Another day, another UDRP for Yoyo Email, Ltd. – a UK corporation that has had a record number of UDRP cases filed against it this year.
The reason: registrations of corporate names, brands and trademarks in the dot .Email gTLD, a practice that Yoyo Email refers to as a “business model”, asserting that it has spent time and funds to develop this novel approach.
Numerous decisions have cauterized the practice as a violation of the trademark rights of the Complainants, and the one about TheAA.email is not an exception.
Stephanie G. Hartung, sole panelist stated:
“It is undisputed that Respondent has registered thousands of domain names reflecting third party trademarks, inclusive of Complainant’s AA trademark, in the “.email” gTLD space, and thus that Respondent has engaged in a pattern of conduct, which prevents the owners of those trademarks, inclusive of Complainant, from reflecting their own trademarks in a corresponding .email domain name. See The Royal Bank of Scotland, supra. Such behavior obviously fulfils paragraph 4(b)(ii) of the Policy, which states that registration of a domain name “in order to prevent the owner of a trademark…from reflecting the mark in a corresponding domain name, provided that [respondent] has engaged in a pattern of such conduct” is evidence of the registration and use of a domain name in bad faith.
The Panel wishes to reconfirm that bad faith within the meaning of the UDRP includes those scenarios, where a domain name owner, in the absence of rights or legitimate interests to the disputed domain name, interferes with the trademark owner’s interests (including where the trademark owner deliberately chooses whether or not to reflect their trademarks in a respective domain name). It is a consensus view among UDRP panels that even the passive holding of a disputed domain name without any active attempt to sell it or to contact the trademark holder does not as such prevent a finding of bad faith but that the panel must examine all the circumstances found to be indicative of bad faith (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2). In the case at hand, the disputed domain name in fact is “passively” used (in some hidden way) and the purpose of using the disputed domain name (in which the Complainant owns trademark rights) is a business model running for pure commercial gain. This taken altogether is, beyond the prerequisites as set forth by paragraph 4(b)(ii) of the Policy, indicative of an acting of Respondent in bad faith under the UDRP.
Therefore, the Panel finds that the third element under the Policy set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.”
For the full text of the UDRP about TheAA.email, click here.
