Geneva
26 May 2017
Reporter: Barney Dixon

Yell loses out in UDRP decision


The company behind the UK Yellow Pages directory, Yell, has failed to recover two domains.

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.”

More news
The latest news from IPPro The Internet
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Quarles & Brady hires internet of things expert
12 December 2017 | Milwaukee | Reporter: Barney Dixon
Quarles & Brady has hired Linda Emery as partner in its intellectual property practice group based in Milwaukee
Siemens reclaims infringing domains
11 December 2017 | Geneva | Reporter: Barney Dixon
Siemens has been transferred seven infringing domain names following a World Intellectual Property Organisation Arbitration and Mediation Centre dispute
PSNI, HMRC and FACT seize 50 illegal streaming devices
08 December 2017 | Belfast | Reporter: Barney Dixon
A joint operation between UK enforcement bodies has resulted in the seizure of 50 illegal streaming devices
China world’s top trademark filer in 2016
07 December 2017 | Geneva | Reporter: Barney Dixon
China was the world’s top trademark filer in 2016, with the country accounting for 3.7 million applications out of an estimated global total of 7 million
Marlboro beats infringer in UDRP dispute
07 December 2017 | Geneva | Reporter: Barney Dixon
Marlboro has acquired seven infringing domain names in a dispute at the World Intellectual Property Organisation Arbitration and Mediation Centre.
Squire Patton Boggs hires ex Walgreens Boots Alliance counsel
06 December 2017 | London | Reporter: Barney Dixon
Squire Patton Boggs has appointed Kerry Lee as partner in its intellectual property and technology practice
Google wins UDRP dispute
06 December 2017 | Minneapolis | Reporter: Barney Dixon
Google has won a domain dispute at the Alternative Dispute Resolution Forum