The Complainant is Suncor Energy Inc. of Alberta, Canada, internally represented.
The Respondent is Giovanni Laporta and Yoyo.Email of Traverse City, Michigan, United States of America, self-represented. 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 March 11, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2015, 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 March 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2015. The Respondent sent an email to the Complainant copying the Center on March 24, 2015, in which, inter alia, complained about the alleged bias of the UDRP system, and claimed that it does not recognize the authority of the UDRP. However, the Response was filed with the Center on April 12, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on April 21, 2015. 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 the second largest oil and gas company in Canada, and the fifth largest in North America. The Complainant owns the following trademark registrations in Canada: Trademark Jurisdiction Registration No. Registration date
SUNCOR
Canada
255456
January 30, 1981
Canada
255457
January 30, 1981
SUNCOR ENERGY
Canada
502944
October 26, 1998
Canada
502945
October 26, 1998
The Respondent registered the disputed domain name on April 25, 2014. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant claims to own registrations for SUNCOR ENERGY in other jurisdictions around the world, including the United States of America and the European Union, besides the trademark registrations identified in section 4 above. The Complainant has used its SUNCOR trademark since 1980, and the earliest registration for its SUNCOR trademark dates back to 1981. The Complainant has continuously and extensively used its SUNCOR trademarks and these marks have developed a very valuable reputation and have goodwill associated with them. The Complainant alleged that the disputed domain name is identical and confusingly similar to the SUNCOR trademarks in which the Complainant has rights and which substantially predates the registration of the disputed domain name, as the disputed domain name incorporates the Complainant’s trademark in its entirety.
The Complainant further argues that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. Because the Complainant’s use of its SUNCOR trademark predates the registration of the disputed domain name, this constitutes prima facie evidence of the absence of the Respondent’s rights or legitimate interests in the disputed domain names and therefore the evidentiary burden shifts to the Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the disputed domain name. According to the Complainant there is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, and there is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent has claimed that the disputed domain name is to be used as part of its email services, which will be free to the Complainant and non-consumer facing. However, the Complainant stated that use of a domain name for a non-consumer facing service is not necessarily a bona fide offer of products or services. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the intent for registering the disputed domain name was to entice the Complainant to purchase the Respondent’s email services. And finally, the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply to register the disputed domain name, and the use of a domain name which is identical to the Complainant’s SUNCOR trademark is not a bona fide offer of goods or services when the Respondent has no registered or common law rights in the marks.
The Complainant also claimed that the disputed domain name has been registered and used in bad faith by the Respondent as the Respondent registered the disputed domain name almost 41 years after the Complainant’s initial trademark registration for SUNCOR, and the Respondent’s business model was designed, either directly or indirectly, to involve the Complainant’s brand and related communications from its customers, and constitutes bad faith registration of the disputed domain name. The Respondent has intentionally and deliberately targeted the Complainant’s trademark, and associated goodwill, for commercial gain. The Complainant further identified four other cases under the Policy, which involved the Respondent having registered domain names in the “.email” generic Top-Level domain (“gTLD”). Consequently, the Complainant claims that the Respondent has engaged in a pattern of registering domain names that contain trademarks to which it is not entitled, preventing the respective owner from registering such domain names. The number of domain names registered by the Respondent in 2014 amounted to approximately 4,000 as mentioned in Sanofi v. Giovanni Laporta,WIPO Case No. D2014-1145. B. Respondent
The Respondent claims that there is no legitimate basis, based on actual evidence, for transferring the disputed domain name to the Complainant. In fact, the evidence establishes that the Respondent registered the disputed 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 disputed domain name to date. The intended use is not a trademark use, or public use. There has been no trafficking of the disputed domain name. According to the Respondent it has purchased all its “.email” domain names lawfully in good faith. It is a legitimate technology business responding to the Internet Corporation for Assigned Names and Numbers’ (ICANN’s) express goal for the new gTLD program and expanding consumer choice on the Internet. The Respondent has invested tremendous time and money to developing a lawful business under the “.email” gTLD. The only evidence that has been known as fact, is that the Respondent purchased its “.email” domain name 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 the Policy require a registrant to obtain permission from any particular trademark owner before deciding to purchase a domain name featuring a matching trademark. Otherwise there would be no good faith uses or fair uses in which a respondent can demonstrate its rights in accordance with the paragraphs 4(c)(i) of the Policy and 4(c)(iii)). The Respondent referred to the Sunrise period, during which trademark owners could register their registered trademarks in the “.email” gTLD. The Complainant failed to register its SUNCOR trademark during this exclusive period. According to the Respondent the process after the Sunrise period is that all domain names go on sale to the public. The Policy does not prevent someone from purchasing a domain name after the Sunrise period lapsed. If this was not ICANN’s desire then the Policy would have said so. The Respondent paid for and acquired its business domain name assets legitimately when the domain names went on public sale. 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 the Policy and Rules.
The Respondent continued by expressing his disagreement with previous UDRP and Uniform Rapid Suspension (“URS”) decisions, which involved the Respondent. In this respect, the Respondent claims, inter alia, that 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 to support any future intent to use its domain names in such a way. All the evidence is to the contrary. The Respondent alleged that it is primarily a consumer focused service working on behalf of the sender (consumer) and not the receiver. The Respondent is the neutral party that sits between sender and receiver and works on behalf of the sender as proof that the email has been sent, much like regular mail courier services. It is therefore a false impression that the Respondent’s service could never be a legitimate service without the “support” of the organizations to which it is directed. The Respondent further mentioned for the sake of completeness that the initial idea is to launch the service as a closed software service which means that users can only send emails via the Respondent’s software, so initially the service works as a back end service where all emails are directed and documented internally by name. At this point the domain names are not seen by the general public, however domain names may be used to forward emails to the respective company (recipient). There can be no confusion as to source and origin as the company (recipient) cannot be confused to who they are.
The Respondent referred to a judgment of November 5, 2014 of the United States District Court of Arizona between Yoyo.Email, LLC as plaintiff and Playinnovation, LTD. as defendant, 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.” In the present case, the Respondent is using the disputed domain name in the same manner as it was with the domain name at issue in the aforementioned decision.
The Respondent claimed to have rights and legitimate interests in the disputed domain name. 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 email services, which will be free for both the sender and receiver of emails. Further, by using the disputed domain name as a backend, non-public email server in order to route emails for the storing of metadata, there is no public use of the disputed domain name, no diversion of website traffic from the Complainant and no intent to profit related to the use or trafficking of the disputed domain name. The Complainant’s trademark rights are not harmed in any way. On August 1, 2015, the Respondent has also applied for a Community trademark for YOYO.EMAIL 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.
The Respondent asserts that it has neither registered nor is using the disputed domain name in bad faith. The Respondent has never intended to profit in any way relating to the use of the disputed domain name as a trademark. The Respondent has not used the disputed domain name to date to profit from advertising connected to the use of a trademark-related web service. Nor is there any evidence to support any future intent to use the subject domain in such a way. The Respondent continues by arguing that UDRP panels in previous cases which involved the Respondent were under the false impression that the Respondent cannot operate any commercial service, directly or indirectly, with its domain names. This is based on a misinterpretation of the paragraph 4(c)(iii) of the Policy, which states that the respondent can prove its rights or legitimate interests to the domain name by “making a 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”. The provision therefore clearly provides that the Respondent can operate a commercial service as long as there is no intention to profit from the disputed domain name 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 Respondent did not register the disputed domain name for the purpose of disrupting the business of the Complainant, but instead to provide a new way in email verification. 6. Discussion and Findings
The Panel noted that the Respondent, when using the standard Response as made available by the Center, replaced the waiver of liability by a statement that “The Respondent will submit, with respect to any challenges to a decision made by the Administrative Panel to transfer or cancel the Domain Names that is the subject of this Complaint, to the jurisdiction of the courts at the location of the address of the Registrar as shown in the WhoIs database at the time when the Complaint is filed.” It is obviously the Respondent’s right to make such statement. The Panel does, however, wish to observe for the record that taking out the waiver cannot result in the Respondent not having accepted the waiver, as it is bound by paragraph 20 of the Rules, which provides that “Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules”, and paragraph 14 of the Supplemental Rules, which provides that “Except in respect of deliberate wrongdoing, an Administrative Panel, the World Intellectual Property Organization and the Center shall not be liable to a party, a concerned registrar or ICANN for any act or omission in connection with the administrative proceeding”, which have been incorporated by reference into the Respondent’s registration agreement.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
It is well established that the gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD “.email”.
Although the Respondent claimed that none of the three elements of paragraphs 4(a) of the Policy have been met, it did not expressly discuss the first element. The Panel is satisfied that the Complainant owns at least the four trademarks identified section 4 above. When ignoring the suffix “.email”, the disputed domain name is identical to the Complainant’s SUNCOR trademark of 1981.
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant submits that it has not permitted the Respondent’s use of the disputed domain name and that the Respondent is not commonly known by the disputed domain name and is not making a fair use or legitimate noncommercial use of the disputed domain name. It also holds that that there is no evidence that the Respondent is using the disputed domain name in relation to the provision of bona fide goods or services, and more particularly that the Respondent’s use of the disputed domain name for a non-consumer facing service is not necessarily bona fide.
The Respondent, on the other hand, argued, inter alia, that it operates a new business model 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 the Respondent to certify delivery and potentially receipt, which was in fact made possible by ICANN when it approved the new gTLD “.email”.
The Panel agrees with the Respondent that the UDRP should be applied in an unbiased manner. However, the Panel is and remains bound by the UDRP. In this perspective the Panel cannot accept the Respondent’s most far reaching argument that the Complainant had the opportunity to register its trademarks as a “.email” domain name during the Sunrise period, but failed to do so, thereby effectively waiving its right to object to others registering its trademarks as a domain name within the framework of the UDRP. The Panel further disagrees with the Respondent that any inference can be drawn from ICANN’s approval of the new gTLD “.email”, which would make the assessment of a case under the UDRP different from cases which concern other Top-Level Domains.
It is not in dispute that the Respondent has not been commonly known by the disputed domain name. The Respondent argued that it made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, and (alternatively) that it 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 Complainant’s trademark.
The first question to be answered is therefore if the Respondent has sufficiently shown that it made demonstrable preparations to use the disputed domain name in connection to a bona fide offering of goods or services. In this respect, the panel in Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-1650 asked the essential question: “Why in this case was it necessary to register the disputed domain name incorporating the Complainants’ trademark in the first place?” And as in that case, the Respondent has not answered this question in the pending case. Under reference to several other cases under the UDRP, including Coutts & Co. v. DomainManager / / Giovanni Laporta,WIPO Case No. D2014-0825 and Mejeriforeningen Danish Dairy Board v. Domain Manager, Y,WIPO Case No. D2014-0730, the panel in Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, supra held that it was “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 trademark infringement under particular national laws, that is not the test under the Policy, and such registration without a supporting trademark right or a credible justification does prevent the bona fide owner of an identical mark from registering in the ‘.email’ gTLD space. The Complainants may well wish to register in the ‘.email’ gTLD space and subject to a successful prior application by a competing trademark owner or other bona fide registration should be able to do so. The fact that the Respondent has registered approximately 800 domain names incorporating well known or reputed trademarks in the ‘.email’ gTLD space, without also owning supporting trademark rights only reinforces the Panel’s concerns in relation to the Respondent’s bona fides.” In this matter, the Panel is also satisfied that the SUNCOR trademarks of the Complainant have a reputation (at least in Canada), which has not been disputed by the Respondent. And the Respondent, while knowing the previous cases in which he was involved, and their reasoning, did not put forward arguments to refute the rationale of previous panels in comparable cases. The Panel is therefore of the opinion that the Respondent did not show that it’s offering of services under the disputed domain name is bona fide.
The same applies to the Respondent’s alternative claim that its use of the disputed domain name is legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Although the Panel understands that the use of the disputed domain name as part of the Respondent’s email certification services is not visible for the public at large, it is visible to senders and recipients, while the Respondent compares its business model with that of actual courier services. Although the Respondent alleged that it shall provide the free use of its domain names, apparently including the disputed domain name, it also states that it intends to be a for profit business in general from the use of the many generic domains it has registered. Therefore, it seems obvious that the Respondent wishes to recoup its investment in, at least, acquiring many thousands of “.email” domain names and the software it states to be using. The Response is silent about this aspect, and in absence of any explanation the Panel has difficulties accepting that the Respondent’s use of the disputed domain name is noncommercial. And given that it has been decided that it was not shown that the offering of services under the disputed domain name is bona fide, there is also no fair use of the disputed domain name.
For all these reasons the Panel is of the opinion that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been sufficiently countered by the Respondent.
Consequently, the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
The Panel agrees with the panel in Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, supra, who held that “[t]he Respondent says that he registered the disputed domain name for the purpose of his back-end service, which will in no way harm the Complainants’ trademark rights because consumers will never see it in use and therefore there can be no infringement or likelihood of confusion. This is all very well, but in fact the Policy is not concerned with trademark infringement, but rather with cybersquatting and it is the task of the Panel to determine under this element of the Policy whether the Respondent has both registered and used the disputed domain name in bad faith.” It is not in dispute that the Respondent has registered many thousands of “.email” domain names, including domain names which incorporate third party trademarks which, as with the Complaint’s trademarks in this matter, have a reputation. The extensive Response does not answer the question why the Respondent registered the disputed domain name, but merely claims that the Complainant cannot prove bad faith registration and use, and that complainants and several panels in previous UDRP and URS cases were under the false impression that the Respondent cannot operate any commercial service, directly or indirectly, with its domain names, apparently including the disputed domain name. The Respondent does not, however, explain how it operates its commercial system without breaching the terms of the UDRP, but merely complains about panels not appreciating that “another way” exists. This opens the way for panels, including this Panel, to believe that the Respondent’s registration of thousands of “.email” domain names of which a number, including the disputed domain name, consist of a third party trademark without the relevant trademark owner having been asked for permission, seems to be (as the panelist in Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, supra, called it) “most likely for illegitimate purposes”. The Panel is of the opinion that the Respondent cannot find a justification for its behavior in a special meaning of the “.email” gTLD. The UDRP and Rules equally apply to this gTLD and panels must apply such rules and the interpretation thereof as emerging from more than 15 years of cases. The fact that the Respondent has not actively used the disputed domain name does not prevent the finding of bad faith (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2). The Respondent cannot rely on the judgment of November 5, 2014 of the United States District Court of Arizona between Yoyo.Email, LLC as plaintiff and Playinnovation, LTD. as defendant, as this seems to be a court approved settlement between parties, with respect to a domain name which is not subject to the present proceedings and the Complainant in this proceeding is not bound by the Respondent’s settlement with a different trademark holder. The Panel is therefore of the opinion that the Respondent uses the disputed domain name in bad faith.
The Panel also finds that it is very likely that the Respondent wilfully registered the disputed domain name while being aware of the Complainant’s SUNCOR trademarks, which results in a finding of registration of the disputed domain name in bad faith (e.g., Sanofi v. Giovanni Laporta,WIPO Case No. D2014-1145).
Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 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 disputed domain name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Date: May 1, 2015
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