Yoyo’ing with another’s trademarks.
We’ve covered several UDRP decisions brought forth against Yoyo Email, Ltd; the British company has registered several thousand dot .Email domains, including famous marks, names or products of international corporations, as part of an obscure business model.
After settling against Playinnovation, Ltd. in a US court, the company apparently intended to use that as part of a defense strategy against future UDRPs. However, that approach was disseminated and dissolved by the panelist in this most recent case.
The Complainant is Stuart Weitzman IP, LLC of New York, and the domain in question is StuartWeitzman.email.
The Respondent reiterated what’s already been said in over two dozen UDRP cases they lost this year: that it’s a business model which does not expose the domains to the public, and does not violate the Complainants’ respective marks.
William R. Towns, sole panelist, listed most, if not all, prior UDRP cases in the footnotes of this UDRP decision, and made a clear declaration that the Respondent’s attempt to present the Playinnovation case as a model decision, is merit-less:
“The Respondent asserts that when a legal proceeding is initiated prior to or during an administrative proceeding under the UDRP, paragraph 18(a) of the Rules gives the Panel the discretion whether to suspend or terminate the proceeding or proceed to a decision. The Respondent and its counsel apparently overlook the fact that paragraph 18(a) applies only “in respect of a domain-name dispute that is the subject of the complaint.” The Respondent and its counsel apparently continue to disregard the plain language of paragraph 18(a). On November 6, 2014, the Respondent sent an untimely “additional submission” to the Center relating to the Respondent’s lawsuit against Playinnovation, Ltd. (<playinnovation.email>).
The Respondent attaches a “Declaratory Judgment” entered by the Court, which the Respondent proffers as a judicial determination that the Respondent’s business model does not violate the UDRP. The Respondent’s assertion is without merit: It is clear even from a cursory examination of the Court’s order that there has been no adjudication on the merits. Rather, the Court has entered an agreed order submitted by the parties, memorializing a settlement agreement entered into between the parties in that case. The Respondent’s settlement of a dispute with a different trademark owner concerning a domain name that is not the subject of the instant Complaint has no bearing on this administrative proceeding.”
This decision appears to be crucial for any future UDRP cases involving Yoyo Email, Ltd. For the full text of the UDRP, click here.
