LVMH SWISS MANUFACTURES SA v. YOYO EMAIL et al.
Claim Number: FA1509001637106
Complainant: LVMH SWISS MANUFACTURES SA of LA-CHAUX-DE-FONDS, Switzerland.
Complainant Representative: DOMAINOO of Paris, France.
Respondent: YOYO EMAIL of G20 Traverse City, Michigan, United States of America.
YOYO EMAIL of G20 Traverse City, Michigan, US.
yoyo.email of Dunsatble, International, United Kingdom.
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.
Omar Haydar, as Examiner.
Complainant submitted: September 11, 2015
Commencement: September 11, 2015
Response Date: September 16, 2015
Having reviewed the communications records, the Examiner finds that the 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.
The Complaint and findings relate to one domain <tagheuer.email>. There is one Complainant and one Respondent, and no domain names were dismissed from this complaint.
The Respondent has registered the domain names < tagheuer.email > in May of 2014, and is the owner of other domain names, including others with the <.email> gtlds, many of which have been the subject of other claims (including but not limited to tdbank.email (FA1506001622018), qualcomm.email (FA1506001624860), mwe.email (FA1406001564796), footlocker.email (FA1406001565344), stuartweitzman.email (FA1404001554808), amazonsupport.email (Amazon.com Inc., Amazon Technologies, Inc. v. Giovanni Laporta / Yoyo.Email, D2015-0009(WIPO March 5, 2015)), sheraton.email (Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyoemail, D2014-06786 (WIPO July 1, 2014)), statoil.email (Statoil ASA v. Giovanni Laporta, Yoyo, Email.Ltd., D2014-0637 (WIPO July 16, 2014)), etc.).
Complainant, LVMH SWISS MANUFACTURES SA of Switzerland, is a luxury brand conglomerate which owns, amongst its many brands, Tag Heuer, the luxury watch brand. It is the owner of trademark “Tag Heuer”, which has been registered in one or more countries.
Complainant has claimed that the domain name in question is identical to their protected word or mark; that the Respondent has no legitimate right or interests to the domain; and that the Respondent has registered the domain name in bad faith for the following reason(s):
- Respondent was well aware of the complainant’s mark at the time of registration (citing FA0607000744444)
- Registrant’s inactive holding of a domain name is evidence of bad faith registration and use (citing FA0701000893427).
- Registrant’s intent (which is inferred citing Cruzeiro Licenciamentos Ltda. V. Sallen, D2000-0715 (WIPO Sept. 6, 2000) to sell the domain name (citing FA1304001492488)
Respondent, while agreeing to having this claim adjudicated by the National Arbitration Forum in accordance with the URS Procedures, URS Rules, and the URS Supplemental Rules, unfortunately does not present a material response to the claims in accordance with the Rules, which allow the response to include:
“5.4.1 Confirmation of Registrant data.
5.4.2 Specific admission or denial of each of the grounds upon which the Complaint is based.
5.4.3 Any defense which contradicts the Complainant’s claims.
5.4.4 A statement that the contents are true and accurate.
”
Respondent provides no specific responses per se, and only references attachments as follows:
- A copy of a declaratory judgment in case No. CV-14-01922-PHX-JJT filed in the United States District Court for the District of Arizona involving Respondent as Plaintiff. (the referenced declaratory judgment, its applicability and whether it has any level of binding authority are outside the scope of this determination, and accordingly must be disregarded.)
- A response pleading to this claim, wherein no substantive response is provided, but alternatively includes:
o Respondent’s sarcastic critique of the claims of Complainant.
o Respondent citation of other decisions and alluding to Respondent’s business plan (which is also cited in the declaratory judgment) without providing any material details whatsoever about the business plan.
o Respondent attempting to prove that the declaratory judgment, which involved a different trademark owner and domain, clearly established that Respondent’s business model and domain name do not violate the URS, and that, by implication, the judgment was binding on all such domain claims.
o Respondent further stating that they will not “waste anymore of my time defending myself as the URS and UDRP systems” and would resort to pursuing their rights in court, effectively contradicting and undermining their agreement to have this claim adjudicated here.
o Respondent concluding by threatening to name and shame the Examiner on their new website “www.dirty.lawyer”, if the Examiner fails in “following all the rules accurately, reasonably, fairly and correctly”.
URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark for which the Complainant holds a valid national or regional registration and that is in current use.
2. Respondent has no legitimate right or interest to the domain name.
3. The domain name(s) was/were registered and are being used in bad faith.
The Examiner finds that Complainant has proven that the domain name is identical through evidence of the trademark registration. The Complainant’s trademark is a well established mark, in use for more than seventeen years with international use and recognition as a luxury watch brand. Respondent has not disputed this, only attempted to justify the usage vis-à-vis the alluded to business plan.
The Examiner further finds that Complainant has proven that Respondent has no legitimate right or interest to the domain name. The Complainant has neither licensed the trademark to the Respondent for use, nor has the Respondent made any claim to a legitimate right or interest to the name. The Respondent has alluded to their business plan as the basis for their legitimate right or interest to the domain name, but has provided no details about the business plan to support this. Further, the examiners in many of the referenced claims above (especially Statoil.email) have evaluated the business plan in determining the merits of the Respondent’s claims and have ruled for the Claimants.
The Examiner finds that the evidence proves the domain names were registered and are being used in bad faith. The Examiner does not find sufficiently compelling the notion that the Respondent’s inactive holding of the domain name is evidence of bad faith. Additionally, the inferring of the intent of the Respondent to sell the domain is not compelling as well, considering the number of domains involved, the common .email tld, and the assumed tie in to the referenced business plan. But the Examiner does find compelling that the domain gives an automatic inference of affiliation to the entity holding the trademark, and would cause confusion amongst internet users into an assumption of an affiliation or relationship to the protected mark holder. (FA0010000095856) Additionally, the cases referenced above are consistent in finding for the Complainant in very similar circumstances, and the Respondent here has provided no basis to find otherwise. Accordingly, the Examiner does find that the evidence proves the domain names were registered and are being used in bad faith
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.
<tagheuer.email>
Omar Haydar, Examiner
Dated: September 21, 2015
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