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Registrant of 4,000+ .email domain names faces mounting legal problems

Yoyo.email claims it registered trademark-matching .email domain names for a legitimate fair use. Most National Arbitration Forum panels have disagreed.

yoyo.emailYou’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.

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  1. Doug Mehus

    These are such clear cut cases of trademark abuse as I’ve ever seen. Whatever happened to Uniform Rapid Suspension!?

    What should happen in in *all* of these cases: the Registry Operator *should* have grounds to immediately suspend these domain names upon receiving a written complaint from the trademark owner (and since these trademarks *all* pre-dated the launch of the .email gTLD, Yoyo Email has *no* case whatsoever) and promptly turn them over to the complainant – without *any* sort of arbitration. If Yoyo Email feels they’re somehow entitled to these names, they can try their luck in U.S. District Court and see if they can find a sympathetic judge (I’m willing to bet they can’t) to issue an injunction. Anything short of this is favouring domain squatters. Plain and simple. End of story.

    Cheers,
    Doug

  2. Gio

    In reply to the ignorant commentator who calls me a scumbag. All I have to say is that you obviously have issues that need addressing professionally. I am not professionally trained to comment on special need issues, so unlike Jake Hansen I won’t comment on things I have no understanding on.

    The other commentators are of course allowed their opinion however wrong it may be.

  3. Benjamin Ridgway

    Trademark abuse? How else would you send emails to someone called Example™ if its name is Example™? All Yoyo does is track and record the email journey for Yoyo members. Emails being sent to Example™ will always be directed and sent to Example™ and no one else, so how is this trademark abuse? Giovanni Laporta is being treated unfairly.

    • Joseph Peterson

      Maybe he is being treated unfairly. But the risk of controversy and losing legal outcomes was, from the very beginning, not so much a risk as a guarantee.

      If an entrepreneur wants to dance, there’s space on the floor enough without dancing primarily on other people’s toes.

      • Gio

        Joseph love the comment, it was beautifully said.

        I agree that there may be other ways to dance but I wasn’t dancing on anyone toes, that would be ICANN who allowed the domain names to go on general release.

        Giovanni Laporta

  4. Gio

    To answer the question “So is the guy a big cybersquatter?” Jeffrey M. Samuels, Examiner (Professor Emeritus) doesn’t believe so as he dissented from a recent Appeal Decision Foot Locker Retail, Inc. v. yoyo.email et al. Case Number: FA1406001565344 (19 August) .

    This is a second time Professor Samuels has dissented on a Yoyo vs Others dispute case. Deutsche Lufthansa AG v. yoyo.email. http://domains.adrforum.com/domains/decisions/1552833A.htm

    Professor Samuels has particular expertise in the areas of trademarks, domain names and unfair competition and currently serves as a consultant and expert witness in trademark-related matters. http://www.uakron.edu/law/faculty/profile.dot?identity=700492

    I don’t mind being hanged for something I’ve done wrong, but I kind of object when I haven’t.

    Gio Laporta

  5. sonny

    This is an interesting question

    In general terms it is not the registration of a domain name which is a problem but how the domain name is used that creates legal issues

    Geoco.email resolves to a go daddy sponsored lander displaying generic non infringing ads

    Whether the beneficiary of the Ppc generated by the ads on the page is go daddy alone or both go daddy and the registrant I’m not sure but either way the ads displayed for me do not appear to be infringing on any intellectual property owned by gieco

    Thus the registrant has fallen prey to yet another weakness evident in the new tlds … willy nilly legal policies that have more to the lay of the land than the law of the land

    Dealing with private registries mean dealing with unique wierd and perhaps stifling terms of service

    apart from being a wild and risky business plan this registrant lacks any leverage because he is dealing with a private business entity and they make the rules like em or not

    While no infringement is readily apparent the model is doomed if his registry says it is

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