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.