Yoyo company adds more “medals” to its UDRP collection

Admittedly, we have lost track of how many UDRP cases have been brought against Yoyo Email Ltd., the British company which a “vision” to register almost every company’s trademark and brand in dot .Email.

We have documented seven UDRP decisions, and there are more to go, because Yoyo Email Ltd. has registered about 4,000 dot .Email domains.

This time around, a UDRP for the domains Garnier.Email and Kiehls.Email was naturally decided against the Respondent; it’s important to note that the sole panelist, Sally M. Abel, made some statements regarding previous cases involving Yoyo Email Ltd.

In particular:

“The disputed domain names contain the entirety of Complainant’s marks, and the “.email” gTLD does not distinguish the disputed domain names from the marks. While Respondent contends that his intended business model does not “display the trademark to consumers,” this is not relevant to the question of whether the disputed domain names themselves are identical or confusingly similar to Complainants’ marks.”

In other words, it doesn’t matter whether Yoyo Email Ltd. openly discloses the use and purpose of the domains; the mere fact that they went ahead and registered corporate names and trademarks would be sufficient to establish a case of “identical or confusingly similar” use of a mark.

Regarding the rights or legitimate interests by Yoyo Email Ltd. to use such domains, the panelist stated:

“Respondent has not shown that he is making a non-commercial use of the disputed domain names (Policy, paragraph 4(c)(iii)), as he has admitted that he intends for customers to use his service, who will presumably pay money for such a service. Respondent does not mention anywhere that his business model is intended to be not-for-profit. Nor has Respondent established any other basis under the Rules for claiming rights or legitimate interest in the domains. […] Additionally, Respondent has not articulated why it is necessary for him to fully incorporate Complainant’s marks in order to operate his intended service.”

Lastly, on the subject of registration and use in bad faith, the panelist referenced the numerous prior cases that Yoyo Email Ltd. is involved with, all related to dot .email registrations, and shared this statement from another case:

“In any case the Respondent admits that it deliberately registered the disputed domain names, as it makes clear that a purpose of owning it was to oblige the Complainant to join its system. It professes to do this as part of a free service, but nonetheless it seeks to extract a benefit from the Complainant by the preemptive registration. The Panel would be reluctant to lend its approval to the registration of a domain name incorporating another party’s trademark for the purpose of being able to establish a system or scheme in relation to which the trademark owner becomes a supplicant. This would set the clock back on the Policy in a way that was never intended.”

For the full text of the UDRP that delivered both domains to their respective Complainants, click here.

 

 

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