WIPO Administration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mace Limited v. Giovanni Laporta, Yoyo.Email / Domain Controller, Yoyo Email

Case No. D2015-0754

1. The Parties

The Complainant is Mace Limited of Moorgate, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Browne Jacobson LLP, United Kingdom.

The Respondent is Giovanni Laporta, Yoyo.Email / Domain Controller, Yoyo Email of Traverse City, Michigan, United States of America (“United States”), represented internally.

2. The Domain Names and Registrar

The disputed domain names <mace.email> and <macegroup.email> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2015. On April 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 28, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 30, 2015.

The Center verified that the Complaint together with the amended 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 May 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2015. The Response was filed with the Center on May 24, 2015.

The Center appointed Kaya Köklü as the sole panelist in this matter on June 2, 2015. 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.

4. Factual Background

The Complainant is a company incorporated in England and Wales on August 2, 1989. It provides professional construction management, construction consultancy and project management services. The Complainant’s group of companies operates across about 70 countries, has a global turnover of more than GBP 1 billion and around 4,300 employees. It has been involved in a large number of major international construction projects including airports, universities, museums and office towers.

Since at least 2008, the Complainant has been the holder of the trademark MACE in respect of a wide range of classes in 36 jurisdictions, including the United States and the European Union.

Further, the Complainant is the holder of various domain names incorporating its trademark MACE, like <macegroup.com.> and <mace.co.uk>.

The Complaint is filed against Giovanni Laporta, Yoyo.Email and Domain Controller, Yoyo Email. Both are hereafter collectively referred to as “the Respondent”. The Respondent has registered more than 4,000 “.email” domain names, many of them incorporating trademarks of third parties. Some of these domain names were subject to UDRP and Uniform Rapid Suspension (“URS”) proceedings initiated by the owners of those trademarks.

The disputed domain names were registered on March 27, 2014 and April 2, 2014.

So far, the Respondent has not actively used the disputed domain names, but intends to do so by operating a certified email service, which is supposed to certify the sending and receipt of emails.

5. Parties’ Contentions

A. Complainant

The Complainant requests transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain name <mace.email> is identical to the Complainant’s trademark MACE. With regard to the disputed domain name <macegroup.email>, the Complainant believes that it is confusingly similar to the Complainant’s MACE trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the MACE trademark in connection with a noncommercial bona fide offering of goods and services.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant particularly believes that due to the wide recognition of the MACE trademark, the Respondent was or should have been aware of the trademark when registering the disputed domain names. The Complainant is of the opinion that the currently passive holding of the disputed domain names does not prevent the assessment of bad faith use.

B. Respondent

The Respondent requests the denial of the Complaint.

It particularly argues that it has rights and legitimate interests in the disputed domain names. Further, it is of the opinion that it registered the disputed domain names in good faith and that the intended use of the disputed domain names within a certified email service cannot be assessed as bad faith use.

The Respondent alleges that its intended certified email service works as a backend service, where all emails are directed and documented internally by name. It is argued that the disputed domain names will not be seen by the general public. According to the Respondent’s description of its future business model, the disputed domain names will be used to store email metadata. Although the disputed domain names may be used to forward emails to the Complainant, the Respondent asserts that a “sign-up” by the Complainant will neither be needed nor required.

The Respondent is of the opinion that this kind of intended use is a legitimate one and does not infringe the Complainant’s trademark rights. The Respondent argues that it will not use the disputed domain names to defraud the public by creating a false impression that the disputed domain names belong to or are authorized by the Complainant.

According to the Respondent, it has neither registered nor intends to use the disputed domain names in bad faith, in particular it does not intend to mislead users or illegally profit from the Complainant’s trademark rights. It repeatedly argues that there will be no active website linked to the disputed domain names and, hence, no confusion among Internet users.

To support its argumentation, the Respondent refers to a declaratory judgment of the United States District Court of Arizona and to a dissenting opinion of a Panelist in a URS Appeal.

6. Discussion and Findings

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s MACE trademark.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding MACE. For several years, the Complainant has been the owner of a large number of word and figurative trademarks comprising the mark MACE, claiming protection for a wide range of goods and services.

The Panel finds that the disputed domain name <mace.email> is identical to the Complainant’s MACE trademark as it incorporates the entirety of the trademark without any additions or amendments. The Panel notes that the mere addition of the generic Top-Level Domain (“gTLD”) “.email” has no distinguishing effect and may as a general principle not be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP decisions concerning the use of a gTLD within domain names, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).

With regard to the disputed domain name <macegroup.email>, the Panel finds that it is confusingly similar to the Complainant’s trademark. This disputed domain name also fully incorporates the Complainant’s MACE trademark. The disputed domain name differs from the MACE trademark only by the addition of the term “group”. In the Panel’s view, this addition does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not distinguish the disputed domain name from the Complainant’s MACE trademark. On the contrary, the full inclusion of the Complainant’s trademark in combination with the term “group” even enhances the false impression that the disputed domain name is somehow officially related to the Complainant. This is particularly the case as the term “group” is also used by the Complainant in one of its operated domain names, namely <macegroup.com>.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate relevant rights or legitimate interests in the disputed domain names.

While the overall burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement by providing prima facie evidence that it never granted a license or any other permission to the Respondent to use the MACE trademark, and alleging that the Respondent has never used and does not intend to use the MACE trademark in connection with a noncommercial bona fide offering of goods or services.

The Respondent, however, has failed to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

In view of the Panel, there is no indication in the available record that the Respondent is commonly known by the disputed domain names and there is no legitimate noncommercial or fair use of the disputed domain name as the Respondent itself confirmed that it intends to use the disputed domain names commercially for a certified email service. Furthermore, the Respondent did not sufficiently demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain names.

In this regard, the Panel agrees with the Respondent that not any commercial use of a trademark without the consent or permission of the trademark holder necessarily leads to a violation of trademark rights. Apart from descriptive use of trademarks, the use of trademarks in the form of non-public metadata may also be permissible, like generally acceptedin cases where trademarks are used by third parties as so-called “ad words.” A generally accepted criterion for the permissibility of using trademarks as ad words within search engines is that the use remains non-public and does not create the risk of confusion among Internet users on the origin of the offered good or service.

However, the Panel does not consider the intended use of the Complainant’s trademark MACE by the Respondent a non-public use. Although the Respondent asserts not to use the disputed domain names publicly, the disputed domain names themselves remain visible for Internet users – even if they are not actively used. In other words, Internet users remain able to visit the disputed domain regardless of whether the disputed domain names are linked to active websites. In this regard, the Panel notes that Internet users who are deliberately searching for any kind of email services provided by the Complainant may end up on the currently non-active websites linked to the disputed domain names controlled by the Respondent.

In the Panel’s view, this constitutes a remaining public use and bears the risk of confusion among Internet users, particularly to the extent that the use of the disputed domain names by the Respondent is falsely understood to be endorsed by the Complainant. As a consequence, the Panel believes that the use of trademarks in domain names needs to be assessed differently from the above mentioned totally non-public use of trademarks as ad words within Internet search engines.

Apart from the risk of confusion among Internet users, the Complainant is in view of the Panel also illegitimately prevented by the Respondent to establish an own email service under the disputed domain names. The Respondent argues that the Complainant had the chance to register the disputed domain names during the sunrise period by ICANN and has simply lost its rights in the disputed domain names by not registering them on time. This argumentation is in view of the Panel not convincing. There is no general rule stating that a trademark holder is obliged to register all conceivable domain names comprising its trademark within a certain time frame. The Panel particularly finds that a decision by a trademark owner not to register a certain domain name with its trademark does not lead to the consequence that it loses its rights in that domain name.

Taking all circumstances of the present case into consideration, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel believes that the Respondent was fully aware of the Complainant’s trademark MACE when it registered the disputed domain names. The Respondent itself does not contest its knowledge. The Respondent’s argumentation that the trademark MACE may also be used as a family name is not convincing and is assessed by the Panel as a self-serving argument only. Hence, the Panel concludes that the Respondent was in bad faith when registering the disputed domain names.

Concerning the bad faith use, the Panel underlines that it does not assess the permissibility of the Respondent’s business model as such. The Panel does not deny that there might be good arguments to defend a non-public use of third parties’ trademarks on a metadata level even without the consent of the right holder.

However, the Panel is of the opinion that in the present case the Respondent’s intended use of the Complainant’s trademark MACE within the disputed domain names does not qualify as a good faith use under the Policy. The Panel is not convinced that the disputed domain names can be used by the Respondent in a fully non-public way. Further, the Respondent was not able to convincingly demonstrate to the Panel that Internet users will sufficiently be prevented from believing that there is no kind of cooperation between the Respondent as the operator of the disputed domain names and the Complainant as the trademark owner. On the contrary, it is the Panel’s understanding that the business model as described by the Respondent may only work if the Respondent explicitly creates a link between its provided email services and the trademark owned by the Complainant. It remains unclear to the Panel how the Respondent intends to prevent taking unfair advantage of the Complainant’s trademark as used in the disputed domain names. The Respondent’s overall pattern of mass registration of domain names incorporating third parties’ trademarks indicates that it at least also uses the disputed domain names in order to prevent the Complainant from using its trademarks in corresponding domain names. Being aware of the existing different opinions as provided by the Respondent, as e.g., expressed in the declaratory judgment of the United States District Court of Arizona, the Panel nevertheless assesses this kind of intentional use of the Complainant’s trademark as an indication of bad faith use and a violation of the Policy.

In line with prior UDRP decisions stating that the “use” requirement does not require positive action, the Panel believes that the currently passive holding of the disputed domain names does not change the above assessment on bad faith.

All in all, the Panel concludes that the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <mace.email> and <macegroup.email> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: June 16, 2015