Waterfront Partner Matthew Harris recently issued a decision in Guardian News & Media Limited v. Giovanni Laporta, Yoyo.emailWIPO Case No D2014-1656 in relation to the domain name The decision is dated 11 November 2014 but was only published earlier this week on the WIPO website.

This is the latest in a large number of “.email” cases that have been decided under the Uniform Dispute Resolution Policy (UDRP).  Giovani Laporta and his company Yoyo.Email Limited have registered thousands of domain names that comprise well known trade marks combined with the new “.email” generic top level domain (gTLD). He has claimed that these domain names have been registered for certain “back-end” server related activities that would allow the certification of delivery and perhaps receipt of emails.    According to Mr Laporta, this was not trade mark use and therefore legitimate.

To date UDRP and URS panellists have almost universally rejected this argument and have ordered the suspension or transfer of these sorts of domain names. This led Yoyo.Email to bring proceedings in the US Federal District Court in Arizona and also in England and Wales.  The US proceedings named as the sole Defendant an English company that had been successful in URS proceedings against Yoyo.Email in relation to playinnovation.email. However, Yoyo.Email also sought a declaration that all its “.email” registrations were lawful.

After The Guardian had filed its complaint, a “declaratory judgment” was made by consent in the US proceedings. In this document the court in Arizona effectively declared the to be lawful.   However, no declaration was made in relation to the other “.email” domains names and the court ordered that the proceedings be closed.

In his decision Matthew Harris, was one of the first panellists under the UDRP to consider the effect of this “declaratory judgment”. He concluded that it was of little assistance in determining the issues between the parties in this case. He also suggested, for reasons he had explained in some detail in 1066 Housing Association Ltd. v. Mr. D. Morgan WIPO Case No. D2007-1461, that Yoyo.Email ‘s attempt to rely upon arguments based on US  law were fundamentally flawed.

It remains to be seen whether Yoyo. Email will try to pursue this matter further in the courts.

Matthew is an internationally recognised expert in domain name law and practice.  He has been appointed by WIPO, Nominet and the Czech Arbitration Court to decide domain name disputes, and has decided over 270 cases to date.  He has also been appointed by WIPO as a Legal Rights Objection Expert and a Trademark Post Delegation Dispute Resolution Expert.

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