Yoyo.email files lawsuit after barrage of URS and UDRP complaints.
Last month I wrote about Yoyo.email Ltd, a company that has found itself in legal hot water after registering over 4,000 .email domain names.
Many of the domain names match well known brands, such as 7eleven.email, Geico.email and Budlight.email. As a result, Yoyo has already been on the receiving end of at least 34 URS (Uniform Rapid Suspension) and UDRP cases.
Yoyo.email is fighting back. Last Friday it filed a lawsuit (pdf) in federal district court in Arizona.
The lawsuit, filed against PlayInnovation, seeks declaratory judgement following an adverse URS decision for PlayInnovation.email. Traverse Legal, which is representing YoYo.email, is also using the case to try to get similar relief for all of Yoyo.email’s domain names.
The PlayInnovation.email URS case definitely met the definition of rapid suspension. The domain was registered, URS filed and decision rendered on the same exact day.
Part of Yoyo’s argument is that cases are being filed based on potential future use. The timeline of the PlayInnovation.email case brings home that point.
It also calls into question the accuracy of information in National Arbitration Forum panelist Carol Stoner’s determination.
In finding against Yoyo, Stoner wrote:
Complainant has submitted reliable evidence showing that Registrant has offered the domain name for sale, in accordance with URS 1.2.6.3(a). Complainant has submitted reliable evidence showing that Registrant intentionally attempted to attract for commercial gain, internet users to registrant’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location, in accordance with URS 1.2.6.3(d).
Yoyo argues that there was no offer to sell the domain name or evidence submitted supporting these findings.
It certainly seems implausible that PlayInnovation was able to submit such evidence the same day the domain was registered. I’m not entirely sure how PlayInnovation found out about the registration so quickly; “PlayInnovation” is not registered with the Trademark Clearinghouse.
The suit also questions if a UDRP panelist cut-and-pasted information from one case into an irrelevant one.
URS is supposed to be fast and inexpensive, but is justice being served too quickly?
Yoyo contends that its use of brand-matching .email domain names will be in a backend manner that will not be visible to web users, and thus does not run afoul of cybersquatting rules.
Don’t forget the (at least) 7 UDRPs decided on behalf of the Complainant, every time.
This will be an interesting (an potentially important) case to watch.
Honestly, YoYo is pretty generic.
I hold at least one generic .email that could potentially be slapped with a URS or UDRP. So I am very careful not to use it the way the TM company uses it.
For our part, we need to watch our registration history and steer away from obvious non-generic registrations; a bad history can be used against us.
But if such names are simply being handed over to the deep pockets without due process, then we might as well all go home and look for another career.
Jennifer, the multiple UDRP and URS aren’t for “YoYo”. They are for existing brands such as Dunkin Donuts, Baskin Robbins, Sheraton, NVIDIA, Statoil and others.
Oh, I see. I was just looking at the term YoYo by itself.
It seems that the respondent would have a stronger case had the terms he registered were generic, such as apple, blackberry, open, etc. Even here, usage would be important in determining intent.
But registering clear trademarks, such as 7Eleven, Dunkin Donuts, StatOil, etc., without permission from these companies places him in great legal peril.
If ever the term “cybersquatter” would fit, it would be here.
The problem is always the same: people registering/buying domain names containing TMs and brands they don’t own and then complain when they lost them.
The problem is always the same: Registrys and registrars selling obvious trademark domains.
“Yoyo contends that its use of brand-matching .email domain names will be in a backend manner that will not be visible to web users, and thus does not run afoul of cybersquatting rules”
Purely a legalism. The infringement of a trademark occurs at the time of registration of the domain. These are exact matches of trademarks, brands and corporate names, not keywords that simply contain the mark.
Also curious why they took on Play Innovation, a UK company, versus – say – NVIDIA or any other ‘giant’. Rhetoric question.
My guesses on why PlayInnovation –
1. It’s a smaller UK company, like you point out. Keep in mind YoYo is as well.
2. It was the first URS (I’m making this assumption based on it being filed the day the domain was registered)
3. The panelist included statements in the case that are probably provably wrong.
A POTENTIAL infringement occurs at the time of registration, use does matter.
Infringement occurs at the time of registration
WRONG
“The infringement of a trademark occurs at the time of registration of the domain”
Are you really that stupid?
I invite you to register “Microsoft” domains then and try to pass the dunce test.
“Also curious why they took on Play Innovation, a UK company”
Because they are more likely to get a default, and the defendant may not have US TM rights and thus cannot prevail on a TM claim in a US court.
PlayInnovation do have rights, the lawsuit is bought under section 43 of the Lanham Act, so they can defend in a US court. You are really not good at your job are you John Berryhill.
They do, do they? What would be their basis for claiming trade or service mark rights in the United States? Their website does not indicate they do any business outside of the UK and they have no US registered mark.
Like I said you are not very good at your job. ; )
“Yoyo contends that its use of brand-matching .email domain names will be in a backend manner that will not be visible to web users, and thus does not run afoul of cybersquatting rules.”
I’m not sure what “a backend manner” means, but I have some guesses.
Do “cybersquatting rules” only cover hosting web sites on a domain, or do they also include things like harvesting the emails which mistakenly arrive at a domain (intended for the trademark owner), and then adding those emailers’ addresses to a mailing list? And what if the mailing list is then used to market a product that competes with the trademark holder?
I suppose the bigger question is why the domains matter at all if you’re just using them in the backend. Why wouldn’t geico.yoyo.email, which wouldn’t be covered under URS/UDRP, work?
Andrew. Its legally complicated. I would have much preferred not to have spent 50K on domain names. In more simple terms in front or behind the @ makes no difference, neither is Cybersquatting. Evidence is required for Cybersquatting.
Andrew, I will try and answer the “big question”
Question:
if domain names where to be seen which version would suggest more of an instant approval with the Yoyo service;
[email protected]
or
[email protected]
Answer:
[email protected], instantly suggests that Nvidia has already approved the Yoyo service, even if it has not. This becomes a trademark issue, agreed not under the URS or UDRP but in more serious courts.
whereas
[email protected] – instantly sounds like it should be controlled by Nvidia but does not suggest approval, but merely a way to contact NVidia by email, which when emails are sent through Yoyo to Nvidia are sent and do get controlled by Nvidia. There is no unlawful trademark use or infringement or automatic consumer deception.
Like I said. Its legally complicated.
Hmm. Not sure I agree with your assessment, but I thought the domains wouldn’t be visible at all to users and will only be on the back end?
Yes domain names will not be visible, I used the example only in terms to explain legal complications.
[email protected] would suggest to me some sort of partnership/collaboration (or in this case ‘acceptance’) between Nvidia and Yoyo.
whereas – [email protected] would suggest it’s a way to contact nvidia by email. In this case Yoyo, simply says Yoyo guarantees a recorded delivery email method rather than some sort of partnership/collaboration. That’s all.
If that was Yoyo’s intention to “harvest emails” then this can done with or without owing TM domain names. It can be done at the send end, which is in the total control of the email host. Are you now calling Yahoo, Hotmail, Google Mail Cybersquatters?
You seem to know a lot about Cybersquatting….
This is a lame redux of the old “web traffic forwarding scheme” where people would register typo’s of famous brands with the notion they would provide the “service” of forwarding misdirected web traffic.
The guy running this thing is hopelessly misguided.
The “Guy” can’t be that misguided.
Jeffrey M. Samuels, Examiner (Professor Emeritus) doesn’t believe so as he dissented from an Appeal Decision Foot Locker Retail, Inc. v. yoyo.email et al. Case Number: FA1406001565344 (19 August)
This is 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 finding: “With respect to fair use, Respondent has made a convincing enough argument that it needs to use the disputed domain name, as well as many others, in order to offer a credible and useful service and does not possess the requisite intent to “misleadingly divert consumers. “How else can the service provide proof of the sending of emails to Lufthansa other than through the use of the term “lufthansa? In this sense, Respondent appears to be using the term “lufthansa” merely to describe the intended recipient of an email. Whether Complainant supports such a service or believes it is technically or commercially viable seems to me to be beside the point”
Once might be a mistake but twice?
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. See biography http://www.uakron.edu/law/faculty/profile.dot?identity=700492
The Hon Neil Brown Qc, I note in the dec action another highly regarded UDRP panelists was hired and has helped Yoyo draft UDRP Reponses. See biography http://www.neilbrownqc.com
John Berryhill…. maybe you are the one that is misguided especially if you listen to your own hype “He has been described as “one of the best” domaining attorneys in the industry” Source http://icannwiki.com/index.php/John_Berryhill.
Really John, grow up.
John Berryhill needs to grow up? Best sock puppet comment so far 😀 But please, post a full disclaimer of affiliation.
Obviously Yoyo is planning on making money out of this at some point, they stated numerous times in their first UDRPs that they are a business and that they have invested a lot of money into this. They then had to change their version of the facts as they realized they cannot prove legitimate use if they are planning on profiting off famous trademarks, so now apparently they want to pass it off as a free service offered to companies. But sooner or later they will try to make money and they will run into problems.
For the record: Yoyo has never changed its defence on the monetisation issue.
They have always been honest and have said there will of course be some monetisation of the Yoyo website. Yoyo have repeatedly written that when monetisation takes place it will be lawful and it would not be related to deceiving consumers or using the domain name in any way that profits from the brand owner TM. Some panelists have conveniently ignored the evidence, this amongst other supporting evidence that has also been ignored.
But then don’t you profit from the brand owners’ trademarks if your monetization depends on your owning of domain names which incorporate their trademark?
Mark, I don’t know how to say in any other way, monetization does not depend on Yoyo owning TM domain names.
Not only has Yoyo hired experienced and reputable trademark and domain name attorneys to ensure compliance with all laws, Yoyo is now also seeking a declaratory judgement from the United States District Court for District of Arizona declaring among other things that Yoyo business model is lawful, does not violate the UDRP or ACPA and does not constitute cybersquatting as a matter of law.
While there are various aspects to the business model, the one relevant to trademarks is to use the domain names as a backend, non-public email server in order to route emails for the storing of Metadata which will allow Yoyo. email to certify delivery and potentially receipt. No third party, consumer or when anyone else outside Yoyo staff ever sees the domain name at issue.
It is impossible to claim trademark infringement since there is literally no trademark use of the domain name.
Then if your monetization does not depend on owning TM domains, why did you invest over 50K in registering them? Is this all a publicity stunt? Have you changed course at some point after realizing the issue with trademarks? Or is Yoyo Email Ltd a legal façade, and what you are really hoping for is to sell some of the domains to brand owners who would not be able to get their through the UDRP?
Commercials is not your strong point then?
I have had allegations ranging from email fraud, to hijacking, blackmail, ransom demands and plots to bring down the whole domain name system, most of them made within weeks on the simple registration of a domain name.
I suppose a few more allegations on top won’t do any harm.
Commercials? You want to advertise the domain names you registered?
Earlier you stated: “No third party, consumer or when anyone else outside Yoyo staff ever sees the domain name at issue. ”
Which is it?
‘Commercials’ meant as an adjective 1.of, pertaining to, or characteristic of commerce, not as advertising.
As an adjective it also means “making or intended to make a profit”.
If the domain names are meant to be a technical backend, not to be made public to third parties, I’m not sure how you want to use them as a commercial tool.
In any case don’t take my comments as an attack, I’m only trying to understand what you are doing, and maybe help you see things more clearly in case you don’t know what you are getting yourself into. For instance I doubt a court would be satisfied with the answer that you registered these domain names for commercials or for their commercial value.
But that’s just it I have every intention of commercialising the website, but not by using domain names in any trademark way and certainly not by trying to deceive consumers. We are going around in circles. I appreciate your comment, if you really do mean you are trying to help, I’m thankful.. one last question what happens if a Federal judge agrees Yoyo has a legitimate business model, what then?
Then good luck with your business. I’m sure Yoyo can be found to have a legitimate business model as long as you don’t advertise the domains you registered to attract customers, what I fail to understand is why you needed to register so many domains for so much money if you were planning to hide them from the public in the first place.
Also legitimate use may be put into question by panels who could consider that these domains are not required to run your business, but are merely a convenience which prevents the TM owners from registering the corresponding domains.
Another thing: in your last reply to Andrew you stated that “[email protected] – instantly sounds like it should be controlled by Nvidia”, then “There is no unlawful trademark use or infringement or automatic consumer deception”. Isn’t there consumer deception if the user believes [email protected] is controlled by Nvidia?
No there cant be. Where is the deception? Emails go to Nivida and any email sent back via the same route will only be sent back by Nivida which they do control, who is being deceived?
Yoyo, simply says Yoyo guarantees a recorded delivery email method rather than some sort of partnership/collaboration. Its really simple, maybe too simple.
You’d have a case *if and only if* NVIDIA agreed to embark on such a venture in the first place. Then I’d tip my hat for your entrepreneurial skills. But instead, you received – and lost – a UDRP.
Acro: You have a lot to learn. I simply have not got the time to teach you. Sorry.
But it makes no sense to register trademarks of companies and proceed with a service “on their behalf” without an established agreement, surely? What is your exit strategy now that it is clear that the pattern of decisions prohibits the scalability of your model?
Acro. I didn’t register domain names on their behalf I have never said such thing. If you don’t mind can you wait until after the Federal Court case to condemn me?
The District Court proceedings permit the exchange of discovery, examination of witnesses, presentation of reply arguments, and examination and cross-examination of live witnesses, all of which are unavailable in a proceeding under the UDRP.
Can we allow the District Court to make its own, independent judgement based upon the full record to be presented before it before sharping the knives? .
Actually, they are running a certified email service. The brand.emails are only used to internally route emails so that all the meta data is captured on their servers. That way they can certify that the email was sent and, in some instances, received. Like certified mail, there has to be proof that someone sent a person to someone’s door and put in in the box. The brand.email is just an easy way to route and store the data, invisible to sender and receiver. There may be other ways to do it, or not. But that isn’t cybersquatting.
I hope you’re not confusing these yoyos with EmailYoYo.com – they are not the same company.
He’s not confusing them. yoyo.email describes its business like a certified email service.
Arco….Aren’t you the one that thinks that “infringement of a trademark occurs at the time of registration of the domain”
If anyone is a Yoyo it’s you. : )
Funny how the yoyos arrived when the truth came out. Is “Observer” a sock puppet for the Respondent in those UDRPs?
Finally someone that’s making sense. I have been following this case, yoyo is greeting slaughtered for being innovative. The last time I checked innovation does not equal cybersquatting.
Yeah, I have a business a lot like that. I come to your house, hotwire your car, drive it around the block and then tell you if it needs any repairs. You’d be amazed how many people get the totally wrong impression I’m stealing their car.
There are good lawyers. There are smart lawyers. There are big mouth lawyers. You talk too much.
Nothing new here
Carol Stoner wrote that she had seen not just evidence, but reliable evidence showing that Registrant has offered the domain name for sale.
Where is it possible for the public to view the “reliable evidence”, please?
The most sensible comment made.
http://www.rethink.domains says:
September 2, 2014 at 4:20 pm
“Actually, they are running a certified email service. The brand.emails are only used to internally route emails so that all the meta data is captured on their servers. That way they can certify that the email was sent and, in some instances, received. Like certified mail, there has to be proof that someone sent a person to someone’s door and put in in the box. The brand.email is just an easy way to route and store the data, invisible to sender and receiver. There may be other ways to do it, or not. But that isn’t cybersquatting”
Then why not name your email servers “nvidia”, “dunkindonuts”,”queenelizabeth2″ etc. If it’s for internal routing of emails.
There are plenty of tracking technologies. There is no reason for registering domains and trademarks of corporations if it’s only for internal use. Or is it?
I have learnt always agree with a fool, cause when arguing with a fool you will always be wrong.
So. You are right. I’m wrong.
Of course you’re right. http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-0855
Trying using your own material when replying next time instead of piggy backing on mine.
Just in .http://www.udrpsearch.com/naf/1575592
Everybody. If you don’t mind can you all wait until after the Federal Court case to condemn me?
The District Court proceedings permit the exchange of discovery, examination of witnesses, presentation of reply arguments, and examination and cross-examination of live witnesses, all of which are unavailable in a proceeding under the URS and UDRP.
Can we allow the District Court to make its own, independent judgment based upon the full record to be presented before it before sharping the knives?
Would appreciate it.
Anyone is entitled to express their opinion. Those things you mention will only happen in the court proceeding if the other side bothers to show up. Otherwise, it will be a default proceeding. Picking a soft target – i.e. a foreign defendant who has no US trademark and no monetary downside to the default – as a vehicle for attempting to obtain a blanket court blessing on the business plan (itself described in the Complaint as “under development”) is an interesting idea. However, just because the other side defaults does not entitle the plaintiff to everything they ask for, and since the Complaint relates to this one domain name, the judge is going to have to be asleep at the switch to fail to notice that the relief requested goes well beyond the basis for discretionary exercise of jurisdiction in a DJ action.
The “soft target” plan – and one might ponder the interesting timing of filings in the URS proceeding – will go awry if any of the other mentioned trademark owners show up as intervenors, which is a distinct possibility here.
But, IMHO, the high point of the Complaint, in a US court addressing a question of US law, is the part that goes off about having been advised by an Australian lawyer admitted to no court in the US. That wouldn’t even buy a willfulness defense, but it sure does raise a question about confidentiality of all communications held with that non-US lawyer.
Another amusing item to note in the civil complaint is that it includes a recitation of various other domain names including mwe.email, which was the subject of a URS proceeding brought by the law firm of McDermott, Will & Emery. Now, just try to wrap your head around the hypothetical client of that firm that would want to route all their emails to their lawyers through a third party. Ummm…. yeah.
Sure, everyone is entitled to express their opinion, however not everyone wants to hear it.
you know so little about nothing : )
John Berryhill says “The guy running this thing is hopelessly misguided”
Apparently not that misguided . Just in. http://www.udrpsearch.com/naf/1575592 Honorable Karl V. Fink (Former District Judge)
It seems like YoYo is simply offering an electronic version of a “certified” postal delivery service (…and, I assume they plan to generate revenue in a similar manner as well!). In fact, YoYo is likely to offer very similar/comparable “certified” delivery services as those currently offered at most National Postal Services, including:
– Delivery is guaranteed by the post office (or, YoYo in this case)
– Proof of (postal) delivery can take the form of either the recipients signature (obtained by the postal delivery employee upon delivery), or simply the stamped and dated “guarantee of delivery receipt” given by the Post Office when they accept the letter for delivery. At least here in Canada, I believe both are acceptable as legal proof of delivery??
YoYo could similarly offer both forms of proof of delivery: in the form of an ‘electronic delivery receipt’ issued (signed) by the recipient company’s mail servers, or simply a “time-stamped guarantee of delivery” confirmation email issued by YoYo.
– Interestingly, from personal experience, prior to Canada Post accepting/certifying a letter for guaranteed delivery, the entire address is entered into the Canada Post database to verify the address actually exists (e.g. Canada Post checks for any “addressing error”; and if one is discovered, they correct it before accepting and certifying the letter).
One might argue this is somewhat similar to YoYo receiving an email (for domains they own) of the type: [email protected], and forwarding it on to the intended company. Of course, in this case, 100% of the incoming emails will have an “addressing error” that will need correcting by YoYo so it can be successfully delivered to the intended recipient.
So, how will YoYo make any money??
– As with any “certified” postal delivery service, FOR A FEE, YoYo will certify and guarantee to “Joe Public” delivery of their [email protected] to the intended company (provided YoYo owns the company.email domain). For example, YoYo would guarantee delivery to 7Eleven an email addressed to [email protected]. For a PREMIUM FEE, YoYo might also include the guarantee to offer legal assistance or provide evidence as needed, should the recipient (e.g. 7Eleven) claim they did NOT receive Joe Public’s email on/by a certain date, or at all.
And, since the fees YoYo collects are for a “delivery service”, and NOT related (or in the same classification/category) as any product or service offered by the recipient companies, perhaps this allows YoYo to skirt the normal trademark legal issues??
Steve
An easier and less expensive way (both registration and legal fees — they can expect more, I’m afraid; this isn’t going away) would be to piggyback on its own email address, for example,
[email protected]
Businesses would have to be on board with this (doubtful, given that they have their own domain names and legal/marketing email addresses). I’m not quite sure how the legalities play out with the use of TM sub-domain terms.
Of course, “Yoyo” would have to set itself up as a trustworthy name first, but that may be difficult, given its current squatting reputation.
Lawyers get it wrong all the time, especially those who overreach. It is shocking all this has escalated on the mere registration of a domain name. As far as I can make out there has been no other factual evidence.
It’s like saying because we are human and we were born, and because there now might be the possibility that we can commit a crime, we need to thrown you in jail. It’s ridiculous.
It’s not overreaching to want to protect one’s trademark.
I don’t think this case is over yet, and it will be an interesting one to watch.
Agreed, its not overreaching to want to protect one’s trademark, but it is when trademark attorneys fabricate stories.
The fact that you are registering Trademark.email domains is not fabricated, you admit this. What is being fabricated (by you) is the ridiculous premise that the public will never see those domains because you have no intentions of constructing a “website”. The problem is, the public will see those domains – in the email addresses that you are supposedly going to use them for.
I submit that you know exactly what I’m referencing and it is for that very reason that you cannot even divulge your true intentions in your ridiculous court filing.
Cartoonz
It’s difficult not to call you a big mouth idiot, but if the shoe fits……
You obviously have anger issues. If you were near I would cuddle you and say don’t worry everything is going to be ok. Then send you off to go and play with the rest of the children.
and again with the ridiculous comments that add no substance to the conversation.
Ms Domainer says:
“It’s not overreaching to want to protect one’s trademark”
I respectfully have to disagree, they do overreach…
When people send registered parcels/mail through regular post the TM holder has no say what courier the sender decides to send its mail through and also has no legal right to stop mail being sent to them with their name written on it, through whatever courier. The same is true with sending online mail (email). With regard TM legislation. The TM holder can’t get confused with emails being sent to them that have their name written on it. TM legislation says you can’t get confused about who you are. TM legislation says the sender has to be confused with what they see (the service offering), not the TM holder. Yoyo guarantees a certified email route and claims nothing else. Yoyo does this by internally routing the email via the domain name it lawfully owns. From a TM point of view, whether or not the domain name features a TM is irrelevant because the actual domain name is invisible at point of “service offering” (being sent form Yoyo’s website). So it’s impossible to confuse the public. Yoyo does not use the domain name in any trademark way, therefore it’s impossible to bring a claim of TM infringement. Yoyos intention would have to be shown to be confusing the public to break/violate TM law, which would be pretty hard to do because we all now know what the Yoyo service is about. In fact, the more we comment the more we legitimatise the business model.
TM holders cannot get upset with emails meant for them are in fact sent to them. TM holders may not be too happy with the route in how it gets to them, but “not happy” is not illegal.TM holders, in this case do overreach.
This debate is a storm in a teacup.
Complete bullshit. In order to have “[email protected]” actually provide a functional communications link to Nvidea, that email address would have to be known to the public. Sure, you might not have a “website” visible, but you are admittedly going to need to have the email addresses known -hence your registrations. So, no matter which way you try to play this, it seems little more than a shakedown. Did you really believe that the TM holders were just going to go along with you inserting yourself in the middle of their communications?
Look, it will be fun to watch you try your legal tap dance in court but there’s no way you’re going to prevail.
“Cartoonz”..,,, judging by your comment the name suitably describes you, a Freudian choice?
How about actually responding/refuting my comment? …or do you truly believe that just making drive-by snarky troll comments somehow elevates you?
C’mon… put on your big boy pants and explain how the TM email addresses are not going to shown to the public…
Cartoonz –
I have NO relationship with YoYo.
Based upon earlier comments and visiting the YoYo.email site (which, tellingly displays the tag-line “Signed, Sealed and Delivered”) I was simply theorizing how YoYo might use the domains. And, given some of the obvious parallels to “certified” postal delivery services, I decided to highlight a few of those similarities (notably those that MIGHT help explain how YoYo might “skirt the normal trademark legal issues”).
It is all speculation on my part; meant to stimulate discussion.
Steve
My comment was in reply to Gio, not you. He’s the only one that actually knows why he did this… 😉
My mistake.
At first I believed Gio was the intended recipient; however, a couple of peculiarities convinced me otherwise:
– Your example use of “[email protected]” (given the only previous use of the “legal” department in an email reference was my use of [email protected]); and;
– Your comment “…but you are admittedly going to need to have the email addresses known” (which, despite being a necessary truth in my hypothesized scenario, I was unable to find any direct “admission” to that effect by Gio herein).
No worries. Cheers.
Every mail server is set up to log the SMTP transaction involved in delivering an email. Nobody wants to send an email to, for example, “Sheraton” the hotel chain. When someone is attempting to contact them about a reservation, they are looking for a specific email address of the Sheraton hotel or desk manager or reservation department, etc.. The same is true of any large organization with whom anyone would communicate by email. For organizations that provide a general “support” email address, the simple “proof of delivery” is the response containing a support ticket from the recipient. Why any consumer wanting to send an email to XYZ Corporation is going to think, “Oh, I want to make sure it was delivered, so I’ll send it to some other Yoyo” is the real mystery here.
“Why any consumer wanting to send an email to XYZ Corporation is going to think, “Oh, I want to make sure it was delivered, so I’ll send it to some other Yoyo” is the real mystery here.” — I agree!
I also doubt a viable business case could be made for the model I described (which was derived only based on earlier comments, a visit to the YoYo.email website, and certain similarities to existing “certified” postal delivery services).
As a reminder, you must use your real, working email address to post comments. Comments with invalid email addresses may be deleted.
Here’s a thought …
Rather than have “Joe Public” actually address an email direct from their email client to [email protected] (which necessitates YoYo having to publicize/publish the AnyCompany.email TM’d domains), perhaps YoYo will offer functionality to compose & send emails direct from their site using drop-down menu choices. For example:
AnyDepartment⬇ @ AnyCompany⬇ .email
Examples from the ‘AnyDepartment’ drop-down menu might include:
– legal
– customer service
– complaints
– human resources
– office of the CEO
Plus, for an ADDITIONAL FEE, YoYo might make available pre-written issue-specific content to drop into the email body (e.g. complaint letter, employment letter, legal letter, etc).
And, if Joe Public must also enter his email address as part of the process to send an email, YoYo could then cc: Joe Public on the email he composed (which was addressed To: [email protected]). If this is this case, the purpose behind YoYo’s purchase of all the AnyCompany.email domains is merely as a tool designed to ‘re-assure’ Joe Public that his email was sent (despite the reality; which requires the email to be re-directed by YoYo to reach the intended recipient). Does this use of the AnyCompany.email TM domains allow the normal trademark legal issues to be skirted??
without explicit authorization from the AnyCompany ™, YoYo would still be using their TM though. This would still be visable on any emails to both the public and to the company itself. There’s no other reason the actual domains would need to exist if this isn’t the case. Imagine the response from the actual legal department at AnyCompany when they receive and are expected to respond to their own TM .email address. I’m thinking they would blow a gasket, and rightfully so.
Cartoonz says: “without explicit authorization from the AnyCompany™….”
Complete nonsense. Yoyo doesn’t not need to physically show the .email address to effect the service. The public, (or in this case Yoyo service users) only need type the TM name so that Yoyo knows who to direct mail at. So unless you think that members of the public need to seek “explicit authorization” from the TM holder before sending them an email, your comment is complete nonsense. Yoyo is a certified email service, this is all Yoyo claims to be.
Yes, imagine the response from TM holders receiving mail meant for them, which has their name written on it. OMG how abusive is that.
Lucky for all of us, you are not a lawmaker.
“Yoyo is a certified email service”
No. Yoyo is no service of any kind at all. Even their civil complaint says the business plan is still in development.
Well if thats the case Yoyo cant be found guilty of bad faith if they haven used the domain name , you can’t have both ways.
Steve you make a lot of sense. The other dude knows nothing about very little. When people send registered parcels/mail through regular post the TM holder has no say what courier the sender decides to send its mail through and also has no legal right to stop mail being to sent to them with their name written on it, through whatever courier. The same is true with sending online mail (email). With regard TM legislation. The TM holder can’t get confused with emails being sent to them that have their name written on it. TM legislation says you cant get confused about who you are. TM legislation says the sender has to be confused with what they see (the offering), not the TM. Yoyo guarantees a certfied email route and claims nothing else. Yoyo does not use the domain name in any trademark way, so its impossible to bring a claim of TM infringement. Yoyos intention would have to be shown to be confusing the public to violate/break TM law, which would be pretty hard to do because we all now know what the Yoyo service does.
End of TM lesson.
The TM holders are not only going to be confused, they’re going to be rightfully livid when they get an email sent to them from TheirTrademark.email and realize that some YoYo has inserted themselves into their communication pathway.
And get serious… just how long do you think it is going to take for a consumer to be duped into thinking that YoYo mail is the official channel to make that communication? That’s confusion right there.
Its so obvious that even a blind man can see that is is indeed YoYo’s intention to create that confusion, that’s the whole business model! The registrations of 4,000 blatant Trademark.email domains shows the intent is to make a business using other entity’s Trademarks. Face it, all email servers already do log the “meta-data” for all messages sent/received. That argument is going to fall flat on its face when challenged.
Gio’s own explanation makes no sense either:
“…[email protected], instantly suggests that Nvidia has already approved the Yoyo service, even if it has not. This becomes a trademark issue, agreed not under the URS or UDRP but in more serious courts.
whereas
[email protected] – instantly sounds like it should be controlled by Nvidia but does not suggest approval, but merely a way to contact NVidia by email, which when emails are sent through Yoyo to Nvidia are sent and do get controlled by Nvidia. There is no unlawful trademark use or infringement or automatic consumer deception.”
To any sane person, that explanation is completely backwards. The mere fact that YoYo controls the nvidea.email servers creates the illusion that Nvidea must be approving. Face it, that’s exactly why they registered these domains.
smart ass derogatory comments from “observer” that conveniently rebut nothing in 3… 2… 1…
“The fool doth think he is wise, but the wise man knows him to be a fool.” You’re right I’m wrong. Let’s leave it at that.
Cartoonz : Are you ok? Your rambling sounds like you are frothing at the mouth. Do you need a medic? If not count to 10 and relax.
Toonz… the explanation of this “service” doesn’t even add up when you consider the domains involved. One of the ones suspended in a URS proceeding is BUDLIGHT.EMAIL. There is no company called “BUD LIGHT”. That is a brand of beer made by Anheuser-Busch.
But the average consumer don’t know that, Yoyo makes it easier for them, that’s all.
“But the average consumer don’t know that,”
So they do see the email address? Because, yeah, I want to send an email to a brand of beer. Not any person or department, just to the brand itself. Where do these emails go, exactly?
“So they do see the email address?”
Not necessarily …
Rather than have “Joe Public” actually send an email direct from his email client (to [email protected]), perhaps YoYo will offer functionality on their site allowing emails to be composed & sent. For example, they might use drop-down menus:
AnyDepartment⬇ @ AnyCompany⬇ .email
‘AnyDepartment’ drop-down choices:
– legal
– customer service
– complaints
– human resources
– office of the CEO
– ToWhomItMayConcern
‘AnyCompany’ (or ‘AnyBrand’**) drop-down choices:
– 7Eleven
– Nvidia
– BudLight**
– Gillette**
– Pampers**
– ProcterGamble
Steve
“So they do see the email address?”
…OR, to take this concern right off the table, YoYo might set up their their email form like this:
1) What company or brand do you want to contact?
~ AnyCompany/Brand⬇~
2) Which person or department should receive your email?
~ AnyPerson/Department⬇ ~
3) If have attachments, upload them here:
~ |upload 1| ~
~ |upload 2| ~
~ |upload 3| ~
4) What is the subject of your email: _______________
5) Enter your email address here: _________________
6) Please enter your message below:
__________________________________________
__________________________________________
__________________________________________
~ | SEND | ~
If done in this manner, there is no need for YoYo to publicly display/show any of the AnyCompany.email domains.
Steve
Steve, is right.
This way Yoyo does not show any domain name or break trademark law because the public has no idea the domain name exists. The brand.email is just a easy way to route and store the data, invisible to sender, and I suppose wether or not there may be other ways to do it, would not be a valid legal argument. Yoyo’s simple way is not an illegal way.
Again, if the email isn’t visible, why spend so much money on the emails? Why not just use something encoded like @12345.yoyo.email instead of @nvidia.email?
Andrew: I don’t see the point of your question. Yoyo might have perfectly good reasons for their commercial choices which they may not want to debate on unregulated forum. The important point is that Yoyo has done nothing wrong in registration the domain name. Yoyo has provided it reasons for use which is legitimate. Whether there may be other ways to do it or not would not stand up as a valid legal argument of any kind. Yoyo’s simple way is not an illegal way. Give the company a break, at least until they do something that we can all jump all over as a matter of fact and not speculation.
Its all just a storm in a teacup.
Here’s a TM lesson for Gio and his fanboys:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-1172
That’s the whole point of the lawsuit.
UDRP proceedings are purely administrative, are not considered precedent and are not binding on any federal courts, nor are any decisions binding or even instructive precedent for US courts. If you are going to give TM lessons know about what you are teaching.
Now for the second and third segments of your TM education:
http://en.wikipedia.org/wiki/Lanham_Act
http://en.wikipedia.org/wiki/Anticybersquatting_Consumer_Protection_Act
You obviously have not read the lawsuit. The lawsuit is being bought by Yoyo under those acts. I repeat again. If you are going to give TM lessons know about what you are teaching.
Ms Domainer – The aim is to foster discussion… It is not done to obtain, nor retain membership to Gio’s ‘fanboy’ club!”
The only discussion that you “foster” is that you need to be ignored.
Gios fanboy club…I would rather be a fan club run by intellects than one run by the Ms Domainer “dunce” club. : )
Observer commenter, has your card marked.
Ms Domainer –
Respectfully, I choose to question, hypothesize and put forward ideas on this topic purely out of interest, and to foster discussion. It is not done to obtain, nor retain membership to Gio’s ‘fanboy’ club!
“Effective questioning brings insight, which fuels curiosity, which cultivates wisdom.”
— Chip Bell
“The fool doth think he is wise, but the wise man knows him to be a fool.”
William Shakespeare.
You’re right I’m wrong. Let’s leave it at that.
above comment aimed at Ms Domainer
“The important point is that Yoyo has done nothing wrong in registration the domain name.”
According to whom?
“Yoyo has provided it reasons for use which is legitimate.”
Actually, no they have not. Where do you see this information? Even in their ridiculous court filing, they claim their “business model is still under development”.
“Whether there may be other ways to do it or not would not stand up as a valid legal argument of any kind.”
WTF is that even supposed to mean?
“Yoyo’s simple way is not an illegal way.”
Again, according to whom? Every legal venue has ruled against them thus far.
“Give the company a break, at least until they do something that we can all jump all over as a matter of fact and not speculation.”
It is not speculation that they registered ~4,000 blatant TM domain names, that’s fact. The reason the community is jumping on this is because that type of behavior is exactly what gives the professionals in the domain industry a bad name. We get it that all you fanboys of YoYo want to somehow defend them for some ridiculous reason, but those of us that have made a living through domain names for the last 15-20 years know what the downside of crap like this really is – it besmirches all of us.
Cartoonz says: “Yoyo’s simple way is not an illegal way.” …“Again, according to whom?…. “The important point is that Yoyo has done nothing wrong in registration the domain name.” …..According to whom?
I think that would be ….
Honorable Karl V. Fink (Ret.) ,See eHarmony, Inc. v. yoyo.email et al. Claim Number: FA1408001575592 http://www.udrpsearch.com/naf/1575592 Dated: September 04, 2014, . On analogous facts, Examiner in the recent case denied the URS claim aginst Yoyo.
Professor Jeffrey M. Samuels, Examiner (Professor Emeritus) See Appeal Dissent on Decision Foot Locker Retail, Inc. v. yoyo.email et al. Case Number: FA1406001565344 (19 August)
This is 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 finding: “With respect to fair use, Respondent has made a convincing enough argument that it needs to use the disputed domain name, as well as many others, in order to offer a credible and useful service and does not possess the requisite intent to “misleadingly divert consumers. “How else can the service provide proof of the sending of emails to Lufthansa other than through the use of the term “lufthansa? In this sense, Respondent appears to be using the term “lufthansa” merely to describe the intended recipient of an email. Whether Complainant supports such a service or believes it is technically or commercially viable seems to me to be beside the point”
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. See biography http://www.uakron.edu/law/faculty/profile.dot?identity=700492
The Hon Neil Brown Qc, I note in the dec action another highly regarded UDRP panelists was hired and has helped Yoyo draft UDRP Reponses. See biography http://www.neilbrownqc.com
Traverse Legal PLC highly regarded US TM lawyers http://www.traverselegal.com/
The UDRP proper true neutrals.
Is that enough?
Cartoonz says: “Every legal venue has ruled against them thus far”
Do you mean those Trademark lawyers that act as Panellist that indirectly work for the Complainants but say there are neutral, which violates an oath they swear on?
Panellist who conveniently edited the truth from public records to back their determination. Panellist whom don’t even bother reading evidence. Panellist whom ignore evidence. Panellist who make up new facts.
Panellist who preside over a judicial tribunal or assembly and blatantly disregard recognized standards of law or justice, who give the appearance of a fair and just trial, even though the verdict has in reality already been decided before the trial has begun.
Those Panellist in that “Every legal venue”
Cartoonz get a brain.
“Again, if the email isn’t visible, why spend so much money on the emails? Why not just use something encoded like @12345.yoyo.email instead of @nvidia.email?”
.
Purely for MARKETING reasons…
YoYo’s service is set up to guarantee/certify to “Joe Public” that his email will be delivered to the selected ~AnyPerson/Department⬇~ who is employed or works at the selected ~AnyCompany/Brand⬇~.
As part of that delivery guarantee, YoYo could cc: Joe Public on the email he composed. Importantly (as a marketing tool) that email would display a very reassuring email address/recipient in the “To:” field! As example, the basic header information would display:
To: [email protected]
Cc: [email protected]
Subject: __________________
Date: dd/mm/yyyy hh:mm:ss
.
Some might argue that a similar cc: email confirmation could be accomplished using an internally routed/addressed email, for example:
To: [email protected]
Cc: [email protected]
Subject: __________________
Date: dd/mm/yyyy hh:mm:ss
Or, even take it a step further by using the department & name of the intended company as an “alias” display name:
To: Legal Department – 7Eleven
Cc: [email protected]
Subject: __________________
Date: dd/mm/yyyy hh:mm:ss
But, as a marketing tool, the [email protected] is NOT a convincing or reassuring ‘guarantee’ of delivery; and the “alias” example even less so (as no actual email address is visible).
Worse, from a TM point-of-view, I would argue that both examples (and especially the latter) are likely to cause “confusion”^^, and therefore clearly breach TM law (even in the absence of owning the AnyCompany.email domains).
Steve
^^Maybe it is the sort of confusion from emails such as [email protected] that Gio was trying to highlight in his earlier comments on the subject of ‘implied’ association/partnership between YoYo and “AnyCompany”???
Confer, the example you give is of the email visible. I thought they said the email wouldn’t be visible to anyone and would just be used on backend servers.
Andrew is correct domain names are invisible. But this doesn’t change the fact that what Steve had to say is wrong.
@Giovanni Laporta
Are you the same person who signed their earlier comments just “Gio”?
Yes. Thanks for being neutral.
Not so much neutral … but intensely curious to speculate how you might be planning to use the AnyCompany.email domains in such a way as to:
(1) be useful and/or integral to the business model;
(2) tap into a (yet undisclosed) source of revenue; and
(3) accomplish both (1) & (2) without running afoul of TM legislation.
.
I look forward to YoYo’s eventual announcement outlining its business plan!
Steve
Then your curiosity is welcome. We are planning to launch spring 2015.
Gio
* isn’t wrong [typo sorry]
Opps. I mean isn’t right. It’s late in the Uk.
Now I am confused …
ORIGINAL:
…what Steve had to say is wrong.
CHANGE 1 (“isn’t wrong”):
…what Steve had to say is wrong. ≠ …isn’t wrong.
CHANGE 2 (“isn’t right”):
…what Steve had to say is wrong. = …isn’t right.
.
…so you’re saying what you first wrote is correct…??
Sorry. It’s been a long day. Let’s try again. Your original comment makes perfect sense.
Gio
Andrew, you are correct … although what exactly is meant by “visible”?
vis•i•ble
(1) capable of being seen; perceptible to the eye.
(2) being constantly or frequently in the public view; conspicuous.
(3) prepared for visual presentation.
Although guilty of the 1st meaning; they remain innocent of the remainder (and arguably, the 2nd meaning is most applicable here).
.
To that end, the only instance of AnyCompany.email being visible is on the header of a email … an email that “Joe Public” himself composed (albeit via YoYo’s website).
Thus, YoYo has neither publicized nor published the email; and arguably has not caused any “confusion” in this narrow use case, since:
– the email was written and sent by Joe Public from the YoYo site;
– the intended recipient was AnyCompany (or 7Eleven in the example);
– the email is guaranteed to be delivered, as addressed, to AnyCompany; and,
– Joe Public entered his own email address so as to be cc:’d to receive a copy of the email.
Steve
(Confer) Steve is right.
I WOULD be “confused” if I saw [email protected], as I would think that 7Eleven could be in partnership with Yoyo. To be honest, I would also be left wondering where is my email actually going. Is it to 7Eleven or Yoyo… or 7Eleven and Yoyo? This option is defo a TM infringement case due to confusing the public.
If I was just sending an email address to [email protected], I would expect that my email would be going directly to 7Eleven (through Yoyo’s certified email service)…which it does…simple. There is no confusion here, nice and straightforward. As a consumer I don’t think….’I wonder who lawfully owns the 7Eleven domain name or which email sever it goes through?’
Both these things are irrelevant. If it is an argument over ownership of a domain name, then Yoyo has done nothing wrong in registering the domain name.
(Confer) Steve also makes a good argument: “Purely for MARKETING reasons”.
For good sound commercial reasons and purely as an effective marketing strategy – the [email protected] is not as convincing or reassuring as a ‘guarantee’ proof of delivery. Andrew Allemann’s “alias” example [email protected] is even less effective from a marketing point of view as I wouldn’t even know who it is going to. The email is also way too long; as a user I would be instantly put off from sending an email.
I think this reasoning might also logically answer Andrews’s “bigger question”, as to why Yoyo decided to spend 50k on its domain names.
Whether the domain is visible or not, there is no infringement either way…
I think this covers everything?
The only dunces here are those who spent over $50,000 on trademarked names and will be tied up in court for years and spending thousands in legal fees.
So even if you “win” (doubtful), you will still lose.
Have fun, kiddies, because it’s showtime..
I think I may have some right to respond being that I am the dunce you talk about.
Failure is the condiment that gives success its flavour, so even if I lose (doubtful) I still win.
BTW. Your comment is the most sensible thing you’ve have said to date.