The Complainant is Yell Limited (formerly known as Hibu (UK) Limited) of Reading, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Bristows LLP, United Kingdom.
The Respondent is Venkat Ganesan of Freemont, California, United States of America (“United States”) represented by Shapero & Shapero, United States. 2. The Domain Names and Registrar
The disputed domain names and are 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 March 2, 2017. On March 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 6, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2017. On March 24, 2017, the Respondent requested the extension of the Response due date. In accordance with paragraph 5(b) of the Rules, the Center extended the Response due date until April 1, 2017 and invited the Complainant to submit any comments regarding a further extension, which the Complainant submitted on March 27, 2017. On March 28, 2017, the Center extended the Response due date until April 8, 2017 in accordance with paragraph 5(e) of the Rules.
The Response was filed with the Center on April 8, 2017.
The Complainant filed a supplemental submission on April 12, 2017.
The Respondent filed a supplemental submission on April 27, 2017.
The Center appointed Alistair Payne, Tony Willoughby and M. Scott Donahey as panelists in this matter on May 2, 2017. The Panel finds that it was properly constituted. Each member of 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
The Complainant operates the “Yell” website at “” which offers classified directory advertising and associated services based upon the former “Yellow Pages” business formerly run by a third party, the BT Group Plc (“BT”). The Complainant owns various trade marks in the United Kingdom and the European Union that incorporate its YELL mark (the “YELL Marks”) but, in particular, owns United Kingdom trade mark registration 2042469 filed on October 25, 1995 and registered on June 6, 1997, for its YELL mark. The Complainant also owns a United Kingdom trade mark registration for a pantone shade of the colour yellow.
The Respondent has since 2012, from its base in the United States, operated a website from the disputed domain names that provides a messaging, connection and metasearch engine service. The disputed domain name was registered on November 19, 2011 and was registered on March 2, 2012. The Respondent incorporated his company, “Yellcast, Inc.” under the laws of the State of Delaware, United States on July 3, 2012. 5. Parties’ Contentions A. Complainant
The Complainant submits that the distinctive and dominant element of each of the disputed domain names is “yell” which is identical to its YELL registered trade mark as noted above. It says that the second element in each of the disputed domain names, the word “cast” is a common descriptive word in the technology industry and is an abbreviation of “broadcast”. It notes other terms in common usage that include this word, in particular, “podcast”, “Googlecast” and “Chromecast” and says that it would accordingly be discounted when viewed in combination with the word “yell”.
The Complainant claims that it has developed substantial goodwill and reputation in relation to its YELL mark. It notes that it operates the “Yell” website which was ultimately derived from the Yellow Pages division of BT that was transferred to the Complainant “Yell Limited” in 2001 and that first started operating as a business in 1966. In summary, the Complainant says that the disputed domain names suggest a connection with the Complainant and were no doubt chosen to free-ride off the reputation and goodwill associated with the YELL Marks.
The Complainant further submits that considering the reputation and goodwill attaching to the YELL Marks that the disputed domain names could not have been registered without the Respondent being aware of the Complainant’s business and marks and says that they are not marks that another trader would legitimately choose unless it wanted to confuse and misleadingly divert consumers. The Complainant confirms that it has not permitted or licensed the Respondent to use the YELL Marks or the disputed domain names and submits that in view of the YELL Marks, its yellow colour trade mark registration and its overall colour get-up it is not possible for a third party to make a legitimate noncommercial or fair use of the disputed domain names in the course of trade without misleading consumers or tarnishing its marks. As a result, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.
As far as bad faith is concerned the Complainant submits that the Respondent has intentionally attempted to attract Internet users for commercial gain to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant says that the Respondent’s use of the word “Yellcast” in part yellow (“yell” element) and part black (“cast” element) suggests that the Respondent is using the words independently of each other which only increases the likelihood that the word cast would be considered as the common non-distinctive element and as an abbreviation of “broadcast”. The Complainant notes that it has used the colours yellow and black for thirty years as its core colours and that the Respondent’s use of these colours on his website in conjunction with “yell” is calculated to trade off the Complainant’s goodwill and reputation. The Complainant says that the fact that the Respondent’s business listing service at its website to which the disputed domain names resolve is identical to the services offered by the Complainant and that the Respondent’s services are targeted at the United Kingdom, only serves to reinforce the Respondent’s bad faith.
The Complainant states that it wrote to the Respondent to resolve this dispute and avoid these proceedings but that the letter was returned by the courier company with a note stating that the Respondent did not order the letter. Subsequent attempts to telephone the Respondent to confirm the mailing address resulted in confirmation of the Respondent’s address by an unidentified man who answered the call. The Complainant’s representatives then sent an electronic copy of the letter to the email address “[…]@” but this also elicited no response.
In these circumstances the Complainant submits that the disputed domain names were registered and are being used in bad faith. B. Respondent
The Respondent submits that he uses the disputed domain names for a bona fide business that involves a website and portal to a messaging connection and metasearch engine system for which he has obtained a patent.
He says that the disputed domain names contain two elements, namely “yell”, meaning to shout or speak loudly, and the word “cast” used as a verb and meaning to throw, direct or to form. The Respondent notes that a stylized version of “yellcast” is used on his website with “cast” as the dominant element because under his business system buyers can “cast” their searches in multiple ways. He says that it is incorrect to assume that “cast” is an abbreviation of “broadcast” or that his business is a business listing service as he does not and has never prepared business directories.
He further submits that that the disputed domain names do not evoke the Complainant’s YELL marks and that they differ in appearance, sound, connotation and commercial impression. He says that the “yell” element in the disputed domain names does not represent the colour yellow and that secondly, the portals, technology and trade channels are different. He notes that while the Complainant’s business allows United Kingdom based consumers to find businesses through its United Kingdom based walled garden business listings database which is essentially a “static” system, the Respondent’s business does the opposite by providing a system for consumers to search the worldwide web anonymously for any information on businesses and to choose amongst multiple methods for communication with those businesses. He says that the Complainant’s YELL Marks are generic or at best merely common or descriptive in relation to “yellow pages” and are certainly not famous marks or marks that are entitled to extended reputation. Further he says that the Complainant has provided no adequate proof in this regard nor has it provided evidence as to the chain of title of ownership that it claims in the YELL Marks. Considering the lack of showing of secondary meaning in relation to what the Respondent describes as the Complainant’s generic YELL Marks, the Respondent submits that there should be no presumption of validity of the certificates of registration for those marks.
The Respondent submits that it acquired the disputed domain names in 2011 and 2012 and has been operating a bona fide business, as described above, in the United States under the “Yellcast” trade name since incorporation in mid-2012 and has advertised and promoted the trade name and its business in California, Delaware and the United States generally. He notes that the provisional patent application for the system upon which the business is based was filed in December 2007 and that he obtained the disputed domain names and commenced and established its business well before any notice of this dispute. He notes also that two of the registrations comprising the Complainant’s YELL Marks date from after the Respondent commenced use of the disputed domain names in 2011 and that he could not have had constructive notice of these marks before he acquired the disputed domain names.
The Respondent submits that it did not register and has not used the disputed domain names in bad faith. It says that it operates a bona fide business in the United States aimed at customers in that jurisdiction and that in 2016 it blocked access to its system by foreign IP addresses to avoid foreign hackers. Its choice of colour scheme and get-up was dictated by a commonly used landing page template that it purchased in January 2012 and the need to focus on functionality rather than user interface design. The Respondent says that upon use of the template he had no knowledge of the Complainant’s business or colour scheme. The Respondent notes that he intends in due course to replace the yellow colour with green. In summary says the Respondent neither the Complainant’s walled garden category based search tool, nor its classified advertising space and services are similar to the Complainant’s system.
Further, the Respondent reiterates that its business operates quite differently from the Complainant’s business and mentions that, apart from the fundamental differences as noted above, there is no advertising, its system is not based on pre-determined paid business or classified advertising space and that the connection between consumers and vendors is made by the website itself.
The Respondent asserts that he never saw or received the Complainant’s agent’s letter of November 22, 2016 and that he is not in the office to which it was addressed on a daily basis. Nor he says, did he receive the Complainant’s email of January 13, 2017 and the email to which it was addressed has never been used by the Respondent. The Respondent says that he does remember receiving a call from a “Hibu” but decided not to respond as he did not know who it was and was concerned that it might be a scammer. By contrast the Respondent notes that he did respond appropriately to the communication by the Complainant’s law firm in advance of these proceedings. He submits that in these circumstances no adverse inferences should be drawn in relation to any of these communications.
The Respondent says that he conducted searches on-line before registering the disputed domain names and notes that “Yellow Pages” is considered to be generic in the United States and is used by various private traders. He says that he has received no complaints of confusion and no vendor or user enquiries intended for the Complainant. In summary, the Respondent submits that it is an established and bona fide business that has invested significantly in protecting its own patent rights and is not a “fly by night “ trader attempting to use the disputed domain names to trade off the Complainant’s goodwill and marks. 6. Discussion and Findings
6.1. Preliminary Issue
According to paragraphs 10 and 12 of the Rules, it is within the Panel’s sole discretion to determine the admissibility of the parties’ unsolicited supplemental filings. The Panel finds that there are no exceptional circumstances nor would the admission of the supplemental filings alter the Panel’s decision in any way, which is why the Panel will disregard both supplemental filings.
6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various registered trade mark rights for its YELL Marks and, in particular, owns United Kingdom word mark registration 2042469 for YELL. Both disputed domain names commence with and wholly incorporate the word “Yell” and then include the common English word “cast”. There is no other distinguisher in each of the disputed domain names other than the generic Top-Level Domains “.net” or “.com” and the inclusion of the common word “cast” does not distinguish the disputed domain names from the Complainant’s registered mark. As a result, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s YELL trade mark. B. Rights or Legitimate Interests
The Complainant’s YELL marks may have developed a very significant repute in the United Kingdom but there is nothing on the record to suggest that they are well known outside the United Kingdom, or in the United States. In the Panel’s view, there is nothing to suggest that the Respondent based in the United States and with a target market in that country should necessarily have been aware of the Complainant’s marks and get-up.
The Respondent’s business appears to be quite different from the Complainant’s and in any event is not based on a traditional “yellow pages” sponsored advertising business model aimed at the domestic United Kingdom marketplace. In these circumstances and considering that its target market was and is the United States, there is no reason to infer that the Respondent would have necessarily been aware of the Complainant’s marks and business get-up, or would have wished to try and trade off the goodwill and reputation attaching to the Complainant’s marks in the United Kingdom.
The Respondent has demonstrated that it applied for patent rights for its search system in December 2008 and during its business set-up phase went on to register the disputed domain names in November 2011 and March 2012 respectively, to acquire the black and yellow template in early 2012 and then to register its company Yellcast, Inc. in July 2012. The Respondent has explained the rationale for its choice of name and the reason for registering the disputed domain names and the Panel notes also that the Respondent’s corporate name is identical to the disputed domain names. The Respondent has also explained that it ended up with the black and yellow colour scheme as that this scheme was part of a standard template that it purchased from a third party. Although the Complainant’s business in the United Kingdom was well established by this time, it seems to the Panel more likely than not that in choosing the name “yellcast” as its brand and using it for the disputed domain names and for its corporate name, that the Respondent made a bona fide independent choice of brand without the intention to target the Complainant.
Accordingly, the Panel finds that the Complainant has failed to make out a case that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainant’s case relies largely upon its YELL marks being so well known that the Respondent based in California was aware of them when he registered the first of the disputed domain names in late 2011. Although the Complainant’s business in the United Kingdom under the YELL marks appears to have been very well developed by that time there is no evidence before the Panel to suggest that these marks were well-known, or even known, outside the United Kingdom.
It is clear that the Respondent chose “Yellcast” for a bona fide business and incorporated his company using that name. The fact that his branding highlighted the words “yell” and “cast” separately is of no note in these circumstances and in view of the complete dearth of evidence that significant renown attached to the YELL Marks in the United States. The Respondent has explained its choice of black and yellow livery as arising because it was offered as part of a standard template. Further, the respective businesses of the Complainant and of the Respondent appear to be different, the former operating on the basis of paid sponsorship or advertising by a contracted list of advertisers and the latter being an anonymous search system of the world-wide web. This is not a case where the Respondent has obviously sought to copy the Complainant’s business model and to trade on its goodwill.
Overall, the Panel sees no evidence that the Respondent has sought to target the Complainant such as would support the Complainant’s case that the disputed domain names have been registered and used in bad faith. The Respondent’s failure to respond to the Complainant’s initial communication attempts by email very likely raised the Complainant’s suspicions and the apparent refusal to engage by the Respondent or his employees on receiving a telephone call from the Complainant’s lawyers probably pre-empted these proceedings. In these circumstances the Panel is not minded to make a finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons the Complaint is denied.
Alistair Payne
Presiding Panelist
Tony Willoughby
Panelist
M. Scott Donahey
Panelist
Date: May 12, 2017
Full & Egal Universal Law Academy