Yoyo Email Ltd lost another UDRP at the WIPO.
A WIPO panelist made a clear statement about the WHOIS info of domain names: it might confuse the public into believing a domain is endorsed by a trademark holder, when they are held by an unlicensed party.
It’s yet another case involving the illustrious Yoyo Email Ltd., quite possibly the record holders of all time when it comes down to the total number of UDRP cases brought against a single entity.
This time around, the domains actimel.email, aptaclub.email, aptamil.email, danone.email, evian.email and volvic.email were all challenged by subsidiaries of the French company Danone.
The group consisted of Compagnie Gervais Danone of Paris, France, Société Anonyme des Eaux Minérales d’Evian (SAEME) of Evian-les-Bains, France, Société des Eaux de Volvic of Volvic, France, Nutricia International BV of Zoetermeer, the Netherlands.
The marks of the Danone Group are well established, and there was no question about how the domains in the UDRP infringe on the Complainant’s rights.
As usual, the Respondent alleged that the disputed domain names are intended to be used for a backend, non-public email server. However, the Panelist, Johan Sjöbeck, cut that argument off:
“The Respondent is listed as domain name holder in the publicly available WhoIs database. Considering the fact that anyone can see that the Respondent is the holder of the disputed domain names, there is a risk that the public may be confused and falsely believe that the Complainant is affiliated with or endorses the Respondent’s “independent certified email service”. Thus, the evidence in the case before the Panel indicates that the disputed domain names have been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.”
In other words, if you are the Registrant of a domain that infringes on a trademark, the WHOIS info – in this case, that of Yoyo Email Ltd. – can lead consumers and users of these products and services to believe the domain is authorized to perform functions or deliver services on behalf of the trademark holder.
For the full text of the UDRP for this group of dot .Email domains, click here.
ICANN should make it compulsory to have every domain name registered under privacy. That will greatly help reduce domain theft.
everything confuses me so i am neither for or against.