The Complainant is Lloyds Bank Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Giovanni Laporta, Yoyo.Email Ltd of Traverse City, Michigan, United States of America (“United States”), represented by Traverse Legal, PLC, United States.
The disputed domain name <lloydsbank.email> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2014. The Response was filed with the Center on October 15, 2014.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 21, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Lloyds Bank Plc (hereafter the “Complainant”) is a British company in the business of financial services, a subsidiary of Lloyds Banking Group.
The Complainant holds trademark rights in “Lloyds Bank” in numerous jurisdictions, and notably:
- UK word mark LLOYDS BANK no. 1286876 filed on October 1, 1986 and registered for services in class 36; and
- International figurative mark LLOYDS BANK no.1 199 904 filed on October 30, 2013 and registered for products and services in classes 09, 35 and 36.
The disputed domain name is <lloydsbank.email>, and it has been registered in the name of the company named Yoyo.Email represented by Mr. Giovanni Laporta (hereafter the “Respondent”) on April 10, 2014.
The Complainant claims that the disputed domain name is identical or at least confusingly similar to its trademark which predates the disputed domain name for many years.
The Complainant states that the disputed domain name incorporates the trademark LLOYDS BANK in its entirety, the addition of the generic Top-Level Domain (“gTLD”) “.email” being disregarded when comparing the similarities between a domain name and a trademark under the UDRP and established jurisprudence.
Secondly, the Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, no relationship with the Complainant in any way, nor any license or authorization to use the Complainant’s mark. Moreover the disputed domain name is not used in connection with any bona fide offering of goods or services, and the Respondent is not generally known by the disputed domain name.
The Complainant underlines that the Respondent is a known cybersquatter, and relies on numerous decisions issued under the UDRP and the URS in recent months, involving the Respondent, a majority of which ruled against the Respondent.
Lastly, the Complainant states that the disputed domain name has been registered and is being used in bad faith. The association of a domain name including a well-known trademark with passive holding can amount to use in bad faith when there is no way in which it could be used legitimately.
In his Response, filed in due time, the Respondent claims that he registered the disputed domain name for a legitimate business purpose, with the good faith intent to comply with all laws, including trademark laws.
The Respondent states and regrets that prior UDRP and URS panels have concluded he was engaged in cybersquatting, despite the lack of evidence supporting such a finding, asserting that the Respondent’s previous responses have been grossly misinterpreted.
The Respondent asserts that the disputed domain name will only be used in the back-end, non-public, process of verifying and routing emails.
The Respondent states that the use of the <lloydsbank.email> domain name is not a trademark use.
The relevant aspect of the Respondent’s business model with respect to trademarks is to use the subject domain name as a back-end, non-public email server in order to route emails for the storing of Metadata which will allow Yoyo.Email to certify delivery and potentially receipt.
First, the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services under the Policy. Specifically, the Respondent’s is providing certification of email services, which will be free for both the sender and receiver of emails.
Second, the Respondent, by limiting the use of the disputed domain name to route and capture email Metadata is making a legitimate fair use of the <lloydsbank.email> domain name, with no intent to profit from the disputed domain name.
The Respondent has not registered and is not using the disputed domain name for commercial gain or to defraud the public by creating a false impression that the disputed domain name is that of the Complainant.
When legal counsel has offered USD 1,000 to purchase a disputed domain name reflecting a trademark unrelated to the present proceeding, the Respondent merely refused the offer stating that “selling domain names is not the reason why domain names were registered, so I respectfully have to decline your offer.”
As the Respondent uses the disputed domain name in a way hidden from public view there is no likelihood of confusion with the Complainant’s mark.
The Respondent provides numerous decisions under the UDRP or URS for consideration.
The Respondent asserts that his business model is being launched. The Respondent asserts that the speculation and supposition about the Respondent’s motives is insufficient to support a finding that the UDRP has been violated. The Respondent states that he has invested tremendous time and money into developing a lawful business on the “.email” gTLD.
In a late unsolicited supplemental filing, the Respondent provided information about a pending judicial case (declaratory judgment of the United States District Court for the District of Arizona, relating to the domain name <playinnovation.email>), having no connection with the present case.
Having carefully reviewed the documentation provided, and taking into account that the Panel determines in accordance with paragraph 10 of the Rules, at his sole discretion whether an unsolicited supplemental filing should be accepted during the course of the proceedings, the Panel in the present case decided to proceed with his decision without any further consideration of the Respondent’s supplemental filing, which has not any relevant connection with the case.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer or cancellation of the disputed domain name have been met.
The Complainant shows substantial evidence of its trademark rights in LLOYDS BANK.
The disputed domain name is clearly identical to the prior trademarks held by the Complainant. As claimed by the Complainant, incorporation of a trademark in its entirety is often sufficient to establish that a disputed domain name is identical or confusingly similar to a complainant’s trademark.See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.
The Respondent’s argument to deny that the disputed domain name is not identical or confusingly similar to the Complainant’s trademark only relies on the absence of “commercial use”. It is, however, well established that the Policy requires an objective comparison as to whether a disputed domain name is identical or confusingly similar to a trade mark in which a complainant has rights; the alleged use of the disputed domain name not being relevant for the Panel’s analysis under this element of the Policy.
At last, with respect to the consideration of the gTLD suffix, it is reminded that it may be disregarded from a comparison between the trademark and the disputed domain name. This consensus view from the UDRP panels has been also applied to the cases involving new gTLDs. See ACCOR SoLuxury HMC v. Yoyo.Email, Giovanni Laporta, WIPO Case No. D2014-1650.
Therefore, the Panel is satisfied that the Complainant holds rights in the LLOYDS BANK trademark, and finds that the disputed domain name is identical to the Complainant’s trademark in terms of paragraph 4(a)(i) of the Policy.
To rebut the Complainant’s assertions that the Respondent has not been authorized to use the trademark LLOYDS BANK, nor is the Respondent commonly known under that mark, nor making a fair use or legitimate noncommercial use of the disputed domain name; the Respondent provides voluminous arguments to explain that he plans to use the domain name as a back-end, non-public process of verifying and routing emails which is a legitimate use that could not be detrimental to the Complainant.
In this Panel’s view, the assertions made by the Respondent do not demonstrate any actual “preparation to use” the disputed domain name in connection with a bona fide offering of goods or services. The Panel does not find in the Respondent’s submissions, nor in the evidence provided, any relevant evidence to suggest that he has rights or legitimate interests in the domain name <lloydsbank.email>.
The Panel shares his view with the panels designated in previous (and numerous) UDRP cases involving the Respondent, and notably:
Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686:
“there is little before the Panel that demonstrates preparations in the relevant manner, in part because the Respondent’s intended business model is entirely dependent upon his ability to acquire domain names incorporating, inter alia, third party trademarks and brands, to which he has no prior or other rights.”
Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.Email Ltd, WIPO Case No. D2014-0805:
“[…][as the Respondent states that emails from subscribers to its service are recorded anyway, regardless of the recipient’s email address, there appears to be no technical reason for choosing the Domain Name, leaving aside whether, if such a technical reason exists, this would constitute a legitimate interest which this Panel deems not to be the case here.”
ACCOR SoLuxury HMC v. Yoyo.Email, Giovanni Laporta, WIPO Case No. D2014-1650:
“This Panel is similarly not persuaded by the Respondent’s arguments and does not consider that the mere act of using a domain name, particularly one containing a mark that is so well reputed, for a back-end, non-consumer-facing service, is necessarily bona fide. Even if such a use does not amount to trade mark infringement under particular national laws, that is not the test under the Policy, and such registration without a supporting trade mark right or a credible justification does prevent the bona fide owner of an identical mark from registering in the ‘.email’ gTLD space. The Complainants may well wish to register in the ‘.email’ gTLD space and subject to a successful prior application by a competing trade mark owner or other bona fide registration should be able to do so. The fact that the Respondent has registered approximately 800 domain names incorporating well known or reputed trade marks in the ‘.email’ gTLD space, without also owning supporting trade mark rights only reinforces the Panel’s concerns in relation to the Respondent’s bona fides.”
For these reasons the Panel finds that the Respondent has not rebutted the Complainant’s claim under this element and therefore the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with the Policy paragraph 4(a)(ii).
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith, having in mind the well-known trademark and is preventing the Complainant from reflecting its trademark in the “.email” gTLD space.
The Respondent mainly retorts that they will not be any website under the disputed domain name and therefore the final user will not be confused.
As addressed supra with respect to “rights and legitimate interests” (4(a)(ii) of the Policy), the Panel still does not hold any demonstration from the Respondent to support his case in terms of good faith holding of the disputed domain name.
Even if there is no use of the disputed domain name finally, the Panel reminds the Respondent that the passive holding of domain names also falls under the Policy, under specific conditions, which are clearly established in the present case.
The Complainant’s trademark is distinctive, protected and enjoys well-known character; it is thus the Panel’s opinion that the Respondent should have been aware of it at the time of the registration of the domain name.
This registration therefore prevents the Complainant from reflecting its trademark in a domain name under this “.email” new gTLD.
It is also established both by the Respondent himself who produced an extensive list of the domain names he registered including third parties’ trademarks, and the previous UDRP and URS decisions, that the Respondent is clearly engaged in a pattern of bad faith registration of domain names under the “.email” new gTLD. As stated in previous decisions:
Coutts & Co. National Westminster Bank plc The Royal Bank of Scotland Group plc v. Domain Manager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825:
“Even if Respondent’s proposed service is to be free at the point of use, Respondent clearly intends to benefit from use of the disputed domain names in some way. Thus, the commercial gain requirement is satisfied. The use of domain names that are the same as or similar to Complainants’ trade marks suggests at the very least an endorsement of, or affiliation with, Respondent’s service by Complainants”
Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730:
“Respondent has registered the Domain Name with clear knowledge of Complainant’s prior trademark rights, with the specific goal to use the Domain Name to get more users of Respondent’s services and thereby earn money, the Panel concludes on this record that this is both bad faith registration and use”
The Panel therefore finds that the disputed domain name has been registered and is used in bad faith and that the condition set forth under Paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lloydsbank.email> be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Date: November 12, 2014