Yoyo.email claims it registered trademark-matching .email domain names for a legitimate fair use. Most National Arbitration Forum panels have disagreed.
You’ve probably never heard of Yoyo.email before, but it is one of the biggest individual registrants of new top level domain names in a single TLD. The company registered over 4,000 .email domain names.
The problem for Yoyo.email is that a large number of these domain names match famous trademarks, such as dunkindonuts.email, budlight.email, geico.email and footlocker.email.
As a result, the company has faced at least 15 UDRP/URS cases.
Giovanni Laporta, founder of yoyo.email, told Domain Name Wire he has received over 100 cease & desist letters about his .email domain names. I suspect many of them were generated after he clicked through Trademark Clearinghouse notices for many of his domain names.
So is the guy a big cybersquatter? Laporta says he has registered the domain names for legitimate purposes.
His company plans to offer a “certified email” service that verifies that emails sent to a company were actually delivered. He says his use of the domain names would be a “fair use” in a technical, backend manner and believes URS and URDP are being unfair to him.
He has convinced one panel that there’s at least question of fair use.
Yoyo.email appealed an adverse URS decision for stuartweitzman.email. The appeal panel overturned the original decision on the grounds that the use of the domain name for a free service at least “raises a question as to whether the proposed use will be a legitimate fair use under URS”.
But other appeal panels have found otherwise. He has lost three appeals so far.
In an appeal over lufthansa.email, the panel considered that a technical/backend, non-commercial use of the domain names, under some circumstances, could be seen as a legitimate use.
However, the panel found this at odds with Laporta’s statement that yoyo.email is a serious business with up to ten employees that has spent “a lot of money” developing its service. Laporta told the panel that it will “make money by the value of having large numbers of active users…”, by charging for connected social media, as well as connected advertising.
In one case he mentioned how the company would monetize the service. In another case he said that original statement about making money from it was in error.
Laporta told Domain Name Wire that all of the adverse URS/UDRP decisions have been based on what “may” happen in the future, not on the actual use of the domain names to date (nothing).
It’s worth noting that a panel just handed down a decision in favor of the registration of porsche.social, determining that the planned use as a free enthusiast site means the domain shouldn’t be suspended under URS. I suspect this will be a controversial decision.
Laporta plans to file a federal lawsuit seeking declaratory relief over his registrations.