The Complainants are a number of businesses and one charity. They are predominantly based in the United Kingdom, although Logitech International SA, would appear to be based in Switzerland and Ryanair Limited is based in the Republic of Ireland. Many of the Complainants are very well known, particularly in the United Kingdom.
The trade marks relied upon by the Complainants are identified in “Identification of Rights” section of this decision.
The WhoIs details for each of the domain names the subject matter of these proceedings (the “Domain Names”) identify “Giovanni Laporta” of “Yoyo.email” as the registrant. Although the WhoIs details for each Domain Name provide an address in the United States (which would appear to be the address of the Respondent’s US attorneys), Giovanni Laporta appears to be the name of an individual located in the United Kingdom.
The Response filed in this proceeding asserts that the “Respondent” is Yoyo.Email Limited. Although the Response gives a contact address for that company in the United States, this is once again address of the Respondent’s US attorneys. There appears to be no dispute that the Yoyo.Email Limited is a company registered in England and Wales on 31 March 2014 with company registration number 08967696.
Yoyo.Email Limited (as opposed to “yoy.email”) is not expressly mentioned in the WhoIs details for the Domain Name. However, it appears to be undisputed that Mr. Laporta and Yoyo.Email Limited can be treated as one person for the purposes of this proceeding. Accordingly, the Panel proceeds on this basis and the Panel hereafter simply refers to the Respondent.
The Domain Names were registered between 27 March 2014 and 5 May 2014 (i.e. some before and some after the incorporation of Yoyo.Email Limited). These are ten of a very large number of domain names registered by the Respondent that incorporate the trade mark names of others followed by the “.email” Top-Level Domain (“TLD”).
Many of these Domain Names have been the subject of proceedings either under the Policy or the Uniform Rapid Suspension System (“URS”). These include:
Deutsche Lufthansa AG v. yoyo.email et al., NAF Claim No. 1552833 (June 18, 2014)
Stuart Weitzman IP, LLC v. yoyo.email et al., NAF Claim No. 1554808 (June 24, 2014)
Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (July 1, 2014)
Playinnovation Ltd. v. yoyo.email et al., NAF Claim No. 1568549 (August 6, 2014)
Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (July 16, 2014)
Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014 0730 (July 23, 2014)
NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0770 (August 5, 2014)
Lockheed Martin Corporation v. yoyo.email et al., NAF Claim No. 1563665 (August 6, 2014)
Beiersdorf AG v. yoyo.email et al., NAF Claim No. 1571112 (August 7, 2014 – Suspension)
McDermott Will & Emery LLP v. yoyo.email et al., NAF Claim No. 1564796 (August 7, 2014)
Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724 (August 10, 2014)
Anheuser-Busch, LLC v. yoyo.email et al., NAF Claim No. 1571472 (August 10, 2014)
The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825 (August 11, 2014)
Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.Email Ltd, WIPO Case No. D2014-0805 (August 18, 2014)
Foot Locker Retail, Inc. v. yoyo.email et al., NAF Claim No. 1565344 (August 19, 2014)
Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855 (August 23, 2014)
Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email, NAF Claim No. 1568547 (August 25, 2014)
The Hartford Fire Insurance Company v. yoyo.email et al., NAF Claim No. 1574384 (August 25, 2014)
L’Oréal SA v. Yoyo.email, Giovanni Laporta, WIPO Case No. D2014-1172 (September 4, 2014)
eHarmony, Inc. v. yoyo.email et al., NAF Claim No. 1575592 (September 4, 2014)
Groupama SA v. Giovanni Laporta, yoyo.email, WIPO Case No. D2014-1287
(September 15, 2014)
O2 Holdings Limited v. Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399
(September 24, 2014)
eBay Inc v. Yoyo.Email et al. NAF Claim Number: FA1409001581264 (September 29, 2014)
AA Brand Management Limited v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014 1444 (October 13, 2014)
Virgin Enterprises Limited v. Yoyo.Email et al. NAF Claim Number: FA1410001585811 (October 28, 2014)
Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539 (November 3, 2014)
3M Company v. Giovanni Laporta / Yoyo.Email, NAFClaim Number: FA1410001585346 (November 26, 2014)
Maplin Electronics Limited v. Yoyo.Email, WIPO Case No. D2014-1346 (October 14, 2014)
Stuart Weitzman IP, LLC v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-1537 (November 6, 2014)
Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650 (November 7, 2014)
Guardian News & Media Limited v. Giovanni Laporta, Yoyo.email WIPO Case No. D2014-1656 (November 21, 2014)
M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Giovanni Laporta, Yoyo.Email, WIPO
Case No. D2014-1743 (November 25, 2014)
Speedo Holdings B.V. v. Yoyo.Email et al. NAF Claim Number: FA1411001589779 (December 3, 2014)
The Respondent appears to have adopted a broadly similar explanation of its activities in each of those cases; namely, that they will be used in connection with a service whereby it will be possible to certify delivery and/or receipt of emails.
In virtually all of these proceedings the Respondent has ultimately lost. As far as the Panel can discern there are two URS appeal cases where the Respondent has been successful, but in one of these cases that same domain name was ordered to be transferred to the complainant in a subsequent UDRP proceeding. The Respondent does not appear to have been successful in any proceeding under the UDRP.
On 29 August 2014 the Yoyo.Email LLC filed a complaint in the United States District Court for the District of Arizona against an English company, Playinnovation Limited, in which it sought to overturn a previous suspension of the domain name <playinnovation.email> under the URS. That proceeding also appeared to seek declarative relief that extended to a very large number of domain names incorporating the trade marks of others that were not a party to that proceeding.
The address given for the place of business of “Yoyo.Email LLC” is the same as the registered office of Yoyo.Email Ltd, and in the Response the Respondent contends that this is a proceeding begun by the Respondent. In the circumstances, the Panel is prepared to assume without deciding for the purposes of this proceeding that this is merely an error in the filling and that Yoyo.Email Ltd was the Plaintiff in that case.
On 4 September 2014 the Respondent filed a Claim Form in the English Courts against The Royal Bank of Scotland plc. In that proceeding, the Respondent seeks to overturn the suspension of the domain names <rbs.email>, <rbsbankemail>, <natwest.email> and <coutts.email> under the URS (notwithstanding the fact that all of these domain names are included in the list of domain names identified in the Arizonan proceeding).
On 5 November 2014, declaratory judgment was entered in the Arizonan proceeding that was broadly favourable to the Respondent. However, this judgment was by agreement of the parties and “with no admission of liability by any party”. The judgment also concluded as follows:
“This Judgment resolves the last pending claim between these parties. As such, the Clerk is directed to administratively close this case.”
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