The Complainant is Yellow Fiber Networks, Inc. of Las Vegas, Nevada, United States of America represented by Randazza Legal Group, United States of America.
The Respondent is Yellow Fiber Networks Limited of Nairobi, Kenya. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2013. On July 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2013. The Response was filed with the Center on July 8, 2013.
On July 11, 2013, the Complainant sent to the Center a Supplemental Filing and attachment, which were later forwarded to the Panel with the case file.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 17, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
According to the Complainant, it has been an Internet Service Provider (ISP) for approximately six years, during which time it has continuously used the unregistered trademarks YELLOW FIBER and YELLOW FIBER NETWORKS. The unregistered trademarks have been promoted through Internet advertising, press releases and industry trade shows. The Complainant features a distinctive logo on its own website, advertising and promotional materials.
The Complainant has a website with the domain name , through which it provides information about its services in the field of information technology (IT), primarily in the United States of America.
According to the Respondent, it is a limited company legally registered in Kenya on June 12, 2012, under registration number CPR/2012/76318. Its field of activity is summarised briefly on the company’s Taxpayer Registration Certificate as “wired telecommunications activities”, and more expansively on the company’s Memorandum of Association, which refers among other things to IT, the Internet, computers, and numerous ancillary areas. The Respondent operates in the city of Nairobi, Kenya.
The disputed domain name was registered by the Respondent on May 29, 2012. 5. Parties’ Contentions A. Complainant
The Complainant has produced a Declaration signed under penalty of perjury by its Chief Executive Officer dated June 28, 2013 (the “Declaration”).
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Declaration states that the trademarks YELLOW FIBER and YELLOW FIBER NETWORKS have been in continual use and promoted by the Complainant for approximately six years and the Complainant claims common law rights in these marks. The Complainant says that the disputed domain name is identical to the Complainant’s YELLOW FIBER and YELLOW FIBER NETWORKS unregistered trademarks, and submits that the generic top-level domain component “.com” does not negate confusing similarity.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Declaration states that no other individual or entity is permitted to use the Complainant’s trademarks or logo. The Complainant says that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The usage of the disputed domain name is commercial and the Respondent is not making a noncommercial or fair use of it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith, and submits that bad faith may be found beyond the non-exclusive circumstances contained in paragraph 4(b) of the Policy. The Declaration states that the Complainant exclusively owns a distinctive logo that was created specially for it, and that the Respondent’s website has stolen the logo and purports to offer the services offered by the Complainant. The Complainant says that the Respondent must have been aware of the Complainant’s trademarks and services when it registered the disputed domain name. The Complainant’s trademarks had been in use for over five years and the Respondent’s website is designed to appear as though operated by the Complainant, with the same trademarks and logo.
Thus it is contended that the Respondent desired to disrupt the Complainant’s business and intended that Internet users searching for the Complainant’s own website “www.” would be diverted to the Respondent’s website at the disputed domain name, and there be confused into believing it had the sponsorship, affiliation or endorsement of the Complainant. The Respondent would have intended to profit financially since it offers goods and services related to the Complainant’s.
The Complainant contends that the Respondent registered the disputed domain name under an incomplete and thereby false address.
The Complainant seeks to refer the Panel to a number of previous decisions under the UDRP that it considers to impinge upon the circumstances of the present case.
The Complainant requests the transfer to itself of the disputed domain name. B. Respondent
The Respondent denies the Complaint.
The Respondent has produced a copy of its Certificate of Incorporation No. CPR/2012/76318 confirming the registration of Yellow Fiber Networks Limited on June 12, 2012, in Kenya. It has also produced a copy of its Kenya Revenue Authority Taxpayer Registration Certificate and of its Memorandum of Association, both in the same company name.
The Respondent contends that the Complainant does not own the trademarks YELLOW FIBER or YELLOW FIBER NETWORKS and has not attempted to obtain such trademarks. At the time of registration of the Complainant’s company, there were no registered trademarks or trade names corresponding to the name Yellow Fiber Networks. The Respondent operates only in the city of Nairobi, Kenya, whereas the Complainant’s services are offered primarily in the United States of America.
In response to the Complainant’s assertion that the Respondent’s website copies the Complainant’s website, the Respondent reiterates that it is a company registered by the name Yellow Fiber Networks and is conducting business legally. The Respondent contends that it has never used any logo or any copyrighted material of the Complainant.
In response to the Complainant’s assertion that the Respondent does not have rights or legitimate interests in the disputed domain name, the Respondent reiterates that it is a company registered by the name Yellow Fiber Networks and has been commonly known by that name. The Respondent contends that it has been using the disputed domain name in connection with a legal and bona fide business since before receiving notice of the dispute.
The Respondent contends that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring to the Complainant or a competitor of the Complainant for profit. The Respondent says that it and the Complainant are not competitors because they operate in different places, and the disputed domain name was not registered primarily to disrupt the Complainant’s business.
The Respondent says that the Complainant has not protected its purported copyright by registering domain names available with the .net, .org, .info, .biz and .us domain extensions to “yellowfibernetworks”.
The Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking against the Complainant. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. The Complainant's communication to the Center of July 11, 2013, which was received by the Panel, was an unsolicited Supplemental Filing. It was not requested, was not necessary, and will not be admitted to this proceeding in accordance with paragraphs 10 and 12 of the Rules. A. Identical or Confusingly Similar
The onus is upon the Complainant to establish, first, that it has rights in a trademark that are sufficient for the purposes of the Policy. The Complainant’s claimed trademarks YELLOW FIBER and YELLOW FIBER NETWORKS are not registered trademarks. The Respondent asserts that the Complainant does not own and has not attempted to obtain any such trademarks.
It is not essential for a trademark to have been registered in order to satisfy the requirements of paragraph 4(a)(i) of the Policy. In the event of the Complainant asserting a de facto or common law trademark, it must present satisfactory evidence of the status of the trademark, and the Panel must balance the submissions of the Complainant and the Respondent in this respect. The Complainant has produced a solemn Declaration to the effect that it has used the trademarks YELLOW FIBER and YELLOW FIBER NETWORKS for approximately six years. The Respondent, in stressing its ownership of a company validly registered in the same name for more than a year, does not contest the Complainant’s claim to have used the stated unregistered trademarks for approximately six years. The matter to be decided initially is not which Party may have the better claim to a particular trademark, or to have used it for longer, but whether the Complainant has rights in a trademark. The Complainant’s trademark is incorporated into a distinctive logo that the Complainant states was specially designed for it. Although only the word component of a trademark can form the substance of a domain name within the meaning of confusing similarity, the image of the distinctive logo produced in evidence, and the evidence of the use of the logo on the Complainant’s website, add support to the authenticity of the unregistered trademarks asserted by the Complainant. The Panel finds on balance that the Complainant has rights in the trademarks YELLOW FIBER and YELLOW FIBER NETWORKS sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks YELLOW FIBER and YELLOW FIBER NETWORKS and accordingly finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The onus is upon the Complainant to prove under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant in its Declaration has stated that no other individual or entity is permitted to use the Complainant’s trademarks. The Complainant having asserted a prima facie case to this effect, it is for the Respondent to demonstrate that it may have rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy prescribes how the Respondent may seek to rebut the Complainant’s prima facie case, and reads in part:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The provisions of paragraph 4(c) of the Policy are without limitation, and relevant rights or legitimate interests may be established otherwise to the satisfaction of the Panel.
Paragraph 4(c)(iii) of the Policy may be dealt with first as the Respondent does not claim that its use of the disputed domain name is noncommercial as would be required in order to satisfy this provision.
In its consideration of paragraph 4(c)(i) of the Policy, the Panel need not doubt the Respondent’s assertion that is conducting or intending to conduct a legitimate business under the duly registered company name Yellow Fiber Networks Limited. The question, however, focuses not on the company name but on the disputed domain name. In order to succeed under paragraph 4(c)(i) of the Policy, the Respondent must show that it is making (or intending to make) a bona fide offering of goods or services through the disputed domain name.
Similarly, in order to succeed under paragraph 4(c)(ii) of the Policy, the Respondent would need to show that, in this case, its business has been commonly known by the disputed domain name. The Respondent in asserting that it “has been commonly & legally known by the domain name”, refers in evidence to the Certificate of Incorporation, which confirms that it has been legally known by its company name.
Matters of rights or legitimate interests, and of registration and use in bad faith, may to some extent be inter-related. In this case it is necessary to consider the question of bad faith before returning to the matter of rights or legitimate interests. C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, which are without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, as follows:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The disputed domain name resolves to the Respondent’s website, a screen capture of which was produced by the Complainant, as was a screen capture of the Complainant’s own website. Both pertain to computers and fiber optics. The Complainant’s page shows a picture of a large computer hall and has a heading “Broadband Fiber Network for Your Business”. The Respondent’s page has a picture enlargement that may be a dismounted high speed data socket with a coil of fiber optic cable, and with pricing references that include “Future Proof Fiber Optic Connection”.
The most striking similarity between the Complainant’s website and the Respondent’s is the logo, at top left, which also spells out the “YELLOW FIBER NETWORKS” company name and trademark. The Complainant’s logo is printed in upper case. The word “YELLOW” is mostly in dark grey, the words “FIBER” and “NETWORKS” are in a distinctly lighter grey. In the contiguous “YELLOWFIBER” component, the font is unusually rounded in style, this feature being particularly prominent in the curved back of the letter “E”, a rounded “L”, and a partly rounded “R”. The word “YELLOW” has other unique features. The letter “E” is broken into an upper fragment comprising a detached single grey bar, and a lower component coloured yellow, comprising the lower two-thirds of the letter “E”. The letter “O” is broken by a small nick at about the 4 o’clock position. The entire word “networks” is close below, in a small classic style of typeface, not unlike Arial, and spans from the first “L“ to the “B” of “YELLOWFIBER” above it.
The logo on the Respondent’s website is identical in every detail to the Complainant’s logo as above, down to the contrived two-coloured, dismembered letter “E” and the nicked letter “O”, and is of the same relative size. The probability of the Respondent having achieved this degree of similarity to the Complainant’s logo by chance is considered by the Panel to be vanishingly small.
The Respondent acknowledges having used or intended to use the disputed domain name and corresponding website in order to conduct business in the field of Internet technology. By any reasonable interpretation of the totality of the evidence, the Respondent’s presentation of its name on its website in exactly the same shape, colours and contrivance as the Complainant’s logo must have been done with knowledge of the Complainant’s name and logo and in the furtherance of the Respondent’s business intentions. In the terms of paragraph 4(b)(iv) of the Policy, the Respondent is found to have intended to attract Internet visitors for commercial gain in the expectation of visitors being confused, at least initially, into believing the Respondent’s website may be associated with or may have the endorsement of the Complainant, constituting use in bad faith. It is further found on the totality of the evidence that the disputed domain name was registered for the purpose for which it has been used and was therefore registered in bad faith. The Panel finds for the Complainant under paragraph 4(a)(iii) of the Policy.
The question of the Respondent’s possible rights or legitimate interests in the disputed domain name may now be revisited.
The registration and use of the disputed domain name have already been found to be in bad faith, particularly with respect to the effectively exact reproduction by the Respondent of the Complainant’s distinctive logo. Inescapably, the Respondent was previously aware of the Complainant. It cannot be circularly argued in the present circumstances that a domain name, registered and used in bad faith, can become a bona fide platform for an offering of goods or services in order to satisfy paragraph 4(c)(i) of the Policy.
The Panel is not persuaded that the adoption of a domain name, identical to the Complainant’s name and unregistered trademark of more than five years standing, of which the Respondent must reasonably have been aware when it reproduced the Complainant’s logo, is within the intentions of “commonly known by the disputed domain name” contemplated by paragraph 4(c)(ii) of the Policy.
The Respondent’s claim to be operating in a region geographically isolated from that of the Complainant is of no significant consequence in the context of the inherently international nature of the Internet. The Panel can see no alternative grounds on which the Respondent might demonstrate rights or legitimate interests in the disputed domain name, and accordingly finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
Any attempt by a party to defeat the intentions of the Policy by the provision of false details of registration is treated seriously, particularly in the determination of possible bad faith. The Complainant says that the Respondent registered the disputed domain name with a false name and, by the omission of street information, gave a false address. It is noted that the Respondent was fully cooperative in acknowledging and responding to the Complaint. In this instance no comment will be made on this matter.
The Complainant having prevailed, the Respondent’s request for a finding of Reverse Domain Name Hijacking is dismissed. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: July 31, 2013
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