A French company using the mark YELLOH for its high-end camping villages, attempted to get the domain YellohConsultancy.com via the UDRP process. They operate from YellowVillage.fr.
In its UDRP, the Complainant claimed that the domain infringes on its mark:
The Complainant operates as a chain of franchises run by leading professionals in the sector and is recognized as the foremost network of high-end camping-villages. The Complainant contends that disputed domain name <yellohconsultancy.com> is confusingly similar to the trademark YELLOH in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “consultancy” and the generic Top-Level Domain (“gTLD”) “.com”.
The sole WIPO panelist found that the inclusion of YELLOH in the domain infringes on the Complainant’s mark. However, he found that the domain was registered and is being used in good faith:
In view of the above and considering that i) the Respondent appears to have been operating mainly in the consulting field in Germany and Arab United Emirates while the Complainant is operating its business in France and ii) the Respondent has provided a plausible explanation about the reason of its selection of the sign “YellOh! Consultancy” due to the direct relation with its business that Respondent operates at “www.yell-oh.co”, and iii) noting that the Respondent has also used a logo which differs from the Complainant’s trademark YELLOH, the Panel finds that the record appears to support that the Respondent came with the name independently of the Complainant’s trademark, and has been using the disputed domain name in connection with an apparent bona fide offering of its services.
Final decision: Deny transfer of the domain YellohConsultancy.com to the Complainant.
The domain transfer was denied.
ADMINISTRATIVE PANEL DECISION
Europe Plein Air – E.P.A. v. Tony Youssef
Case No. D2021-1682
1. The PartiesThe Complainant is Europe Plein Air – E.P.A., France, represented by Cabinet Desbarres & Staeffen, France.
The Respondent is Tony Youssef, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <yellohconsultancy.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 sent an email communication to the Complainant on June 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 7, 2021.
The Center verified that the Complaint together with the amended 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 June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Respondent sent informal communications to the Center on June 7, 2021, June 9, 2021, and July 1, 2021 to which the Center acknowledged receipt. The Center notified the Parties of the Commencement of Panel Appointment Process on July 1, 2021.
The Center appointed Luca Barbero as the sole panelist in this matter on July 6, 2021. 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.On July 21, 2021, the Panel issued Administrative Panel Procedural Order No. 1 (“Panel Order No. 1”) requesting the Respondent to provide explanations as to the reason why it selected the disputed domain name and about its current and/or future use of the same and the Complainant to provide its comments as to the Respondent’s contentions.
In response to the Panel Order No. 1, the Respondent submitted a Supplemental Filing on July 25, 2021 and the Complainant submitted a Supplemental Filing on July 30, 2021.
4. Factual Background
The Complainant is a French company founded in 2000, specialized in high-end camping villages, and owner of 93 camping-villages located in France, Spain, and Portugal.
The Complainant operates as a chain of franchises run by leading professionals in the sector and is recognized as the foremost network of high-end camping-villages.
The Complainant is the owner of the European Union trademark registration No. 002211159 for, filed on April 17, 2001 and registered on February 28, 2014, in international classes 16, 39, 41, and 42.
The Complainant is also the owner of the domain names <yellohvillage.fr>, registered on November 16, 2000, and <yellohvillagepro.com>, registered on May 29, 2006, which are both used by the Complainant to promote its services under the trademark YELLOH.
The disputed domain name <yellohconsultancy.com> was registered on May 3, 2021 and is currently pointed to a parking page of the concerned Registrar. According to a screenshot submitted by the Complainant as Annex 8 to the Complaint – which has not been contested by the Respondent, the disputed domain name previously resolved to a pay-per-click (“PPC”) web page with sponsored links related to the Complainant’s field of activity.
5. Parties’ Contentions
A. Complainant
The Complainant contends that disputed domain name <yellohconsultancy.com> is confusingly similar to the trademark YELLOH in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “consultancy” and the generic Top-Level Domain (“gTLD”) “.com”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that it has in no way granted any authorization to the Respondent, to register domain names containing the Complainant’s trademark or to otherwise make use of the trademark YELLOH.
The Complainant also asserts that the Respondent is not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name as the latter redirects to a parking page with commercial links related to campsites, holiday rentals, holidays villages and holiday rental, all topics clearly related to the Complainant’s field of activity.
The Complainant also notes that the Complainant’s trademark has been filed and used since 2001, while the disputed domain name was registered only on May 3, 2021.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent purposely registered the disputed domain name with the intent to cause confusion amongst Internet users who may be ultimately searching online information on the Complainant’s services.
The Complainant emphasizes that the links on the parking page all redirect in some manner or another to the Complainant’s field of activity and to competitor’s websites, creating a high risk of confusion and a diversion of the Complainant’s customers.
The Complainant also underlines that, at the time of registering the disputed domain name, the Respondent must have been undoubtedly aware of the Complainant’s earlier trademark, especially considering that even a basic Internet search would have revealed the Complainant’s website and services and that YELLOH has no particular specific meaning if not that associated with the Complainant’s services.
B. Respondent
In his informal communication of June 9, 2021, the Respondent asserts that his registration of the disputed domain name has nothing to do with the Complainant and that the disputed domain name is not for sale.
C. Respondent’s Supplemental Filing
In his Supplemental Filing submitted, on July 25, 2021, in response to the Panel Order No. 1, the Respondent states that he purchased the disputed domain name because he is the owner of a marketing consulting and consultancy company called “YellOh! Consultancy”.
He also claims that he registered the disputed domain name in order to link it to his existing domain name <yell-oh.co>, indicating that he is also the owner of the domain name <yellohconsultancy.de>.
The Respondent thus concludes that he has more rights than the Complainant to own and operate the disputed domain name.
D. Complainant’s Supplemental Filing
In its Supplemental Filing submitted, on July 30, 2021, in response to the Panel Order No. 1 and to the Respondent’s Supplemental Filing, the Complainant states that the Respondent has failed to provide any evidence in support of its allegations.
Indeed, the Complainant notes that the Respondent asserts that he is acting in good faith because he is also the owner of the domain names <yell-oh.co> and <yellohconsultancy.de>, but the latter redirects to a parking page with commercial links related to the Complainant’s field of activity, such as holiday rentals or camping, a circumstance which would only prove that the Respondent intended to take advantage of the domain name by using the Complainant’s trademark.
The Complainant also states that, judging by the address mentioned in the signature of the Respondent’s emails and the registration of a “.de” domain name, the Respondent presumably has an office in Germany as well and, since the Complainant’s Yelloh!Village franchise and its campsites are well-known in Germany, it is highly unlikely that the Respondent could not have been aware of the Complainant, especially considering that the Respondent not only used the word “Yelloh”, which has no real meaning, but has even used the exclamation mark on the related website which also appears in the Complainant’s trademark.
Lastly, the Complainant asserts that a side-by-side comparison of the “oh!” part of the Complainant and the Respondent’s mark also reveals the use of an identical font.
For the foregoing reasons, the Complainant requests that the disputed domain name be transferred to the Complainant.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.A. Identical or Confusingly Similar
The Complainant relies on the European Union trademark registration No. 002211159 for, filed on April 17, 2001 and registered on February 28, 2014, in international classes 16, 39, 41, and 42.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
With regard to trademark registrations with design elements, as stated in section 1.10 of the WIPO Overview 3.0, “Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show ‘rights in a mark’ for further assessment as to confusing similarity. However, where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP”.
In the case at hand, the Panel notes that the Complainant’s figurative trademark cited above is constituted by the denominative element “yelloh”, which is written in larger characters, with the addition of the descriptive terms “camping village” and “village”, an exclamation mark and other device elements.
The Panel finds that the core of the Complainant’s trademark is constituted by the denominative element YELLOH, which is entirely encompassed in the disputed domain name, with the mere addition of the term “consultancy” and the gTLD “.com”.
Indeed, as indicated in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of generic or descriptive terms or even letters or numbers does not prevent a finding of confusing similarity under the first element. Moreover, as indicated in section 1.11 of the WIPO Overview 3.0, “the applicable Top Level Domain (“TLD”) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the case at hand, the Complainant states that the Respondent was not authorized to use the Complainant’s trademark, has not been commonly known by the disputed domain names and has not been using the disputed domain names in connection with a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
In his informal response and further Supplemental Filing, the Respondent claimed that he carried out the registration of the disputed domain name since he operates a marketing consulting and consultancy company called YellOh! Consultancy and is willing to link the disputed domain name to his existing main domain name <yell-oh.co> and the correspondent website at “www.yell-oh.co”.
As per section 4.8 of the WIPO Overview 3.0, the panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
Based on the representations made by the Respondent in its informal reply, in a quick search performed by the Panel, the Respondent seems to show a LinkedIn profile and Facebook page corresponding to the same individual shown on the “About us” section in the website at “yell-oh.co”. On its website, the Respondent published some cursory articles and posts on social media related to its business. Taking this correlation with the representation made in the Respondent’s email into account, the Panel considers that the Respondent may indeed be operating a legitimate business whose additional site at the disputed domain name happens to have had some PPC links as it is a new business and the Respondent may not have got its website set up properly at the time of filing the complaint.
In view of the above and considering that i) the Respondent appears to have been operating mainly in the consulting field in Germany and Arab United Emirates while the Complainant is operating its business in France and ii) the Respondent has provided a plausible explanation about the reason of its selection of the sign “YellOh! Consultancy” due to the direct relation with its business that Respondent operates at “www.yell-oh.co”, and iii) noting that the Respondent has also used a logo which differs from the Complainant’s trademark YELLOH, the Panel finds that the record appears to support that the Respondent came with the name independently of the Complainant’s trademark, and has been using the disputed domain name in connection with an apparent bona fide offering of its services.
On balance of the probabilities, and noting that the burden of proof relies on the Complainant, the Panel finds that there is not sufficient evidence to conclude under the Policy that the Respondent selected its name to take advantage of the Complainant’s business or trademark.
Therefore, the Panel finds that the Complainant has failed to discharge the burden of proof according to paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
On balance of probabilities, the Panel is unable to find that the Respondent registered and used the disputed domain name with an intent to target the Complainant and its trademark.
The use of the disputed domain name made by the Respondent – notably including the fact that he credibly claims to have an existing consultancy business and the fact that the disputed domain name includes the term “consultancy” – does not show an intention to confuse the Internet users and/or to trade-off the Complainant and its trademark for the purposes of the Policy (also in view of the different logo and layouts and the absence of any information on the Respondent’s website which might confuse users to believe that the website be operated by the Complainant).
In view of the circumstances of the case, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Date: August 25, 2021
