Bald Assertions And .EMAIL Yoyos

If you’re planning a mid- or end-of-summer vacation, you may have visited the website of a hotel, perhaps even the hotel that filed the complaint in this week’s decision – Sheraton Hotels & Resorts Worldwide Inc.

Sheraton and two of its affiliates filed the complaint over sheraton.email and sheratonparklane.email against respondent Giovanni Laporta of yoyo.email. He’s already been hit with a slew of URS and UDRP complaints by some of the brand owners his domains have copied, and a number of URS decisions have been issued, all against the respondent. This one was no different except that it was the first UDRP decision against Mr. Laporta and the panelist found that the domains in dispute met all of the criteria to be transferred to the complainant. The respondent claims to be exercising fair use of these and other famous branded .email domains, explaining that his business – Yoyo – will allow users to send emails to these companies, through him, and he will track and confirm delivery of the email – presumably about customer service issues and disputes against the brand owners. Although the service is supposedly provided free of charge, the respondent has admitted that it will be monetized in some yet-to-be-decided manner.

Despite the claim of fair use, the panelist held that “the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. For the Panel to hold otherwise i.e. that the Respondent’s interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur.” The panelist also noted that Respondent has registered many other domains incorporating other famous trademarks and commented that “this reinforces the fact that the Respondent seeks to be in a position where the trademark owner is deterred from refusing its [the respondent’s] recorded delivery services, based partly on the Respondent’s prior possession of domain names incorporating that very party’s own trademark.” While the domain owner’s email service sounds like a good idea, this string of cases suggests that he’d better find another naming convention for his domains.