Company reaches agreement with company that won URS case against it.
Yoyo.email, the controversial company that registered over 4,000 .email domain names, got a win in court today after settling with one of the companies that filed a Uniform Rapid Suspension case against it.
Yoyo registered thousands of .email domain names matching the monikers of big brands, such as 7eleven.email, Geico.email and Budlight.email. It plans to use the domain names for a certified email service.
Naturally, it didn’t take long after registering these domains for URS and UDRP cases to follow.
After losing a bunch of these arbitration cases, Yoyo decided to file suit seeking declaratory judgment. Represented by Traverse Legal, it filed a lawsuit in Arizona against fellow UK company PlayInnovation, which won a URS against YoYo for the domain PlayInnovation.email.
Faced with the lawsuit, PlayInnovation decided to enter into an agreement (pdf) with Yoyo.email.
PlayInnovation agreed that Yoyo does not have a bad faith intent to profit from the domain name by using it in its service, nor is Yoyo’s intended use a “trademark use”.
Yoyo agreed that it will put disclaimers on its website saying it is not affiliated with or approved by PlayInnovation, and also put the same disclaimer in the metadata for all email transmitted through playinnovation.email. YoYo also agreed that its use of the domain will be limited to a non-public, back-end email server use to link multiple email servers.
It also agreed to its “Use only by an individual or entity whose corporate or trade name is or incorporates “playinnovation”. This seems to indicate that PlayInnovation would need to be a client in order for Yoyo to actually use the domain name for its intended purpose. (see comment)
I suspect Yoyo will use this agreement in its defense in future URS and UDRP decisions. It has already had some limited success pointing to the lawsuit in its URS responses.
Yoyo has been on the receiving end of at least 24 URS/UDRP cases that have been decided.
Mike says
Very good and gives me some ideas for defence/attack defence.
Joseph Peterson says
There has been talk of nTLDs offering innovation when mostly they offer only more inventory.
Advisable or not, maybe Yoyo.email actually has tried an innovative approach. Litigating in self-defense from the moment of birth would seem to be the road less traveled, wouldn’t it? So that’s new.
I haven’t taken the time to really figure out what Yoyo.email’s plan for its domains would be. Most of us are baffled, and maybe that’s a further sign of innovation, like it or not.
I have yet to hear proponents of the new TLDs sing Yoyo’s praises; but the company has taken plenty of face punches — a tenacity admirable in its way. So I’m inclined to give them the benefit of the doubt for now.
Enrico Schaefer says
“Use only by an individual or entity whose corporate or trade name is or incorporates “playinnovation”.
Actually, that language came from playinnovation presumably to limit any transfer in the future. YoYo is limiting its use purely to back-end email servers which is option Para M.a.and b. under the order.
Andrew Allemann says
Thanks for clarifying that for me, Enrico.
Acro says
As quoted by the Panelist in the Maplin.email UDRP:
“With respect to the US litigation, the Panel has examined the Complaint for Declaratory Judgment which the Respondent has produced as the principal part of its evidence. Without commenting on the substance of that Complaint for Declaratory Judgment, the Panel is able to make certain observations: (1) the US litigation is evidently at an early stage, as no responsive pleading has been provided; (2) the US litigation as framed does not name Maplin Electronics Limited as a party; (3) the only references to the domain name occur in lists of numerous domain names owned by the Respondent; and (4) the requested declaratory relief seeks to include references to even though the only named defendant in the case (Playinnovation, Ltd.) has no relationship with Maplin Electronics Limited and no connection with .”
In other words, good luck with using that approach with future UDRPs.
Giovanni Laporta says
Judge John J. Tuchi of the United States District Court of Arizona agreed Yoyo did not violate the ACPA or UDRP policy and did not act in bad faith. I dare say that a federal judge trumps whatever a UDRP examiner has to say. Luck is not required.
Acro says
I understand you have a lot at stake, however in my opinion this approach won’t benefit your business. For every UDRP filed, you’d have to file a federal lawsuit for that particular case quoting the Playinnovation case, in order to reverse that decision. Even so, every case would require the other party’s agreement. Still, curious about how you intend to monetize this amidst all the legal wrestling. If I formed a company and service, I’d want it to be 100% litigation free to focus on business.
Chris Hughes says
If yoyo can pull this off (or at least, what I think they have in mind), it would be as good as owning the .email TLD in terms of how best to commercially exploit it.
Andrew Allemann says
I’m a bit unclear on this. Does the judge just sign off on the agreement in this case, or did he “agree Yoyo did not violate the ACPA”.
He certainly wouldn’t rule on if the UDRP policy was violated, because that’s outside of his “jurisdiction”.
Giovanni Laporta says
Andrew, the judge can and has agreed that the UDRP policy has not been voliated. It’s his signature on the judgement, ultimately without the judge agreeing there can be no judgement. Unless someone can say that a federal judge is less qualified than a UDRP examiner, jurisdiction is well within his reach. The UDRP policy also makes this very clear . Hope this helps.
jZ says
i bet these people never develop anything..
Robbie says
What is the point in registering 4000 .email domains, just start your own GTLD extension, your renewal rate, along with legal fees is going to sink this idea.