McDermott Will & Emery LLP v. yoyo.email et al.
Claim Number: FA1406001564796
Complainant: McDermott Will & Emery LLP of Washington, District of Columbia, United States of America.
Complainant Representative: McDermott Will & Emery LLP of Irvine, California, United States of America.
Respondent: yoyo.email of Dunsatble, International, GB.
yoyo.email of Dunsatble, International, United Kingdom.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, LLC
The undersigned certify that they acted independently and impartially and that to the best of their knowledge each has no known conflict in serving as Examiner in this proceeding.
Honorable Carolyn Marks Johnson, Examiner, writes for the Panel of Hon. Charles K. McCotter, Jr. (Ret.) and Douglas M. Isenberg, Esq.
Complainant submitted: June 16, 2014
Commencement: June 17, 2014
Response Date: June 30, 2014
Having reviewed the communication records, the Panel finds that the National Arbitration Forum 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.
No multiple complainants or respondents and no extraneous domain names require dismissal.
Findings of Fact by the Panel:
After de novo review, the Panel finds by clear and convincing evidence that:
Complainant owns the United States Trademark Registration Number 2,359,627 MWE (word), first used in commerce February 1934, registered on June 20, 2000, and renewed August 7, 2009, covering “legal services” in Intl Class 42.
Complainant established use of the trademark for Complainant’s e-mail system.
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.
IDENTICAL OR CONFUSINGLY SIMILAR
Complainant satisfied the requirements of 1.2.6.1 of the URS Procedure; Complainant established rights in the valid trademark in current use based on U. S. Reg. No. 2,359,617 MWE (word).
MWE is the relevant part of the domain name. An added top-level domain is required and does not distinguish a disputed domain name or prevent it from being identical to or confusingly similar to the alleged trademark of another.
Respondent concedes Complainant’s trademark Rights and that the domain name incorporates the mark in its entirety. See Response, pg. 5.
The Panel finds by clear and convincing evidence that the disputed trademark is identical to Complainant’s MWE trademark.
NO RIGHTS OR LEGITIMATE INTERESTS
Complainant satisfied the requirements of URS 1.2.6.2. Complainant did not authorize Respondent to register a domain name containing its registered trademark, MWE. Respondent is not commonly known by the MWE mark and Respondent has no rights to the <mwe.email> that uses Complainant’s mark in its entirety without permission.
Respondent concedes Complainant’s trademark rights but alleges that its registration and use establish legitimate interests because Respondent will use the domain name for a free recorded delivery service, driven by a neutral communication platform, connected to the Respondent’s yoyo email system. Respondent claims: “There is no intent to force anyone to use the service, it’s a voluntary service.” See Response, pg. 9. Yet, Respondent will collect, i.e. capture, emails of users who do not want to participate and by invitation link them to the objecting sender and/or recipient. Apparently the yoyo website will maintain a record of such emails that presumably would be available to sender, recipient and perhaps others in Respondent’s commercialization of the information. This service would allegedly be a part of Respondent’s other business activities. Respondent wrote:
So, naturally, there will be some commercialization, but it will be done legally and squarely within the rules. It will not involve the use of anyone’s trademarks or monetization of the disputed domain name.
See Response, pg. 10. (Emphasis in original.)
The Panel agrees with the finding of the underlying Examiner that:
To register another’s trademark as a domain name and using that domain
name connecting to a web service with the specific goal to earn money from
active users and advertising connected to the use of the trademark
related web service, cannot be considered as legitimate interest.
This Panel further notes the likelihood, pursuant to Complainant’s allegation at Complaint paragraph 6, that Respondent’s proposed use places Complainant involuntarily into the position of violating protected confidential communications between attorneys and clients. Additionally, Respondent’s claims as to the right to exploit commercial trademarks leads this Panel to conclude that other commercial trademarks and confidential business development and research information would be similarly at risk with the use Respondent envisions. We are persuaded by these instant facts as well as the holdings in Statoil ASA v. Giovanni Laporta, Yoyo, Email.Ltd., D2014-0637 (WIPO July 16, 2014); Foot Locker Retail, Inc., v yoyo email et al, FA1565344 (Nat. Arb. Forum July 8, 2014); and Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyoemail, D2014-06786 (WIPO July 1, 2014).
In Statoil, specifically, the panel found that this same Respondent’s business model does not result in any rights or legitimate interests. That Panel wrote:
First of all, the Respondent does not necessarily have to register the disputed domain name and other domain names consisting of well established trademarks to establish his service. . . . Furthermore, the Respondent does not clearly state how he intends to monetize the disputed domain name, while it is expected that he will try to make money with his service. As already found in various cases dealing with the business model of vanity email addresses, the use of a third party trademark in connection with such service is only legitimate if the respective respondent focuses on such service without giving reason to assume that the trademark concerned will be affected by any kind of advertising for third party trademarks, such as pay per click advertising. The Respondent’s statement that ‘naturally, there will be some commercialization of the website, but it will be within the Rules’, is an unacceptable threat towards the Complainant.
In Footlocker, the panel found no rights or legitimate interests in this same Respondent as to the <footlocker.email> domain name, “because the respondent’s business model is built on a foundation that the system is commercial in character and that Respondent intends to obtain commercial gain from the use of Complainant’s marks in its domain name.”
In Starwood, another panel found this Respondent had no rights or legitimate interests in the <sheraton.email> and <sheratonparkland.email> domain names. The Panel there said:
The essence of this matter lies in the contention of the respondent that he is entitled to register the disputed domain names notwithstanding the fact that they include the Complainant’s SHERATON trademark, because he intends to establish a purportedly legitimate email recorded delivery service. . . . The main weakness in respondent’s argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose.
The Starwood panel also found that this Respondent engaged in bad faith registration and use. The Panel wrote there:
It remains an essential starting point that the Respondent persuade a panel that its ownership of the disputed domain name is required to make a legitimate service work.”
The Panel notes that Respondent prevailed in another URS appeal determination, Stuart Weitzman IP, LLC v yoyo.email et al., Nat. Arb. Forum No. 1554808 May 10, 2014, regarding the domain name <stuartweitzman.email>. And the Panel notes Respondent’s argument that “[t]he very fact that Examiners’ opinions differ and conclusions divided in itself suggests things are not ‘clear and convincing’.” However, the appeal determination in the <stuartweitzman.email> proceeding notes that ‘there is no record evidence of Respondent’s intent to monetize the free email service.” Here, however, the record is clear, as discussed above, that Respondent intends to monetize its service using the disputed domain name.
It is not persuasive that Respondent’s protests in the instant case seek to hide its exploitation of Complainant’s rights to exclusive use of its MWE mark by defending Respondent’s use of Complainant’s mark in the <mwe.email> as though it applies only to Respondent’s formation and use of Respondent’s yoyo email service. The Panel is not persuaded by that tactic. The Panel finds by clear and convincing evidence that Respondent has no rights to or legitimate interests in the disputed <mwe.email> domain name.
BAD FAITH REGISTRATION AND USE
Complainant satisfied the requirements of URS 1.2.6.3. Complainant established by clear and convincing evidence that Respondent registered and used (or held for future use) the disputed domain name. Respondent knew of Complainant’s protected rights in the MWE mark and registered it in a domain name in bad faith. Then Respondent used and/or held but made preparations to use the disputed domain name in the future in bad faith.
Respondent concedes Complainant’s trademark rights. Respondent’s proof (Appendix 11) shows a web search in which Complainant’s website is third from the top. The fifth from the top in that same web search, Wikipedia, which states: ‘MWE may refer to … McDermott Will & Emery …’. Whether or not Complainant agrees or objects, Respondent intends to use the <mwe.email> site to benefit Respondent’s yoyo website and other commercial ventures.
Again, this Panel agrees with the findings of the underlying Examiner that Respondent registered the disputed domain name with “clear knowledge” of Complainant’s “prior trademark rights,” and “with the specific goal to use the disputed domain name to get more users of the Respondent’s services and thereby earn money.”
Such use disrupts Complainant’s rendition of legal services and other business ventures and creates confusion among Internet users as to Complainant’s purported source, sponsorship, affiliation or endorsement of Respondent’s web site. See Stuart Weitzman IP, LLC, v yoyo.email, et al FA1404001554808 (Nat. Arb. Forum May 10, 2014.
The Panel finds that such conduct supports findings of bad faith registration and use and that Respondent registered and used and/or made plans to use the disputed domain name in bad faith.
Respondent alleged the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Panel finds no such abuse or material falsehood by Complainant.
After reviewing the parties’ submissions, the Panel determines that
Complainant demonstrated all three elements of the URS by a standard of clear and convincing evidence; and the Panel hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<mwe.email>
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Honorable Carolyn Marks Johnson (Ret.), Examiner
Honorable Charles K. McCotter, Jr. (Ret.) and Douglas M. Isenberg, Esq., Examiner Panel
Dated: August 10, 2014
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