WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Abellio ScotRail Limited v. Yoyo Email

Case No. D2016-0695

1. The Parties

The Complainant is Abellio ScotRail Limited of Glasgow, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Demys Limited, United Kingdom.

The Respondent is Yoyo Email of Traverse City, Michigan, United States of America, self-represented.

2. The Domain Name and Registrar

The Disputed Domain Name <scotrail.email> 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 April 8, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 11, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2016. The Response was filed with the Center on May 9, 2016.

The Center appointed Charné Le Roux as the sole panelist in this matter on May 25, 2016. 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 United Kingdom public transport operator and exclusive licensee of the trade mark SCOTRAIL. The SCOTRAIL trade mark is registered in the United Kingdom with an effective date as of March 1993 under trade mark no. 1528473. The mark is registered for various services in class 39 and has the Scottish Ministers recorded as its proprietor. The SCOTRAIL trade mark has been in use since 1983 in connection with Scottish regional and commuter rail services. The Complainant provided a copy of its license agreement authorizing its use of the SCOTRAIL trade mark. The Complainant also provided a letter of the Scottish Government's National Transport Agency, Transport Scotland, on behalf of the Scottish Ministers, which confirms the Complainant's status as exclusive licensee. The letter finally confirms the absence of any relationship with the Respondent and authority to it to register and/or use the Disputed Domain Name. The letter also confirms that the Complainant is authorized to seek recovery of the Disputed Domain Name. The Disputed Domain Name was registered on April 16, 2014. There is no active website associated with it.

5. Parties' Contentions

A. Complainant

The Complainant provides evidence regarding both the registration of the SCOTRAIL trade mark and the use that has been made of it since September 1983. As mentioned, it also provides evidence in support of its exclusive license to use the SCOTRAIL trade mark and its authority to institute these proceedings on behalf of the Scottish Ministers. It submits that it has, in the circumstances, rights in the SCOTRAIL trade mark for the purpose of this Complaint and also that the Disputed Domain Name is identical to the SCOTRAIL trade mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, for the following reasons:

a. The Respondent has not been commonly known by the SCOTRAIL trade mark.

b. The Respondent is not a licensee of the Complainant and has not received permission from the Complainant to use the SCOTRAIL trade mark.

c. The Respondent does not own any trade marks incorporating the SCOTRAIL mark and has not traded as SCOTRAIL.

d. The Respondent's proposed business model for the Disputed Domain Name, which comprises a system for recording the transmission and receipt of emails, and which requires the use of third party trade marks as part of a range of domain names forming the basis of the system, is not, absent permission from the Complainant or the Scottish Ministers, legitimate use in good faith. The Complainant refers to the decision in Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (the "Statoil case") in this regard.

e. The Respondent's use of its trade mark in connection with an email service is also not legitimate if there is likely to be commercialization of the website associated with the Disputed Domain Name, alternatively, if the SCOTRAIL trade mark would be affected or tarnished by the email service. The Complainant refers in this regard to the decisions in Mejeriforeningen Danish Dairy Board v Domain Manager, Yoyo.Email Ltd, WIPO Case No. D2014-0730 (the "Mejer case"); and NVIDIA Corporation v Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-0770(the "NVIDIA case").

The Complainant also contends that the Respondent has registered and is using the Disputed Domain Name in bad faith. It states that the Respondent must have been aware of the well-known SCOTRAIL trade mark, since it has no generic or dictionary meaning other than referring to the Complainant and its activities. It argues that the Respondent's aim of commercially exploiting the Disputed Domain Name strongly indicates registration and use in bad faith and refers to the Statoil case referenced above and also the decision in Sheraton International IP LLC and others v Giovanni Laporta Yoyo.Email Ltd, WIPO Case No. D2014-0686 (the "Sheraton case").

The Complainant furthermore provides a list, as indicated below, of a number of UDRP decisions which all involve the Respondent and its registration of recognizable trade marks of third parties in the ".email" domain name space. The Complainant argues that in each of the decisions, the Respondent disclosed its intention to use the respective domain names for commercial email services and that in all those instances, the UDRP panels ordered the transfer of the disputed domain names. The Complainant argues that any alternative noncommercial or other plans put forward by the Respondent in this Complaint would not be credible in light of the previous disputes.

The Complainant requests that the Disputed Domain Name be transferred to it.

B. Respondent

The Respondent provides vigorous and comprehensive submissions in response to the Complainant's contentions and offers initially, background information in connection with its business and the patent and design registrations, as well as awards that it and its proprietor Mr. Laporta received for various inventions. It does not, however, deny the Complainant's contention that it owns rights in the SCOTRAIL trade mark. It also agrees that the Disputed Domain Name is similar to the Complainant's mark.

The Respondent then states that one of its recent innovations include the provision of a service in the ".email" domain name space that would be an Internet equivalent of recorded delivery for conventional mail. It states that it is essential to use domain names that incorporate the names of proposed recipients in order to allow users to send the recorded delivery email. It states that previous UDRP panels had not been provided with a full explanation of how the new recorded email system would work since it would have risked patent eligibility. However, since a patent application had now been filed (but in respect of which no detail was provided) a full disclosure, as set out below, could be made. A flow chart was provided, demonstrating the steps that would be taken from the proposed principal website at "www.didyougetmymail.com" and which members of the public would be able to join. After joining, the public would be able to send emails to a company by identifying the intended recipients on the above website with reference to the relevant domain name incorporating the recipient's trade mark, type in the message and then send it. The Respondent's mail server would then record the date and time of receipt of the email, and identify the sender and recipient and provide the message with a serial number. Subsequently, the server would send an email notification by way of a sealed email (not in clear text) that would include a hyperlink to the recipient that recorded mail is waiting, which could be clicked through to the website to view and/or download. The server would record the date and time that access to the email took place and inform the sender.

The Respondent states in connection with its rights and legitimate interest that:

a. it has invested substantial resources, including, since June 2014, expenditure of GBP 600,000 and the engagement of 8 programmers, 1 project manager and 2 graphic designers, to develop the software necessary in launching its proposed service;

b. users of the proposed service would be notified in no uncertain terms that the Respondent is not licensed with or authorized by any company;

c. the software is still being designed and is not yet completed;

d. the intended service is innovative but legitimate.

The Respondent's answers on the issue of its good faith registration and use can be summarized as follows:

a. In order to check that the proposed email project was legitimate, the Respondent consulted with a domain name lawyer, who apparently provided a positive indication that it would be. Substantiation of the advice was not, however, provided.

b. The Respondent considered the UDRP and the Final Report of the WIPO Internet Domain Name Process which it states make it clear that the UDRP should be confined to cases of deliberate bad faith abusive registrations, which this case is not.

c. The previous UDRP decisions are completely irrational and did not address critical issues regarding the Respondent's legitimate interest. Also, paragraphs 4(b)(ii) and 4(b)(iv) of the UDRP were not properly applied in those decisions, as none of the panels could find that the Respondent registered the disputed domain names in order to prevent the owners of the trade marks from reflecting the marks in a corresponding domain name, or that the Respondent intended to attract Internet users to its website by creating a likelihood of confusion. The Respondent requests that the Panel in this case conducts a fresh review based on the facts presented.

d. The Respondent had no intention of selling, renting or transferring the Disputed Domain Name or any other domain names in the list of cases provided by the Complainant to owners of corresponding trade marks or their competitors for valuable consideration.

e. The Respondent did not register the Disputed Domain Name or any other domain names in the list of cases provided by the Complainant in order to prevent trade mark owners from reflecting their marks in corresponding ".email" domain names, as none of the trade mark owners concerned had availed themselves of the opportunity to do so in the sunrise period provided by the Trademark Clearinghouse.

f. The mere registration by a non-trade mark holder of a domain name that includes a trade mark is not bad faith.

g. The Complainant has not provided evidence of bad faith and merely relies on previous adverse UDRP cases.

The Respondent reiterates throughout its response that it acted in good faith and asks that the Complaint be refused.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:

(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has made out a case that it has rights in the registered SCOTRAIL trade mark, arising from the contractual and statutory arrangements on which its license is founded. Also, the Respondent did not deny the fact that the Complainant has rights as claimed.

Ignoring for purposes of a comparison between the Disputed Domain Name and the SCOTRAIL trade mark the ".email" suffix, as the Panel is entitled to do, the Panel finds that the Disputed Domain Name is identical to the trade mark in which the Complainant has rights.

The Complaint has satisfied this Policy requirement.

B. Rights or Legitimate Interests

The following facts in this matter are not in dispute, namely that:

a. SCOTRAIL is an established trade mark that the Disputed Domain Name incorporates in its entirety;

b. that the Respondent's intention at the time of registration of the Disputed Domain Name was to use it to provide some kind of service that would record the transmission and the receipt of emails; and

c. that this service is dependent on the incorporation of third party trade marks as part of a range of domain names in the ".email" domain name space.

Paragraph 4(c) of the Policy provides a list of circumstances which may demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name, but the list is not exhaustive. The Panel also takes into account that the Complainant only has to make a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy, following which the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests. In this instance, the Panel takes cognizance of the following factors in finding that the Respondent did not demonstrate rights or legitimate interests in the Disputed Domain Name:

a. The Respondent has not been commonly known by the SCOTRAIL trade mark. It is not the licensee of the Complainant nor has it received permission from the Scottish Ministers to use the SCOTRAIL trade mark. It also does not own any trade marks incorporating the SCOTRAIL mark.

b. The Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark or service mark at issue. The fact is that the Respondent is not currently making any use of the Disputed Domain Name. It is directed to an inactive holding page.

c. The Respondent registered the Disputed Domain Name in 2014, almost a decade after the registration of SCOTRAIL as a trade mark in the United Kingdom and almost two decades after the first use had been made of it.

d. Much turns on the question of whether the Respondent has demonstrated its preparations to use the Disputed Domain Name in connection with the bona fide offering of goods or services. The evidence that the Respondent has provided in this respect is not persuasive. It has not provided details of its patent application at all, nor the opinion that it indicates it obtained from a domain name lawyer. It has not provided any evidence that it has indeed expended any monies nor employed any persons in pursuit of the establishment of the proposed email services. Its evidence is limited to a flow chart and demonstration email layout. However, even if the Panel accepts that the allegations and evidence that the Respondent has provided is sufficient to demonstrate its preparation to use the Disputed Domain Name in connection with the said email service, the intended use cannot be found to be in connection with the bona fide offering of goods and services. In the set of facts present here, the Respondent acquires a domain name that incorporates a trade mark in which it does not own rights in order to form a basis for its commercial venture. The exploitation of the SCOTRAIL trade mark in these circumstances simply cannot qualify as fair or legitimate. The Panel also rejects the assertion of the Respondent that its services can be likened to that rendered by a Post Office. The Post Office is not connected to the name or address on the envelope presented for postal delivery, whereas the Respondent has acquired a domain name that facilitates the email service and controls it exclusively.

The Panel agrees with the decisions in the UDRP cases indicated above wherein it had all been found that the Respondent could not establish rights or legitimate interests in the business model that it presented as the basis for its registration of many similar domain names. The fact that the Respondent seems to have provided this Panel with more specific details regarding the manner in which the intended service would operate does not assist the Respondent's case.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Name at a time when there was an established reputation and registration for the SCOTRAIL trade mark. It also selected the identical mark as part of the Disputed Domain Name for purposes of intended email service. The Respondent claims that it would not be able to operate the intended service without the trade marks of third parties and a finding that there has been a deliberate selection of the SCOTRAIL trade mark by the Respondent is thus impossible to avoid.

Furthermore, the facts of this matter are seemingly no different from the facts expressed in the other UDRP cases indicated above. The Panel notes that in all those cases (a large number having been presided over by three member panels), the Respondent was found to have registered and used ".email" domain names in bad faith, suggesting a pattern of such conduct on the part of the Respondent.

The Respondent refers to the fact that none of the trade mark owners concerned had availed themselves of the opportunity to register their trade marks in corresponding ".email" domain names, as they had the opportunity to do in the sunrise period provided by the Trademark Clearinghouse. However, the absence of a registration in a specific domain name space does not constitute a waiver of rights, nor acquiescence of any form. It does not cure the Respondent's bad faith registration.

Taking all the factors above into consideration, as well as those that gave rise to the Panel's conclusion that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith, within the meaning 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, <scotrail.email>, be transferred to the Complainant.

Charné Le Roux
Sole Panelist
Date: June 9, 2016