Stuart Weitzman IP, LLC v. yoyo.email et al.
Claim Number: FA1404001554808
Complainant: Stuart Weitzman IP, LLC of New York, New York, United States of America.
Complainant Representative: The Gioconda Law Group PLLC of New York, New York, United States of America.
Respondent: yoyo.email of Dunsatble, International, GB.
yoyo.email of Dunsatble, International, United Kingdom.
Yoyo.Email Limited of Dunstable, Bedfordshire, United Kingdom.
REGISTRIES and REGISTRARS
Registries: EMAIL Registry
Registrars: GoDaddy.com, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
James Bridgeman, as Examiner.
Complainant submitted: April 18, 2014
Commencement: April 18, 2014
Response Date: May 9, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact
Complainant is the owner of US Trademark STUART WEITZMAN Registration Number: 3474821, registered on July 29, 2008.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
188.8.131.52. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating that evidence of use – which can be a declaration and one specimen of current use in commerce
- was submitted to, and validated by, the Trademark Clearinghouse)
b. Proof of use may also be submitted directly with the URS Complaint. and
184.108.40.206. that the Registrant has no legitimate right or interest to the domain name; and
220.127.116.11. that the domain was registered and is being used in bad faith.
A non-exclusive list of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Regarding URS Procedure 18.104.22.168. Complainant is the owner of the valid national US Trademark registration for the mark STUART WEITZMAN Registration Number: 3474821, registered on July 29, 2008 which is in current use. The disputed domain name is identical to Complainant’s trademark.
Regarding URS Procedure 22.214.171.124, Respondent has not furnished any evidence of nor does it make any claim to have any rights or legitmate interest in the STUART WEITZMAN trademark.
Regarding URS Procedure 126.96.36.199. Respondent explains its service as follows:
“The idea is each .email domain (Inc. the disputed domain) is to be used as an email “delivery gateway” a door number where we could deliver mail to. It was very simple. For example. First users will register a service username like email@example.com. This opened the account. From here examiner can then start sending recorded delivery emails to any other .email domain operated by YOYO - this process is how we can guarantee a recorded delivery, as both sender and receiver emails pass through the YOYO email server. We know it’s been sent at one end, and we also know it’s been delivered at the other. It’s a simple service, but can prove invaluable when proof of delivery is depended upon.
Or put another way. Every YOYO.email domain was only ever going be used to direct emails to who they should be directed to and not for any other person whatsoever - the sole purpose was to enable, for example, examiner.email clients, customers, suppliers to send emails to examiner.email and to be able to prove that they did indeed send those emails. Our email server then takes on the task of receiving those emails, adding a delivery number, time-stamping them so it can be proven when they were sent, and then ensuring that the examiner actually receives those emails. This advantage of course works in both directions. The examiner can also have proof of delivery when sending back any emails. The service is free for both sender and receiver. So there was never any “intent” to profit from the domain name.”
Respondent argues that the domain name will not be used to point to any website except its own. It provides a service to track and provide proof of delivery for emails, that it will use the disputed domain name for the purpose of email traffic only, that is was never going to make any use of any brand logo or claim any affiliation to the disputed or any .email domain name that it operates; simply because the service does not require it to operate successfully. There was never any intent to infringe anyone’s trade mark, or claim we were affiliated to the trade mark in a way that would confuse the public.
This Examiner finds that if the domain name was registered for use by Complainant Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name.
Alternatively if it was registered for sale to the general public the registrant would be knowingly creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
It is not alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration: <stuartweitzman.email>
James Bridgeman, Examiner
Dated: May 10, 2014
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