Yoyo Email Ltd. loses UDRP over TDBank trademark domain name

With over 4,000 registrations of dot .email domains, Yoyo Email Ltd. has been hit with UDRP cases in record numbers since last year.

Unfortunately, to this date there has been no public demonstration of the business model’s manifestation; with every UDRP, the Respondent proclaims that the service is to act as a “courier”.

In the UDRP for the domain TDBank.email, the Complainant is The Toronto-Dominion Bank of Canada. They own the trademark for TD Bank since 1969, having formed as a financial corporation in 1955.

The Respondent, Yoyo Email Ltd., made out these points:

1. There has been use of the domain to date. The intended use is not a trademark use or public use.
2. The purchase by a non-trademark holder of a domain name that includes a matching trademark is NOT prohibited under the UDRP.
3. Respondent uses words that happen to be trademarks for their non-trademark value.
4. It does not matter what short hand domain is chosen to represent the company. This type of operation is not bad faith.
5. Respondent is the neutral party that sits between sender and receiver and works on behalf of the sender as proof the email has been sent, much like regular mail courier services.
6. Respondent has rights and legitimate interests under Policy ¶ 4(c)(iii) because it has a legitimate noncommercial and fair business model evinced by its paradigm of providing free use of its domains and limiting the use of the domain name to route and capture email meta data with no intent to profit from Complainant.
7. The disputed domain name <tdbank.email> consists of generic terms.
8. Complainant has failed to establish that Respondent has acted in bad faith.

All of these arguments were countered by the sole panelist, Fernando Triana, who pointed out that the Respondent has demonstrated a pattern of “bad faith” in numerous prior UDRP cases, adding the following findings:

1. Complainant owns the trademark TD BANK in the United States of America and Canada, since before the disputed domain name was registered by Respondent.

2. Respondent was aware of the Complainant’s rights in the trademark TD BANK, yet Respondent incorporated it in the disputed domain name.

3. Respondent has never been commonly known by the disputed domain name or the trademark TD BANK.

4. Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademark TD BANK, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.

5. Before any notice, Respondent neither used the disputed domain names nor demonstrated that preparations have been made in connection with a bona fide offering of goods or services regarding the disputed domain name.

6. Respondent might use different domain names to the possible and intended use described in its Response, in fact, it has a beta version of its business model in the domain name which is registering as a trademark <yoyo.email>.

With that in mind, yet another dot .Email domain was ordered to be transferred away from Yoyo Email Ltd. For the full text of this UDRP decision, click here.

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