COMPLAINANT:
1. Confusing similarity.
The Complainant asserts that the <comparethemarket.email> domain name fully incorporates Complainant’s COMPARETHEMARKET and COMPARETHEMARKET.COM trademarks, merely adding the extension “email” after COMPARETHEMARKET and substitute “.com” by “.email”. The main part of the disputed domain name is identical to the main part of the BGL trademarks.
As such, the disputed domain name is confusingly similar to the COMPARETHEMARKET and COMPARETHEMARKET.COM trademarks.
2. Rights to or Legitimate Interests.
The disputed domain name was registered on March 30, 2014, almost ten years after the BGL Domains were registered.
BGL considers this to be a case of "cyber-squatting" which seeks (and, at the time of registration, sought) to take unfair advantage of BGL's COMPARETHEMARKET and COMPARETHEMARKET.COM trademarks.
There is no website at the disputed domain name and so the diversion of users looking for BGL's website does not constitute a legitimate interest.
Accordingly, the Complainant contends that no legitimate interest is pursued through the disputed domain name.
3. Registered and used in Bad Faith.
According to the Complainant, the disputed domain name was registered in bad faith because the Registrant seeks only to take unfair advantage of BGL's COMPARETHEMARKET and COMPARETHEMARKET.COM trademarks by cyber-squatting.
As the Respondent does not operate a website from the disputed domain name, the Complainant infers that the Respondent solely seeks to cyber-squat by taking advantage of BGL's COMPARETHEMARKET and COMPARETHEMARKET.COM trademarks.
In order to protect BGL and the COMPARETHEMARKET and COMPARETHEMARKET.COM trademarks, the Complainant requests that the disputed domain name be transferred to BGL.
RESPONDENT:
Decision of the Panel on the admissibility of the Response sent on July 18, 2015.
The Panel finds that the Respondent is represented by a professional and is aware of the UDRP Rules and Supplemental Rules, the application thereof it strongly criticizes.
The Respondent first sent an email to the Case administrator, on July 8, 2015 with an attachment, which is a Declaratory judgement issued by the United District Court for the District of Arizona between the Respondent and Playinnovation Ltd on November 5, 2014. There is no doubt on the fact that this email was sent by the Repondent.
It further sent a response that exceeds the word limit of 5000 words, since its Section III has 7135 words.
The ADR Center of the Czech Arbitration Court did proceed to the Notification of Respondent’s default, based on the fact that the Response exceeds the word limit according to Sec. 13 (a) of the CAC’s UDRP Supplemental Rules.
According to §10 (a) of the UDRP Rules, the Panel “shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”, whereas it “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” (§ 15(a)).
Given the non-compliance of the Response sent on July 18, 2015 with the Supplemental Rules and the subsequent default notified by the ADR Center of the Czech Arbitration Court, the Panel decides that it relies on the position such as explained in the email sent by the Respondent on July 8, 2015 together with its attachment.
The Panel adds that it will not rely on the notification sent by the Complainant on July 9, 2015, because it’s an unsolicited supplemental filing to the Complaint and the Complainant does not rely on “exceptional circumstances” that may explain this supplemental statement.
Position of the Respondent
In its email dated July 8, 2015, the Respondent criticizes prior decisions rendered on similar cases, explaining that the UDRP system is in favor of trademark owners and that “Yoyo does not recognize any of its authority”. It asserts that “any domain name which are the property of Yoyo, that are hijacked through the UDRP process will become the subject of a federal law suit”.
The Respondent claims reverse domain name hijacking. It refers to Lanham Act and says that “the UDRP starts the legal process, therefore the Complainant may be subject to paying significant legal costs and statutory damages to Yoyo”.
The Respondent declares: “I’m not sure that the Complainant has been transparent in the true reasons why they persecute a new start-up business trying to launch an innovative and useful service that does not pretend to be anything other than what it is”.
The Respondent further explains that “Yoyo when purchasing its domain names does not claim IP trademark rights in the domain names but is claiming legitimate business interest in its property” and it asks the Complainant to “consider this email a notice before legal action”.
The attached exhibit is the Declaratory judgment rendered on November 5, 2014, concerning the domain name <playinnovation.email> registered by the Respondent, which had been suspended on the request of the company Playinnovation Ltd that had successfully filed a URS procedure against the Respondent.
The Respondent filed a complaint for a Declaratory judgment in the United States District Court for the District of Arizona, seeking to overturn the suspension of the domain name
<playinnovation.email> under the URS.
The parties in this case filed a Consent Motion for Declaratory judgment and the Judge decided that “the Declaratory judgment proposed by the parties is entered, as follows:”
- Plaintiff brought this declaratory judgment action seeking, among other things, a declaration that its business model as detailed in its August 29, 2014 Complaint was lawful and, after discussion, the parties agreed on to the entry of the Declaratory judgment, with no admission of liability by any party.
It has been accordingly ordered, adjudged and decreed that:
- “Plaintiff’s legitimate purpose seeking to certify the sending and receipt of emails as described in the complaint, does not evidence a bad-faith intent to profit from the “registration, use or trafficking” of a domain name.
- (…) Plaintiff’s intended use of <playinnovation.email> as set forth in the Complaint is not trademark use.
- Plaintiff’s intended use of <playinnovation.email> as set forth in the Complaint is not a violation of the Anti-Cybersquatting Consumer protection Act (ACPA), 15 U.S.C. § 1125 (d) et seq. and of the Lanham Act, 15 U.S.C. § 1051 et seq., the ICANN URS and UDRP policy or other law”.
- The domain name <playinnovation.email> shall be moved from suspension and restored to Plaintiff and “Plaintiff shall include a disclaimer in its “Terms of <use” on the website <Yoyo.email> and any home or landing page associated with <playinnovation.email>, which states Yoyo.email is an independent certified email ervice and not affiliated with or approved by Playinnovation, Ltd.
- Plaintiff shall include a disclaimer in the metadata for all emails transmitted through <playinnovation.email> which states “The domain name <playinnovation.email> is part of an independent, certified email service that is not affiliated with or approved by Playinnovation Ltd of London (…)”
- Plaintiff’use of <playinnovation.email> shall be limited to:
a use as a non-public, back end email server used to link multiple email severs.
B use to track, record, document, or verify email communication.
C Us only by an individual or entity whose corporate or trade name is or incorporates “playinnovation””.
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