Administrative panel decision maplin Electronics Limited V. Yoyo. Email




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ARBITRATION
AND
MEDIATION CENTER



ADMINISTRATIVE PANEL DECISION

Maplin Electronics Limited v. Yoyo.Email

Case No. D2014-1346


1. The Parties
The Complainant is Maplin Electronics Limited of Rotherham, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Demys Limited, UK.
The Respondent is Yoyo.Email of Traverse City, Michigan, United States of America (“US”), represented by Giovanni Laporta, US.

2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 August 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2014. The Response was filed with the Center on September 8, 2014.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 17, 2014. 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 located in the United Kingdom providing a variety of electronic products to retailers since 1972. The Complainant has operated under the Maplin name since it began operating over 40 years ago, and has continuously used the MAPLIN trademark on its range of products.
The Complainant owns many trademark registrations for the mark MAPLIN, including the following:
- US Trademark Registration No. 3,614,282 for MAPLIN dated May 5, 2009;

- UK Trademark Registration No. 1515988 for MAPLIN dated March 11, 1994;

- CTM Trademark Registration No. 212076 for MAPLIN dated January 19, 2001;

- UK Trademark Registration No. 2260329 for MAPLIN.CO.UK MAPLIN.COM MAPLIN.EU dated February 22, 2002.


The disputed domain name was registered on April 16, 2014, and reverts to an inactive website.
The Respondent operates a website at “www.yoyo.email”, which is a website under construction, with no substantive content at the time the Complaint was filed.

5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered trademark MAPLIN, and that the addition of the generic Top-Level Domain (gTLD) “.email” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark. The Complainant submits that it owns many trademark registrations around the world for MAPLIN, including the registrations listed in paragraph 4 above.
Rights and Legitimate interests
The Complainant contends that the Respondent was never authorized or licensed to use the Complainant’s MAPLIN trademarks. The Respondent is not commonly known by the “Maplin” name. The Complainant submits that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent has registered a large number of domain names incorporating well-known third party company names and trademarks, in order to establish a business related to the provision of email services. However, as described in a number of prior decisions, notably Statiol ASA v. Giovanni Laporta, WIPO Case No. D2014-0637, Panels have found that the Respondent’s commercial exploitation of a domain name identical to the Complainant’s mark cannot be considered a bona fide offering of goods or services.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s MAPLIN trademark. The Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation or endorsement of its email service.
B. Respondent
The Respondent submits that it is developing a legitimate business based on the new .email gTLD platform. The Respondent contends that the disputed domain name will be used to certify and deliver received emails as part of a service performed on behalf of the trademark owner. No third party, consumer or otherwise, will be able to see the disputed domain name when it is used for this back-end email tracking service. The Respondent relies on pending US litigation which it has initiated, namely Yoyo.email LLC v. Playinnovation Limited, Court File No. 2: 14-cv-01922-JJT, arguing that this litigation will determine whether the business model of the Respondent is considered a legitimate and fair use of the
domain name and other related domains. The Respondent claims that this litigation will ultimately determine the same issues that arise in this URDP dispute. The Respondent is therefore seeking that this dispute be dismissed pending the outcome of the
litigation.

6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is comprised of the word “maplin” which is the subject matter of numerous trademark registrations held by the Complainant. The gTLD suffix “.email” does not serve to distinguish the disputed domain name from the registered trademarks.


Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In defence of its conduct, the Respondent relies on a brief account of the steps it has taken to establish a fledgling email certification business as evidence that it has rights or legitimate interests in not only the disputed domain name but a large number of other domain names that are comprised of well-known trademarks and the gTLD suffix “.email”. The Respondent argues that these facts support a finding of rights or legitimate interests, and that it would be premature for a panel to determine otherwise, when it has commenced litigation in US District Court for the District of Arizona, which will ultimately address the same issue.


The Panel notes that the Respondent has filed a Response that lacks much in the way of details to explain its new business. The Respondent has chosen to substantially rely on its pleading in the US litigation to provide an evidentiary basis for its response. The Panel is not satisfied that this is a useful approach, as pleadings are normally understood as statements of positions, which by definition lack the weight of a witness or party’s declaration or affidavit.
With respect to the US litigation, the Panel has examined the Complaint for Declaratory Judgment which the Respondent has produced as the principal part of its evidence. Without commenting on the substance of that Complaint for Declaratory Judgment, the Panel is able to make certain observations: (1) the US litigation is evidently at an early stage, as no responsive pleading has been provided; (2) the US litigation as framed does not name Maplin Electronics Limited as a party; (3) the only references to the domain name occur in lists of numerous domain names owned by the Respondent; and (4) the requested declaratory relief seeks to include references to even though the only named defendant in the case (Playinnovation, Ltd.) has no relationship with Maplin Electronics Limited and no connection with .
In these circumstances, the Panel does not consider that it is premature to consider the Complaint, as this is not a situation where the same parties are engaged in related litigation. The Respondent has chosen only to pursue litigation against a non-party who is entirely unconnected to the disputed domain name. This is not a sufficient nexus to oust the jurisdiction of this panel. To decide otherwise would invite respondents to initiate similarly framed litigation to prevent and frustrate the UDRP process from moving forward. Accordingly, the Panel does not agree that the Complaint is premature, and will therefore more forward with a decision according to the Policy.
On the basis of the limited evidentiary record in this matter, the Panel is prepared to find that the Complainant has established on the balance of probabilities that the Respondent does not have rights or legitimate interests in the disputed domain name. In considering the Respondent’s plans for its email tracking services, it is not clear to the Panel why it is necessary for the Respondent to incorporate the Complainant’s exact trademark (and those of many other brand owners) in the disputed domain name, and in the Respondent’s other “.email” domain names, instead of other alternatives. The Respondent claims the domain names will never be visible to the public as this is a back-end service. Accordingly, as the Panel sees it, it appears open to the Respondent to adopt different terms to serve its business purpose, without affecting the Complainant’s trademark rights, and the rights of many other brand owners.
Therefore, the Panel finds that the Complainant has satisfied the requirement under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The evidence makes it clear that the Respondent has deliberately chosen to register the Complainant’s well-known mark, in order for the disputed domain name to be identified with the Complainant’s enterprise and products. In the Respondent’s business model, which remains vaguely described, it appears that the Respondent’s email tracking service will be offered to the Complainant on a commercial basis, using the Complainant’s own trademark. As indicated previously, there appears to be no reason why another alternative could not have been chosen by the Respondent, except that it would not provide the same incentive or leverage for the Complainant to seek services from the Respondent. On the record as it exists, the Complainant has provided sufficient proof of bad faith registration and use which remains largely unanswered by the Respondent insofar as the Policy is concerned. This Panel acknowledges that a court, having the benefit of a full record, may be better positioned to analyse the Respondent’s business model and plans..


The Panel finds that the Complainant has satisfied the requirement under 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 name be transferred to the Complainant.

Christopher J. Pibus

Sole Panelist



Date: October 14, 2014



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