The Complainants are Laura Ashley Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) (“First Complainant”) / Silentnight Group Limited of Lancashire, United Kingdom (“Second Complainant”) / BFS Group Limited of Buckinghamshire, United Kingdom (“Third Complainant”) and Specsavers BV of Huizen, the Netherlands (“Fourth Complainant”) (collectively the “Complainants”) represented by HGF Limited, United Kingdom.
The Respondent is Giovanni Laporta, Yoyo.Email of Traverse City, Michigan, United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , and (the “Domain Name(s)”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2014. On November 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2014. The Response was filed with the Center on December 16, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 24, 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. Due to personal circumstances affecting the Panel the deadline to deliver the decision in this matter was extended from January 7, 2015, to January 14, 2015. 4. Factual Background
The First Complainant is a leading United Kingdom fashion brand with over 200 stores and is the registered proprietor of a number of UK trade mark registrations for the word mark LAURA ASHLEY (the “LAURA ASHLEY Mark”). The Second Complainant trades in the mattress and bedding market in the United Kingdom and is the registered proprietor of a number of UK trade mark registrations for the word mark SILENTNIGHT (the “SILENTNIGHT Mark”). The Third Complainant is a food service company and is the registered proprietor of a number of European Community trade mark registrations for a design mark featuring the number “3663” (the “3663 Mark”). The Fourth Complainant is a retailer of spectacles and is the registered proprietor of a number of European Community trade mark registrations for the word mark SPECSAVERS (the “SPECSAVERS Mark”). Each of these marks (collectively the “Complainants’ Marks”) have been registered from before March 28, 2014.
The Domain Name was registered on March 29, 2014. The Domain Name was registered on April 1, 2014. The Domain Name was registered on March 29, 2014. The Domain Name was registered on March 28, 2014. None of the Domain Names are presently active. 5. Parties’ Contentions A. Complainant
The Complainants make the following contentions:
(i) that the Domain Name is identical or confusingly similar to the LAURA ASHLEY Mark, that the Domain Name is identical or confusingly similar to the SILENTNIGHT Mark, that the Domain Name is identical or confusingly similar to the SPECSAVERS Mark, and that the Domain Name is identical or confusingly similar to the 3663 Mark,
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainants are the owner of the Complaints’ Marks. Each of the Complainants has registered its asserted mark as a trade mark in the UK or European Union and has considerable national and international reputation in its mark.
As the “.email” suffix should be discarded in comparing the Complainants’ Marks and the Domain Names, each of the Domain Names is identical or confusingly similar to the corresponding Complainant Mark.
The Respondent has no rights or legitimate interests in the Domain Names. The Complainants have not licensed, authorized or permitted the Respondent to use the Complainants’ Marks, nor is the Respondent commonly known by the Complainants’ Marks. The Respondent has admitted that he proposes to use the Domain Names as a secure email tracking system for customers of the Complainants to communicate with the Complainants, however he has not obtained the permission of the Complainants for this use of their respective marks. The Respondent has admitted that these registrations have been done for commercial reasons and there have been at least 10 prior UDRP decisions in which the Respondent’s conduct in this manner has not been found to give rise to rights or legitimate interests in similar domain names.
The Domain Names were registered and are being used in bad faith. Each Domain Name was registered for the purpose of trading off the reputation of the Complainants to attract customers to the Respondent’s proposed service, or force the Complainants to authorise or engage in the Respondent’s email tracking service. The Respondent will then profit from the confusion that arises between the Complainants’ Marks and the Domain Names. Furthermore, the fact that the Respondent has registered hundreds of “.email” domain names that reflect well-known trademarks is evidence of a pattern of conduct of registering domain names with intent to prevent the owners of the respective trade marks from reflecting their trade marks in a corresponding “.email” domain name. B. Respondent
The Respondent contends he purchased all his “.email” Domain Names lawfully in good faith as part of a legitimate business model. The aim of this model is to use the Domain Names as a backend, non-public email server in order to route emails for the storing of metadata, which would allow Yoyo.Email to certify delivery and potentially receipt. Further, by using the 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 Names, no diversion of website traffic from the trade mark holder and no intent to profit related to the use or trafficking of the subject Domain Names.
The Respondent’s business is presently in beta and not fully functional but should be launched soon. The Respondent has set up offices and engaged staff.
The Respondent asserts that his business model has been the subject of a declaratory judgment in the United States that stated that “[p]laintiff’s legitimate purpose seeking to certify the sending and receipt of emails, as described in the [court] Complaint, does not evidence a bad-faith intent to profit from the ‘registration, use or trafficking’ of a domain name.”
The Respondent submits that he has never intended to profit in any way related to the use of the Domain Names as trade marks. Nor is there any evidence, beyond speculation or regurgitated undocumented hearsay from prior panel decisions, to support any future intent to use the Domain Names in such a way.
The Respondent submits that the fact that he intends to be a for profit business in general from the use of the many generic domain names he has registered, in no way supports the leap that he intends to profit from the Domain Names or from the Complainants’ trade marks. The Respondent is not using the Domain Names to defraud the public by creating a false impression that the Domain Names are the Complainants’ genuine Internet names.
The Respondent submits that panels should not award a transfer of a lawfully purchased domain name to a complainant if the complainant’s arguments for bad faith are merely speculative and do not make a clear case of bad faith. The Respondent submits that the Complainants have provided nothing other than frivolous and unsupported evidence for the basis of this Complaint. 6. Discussion and Findings A. Consolidation of Multiple Complainants
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides, in respect of the question “Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?” that:
“WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
The present proceeding involves four unrelated Complainants with separate mark rights bringing a single complainant against a common Respondent. The Complaint makes a request for consolidation and bears the onus of establishing that such a consolidation is justified.
The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Respondent has registered a “.email” domain name that (it is asserted) corresponds with a registered trade mark of each of the Complainants. It is not contested that the registration of each of the Domain Names was for the same purpose and the same business model. The conduct of the Respondent, in registering the Domain Names for the purpose of its business, has affected the Complainants’ individual rights in a similar fashion.
The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. In the present case it is no doubt procedurally efficient. There are certain circumstances (not present here) in which such a consolidation may not have been equitable to the Respondent, such as if the Respondent had insufficient time to prepare a single response for what could be seen as four separate cases, or if the Respondent had been using the Domain Names for different purposes. In such circumstances a panel should take into consideration any views expressed by the respondent as to the virtues of consolidation. In the present proceeding the Respondent has filed a detailed response to the proceeding and has not raised any objection to the Complainants’ request for consolidation. The Panel finds that it is equitable to grant the Complainants’ request for consolidation. B. Identical or Confusingly Similar
To prove this element the Complainants must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainants’ trade or service marks. It is well accepted that, for the purposes of comparison with a trade mark, the generic Top-Level Domain (gTLD) may be discarded as that is an essential element of a domain name.
The First Complainant is the owner of the LAURA ASHLEY Mark, having registrations for LAURA ASHLEY as a trade mark in the United Kingdom. The Panel finds that the Domain Name is confusingly similar to the LAURA ASHLEY Mark.
The Second Complainant is the owner of the SILENTNIGHT Mark, having registrations for SILENTNIGHT as a trade mark in the United Kingdom. The Panel finds that the Domain Name is identical to the SILENTNIGHT Mark.
The Third Complainant is the owner of the 3663 Mark, having registrations for a design mark containing the element 3663 as a trade mark in the European Community. The Panel finds that the Domain Name is confusingly similar to the 3663 Mark as the dominant element of the 3663 Mark is the number “3663”.
The Fourth Complainant is the owner of the SPECSAVERS Mark, having registrations for SPECSAVERS as a trade mark in the European Community. The Panel finds that the Domain Name is identical to the SPECSAVERS Mark.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied in this case. C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial 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.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainants in any way. He has not been authorized by the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the Complainants’ Marks or a mark similar to the Complainants’ Marks. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name or that he is using the Domain Names for a legitimate noncommercial purpose.
The Respondent submits that he is planning on using the Domain Names for a backend, non-public email server in order to route emails for the storing of Metadata. He asserts that such use cannot detrimentally affect the Complainants’ trade mark rights or otherwise defraud the public because the Domain Names will not be used on the public Internet.
The Respondent’s business model has been the subject of a number of UDRP decisions by independent panels, inter alia: Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / ,WIPO Case No. D2014-0686; Merjeriforeningen Danish Dairy Board v. Domain Manager, Y,WIPO Case No. D2014-0730; The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / / Giovanni Laporta,WIPO Case No. D2014-0825; O2 Holdings Limited v. Y / Giovanni Laporta,WIPO Case No. D2014-1399; AA Brand Management Limited v. Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-1444; M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1743 and Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-1650.
As noted in M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Giovanni Laporta, Yoyo.Email, supra:
“Those cases identified the weakness in the Respondent’s argumentation in that nothing had been put before the respective panels to justify or even to explain why the Respondent actually has to register and own an important number of domain names under the gTLD “.email” containing third party trademarks (many of which are well-known, if not famous) to run his business model.
The Respondent has not brought forward any evidence or argument as to why such a technical or even hidden use of the Complainant’s Mark should be considered bona fide, considering that the disputed domain name is an unauthorized, independent use of Complainant’s Mark.
On the contrary, it is also undisputed that the Respondent was totally aware of the Complainant’s Mark when registering the disputed domain name just as he was aware of all the other third party trademarks which are reflected in the thousands of “.email” domain names registered by the Respondent.
The Respondent’s business model is clearly built upon an intended, technical connection between his domain names (including the disputed domain name) and the third party trademarks reflected therein.”
The Panel agrees with the analysis of the Respondent’s conduct and Response as set out above. The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests, including providing any explanation of why it has registered the Domain Names. As noted in The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. DomainManager / / Giovanni Laporta, supra and Mejeriforeningen Danish Dairy Board v. Domain Manager, Y, supra, the Respondent has failed to explain why he has registered the Domain Names (and others that reflect existing trade marks) when, if the Domain Names are not consumer facing, the Respondent could have registered any other domain name for his purpose.
In the absence of any clear explanation for why the Respondent has registered the Domain Names, especially in circumstances where this issue has been raised in a large number of previous Panel decisions (and hence the Respondent has been appraised of this issue), the Panel must accept, on the balance of probabilities, the Complainants’ submissions that the Respondent has chosen to register the Domain Names to “effectively trade off the repute of the Complainants and their trade marks and attract customers to his proposed service…or in the alternative…to force [the Complainants] to authorise or engage in the Respondent’s service.” Such use is not a bona fide offering of goods or services. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
Finally, the Panel Notes that the Respondent has obtained a declaratory judgment in a United States District Court in Arizona as to his business model. The relevance of this judgment was considered in Guardian News & Media Limited v. Giovanni Laporta, Y,WIPO Case No. D2014-1656. The Panel agrees with and adopts the reasoning in this decision and set out below, other than noting that the present case involves entities from the United Kingdom and the Netherlands:
“6.10 So far as the litigation in Arizona is concerned, the Panel notes that the Domain Name is mentioned in the documents that the Respondent filed at court and in respect of which declaratory relief was sought. However, the Panel has difficulty in seeing why this is relevant.
6.11 First, the Complainant was not named as a party in that litigation, and there is no suggestion that it was asked to participate in or would be bound by the outcome of that litigation. The fact that a declaration was sought in that proceeding in relation to the Domain Name (among many others) when this is a domain name in which the defendant in that litigation had no interest, is curious to say the least. The Panel (comprising an English lawyer), professes no knowledge of United States law or procedure, but it is aware that in many jurisdictions a court will be unable, or at the very least will be extremely reluctant, to grant declaratory relief that may impact upon the rights of a person who is not a party to that litigation. The reasons for this and the obvious unfairness that might result if this were not so, are obvious. The Panel also notes that the panel in the recent decision of Maplin Electronics Limited v. Yoyo.Email, [WIPO Case No. D2014-1346] appears for similar reasons to have been reluctant to take any notice of that very same litigation.
6.12 Second, it is notable that the judgment finally entered in the Arizonan litigation was entered by consent, contains no reasoning as to the basis for the declarations granted and is drafted in such a way that it only extends to the domain name . The case has also otherwise been declared closed. As such, it provides the Panel with little or no guidance as to the claimed lawfulness of the Respondent’s activities either generally or so far as the Domain Name is concerned.
6.13 Third, the Panel is puzzled as to what law of the United States has to do with the current case before the Panel, which appears to involve two English entities. Indeed, the Panel similarly does not understand what United States law had to do with the case before the Arizonan courts, which also happened to involve two English entities. The fact that the United States District Court in Arizona had jurisdiction to hear that case is unsurprising (presumably the defendant had consented to that jurisdiction in the preceding URS proceedings). But, of course, jurisdiction is not the same as applicable law.
6.15 There is also in the opinion of the Panel an even greater problem with the Respondent’s contention that it has a legitimate interest in the Domain Name because the proposed use of the Domain Name is said to be lawful. That is that this contention assumes that national law is of relevance. As this Panel explained in some detail in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, when it comes to questions of legitimate interests and bad faith, then in the opinion of the Panel reliance upon arguments based on national law are fundamentally flawed. The Panel is instead of the view that the Policy sets out a sui generis set of rules and principles as to what constitutes legitimate interests and bad faith (albeit ones that draw upon general principles of law to be found across different legal systems).” D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainants who are the owners of the trade marks or service marks or to competitors of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owners of the trade marks or service marks from reflecting the marks in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or locations or of a product or service on the Respondent’s websites or locations (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainants and their reputation in the Complainants’ Marks at the time the Domain Names were registered. Each of the Complainants has a significant reputation in their respective marks, and the Respondent has not asserted that he registered the Domain Names for any other reason. Furthermore certain of the Complainants’ Marks, namely SPECSAVERS, is a coined mark with no descriptive meaning and thus unlikely to be registered other than in connection with the Fourth Complainant. The registration of the Domain Names in awareness of the Complainants and any rights they had in the Complainants’ Marks and in the absence of rights or legitimate interests amounts to registration in bad faith.
It is clear that the Respondent has registered hundreds of domain names reflecting third party trade marks, including the Complainants’ Marks, as “.email” gTLDs. Therefore, the Respondent has engaged in a pattern of conduct which prevents the owners of those trade marks, including the Complainants, from reflecting their own trade marks in a corresponding “.email” domain name. Such conduct, pursuant to paragraph 4(b)(ii) of the Policy, amounts to registration and use of the Domain Names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the First Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Second Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Third Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Fourth Complainant.
Nicholas Smith
Sole Panelist
Date: January 9, 2015
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