The Yoyo UDRP cases are multiplying.
The Bank of Scotland Plc uses the HALIFAX trademark in commerce for several decades; it comes as no surprise that they filed a UDRP against WIPO regulars, Yoyo Email Ltd.
In this case, the domain Halifax.Email was contested as a match to the Bank’s trademark; the Complainant made a scalding statement, challenging the business model of the Respondent:
“Respondent is a known cybersquatter, as shown by numerous UDRP and Uniform Rapid Suspension System (“URS) cases.2 In these cases, Respondent submitted that it has rights or legitimate interests in the disputed domain names based on its intended use of the names as technical links as part of its email directory and security service. The appointed panels in those cases quite rightfully held that such intended use does not create any rights or legitimate interests in domain names that are identical or confusingly similar to trademarks and that the intended use does not justify the registration of the disputed domain names, as there is no need to acquire the domain names for the alleged intended purpose.”
Not to be outdone, Yoyo Email Ltd. denied such allegations of trademark abuse, choosing instead to attack the role of the very people that adjudicate UDRP cases – the panelists:
“Prior panelists have engaged in little more than speculation and conjecture about Respondent’s business model, its intentions and relied on unsupported statements in prior decisions, which in all cases were never argued, alleged and certainly not supported by any evidence. Some panelists simply disagree with Respondent’s business model as the basis for their decisions. These panelists have abused their role, ignored the UDRP and ignored ICANN’s express goal of creating innovation in the new gTLD space in “steamrolling” Respondent.”
Emphasizing the Respondent’s failed attempt to use a prior case which was settled between the parties, as a “declaratory judgment” affecting every future UDRP, the Panelist, Gerardo Saavedra, stated:
“As mentioned in Section 6.A, Complainant is not a party to the Playinnovation proceeding. In any event, 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.”
The decision was naturally made in favor of the Complainant and the full text of the UDRP for the domain Halifax.email can be viewed here.
