by all. If this was NOT ICANN’s intention then the disputed domain name should never have gone on general sale without a warning notice written in plain language that domain names featuring trademarks can NOT be purchased by anyone other than a trademark holder and/or by someone that can be commonly known by the domain name. There is no such notice before purchase or any such language used in the UDRP Policy or written into the terms and conditions of GoDaddy.com, who was the Registrar that sold the domain name to the Respondent.
It is also worth noting, that the Complainant as holders of a matching trademark had an exclusive opportunity given to them by ICANN lasting three whole months to secure the domain names at issue during ICANN’s Sunrise Period and did NOT DO so. In contrast, the Respondent paid and acquired its business domain name assets legitimately when the domain names went on public sale in keeping with “fair and good use” Policy rules. It is not understood why the Complainants IT department did not opt to purchase the subject domain name when there was a clear opportunity to do so. It can only be presumed the Complainants did not want to purchase them at the time. The very existence of a limited Sunrise period would suggest there must come a time when all domain names can be purchased legitimately when guided by Policy rules. Otherwise what’s the point of a limited period, it would last indefinitely, if such a “time” did not exist.
Prior Examiners have engaged in little more than speculation and conjecture about Respondent’s business model, and its intentions and relied on unsupported statements in prior decisions, which in all cases were unproven, never argued and certainly not supported by any independent evidence. Contrary to what prior Examiners have reported the Respondent has NOT used its domain names to profit from advertising connected to the use of a trademark web service. Nor is there any evidence, beyond raw speculation or regurgitated undocumented hearsay from prior panel decisions, to support any future intent to use the subject domain in such a way. All the evidence is to the contrary.
There is also suggestion that somehow using a brand name as opposed to the corporate name suggests bad faith. Because these domain names are simply being used to store email metadata, it doesn't matter what short hand domain is chosen to represent the company. This type of operation is not bad faith.
Yoyo is primarily a consumer focused service working on behalf of the sender (Consumer) and NOT the receiver. Yoyo is the neutral party that sits between sender and receiver and works on behalf of the sender as proof the email has been sent, much like regular mail courier services. Therefore Complainants are under the false impression that the Respondent’s service could never be a legitimate service without the “support” of the organizations to which it is directed. This reasoning is illogical, if it were not, it would mean that all mail & parcel courier services throughout the world in order to become legitimate, would need the “support” from organizations (trademark holders) before accepting mail directed to them. It’s nonsense. It is also NOT bad faith to purchase variations of a domain name required for the same service. Such as <glaxosmithkline.email> and <gsk.email>. It was not illegal to purchase either domain name. Purchasing variations of a domain name and then deciding which if any to keep is NOT bad faith. Domain names were NOT stolen they were paid for when they went on general release to the public. In fact all suggested “bad faith” views made by prior Examiners and Complainants are themselves bad faith attempts to manipulate the facts and UDRP Policy rules.
Complainants have shown multiple times they have severely misunderstood the Respondents service, which is not simply concerned with what the Complainant wants or even how the proposed email service is finally delivered but whether the service is easily understood by consumers and how it can function within the law.
For the sake of completeness. The initial idea is to launch the service as a closed software service which means that users can only send emails via the Respondents software, so initially the service works as a back end service where all emails are directed and documented internally by name. At this point domain names are not seen by the general public, however domain names will be used to forward emails to the respective company (recipient). At this point there can be no confusion as to source and origin as the company (recipient) cannot be confused to who they are.
Further. The service at some point in the future may be extended so that consumers can send emails via any email client software, the intention is to expand consumer choice. However as long as users sent emails using the Respondents domain names which pass through its owns email servers Yoyo could still provide an email certified service when emails are then sent from other software email clients.
Both Examiners and Complainants have shown multiple times that they have misunderstood the UDRP Policy which is NOT simply concerned with what the Complainant wants or even viability of the Respondents proposed email service but whether there was any bad faith intent at time registration or abuse of domain name registration. Both Examiners and Complainants fail to provide credible evidence that supports Policy requirements.
Some Examiners have even dismissed a court order which in plain language clearly supports THE RESPONDENTS service model; because oddly they say the court order is “without merit” as it “did not directly address the factual circumstances of these current proceedings”; AND yet these Examiners are quite open to use a number of UDRP case precedent against the Respondent where UDRP cases are undefended and where the case facts are entirely different when assessed against the Respondents service model. It’s a contradiction in legal standards.
ICANN’s UDRP policy is intended to prevent trademark owners from being extorted by cybersquatters, but it is also intended to protect individuals who register domain names in good faith and have a legitimate interest in the domain names from overreaching trademark owners or worst trademark bullies. A correct application of the spirit and letter of the UDRP gives each of these concerns equal weight. The UDRP was designed to provide a quick and relatively inexpensive procedure that could be used by TM owners against those who register domain names in bad faith AND without a legitimate right or interest. As with the spirit of the UDRP, the procedure may only be initiated by TM owners. Previous Examiners have spectacularly failed to balance these concerns. Inconsistent application of the UDRP undermines the integrity of both ICANN and the UDRP.
On November 5, 2014 the United States District Court of Arizona entered a judgment, which stated that “[p]laintiff’s legitimate purpose seeking to certify the sending and receipt of emails, as described in the Complaint, does not evidence a bad-faith intent to profit from the “registration, use or trafficking” of a domain name.” which is incorporated herein by reference. The Court specifically ordered that the “[p]laintiff has a good faith intent to register, use, and traffic” the specific “.email” domain name at issue in that case, the “[plaintiff’s intended use of [the specific “.email” domain name] as set forth in the Complaint is not trademark use,” and “[p]laintiff’s intended use of [the specific “.email” domain name] as described in the Complaint is not a violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) et seq., the Lanham Act, 15 U.S.C. § 1051 et seq., the ICANN URS and UDRP policy or other law. In this case, the Respondent is using the subject domain name in the same manner as he was with the domain in Case No. CV-14-01922-PHX-JJT. Specifically, the Respondent is using the subject domain name as a non-public, back-end email server used to link multiple email servers, to track, record, and verify email communication. Whatever prior Examiners may think of the Declaratory Judgment obtained in the United States District Court of Arizona, one thing is known for sure, the court did not have to agree to enter the Judgment. We urge the Examiner in this case to read the court order as it was not “just” a consent order or “just” a stipulation between parties”. In particular see page 2 what was Adjudged, Ordered and Decreed. The judgment could not include a declaration which the court had not seen as entirely sound in law, and that, accordingly, the decision is persuasive precedent which the Respondent amongst other evidence, intends to rely in any further legal proceedings. The Respondent has gone to great effort to show it is a legitimate technology service and Examiners repeatedly ignore the Respondent’s efforts.
While there are various aspects to the Yoyo services business model, as seen on its beta test site http://yoyo.email/beta; (password [redacted]) the one that is relevant to this Complaint is to use the subject domain 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, as described in the Judgment entered by Judge John. J. Tuchi on 5th November 2014. The Complainant has provided no evidence to contradict the business model or domain use described in the Judgment. The Complainant has provided no evidence for the basis of this Compliant beyond raw speculation or regurgitated undocumented hearsay from prior panel decisions. The Complainant relies entirely upon adverse previous UDRP and URS cases for its evidentiary obligations. This is simply not enough to support a legal transfer under the UDRP policy of the domain name ownership. To date, no evidence other than conclusory statements has ever been provided by any previous Complainant to support a finding that the UDRP Policy has been violated. This Complainant in this case, is no different. Complainant can only argue rank, in that it is a holder of a matching trademark, which does NOT meet all the evidentiary obligation required by the UDRP policy. (See Policy Rules 4B i-iv)
The Respondent understands given the history of cybersquatters why Complainants may have had some concerns before Declaratory Judgment, but now those concerns should be eased. The Respondent does not use trademarks qua trademarks as required by law to establish commercial use. Rather, the Respondent uses words that happen to be trademarks for their non-trademark value. Clearly there has been NO trademark infringement or intent to violate the UDRP but yet some Examiners together with Complainants continue to steamroll the Respondent without good cause in direct violation of UDRP procedural rules. It is clear not all Examiners have agreed with their peers. The Respondent asks that the following URS cases also be considered as part of the proofs in this matter as additional case precedent to the Declaratory Judgment.
CASE 1
On September 4, 2014 in eHarmony, Inc. v. yoyo.email et al, (Claim No. FA1408001575592 <eharmony.email>) Honorable Karl V. Fink (Ret. US Federal Judge) denied the Complainant’s URS claim quoting “genuine contestable issue as to whether a domain name registration and use of a trademark are in` bad faith”…. “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”…. “the use of the domain name in question is a non-infringing use or fair use of the trademark.”
CASE 2
On August 19, 2014, panelist Jeffrey M. Samuels, (Professor Emeritus) dissented and found on an URS Appeal Complaint that the Respondent acted lawfully when registering other “brand.email” domains. See Footlocker vs. yoyo.email.
CASE 3
On June 24, 2014, the Respondent was successful in an appeal under URS (Claim Number: FA1404001554808) for the disputed domain name <stuartweitzman.email>. The majority of the appeal Examiners in the URS correctly determined that the “Complainant has NOT demonstrated all three elements.
CASE 4
On June 18 2014, professor Jeffrey M. Samuels dissented on another ICANN URS domain name dispute. See appeal Deutsche Lufthansa v. yoyo.email…. “With respect to fair use, Respondent has made a convincing enough argument that it needs to use the disputed domain name, as well as many others, in order to offer a credible and useful service and does not possess the requisite intent to misleadingly divert consumers. How else can the service provide proof of the sending of emails to Lufthansa other than through the use of the term “Lufthansa? In this sense, Respondent appears to be using the term “Lufthansa” merely to describe the intended recipient of an email. Whether Complainant supports such a service or believes it is technically or commercially viable seems to me to be beside the point”.
Professor Samuels has particular expertise in the areas of trademarks, domain names and unfair competition and currently serves as a consultant and expert witness in trademark-related matters. Biography http://www.uakron.edu/law/faculty/profile.dot?identity=700492.
Respondent Has Rights and Legitimate Interests in the Disputed Domain Name
In the Response, the Complainant argues that Respondent fails to meet any of the three circumstances set out in Paragraph 4(c) of the Policy. According to Paragraph 4(c) of the Policy. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evaluation of evidence, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(c).
4C POLICY RULES
(R. 4c 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
(R 4c ii). The respondent (as an individual, business or other organization) has bee commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(R. 4 c iii). The respondent is making a legitimate non-commercial 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.
First, the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services under the Policy. Specifically, the Respondent is providing certification of e-mail services, which will be free for both the sender and receiver of e-mails, this fact has been repeatedly stated and repeatedly ignored by previous Examiners. Further, by using the disputed domain names as a backend, non-public email server in order to route emails for the storing of Metadata, there is no public use of the domain name, no diversion of website traffic from the trademark holder and no intent to profit related to the use or trafficking of the subject domain name. The Complainant’s trademark rights are not harmed in any way, this is clear to see: http://yoyo.email/beta is still under development and should be launched in beta soon. Please note Yoyo test site is not fully functional and maybe subject to change. If presented with a splash entry screen please enter access password [redacted] to view live test site.
The Respondent has also set up offices and engaged staff including hiring an experienced WIPO Examiner the Hon Neil Brown QC and leading trademark attorneys Traverse Legal PLC. Both have opined that Respondent’s business model and use do not violate trademark law or the UDRP. Both have been retained to ensure compliance with all laws including the UDRP and ACPA.
Respondent Declaratory Judgment detailing its business model, is a legitimate business model under the UDRP policy. The Respondent has fiercely defended each UDRP and URS complaint filed against it in support of its business legitimacy. Respondent by providing the free use of its domains and limiting the use of the domain name to route and capture email meta data is making a legitimate fair use of its <.email> domain name portfolio, with no intent to profit from the Complainant and certainly has never intended to deceived or attract internet users for commercial gain by “intentionally creating” confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Registrant web site or location or of a product or service on the Registrant’s web site or location. (R. 4B iv & 4C iii)
The Respondent has also applied on the 1 August 2014 for a Community Trade Mark for YOYO.EMAIL with the European Union in International Classes 35, 38 (Telecommunication services), 42 (Computer services) and 45 (Domain name registration services). This further helps demonstrate the Respondent has every intention to operate a legitimate business that has a legitimate interest in the disputed domain name. Further, Respondent’s CEO is a respected inventor and businessman who has a proven track record in the developing innovative ideas. The Respondent’s CEO has some 22 granted patents that demonstrates Respondent often finds innovative solutions to day to day problems. The Respondents certified email service is just another of one of those solutions.
The Respondent has never accepted and still does not accept that a service with a primary objective NOT to deceive, and that can ONLY work by demonstrating independence from the Complainant so that it can be advertised as an “independent certified email service” can ever be described as “bad faith” to deceive. Moreover, how can a service that is linked to the free operational service of a domain name, which costs the Respondent an annual charge to operate, ever be described as a bad faith intent to profit or an unfair use. The Respondent has never intended to mislead or deceive internet users for commercial gain.
i. Respondent has registered and is using the disputed domain name in good faith
In the Complaint, the Complainant states again without any independent evidence that the Respondent is using the disputed domain name in bad faith. Respondent has never intended to profit in any way relating to the use of the domain name as a trademark. Respondent has not used the domain to date to profit from advertising connected to the use of a trademark-related web service. Nor is there any evidence, beyond raw speculation or regurgitated undocumented hearsay from prior panel decisions, to support any future intent to use the subject domain in such a way.
Complainant and some prior Examiners are under the false impression that the Claimant cannot operate any commercial service, directly or indirectly, with its domain names. Complainants and WIPO Examiners have severely misunderstood Rule 4C iii… “the Registrant is making a legitimate non-commercial 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”.
Rule 4C (iii) of the Policy clearly says that Registrants can operate a commercial service as long there is no intention to profit from the subject domain by deceiving internet users or tarnish a trademark….“for commercial gain to misleadingly divert consumers” or to “tarnish the trademark or service mark at issue”
The fact that Respondent intends to be a for profit business in general from the use of the many generic domains it has registered, in no way supports the giant leap that it intends to profit from the subject domain or trademark by deceiving internet users. The Respondent is NOT using the disputed domain name to defraud the public by creating a false impression the domain name is the Complainant’s genuine internet name. The Respondent did not register the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The Respondent has never approached the Complainant.
It is noted that the Respondent has previously when legal counsel has offered the Respondent $1,000 to purchase another TM disputed domain name, refused the offer and stated that “selling domain names is not the reason why domain names were registered, so I respectfully have to decline your offer.” If the Respondent’s intent was to profit from trademark domain names, as it has been suggested, the Respondent would have simply accepted $1000 when it was offered. Further, the Respondent did not register the domain name for the purpose of disrupting the business of the Complainant, but instead to provide a new way in email verification. The Respondents evidence has been repeatedly ignored and dismissed without good reason by previous Examiners.
Complainants and some Examiners simply disagree with Respondent’s business model as the basis for their Complaint and decision; finding because there may be “another way” for the Respondent to do things, the Respondent’s chosen way must be illegitimate. Examiners here are not saying the Respondent’s way is in fact illegal under the UDRP Policy, Examiners are saying because the Respondent did not choose a another way, a way ‘they like’ then therefore it’s illegal. It’s nonsense. It’s NOT within the Examiner’s General Powers to choose how the Respondent must provide its service for it to be lawful, especially if the Respondent’s chosen way has not been proven unlawful under UDRP rules and supported by independent evidence. The Respondent feels not only must it defend itself against the Complainant, but also from bias UDRP Examiners.
It is no secret that most commercial trademark lawyers have never agreed with ICANN’s launch of new gTLD’s, https://www.techdirt.com/articles/20120324/01292018233/trademark-lawyers-push-crazy-new-domain-rules-making-it-easy-them-to-take-away-others-domains.shtml / http://www.cnet.com/news/advertising-groups-lambaste-net-address-expansion , so there is inevitable bias in the UDRP arbitration process as the majority of UDRP Examiners are also commercial trademark lawyers. However nowhere does it say in the ICANN UDRP policy that the same trademark lawyers who also act as UDRP Examiners can use their obvious prejudice towards ICANN against innocent purchasers who responded to ICANN guidelines to find new and creative ways in the new <.email> gTLD space.
There is clear evidence of abuse of discretion, the misuse of power and Policy decision-making facilities. Some Examiners make it more obvious than others. For example, some URS Examiners have repeatedly ignored ICANN URS procedural rules that expressly direct Examiners to deny URS Complaints if “genuine contestable issues remain” or “open questions of facts are found”. Notwithstanding the Respondent’s previous URS wins in support of its business model, which is a genuine contestable issue in itself. How can a Federal Court Order that finds the Respondent business model and domain name use lawful and a pending lawsuit in the UK and the Respondent’s exhaustive efforts in responding to Complaints all be dismissed as “genuine contestable issues” or “open questions of fact”. It’s hard to understand that any person even with the most basic legal training could in reasonable argument, support such a finding. No Examiner acting as a ‘true neutral’ could ever make such a finding. Decisions are negligent plain and simple.
Declaratory Judgment
Complainants and some Examiners now attempt to downplay the Respondent’s court order and say the court order is conclusory and entirely without merit. This is utter nonsense. Examiners distort the evidence and say Judge John. J. Tuchi who entered the Declaratory Judgment had no say whatsoever to what he consented to. The Declaratory Judgment states: “At issue is the parties’ Consent Motion for Declaratory Judgment (Doc. 16). Upon review of the Motion and the record, the Motion (Doc. 16) is Granted, Adjudged, Ordered and Decreed. …and the Declaratory Judgment proposed by the parties is entered” APPROVED AS TO FORM AND SUBSTANCE.
District Judge Tuchi had all the case papers to review whether the UDRP Policy was violated or not and determined that the UDRP Policy had not. If Judge John. J. Tuchi did not agree with the Declaratory Judgment, Judge Tuchi simply would not have signed the Judgment. The Respondent did nothing wrong when registering its <.email> domain names. Judge John. J. Tuchi saw this and agreed to enter a Declaratory Judgment that UDRP was NOT violated. The Complainant in this case provides no other facts that contradicts the court order entered by Judge Tuchi.
The Respondent understands given the history of cybersquatters why some Examiners may have had some concerns before obtaining its Declaratory Judgment, but now those concerns should have been eased. Clearly there has been NO trademark infringement or intent to violate the UDRP but yet Examiners continue to steamroll the Respondent and ignore all credible evidence in support of a legitimate registration. Prior Examiners appear to want to only focus on a “bad faith interpretation” of the Policy Rules. 4B and ignore ALL the Respondent’s lawful Rights and Legitimate Interests to the disputed Domain Name written in PLAIN language into the same Policy. Rules. 4C
The UDRP policy makes its clear Examiners MUST NOT prejudiced towards or against any particular side or party. To dismiss so easily the Declaratory Judgment and all the Respondent’s additional evidence shows a clear sign of favouritism for the Complainant. It’s one sided adjudicating. Examiners who are also commercial trademark lawyers are finding it impossible to remain neutral. Commercial trademark lawyers also acting as Examiners simply cannot put to one side what they instinctively believe and do every day making their living from which is to protect a trademark. The Respondent in being asked to believe anything else, just adds insult to injury.
Examiners are looking only for bad faith findings and if one is not easily found then bad faith has been made as they go along and justified as an “expanded” interpretation of bad faith of the Policy. The UDRP Policy was never drafted with the intent to be used in this way. The system is fundamentally failing.
What is clear is that the Respondent is NOT getting a fair hearing which is a direct violation of UDRP procedural rules.
Section 10 General Powers of the Panel of UDRP Procedure Policy (b) in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
Because bad faith can be a subjective state of mind, arbitration decisions concerning alleged Policy violations found by prior Examiners are being stretched to fit completely ignoring the UDRP policy and ALL UDRP POLICY rules that could have been used to favour the Respondents legal rights. Examiners are only interested in the Complainants rights and NOT the Respondent’s legal rights Policy R. 4C. It’s a direct volition of their Statement of Declaration of Impartiality required to be followed by Policy rules. Examiners are manipulating the Policy to suit their requirement out of the Policy rather than what the Policy requires Examiners to do which is to remain fair and impartial.
Previous Examiners have forgotten, that under Policy rules the Complainant bears the burden of proving Respondent’s alleged bad faith intent in registration of the domain name at issue. The mere registration of a domain name, which in this case is all the evidence which is known as fact cannot by itself be a sign of bad faith. The mere purchase by a non-trademark holder of a domain name that includes a trademark is NOT bad faith under the Policy. Nor does a Registrant require permission from the Complainant as a trademark holder before it purchased its domain name. The Policy is clear on this issue. If ICANN wanted these conditional rules included into the Policy when it was drafted in October 1999, then it would have been and still could be easy conditions to draft and include into the UDRP Policy. ICANN DID NOT AND HAS NOT.
The presence of credible evidence is required by all legal processes, the UDRP is no different. To have nothing other than speculation, inference or personal opinion that can decide bad faith would render a fair hearing impossible. Examiners should NOT award a transfer of a lawfully purchased domain name to a Complainant, if Complainant’s arguments of bad faith are merely speculative and do not make a clear case of bad faith intent registration AND illegitimate use.
The Complainant has provided nothing other than frivolous and unsupported evidence for the basis of this Complaint. The Complainant provides many pages of fact baseless evidence. If this Complaint is to be determined by spurious and fact baseless evidence then the Complainant will succeed, if this Complaint is to be determined on the quality of the evidence provided then this Complaint must be denied. Evidence has been supplied to pad out this Complaint and for no other reason. Both Examiner and Complainant are abusing the ICANN UDRP policy and appear to want to treat the UDRP policy as a club which has complete autonomy that allows the automatic transfer of a domain name to “anyone” who holds a matching trademark putting in any kind of UDRP Complaint. Rather than a neutral arbitration process that requires evidence of bad faith and/or illegitimate use of a domain name to support a legal transfer of ownership.
The Respondent’s intended use of the domain name has NOT been proven illegal under the UDRP policy through EVIDENCE instead Examiners have simply decided it’s illegal because they do not ‘like’ the intended use of the domain name at issue. Both Examiner and Complainant are abusing ICANN’s UDRP policy by treating the Policy as one they have complete autonomy over; a legal policy where evidence is NOT required just their say so is sufficient to determine unlawful use. It’s outrageous. It makes it virtually impossible for a RESPONDENT to win a case as the Respondent is ALSO up against AN Examiner.
The Respondent is a legitimate technology business responding to ICANN’s express goal for the new gTLD program and expanding consumer choice on the internet. If anything, it seems the Complaint here should not be with the Respondent but with industry regulators ICANN who make the Policy. The Complainant, as a trademark holder had an exclusive opportunity given to them by ICANN lasting three whole months to secure the disputed domain name during ICANN’s Sunrise Period and did NOT DO so. In contrast, the Respondent acquired its domain name legitimately when it went on general release in keeping with ICANN’s desire to support and utilize the new TLDs and without any breach of ICANN’s policies.
Various documents make it CLEAR that the ICANN UDRP policy is about resolving conflicts arising from the abusive registration and use of a domain name, NOT whether an Examiner ‘likes' a Registrant’s domain name use. The facts are that the Respondent purchased all its .email domain names in good faith. The Respondent, here, does not possess the bad faith intent to mislead consumers. All facts and all independent credible evidence clearly support this view. See http://yoyo.email/beta
Examiners are reminded this domain name dispute is not a white paper debate, it’s a legal dispute governed by legal Policy and procedural rules.
Because Complainant has not proven each of the three elements required in all UDRP proceeding by a preponderance of the evidence, and relies entirely upon adverse previous UDRP cases for its evidentiary obligations, which were all erroneously determined based on an Examiner's subjective interpretation of alleged UDRP Policy violations rather than determinations guided by evidence or as a matter of law, the domain names should NOT be transferred to the Complainant.
The Complainant bears the burden of showing that the Respondent’s registered the domain name at issue with a motive of bad faith. To date, NO credible evidence has ever been provided by ANY previous Complainant to support a finding that the UDRP Policy has been violated by the Respondent. This Complainant is no different.
The facts are that bad faith reasons are being made up by UDRP Examiners as they go along. Bad faith reasons provided by prior Examiners to justify domain name transfer to Complainant’s could NEVER have been reasonably anticipated as bad faith reasons or bad faith intent by any general member of the public. The Panel is reminded the Respondent is a general member of the public, who at the time of registration took all the correct legal steps required by the Policy as written by ICANN. No independent evidence has ever been provided to show the Respondent has acted or has the intent to violate ICANN UDRP polices or act unlawfully in anyway.
The plain facts are that the Complainant has NOT proven each of the three elements required in a UDRP proceeding by a preponderance of the evidence. The Respondent here, does not possess the bad faith intent to mislead internet users or illegally profit from any trademark holder. Therefore the Respondent respectfully request this Complaint must be denied. It is our hope that this Examiner conducts a fresh review based on the evidence submitted herein, not conjecture, or simply repeating the unsupported, misquoted and grossly misrepresented facts included in prior decisions where the line of fact and fiction has become smeared.
What is an honest registration required for a simple idea Examiners and lawyers have succeeded to blow things way out of proportion. Professor Samuels dissent on June 18 2014, says it all but yet this esteemed UDRP Examiner who served as the assistant commissioner of patents and trademarks for the United States Patent and Trademark Office, dissent opinion of June 18 2014 has oddly also been repeatedly ignored.
Previous Examiners in steamrolling the Respondent have adjudicated negligently and abused their power. If the Respondent’s voice continues not to be heard by a failing system the Respondent will have no alternative but to voice its deep concerns in front of a Federal Court Judge for each individual case of negligence in defence of its CEO’s reputation and legal rights.
Like it or not the Respondent has NOT broken any ICANN UDRP policy rule and never has had such motive, this was explained in detail in an email sent to the Complainants counsel on the 17 December 14, which was evidently ignored. Whether the Examiner or Complainant have misunderstood the legal requirements or the spirit the UDRP Policy it has still caused the Respondent’s service severe disruption and the Respondent has to spend significant amount of money to defend its domain name assets which will be brought to the attention of a judge in any subsequent proceedings. The Respondent wishes to make clear that any improper decision that leads to the wrongful seizure of the Respondent’s business assets (property) will be challenged in a more competent, fair and neutral national court.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 owns the MYSQL mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,792,127, registered December 9, 2003). A trademark registration with a national authority is sufficient evidence of Policy ¶4(a)(i) rights in a mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <mysql.email> domain name is confusingly similar to Complainant’s MYSQL mark because Respondent has simply added the top-level domain (“gTLD”) “.email” to the mark. It is well established a gTLD must be ignored when determining the issue of confusing similarly. Every domain name must contain a gTLD according to domain name syntax. No new test was proposed when new gTLDs (including .email) were authorized, so this Panel will continue to apply the old test. This means Respondent’s domain name consists exclusively of Complainant’s mark. See DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“the combination of the “dunkin” element with the ”.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Under such circumstances, it is tautological Respondent’s domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Respondent is not commonly known by the <mysql.email> domain name. Respondent does not contend to be commonly known as this domain name, there is no reason to find as such under Policy ¶4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”). Furthermore, Respondent does not claim to have any trademark rights to the mark.
Respondent’s actions do not amount to a bona fide offering of goods or services, and does not make a legitimate noncommercial or fair use of the disputed domain name. First of all, Respondent isn’t offering any services yet. Therefore, Respondent certainly cannot be making a bona fide offering of services under Policy ¶4(c)(i).
The only question is whether Respondent has made demonstrable preparations to offer bona fide services. Respondent claims it plans to, in effect, offer certified mail services at some point in the future. Respondent will operate as a third party certifier of sending and receiving emails routed through their servers by retaining the email metadata. Sending email is normally offered through an SMTP server (unless Respondent intends to develop a new type of outgoing email server, something Respondent has not claimed). Frankly, it doesn’t take that long to install and get a SMTP server up and running. Normally, it takes a matter of minutes. Respondent has owned the disputed domain name since April 27, 2014, a period of some 274 days. This extreme delay in implementing a routine task bellies Respondent’s claims to be making “demonstrable preparations.” This Panel finds Respondent has not carried its burden under Policy ¶4(c)(i) to prove “demonstrable preparations.”
The next question is whether or not Respondent is making a “legitimate noncommercial use” under Policy ¶4(c)(iii). This Panel thinks not. Respondent has said it will have to monetize its use of its domain name in some unspecified way at some point in the unspecified future (that future point would be after Respondent has actually started offering services). That isn’t a “noncommercial use.”
Those questions having been decided, the next question is whether Respondent’s proposed use would be a “fair use.” This Panel thinks not. Respondent has said nothing about who would use the service. Any use other than email to Complainant or email from Complainant would expose Complainant’s mark to obvious abuse. Clearly Complainant’s competitors could not avail themselves of email addresses on the disputed domain name (a possibility Respondent has not ruled out). Therefore, Respondent’s “plan” for delivering services in the future does not constitute a fair use of Complainant’s mark.
Complainant suggests Respondent could have registered many other domain names for its technical purpose without copying the MYSQL mark. Absolutely true. Respondent has not given a convincing explanation for this part of its “business plan.” The only reason to use Complainant’s mark in Respondent’s domain name is to associate Respondent’s certified email services with Complainant in some way. Now, the precise way is not clear yet because Respondent has not yet started operating (and Respondent is not forthcoming on this point). But it seems clear Respondent will try to sell the use of its incoming (or outgoing) email servers to Complainant because any other use of the domain name would almost certainly tarnish Complainant mark. Such use is not a “legitimate” use under Policy ¶4(c)(iii) and reminds this Panel of early attempts to “lease” domain names for inflated prices.
The Panel finds Policy ¶4(a)(ii) satisfied.
This Panel feels constrained to point out Respondent’s theme that panels are biased, clearly abuse their discretion, misuse their power and Policy decision-making facilities does not make Respondent’s arguments more convincing. In fact, this Panel is not a trademark lawyer. But that will not convince Respondent this procedure is fair or even this Panel is correct. Respondent is entitled to his beliefs.
Let us first talk about email transport systems and Respondent’s business model. Simply put, Respondent’s model is nonsensical. Email does not travel from a single SMTP server to a single POP (or IMAP) server. There are a number of intermediate “hops”. There is no way Respondent can guarantee a message sent from its proprietary SMTP server actually arrives at a particular email address. This is due to the fact email receipts were never implemented uniformly and consistently throughout the internet. A genuine email receipt can (and does) prove receipt and opening. The lack of an email receipt does not prove non-receipt or non-opening. An email can be received but not opened (in which case, no receipt is sent). An email can be opened but the receipt cancelled before it is sent. An email will travel from server to server (in bits and pieces) trying to get to its destination. If a particular way is blocked, the local servers will try routing in a different direction until the email is actually delivered. The message is not returned to its original SMTP server before it tries to find a new route. This feature is a side effect of email’s original intended use, providing robust communications after a nuclear war when other forms of commutation would be disrupted (hence its creation by the United States’ Department of Defense’s Defense Advanced Research Projects Agency).
So, this little bit of history means Respondent has knowingly lied to the Panel. That single fact will make it a little bit easier for Complainant to prove Respondent acted in bad faith.
Next, Respondent produces an affidavit by Enrico Schaefer indicating Respondent did not violate the UDRP by using other’s trademarks “for a backend email server.” This Panel will not accept the affidavit of another as the basis for abdicating its responsibility to decide this case. The ultimate question of any Proceeding is always exclusively within the Panel’s competence.
Respondent provides a copy of the consent declaratory judgment in Yoyo.Email, LLC v. Playinnovation, Ltd. issued by Judge Tuchi in the United States District Court for the District of Arizona. While that might be persuasive authority, it is certainly not binding on the parties to this Proceeding. Complainant was not a party to that civil action, which means it has no res judicata effect or collateral estoppel. The court provided no factual analysis to support its conclusion Respondent did not violate the UDRP. It is clear a domain name may be used in many ways, such as:
1. Hosting a web site (whether as a visible web site or an invisible ecommerce portal);
2. An address for email; or,
3. To prevent another from using the domain name.
See, for example, Parker Hannifin v. East Bay Website, AF-0587 (eRes. Dec. 22, 2000) and YUM! Brands Inc. and KFC Corporation v. Ether Graphics a/k/a Andrew Gruner, Claim Number: FA0311000212651 (January 2, 2004). A domain name dispute is not always a dispute over web sites.
Complainant claims Respondent’s behavior in registering and using “.email” domains has become a pattern. Complainant cites to several prior UDRP decisions decided against Respondent. See Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email, NAF Claim No. FA 1568547 (2014) (“Respondent does not contest the fact that it was on actual notice of Complainants’ marks, and (in fact) that it registered the domain name precisely because it corresponded to Complainants’ well-known trademarks.”); Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730 (“Respondent admits that it deliberately registered the disputed domain names, as it makes clear that a purpose of owning it was to oblige the Complainant to join its system”); AA Brand Management Limited v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-1444 (“Respondent has engaged in a pattern of conduct, which prevents the owners of those trademarks, inclusive of Complainant, from reflecting their own trademarks in a corresponding .email domain name.”). Clearly this “pattern” does not meet the requirements of Policy ¶4(b)(ii), which provides bad faith will be found if a respondent has registered the 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. There has been no such showing because Complainant has registered (and owns) the MySQL.com domain name. There is no right for a trademark owner to be able to have its mark reflected in a “.email” domain name (as opposed to ANY domain name). While Respondent is entitled to have each case heard on its merits, this string of cases provides circumstantial evidence of Respondent’s business plan to register “.email” domain names for famous marks (a point Respondent has avoided explaining).
No one has claimed Respondent has offered the disputed domain name for sale.
Complainant did not waive its rights by failing to take action during the sunrise period.
Complainant claims Respondent had actual knowledge of Complainant’s rights in the MYSQL mark. It appears Respondent registered the domain name with actual knowledge of Complainant’s mark but without believing it had violated the Policy. Subjective belief is not a defense to this part of a UDRP proceeding. Registering the domain name with knowledge of another’s mark does constitute bad faith registration under the Policy’s penumbra. It also arguably violates Policy ¶4(b)(iii) and Policy ¶4(b)(iv) even though the competitive relationship between the parties is not clear. 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.”).
Complainant claims Respondent has made no active use of the <mysql.email> domain name. This is true. Furthermore, Respondent has not provided a “detailed” plan for a future use other than to say it was creating a “domain name registry and a new system based upon that directory to record the sending and receipt of emails.” That isn’t much detail and is not technically possible (unless Respondent were to control all email servers on the internet…something that would at least violate the spirit of the UDRP and is practically impossible). It is possible to find bad faith registration and use by a simple passive holding of a domain name. A party may not escape the UDRP by doing nothing with a domain name. To hold otherwise would be to eviscerate the UDRP. Based upon these facts, this Panel finds bad faith registration and use on that basis as well.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <mysql.email> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 26, 2015
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