The Complainant is MTN Nigeria Communications PLC, Nigeria, represented by Jackson, Etti & Edu, Nigeria.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Andrew Humber, Humber International Ltd (aka Humber Technologie Ltd, Humber One), Nigeria, represented by McCoy & Co Legal Practitioners, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. 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 May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Center notified the Respondent’s default on June 21, 2021. The Response was filed with the Center on June 21, 2021. The Center appointed John Swinson, Ike Ehiribe, and Daniel R. Bereskin, QC as panelists in this matter on July 5, 2021. 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. As stated above, the Response was filed one day late. The Respondent mistyped the email address of the Center when filing the Response. The Panel exercises its discretion and will accept and consider the Response. 4. Factual Background The Complainant is a leading wireless telecommunications and digital services provider in Nigeria. The Complainant began operations in 2001. The Complainant organizes and promotes an online music platform called “Y’ello Star” at the domain name The Complainant owns a number of Nigerian trademark registrations for logos that comprise “Y’ELLO STAR” or “YELLO STAR” and a five-point star. These were filed on May 24, 2019 and issued to registration on January 13, 2020. The Respondent is a software and information technology company that designs and develops software solutions for its clients in Nigeria and elsewhere. The Respondent gamifies the operations of its clients by introducing games and similar concepts to increase the patronage of its clients. The Complainant and the Respondent have had prior business dealings with each other. The disputed domain name was registered on March 13, 2020. Until this dispute arose, the website at the disputed domain name resolved to a site operated by the Respondent that promoted Y’ello Star Show Games. This website copied the look and feel of the Complainant’s website and included the Complainant’s Y’ELLO STAR trademark. After receiving correspondence from the Complainant dated April 20, 2021, the Respondent took this website offline and it is offline at the date of this decision. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions: The Complainant is Nigeria’s leading wireless telecommunications and digital services provider which began operations in 2001. The Complainant has a distinctive shade of yellow as its corporate colour. The word “Y’ello” was coined from “Yellow” and “Hello” and has become well known as distinguishing the Complainant’s products and services. “Y’ELLO” is a trademark of the Complainant. The Complaint included details of the Complainant’s trademark registrations, including relating to its Y’ELLO STAR trademark. The website at the disputed domain name included the Complainant’s Y’ELLO STAR trademark and logo and has the same distinctive get-up as used by the Complainant. This website was taken down after the Complainant sent a cease and desist letter to the Respondent in April 2021. The disputed domain name is identical or confusingly similar to the Complainant’s Y’ELLO STARand YELLO STAR trademarks. The addition of the word “games” does not prevent a finding of confusing similarity. Because the Respondent used the Complainant’s trademark and get-up on its website, the Respondent is not bona fide and cannot in good faith lay claim to any legitimate interest. When challenged, the Respondent took the offending website down. Based on correspondence between the Parties, it is evident that the disputed domain name was registered by the Respondent for use and ownership of the Complainant. The Respondent had no authority or consent to register the disputed domain name or commercialize it for itself. The Respondent is known as Humber not Yellostar. The Respondent is seeking to force the Complainant into an unwanted partnership. The Respondent knew of the Complainant and its Yellostar activities. The Respondent was using the website at the disputed domain name to collect the names of subscribers, by confusing the public as to the origin of the website. B. Respondent The Respondent makes the following submissions: The disputed domain name is not similar to the domain name used by the Complainant for its business, namely “Yello” is short for the colour yellow, and cannot be exclusive to a business. The Complainant and the Respondent are in different trades. The Complainant and the Respondent were in talks over a proposed project leveraging their mutual services and technical advantages. A third party invited the Respondent to introduce gaming services to the Complainant’s proposed show. The Respondent owns other domain names that include the word “games”. The Respondent conducted searches before registering the disputed domain name, and found no similar name, logo or trademark bearing “Yello Star Games”. The Respondent is the legitimate owner of the disputed domain name because the Respondent registered it through the Registrar. The Respondent does not seek to sell, rent, or transfer the disputed domain name. The Complainant gave an implied license to the Respondent. The Respondent made presentations to the Complainant using “yellostargames” and the Complainant never objected. The Complainant’s acquiescence now precludes the Complainant from raising an objection after the Respondent registered the disputed domain name. The only purpose of the disputed domain name is for the use of the aforementioned project. The Respondent’s suspension of the website at the disputed domain name is not a waiver of rights. The Respondent intends to re-activate the disputed domain name. The Respondent registered the disputed domain name in good faith to reflect its core business – i.e., games. The Complainant is not in the gamification business. The Complainant acted in bad faith by defensively registering a number of trademarks. The trademark certificates in the Complaint are not admissible because the certificates state: “This certificate is not for use in legal proceedings or for obtaining registration abroad…” The Respondent developed software for the Complainant, at the Respondent’s cost, but the Complainant backed out of the deal and wasted the Respondent’s resources. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The Complainant has clearly proven ownership of registered trademarks in Nigeria for a logo where the dominant feature of the logo are the words “Y’ELLO STAR” or “YELLO STAR”. The Complainant provided copies of trademark certificates.1 In any event, the Complainant has also provided evidence of use of “Y’ELLO STAR” in respect of a talent competition. The trademarks Y’ELLO STAR and YELLO STAR were developed by the Complainant. The term “Y’ello” or “Yello” is said to be a combination of “Yellow” and “Hello”. The Complainant uses yellow as its house colour and as part of its trade dress. The disputed domain name includes the Complainant’s trademarks Y’ELLO STAR and YELLO STAR in their entirety (apart from the apostrophe) along with the word “games”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element of the Policy. See Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) where it is stated that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. For the first element of the Policy, it is not relevant that the Complainant and the Respondent are not competitors or are not in the same line of business. The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s Y’ELLO STAR and YELLO STAR trademarks, disregarding the Top-Level Domain (“TLD”) “.com”. See Section 1.11 of the WIPO Overview 3.0. Therefore, the Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is 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. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. There is no evidence that the Respondent is commonly known by the disputed domain name. The Complainant states that the Respondent is commonly known as “Humber” and did not use “Y’ello Star” until the Complainant started to use this term as a trademark. The Complainant states that the Respondent did not register the disputed domain name with the Complainant’s authorization or consent. Moreover, the Complainant sent a cease and desist letter to the Respondent in April 2021, after which the Respondent took down the website at the disputed domain name. The Complainant states that the use of the Complainant’s logo and the Complainant’s yellow colour scheme on the website at the disputed domain name demonstrates that the Respondent’s use of the disputed domain name was not in respect of a bona fide offering of goods and services. Based on the above, the Panel finds that the Complainant has made out a prima facie case against the Respondent and the evidential burden now shifts to the Respondent to rebut that prima facie case. Despite assertions by the Respondent, the fact that the Respondent has registered the disputed domain name does not, of itself, mean that the Respondent has rights or legitimate interests for the purposes of the Policy. The Complainant and the Respondent were in talks regarding a proposed project. That project appeared to involve the Respondent creating an online game to be used as part of the Complainant’s Y’ello Star talent competition. The Respondent prepared some fliers and a script. That project did not go ahead, although the Respondent expresses hope of resuming the project with the Complainant. The Respondent asserts that it has implied consent from the Complainant, and that the Complainant acquiesced which now precludes the Complainant from raising an objection now to the Respondent’s registration of the disputed domain name. On the materials before the Panel, the Panel does not agree that the Complainant gave actual or implied consent to the Respondent to use the Complainant’s trademark or to register the disputed domain name. In any event, even if there was such consent, that consent may have been limited to preparing a pitch and not to registration of the disputed domain name or to go live with an operational commercial website.2 The Respondent was making a commercial use of the disputed domain name by developing an online competition that was designed to be associated with the Complainant’s Y’ello Star talent program. This does not support a claim by the Respondent to rights or legitimate interests in the disputed domain name. In these circumstances, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. In the present circumstances, it is clear that the Respondent was aware of the Complainant and its Y’ELLO STAR and YELLO STAR trademarks. The Respondent’s website copied the look and feel of the Complainant’s website and used the Complainant’s logo. It would appear from the record before the Panel that the Respondent initially created the website as part of a pitch of a game concept to the Complainant, and when the Complainant decided not to enter into an agreement with the Respondent, the Respondent went ahead regardless and launched the website at the disputed domain name. That website gives the false impression that it is created, sponsored or endorsed by the Complainant, and was used by the Respondent to collect customer details. Compare Tatts Group Limited, Golden Casket Lottery Corporation Limited and New South Wales Lotteries Corporation Pty Limited v. Lottoland Gibraltar Ltd or Lottoland Ltd / Whois Privacy (enumDNS dba),WIPO Case No. D2016-0536 (the respondent used the website to harvest email addresses). The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademarks. By registering the disputed domain name and then by using the disputed domain name to copy the look and feel of the Complainant’s website, the Panel can easily conclude that this demonstrates that the Respondent specifically knew of and targeted the Complainant. The Panel finds the Respondent’s argument that it developed software for the Complainant at the Complainant’s request, but at the Respondent’s cost, does not assist the Respondent in respect of the third element of the Policy. The Panel finds that the evidence before the Panel is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and under the additional criterion of intentional trading off the Y’ELLO STAR and YELLO STAR trademarks. The fact that the website to which the disputed domain name resolve is currently inactive does not prevent a finding of bad faith under the doctrine of passive holding. See Section 3.3 of the WIPO Overview 3.0. Therefore, the Panel finds that the Respondent registered and has been using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 John Swinson Ike Ehiribe Daniel R. Bereskin, QC 1 Although these certificates are not official certified extracts from the Nigerian trademark register, and may not be accepted as formal evidence in a court of law, the Panel can rely upon them as evidence of registration for the purposes of this dispute. 2 Moreover, any consent was revoked when the Complainant objected to the Respondent’s conduct. In this sense, if consent was initially given, this situation is similar to cases were a distributor uses a domain name after the distribution arrangements come to an end. See, for example, Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals,WIPO Case No. D2003-1029; Progeo Monitoring GmbH v. Clark Gunness,WIPO Case No. D2015-2163.
Presiding Panelist
Panelist
Panelist
Date: July 19, 2021
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