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 220.127.116.11(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 18.104.22.168(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.