The Complainant is R.C. Purdy Chocolates Ltd. of Vancouver, British Columbia, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Giovanni Laporta, Yoyo.Email Ltd. of Traverse City, Michigan, United States of America, represented by Traverse Legal, PLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. The Response was filed with the Center on October 29, 2014. The Respondent submitted unsolicited supplemental filings on November 6, 2014 and November 18, 2014. The Complainant has briefly replied to such filings on November 10, 2014 and November 18, 2014 asking them to be disregarded.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 6, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Canadian chocolate manufacturer founded in 1907 and owns various trademark registrations for PURDY’S, among which is the Canadian Registration Number TMA 751592, dated March 13, 2006 (Exhibit 2 to the Complaint).
The disputed domain name, , was registered on April 5, 2014. Currently no active webpage resolves from it. 5. Parties’ Contentions A. Complainant
The Complainant asserts that, without its authorization, the Respondent registered the disputed domain name which reproduces its trademark entirely. Furthermore, according to the Complainant, the suppression of the apostrophe, which cannot be reproduced in a domain name, cannot avoid confusion given that the Respondent has misappropriated the entirety of its trademark in the disputed domain name.
Prior to filing the Complaint, however, the Complainant attempted to solve amicably the matter and sent a warning letter to the Respondent, requesting the transfer of the disputed domain name (Exhibit 4 to the Complaint). The Respondent replied indicating that he intended to offer a personalized email service in association with the disputed domain name but not in competition with any commercial activities offered by the Complainant (Exhibit 5 to the Complaint).
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) the Respondent is a serial cybersquatter, having engaged in a pattern of registering domain names that incorporate third-party trademarks to which he is not entitled, what lead him to have been named as the respondent in several UDRP and Uniform Rapid Suspension (URS) proceedings;
(ii) there is no evidence to suggest that the Respondent has ever used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(iii) several past panels have concluded that the business model proposed by the Respondent does not grant him rights or legitimate interests in the domain names registered by him that violate third party’s trademarks;
(iv) there has never been any relationship between the Complainant and the Respondent; the Respondent is not licensed, or otherwise authorized, directly or indirectly to register or use the Complainant’s trademark in any manner whatsoever; and
(v) there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that he is making or intends to make, a legitimate noncommercial or fair use of the disputed domain name.
In what relates to bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent has engaged in a pattern of registering domain names that contain trademarks to which he is not entitled, preventing the respective owner from registering such domain names. Apparently the number of domain names registered by the Respondent mounts to approximately 4,000 as mentioned in Sanofi v. Giovanni Laporta,WIPO Case No. D2014-1145.
Lastly, the Complainant points out that it is a well-established principle that it is not necessary for a disputed domain name to be associated with an active website. Furthermore, past panels have held that the Respondent’s email business plan intentionally and deliberately targets trademarks of others for commercial gain thereby constituting bad faith (L’Oréal SA v. Y, Giovanni Laporta,WIPO Case No. D2014-1172; Sanofi v. Giovanni Laporta, supra). B. Respondent
The Respondent claims to hold a legitimate interest in the disputed domain name in view of his business model described in the declaratory relief requested before the United States District Court of Arizona (Exhibit 1A to the Response, Complaint for Declaratory Judgment Case No. CV-14-01922-PHX-PGR).
The Respondent further states that he is not a cybersquatter, nor is he in bad faith since he does not intend to profit from the trademarks depicted in the domain names registered by him.
The Respondent further claims that the disputed domain name is meant to be used by a back-end, non-public software, in a pure “machine-linking” function, what cannot constitute trademark use under the United States Lanham Act.
As to the business model that is being developed around the new “.email” generic Top-Level Domain (gTLD) platform, Respondent states that his aim is to use the disputed domain name as a backend, non-public email server in order to route emails for the storing of Metadata which will allow his platform to certify delivery and potentially receipt. According to the Respondent, no third party, consumer or anyone else outside the employees of his company would ever see the disputed domain name; given that he will simply be providing certification of e-mail services, he will be acting as a “courier” and not selling the disputed domain name itself.
Furthermore, the Respondent states that the services he will be providing will be free for both the sender and the receiver of emails and that he will in no way be diverting traffic away from the Complainant for his own commercial gain. Thus, given that the Complainant will not be required to pay for the certification of email services provided by him, under his point of view, no trademark rights would be harmed.
Moreover, the Respondent states that he has not used the disputed domain name to date to profit from advertising connected to the use of trademark-related web service and that his business is intended to be profitable from the use of the many generic domain names he has registered.
Lastly, the Respondent states that he did not register the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant. 6. Supplemental Filings
On November 6, 2014 the Respondent made his first unsolicited supplemental filing, requesting that a final “Declaratory Judgment” in the United States court action against Playinnovation, LTD. be considered. On November 10, 2014 the Complainant replied stating that (i) such declaration was a motion filed on consent; (ii) that does not address the disputed domain name; and (iii) that submissions are not only prohibited by the UDRP Rules but are also completely irrelevant to this proceeding.
On November 18, 2014 the Respondent made his second unsolicited supplemental filing to which the Complainant asked to be disregarded for not having been invited by the Panel.
The first unsolicited supplemental filing brought attached to it a copy of a declaratory judgment in a matter concerning a “.email” domain name that is unrelated to this proceeding. The same appear to have also been presented in Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-1650 in which the panel correctly pointed out that “[t]he judgement appears to have been given by consent of both parties to that court proceeding and as a consequence of a settlement between them and does not address the factual circumstances of the current proceeding. Accordingly it is not relevant and the Panel exercises its discretion under the Policy not to admit this supplementary filing into the record”. Likewise, the second supplemental filing will also be disregarded by this Panel. 7. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the PURDY’S trademark through its trademark registrations.
The disputed domain name fully incorporates the Complainant’s trademark. The suppression of the apostrophe which cannot be reproduced in a domain name does not prevent a finding of confusing similarity.
It has been a long standing principle that the extension relating to the Top-Level Domain (TLD) typically does not need to be considered for a finding of confusing similarity under the UDRP (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case the Response brought by the Respondent relies on his “business model described in the declaratory relief requested before the United States District Court of Arizona” (Exhibit 1A to the Response, Complaint for Declaratory Judgment Case No. CV-14-01922-PHX-PGR).
From what this Panel was able to gather from such Exhibit, as well as from the Respondent’s statements, the disputed domain name is meant to be used by “a back-end, non-public software, in a pure ‘machine-linking’ function” “in order to route emails for the storing of Metadata which will allow” the platform “to certify delivery and potentially receipt”.
The Respondent has not shown, however, how his business model will operate to certify email delivery and receipt relating to companies which he could not secure the respective “.email” domain name.
More specially, the Respondent has not been able to show why and how is his model dependent exclusively or preferably on the existence of several domain names that depict third party’s trademarks, or whether it could operate by other means.
Lastly, the Respondent has not shown how his “domain name directory” will provide him profits. Respondent indeed states on his defense that his model will rely on the generic domain names registered by him, but that, in itself, does not make legitimate the registration of thousands of domain names relating to third-party trademarks in view of the absence of a logical explanation for the need of such registrations.
The lack of explanations and reliable evidence on the side of the Respondent is a cause of even greater concern given that he and his company have already been a party to more than a dozen proceedings1. That is to say: should the Respondent really hold a legitimate business plan, he would have already presented it in its entirety in such proceedings. Moreover, had there really been a justifiable technical reason or cause for his business model to operate dependent of such domain names, he would certainly have presented it.
Unfortunately, no material or plausible explanation is given or brought by the Respondent as to why is the disputed domain name relevant or essential to his proposed new business model.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
At least since the decision rendered against the Respondent in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / y,WIPO Case No. D2014-0686, the Respondent has been given a fair chance to explain his proposed business method and need for the ownership of domain names that incorporate third parties’ trademarks. In that case the panel stated:
“The instances of bad faith referred to in article 4(b) of the UDRP are not exhaustive (‘without limitation’). However, in the final analysis the difficulty for the Respondent here is the same as in relation to rights and legitimate interests. The 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. Even if it may be the case that a Respondent could establish that it is holding disputed domain names for the purpose of deploying a valid service in the future, and it is making demonstrable preparation for that purpose, it remains an essential starting point that the Respondent persuade a Panel that its ownership of the disputed domain name is required to make a legitimate service work. As indicated above, the Respondent has not addressed this point to the satisfaction of the Panel.”
The Respondent has failed to do so in that case as well as in all the subsequent ones, including the present case. Should the Respondent not be in bad faith under the Policy, instead of complaining about “misinterpretations” and submitting unsolicited supplemental filings that relate to the mentioned Declaratory Judgment that is irrelevant to this case, he ought to have brought technical or logical explanations as to why must he be the owner of thousands of domain names that relate to third-party trademarks so as to legitimately operate his proposed new business model.
Furthermore, as already decided by past panels, “Respondent is preventing the Complainant and similarly situated trademark owners from reflecting their trademarks in corresponding “.email” domain names. This pattern of conduct (including thousands of other brands the Respondent appropriated, which the brand owners may have yet to learn or take action on) satisfies the Policy’s definition of bad faith registration and use” (Arla Foods amba v. G. La Porta / y,WIPO Case No. D2014-0855).
Not choosing to find in favor of the trademark rights holder given the evidence presented before this Panel would seem contrary, under this Panel’s view, to the very sense of the UDRP which seeks to protect trademark rights owners against unjustified and bad faith practices that rely on the illegitimate or unlawful exploitation of their rights.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: November 18, 2014
1 1. McDermott Will & Emery LLP v. y et al., NAF Claim No. 1564796; 2. L’Oréal SA v. Y, Giovanni Laporta, supra; 3. Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-0637; 4. Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / y,WIPO Case No. D2014-0686; 5. Sanofi v. Giovanni Laporta, supra; 6. The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / y / Giovanni Laporta,WIPO Case No. D2014-0825; 7. Arla Foods amba v. Giovanni Laporta, Y Ltd.,WIPO Case No. D2014-0724; 8. Deutsche Lufthansa AG v. y et al., NAF Claim No. 1552833; 9. Lockheed Martin Corporation v. y et al., NAF Claim No. 1563665; 10. Foot Locker Retail, Inc. v. y et al., NAF Claim No. 1565344; 11. Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v Giovanni Laporta / y, NAF Claime No. 1568547; 12. Playinnovation Ltd. v. y et al., NAF Claime No. 1568549; 13. Beiersdorf AG v. y et al., NAF Claime No. 1571112; 14. Anheuser- Busch, LLC v. y et al., NAF Claime No. 1571472; 15. The Hartford Fire Insurance Company v. y et al., NAF Claim No. 1574384).
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