Last summer I wrote a post about a UDRP case against a company called Yoyo.email which claims it’s working on an email equivalent of registered or certified mail.
As part of this plan Yoyo registered thousands of domains in the .email TLD, some of them generic such as replyhelp.email and reportabuse.email, but many of them copying famous brands (sheraton.email in that particular case). At present, none of these resolve to any web content. Despite Yoyo’s claim that it was only making a descriptive “fair” use of the Sheraton hotel brand, the domain was ordered transferred because “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.”
Since then there have been around 40 UDRP and URS decisions issued against Yoyo covering such domains as ebaysupport.email, dunkindonuts.email, and sofitel.email, to name just a few.
The Pattern in Yoyo’s UDRP Responses
In Yoyo’s response to these complaints its owner, a Mr. Giovani Laporta, claims that his use is fair because the domains only refer to the brands mentioned as part of his service and do not claim to be affiliated with or create confusion with such brands (also called “nominative fair use”). In any case, he claims, there will be no confusion, since these domains only operate on the back-end and will never be seen by users of his service or the brand owners who receive its emails.
What Yoyo fails to explain, in all of these cases, is why it registered these brand domains in the first place. If they’re never seen then the system could function just as well using placeholder domains and Yoyo has admitted as much. This lack of explanation raises the question of what Yoyo may not be saying about its planned service. Since it has attempted to defend its domains at great cost in both money and time (it even filed a Federal court action in Arizona to overturn a UDRP decision) what will be its return on this investment?
Through all these many cases the tone of Yoyo’s defense has changed starting with simple attempts to explain its planned service but has, more recently, risen in pitch to the point where it claims that prior decisions against it are “based on pure speculation” with Panelists and Complainants acting in bad faith to misconstrue and manipulate the UDRP and URS. Yoyo specifically accuses Panels of engaging in an “abuse of discretion” and “misuse of power.”
The decisions against Yoyo have also evolved, starting with simple confusion about its service and its lack of explanation of the need for branded domains and culminating in a decision this week against the domain MySQL.email (MySQL is a very popular database management system offered by Oracle) which takes apart Yoyo’s defenses piece-by-piece.
A New Look at Yoyo’s UDRP Defense
The Panel in this case, one with many hundreds of UDRP decisions to his credit, takes Yoyo to task in a new way explaining that its claimed email service is not even technologically feasible. After a detailed explanation of how emails actually work on the internet – by jumping from server to server – the Panel states that “There is no way Respondent can guarantee a message sent from its proprietary SMTP server actually arrives at a particular email address.”
He concludes with what can only be described as a smack down of Yoyo holding: “So, this little bit of history means Respondent has knowingly lied to the Panel.”
Also, in response to Yoyo’s various cries of past Panelist misconduct, the decision contains this gem: “This Panel feels constrained to point out Respondent’s theme that panels are biased, clearly abuse their discretion, misuse their power and Policy decision-making facilities does not make Respondent’s arguments more convincing.” The decision concludes with the refrain that Yoyo’s failure to adequately explain why it needs these branded domains, and the fact that it really doesn’t since its business is not technically possible, leads to the conclusion that it has passively held the domain in bad faith.
Will this finally put an end to claims against Yoyo and its branded .email domain? Not likely unless Yoyo voluntarily cancels or agrees to transfer them to their respective brand owners. Until then, these cases will continue to be brought thus keeping alive the questions of why Yoyo continues to defend itself and what this suggests about its real reason for using branded domains.
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- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017