Speedo Holdings B.V. v. Yoyo.Email et al.
Claim Number: FA1411001589779
Complainant: Speedo Holdings B.V. of London, United Kingdom.
Complainant Representative: The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC of Atlanta, Georgia, United States of America.
Respondent: Yoyo.Email of G20 Traverse City, Michigan, US.
yoyo.email of Traverse Cit, Michigan, United States of America.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
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.
Petter Rindforth, as Examiner.
Complainant submitted: November 13, 2014
Commencement: November 13, 2014
Response Date: December 1, 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:
The Complainant is the owner of the Community Trademark (CTM) registration No. 493445 SPEEDO (word), registered on June 14, 1999, and renewed until March 20, 2017, covering goods in Intl Classes 3,5,9,14,18,25, and 28.
The Complainant has provided evidence of use of the trademark, by screenshots from the website www.speedousa.com.
Legal Findings and Conclusion:
URS Procedure 1.2.6, requires the 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
The Complainant met the standard sets out in 126.96.36.199. of the URS Procedure since the Complainant has proved its right to the valid Community Trademark registration No. 493445 SPEEDO (word), a trademark that is in current use.
(The Complainant has also referred to the U.S. trademark registration No. 2100572 SPEEDO (word), however the Examiner notes that this registration was already in 1997 transferred to a company named Speedo International Limited).
The relevant part of the disputed domain name is <speedo>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
Further, the Respondent does not dispute the Complainant’s trademark rights.
The Examiner concludes that the disputed domain name is identical to the Complainant's trademark SPEEDO.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <speedo.email>, as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademark SPEEDO, nor is the Respondent commonly known by <speedo.email>.
The question remains whether the Complainant has shown that the Respondent has no legitimate interests in the disputed domain name. The Complainant states that it is obvious that the Respondent has made no demonstrable preparations to use <speedo.email> in connection with a bona fide offering of goods or services; that the Respondent is not commonly known by the domain name; and, by failing to use <speedo.email> in connection with an active web page, the Respondent is obviously not making a legitimate noncommercial or fair use of the domain name.
The Respondent only generally states that the Respondent has purchased all its .email domain names in good faith, and has invested “tremendous time and money” to develop a lawful business connected to .email domain names, and refer in general to the Respondents web site at www.yoyo.email that is under construction. However, there is no specific information on the plans for <speedo.email>.
Accordingly, the Examiner cannot draw any other conclusion than that the Complainant has established that the Respondent has no rights or legitimate interests in <speedo.email>.
BAD FAITH REGISTRATION AND USE
As stated above, the Respondent does not dispute the Complainant’s trademark rights, and as they are registered and used for many years before the Respondent’s registration of <speedo.email>, the Examiner concludes that the Respondent had clear knowledge of the Complainant’s prior and active trademark rights at the time the disputed domain name was registered.
The only specific use that the Respondent has provided is directly related to the Respondents web site at www.yoyo.email.
The Respondent refers to another .email related case, where the Examiner stated that “trading in domain names for profit, and holding a large portfolio of domain names, are of themselves not indicia of bad faith under the URS”. The Examiner of this case fully agrees with that conclusion, as long as the domain portfolio is pure generic words and not just other companies’ registered and used trademarks.
Here, it seems clear that the Respondent register and use other’s trademarks to create and support the Respondents own business.
As the Respondent has registered the disputed domain name with clear knowledge of the Complainant’s prior trademark rights, with the specific goal to use the disputed domain name to get more users of the Respondents services and thereby presumably earn money, this is clearly both bad faith registration and use.
The Respondent has alleged that the Complaint was brought in an abuse of the URS Policy, referring to the fact that there exist some previous URS decisions, as well as two law suits, which has been decided in favour of the Respondent.
As the Examiner understands, it is the Respondents view that these prior decisions should have made it clear to the Complainant that the Complainant in general is registering and using domain names under .email in good faith.
In this respect, the Examiner notes that there are in fact also a number of URS and UDRP decisions that has decided against the Respondent. That said, the Examiner has the responsibility to handle each case separately, based only of the facts and arguments provided by both parties.
This also means that the Complainant, noting that someone has registered a domain name that is identical to the Respondents actively used and since long registered trademark, has the right to use the URS.
Accordingly, the Examiner cannot find any evidence of abuse.
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 name be SUSPENDED for the duration of the registration.
Petter Rindforth, Examiner
Dated: December 03, 2014
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