Yell claimed that yellcast.com and yellcast.net were filed in bad faith, specifically to exploit the reputation of the trademark to its name.
The domains resolved to websites featuring yellow and black colouring, which Yell said it had used for 30 years.
But, while WIPO Arbitration and Mediation Center panellists Alistair Payne, Tony Willoughby and Scott Donahey agreed that the disputed domain names were “confusingly similar” to Yell’s trademarks, they argued there was nothing on record to suggest that Yell was well known outside of the UK.
As the respondent, Venkat Ganesan, is based in the US, there is “nothing to suggest that [Ganesan] should have been aware of [Yell’s] marks and get-up”.
They said that Ganesan had chosen the Yellcast name for his business and incorporated his company using that name. Ganesan also explained that the yellow and black colour scheme was offered as part of a standard template, and was in no way infringing Yell’s colour scheme.
“Overall, the panel sees no evidence that [Ganesan] has sought to target [Yell] such as would support the its case that the disputed domain names have been registered and used in bad faith.”