WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yellow Fiber Networks of VA, LLC v. Edward Waithaka, Yellow Fiber Africa Limited
Case No. D2017-0496
1. The Parties
Complainant is Yellow Fiber Networks of VA, LLC, of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.
Respondent is Edward Waithaka, Yellow Fiber Africa Limited of Nairobi, Kenya, represented by Mukuhimaina Advocates, Kenya.
2. The Domain Name and Registrar
The disputed domain name <yellowfiberafrica.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 March 10, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 7, 2017. Respondent sent an email to the Center on April 18, 2017, indicating inter alia that “they wish to oblige to the complainant[’]s request of transferring the domain to them”. On April 19, 2017, the Center invited Complainant to submit a request for suspension of the proceedings to explore a possible settlement by April 24, 2017.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on April 25, 2017. 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.
4. Factual Background
Complainant is an Internet Service Provider and operates a website with the domain name <yellowfiber.net>. Complainant has been in business for approximately ten years, and has continuously used the common law marks YELLOW FIBER and YELLOWFIBER NETWORKS. Complainant has submitted two trademark applications with the United States Patent and Trademark Office; YELLOWFIBER NETWORKS which was assigned Serial No. 86/886,854 and YELLOWFIBER which was assigned Serial Number 87/245,723. The Panel notes that the trademarks are not registered yet.
Respondent is Edward Waithaka, Yellow Fiber Africa Limited. Respondent operates the disputed domain name <yellowfiberafrica.com>, registered on August 28, 2017, and operates in the city of Nairobi, Kenya. Respondent’s counsel has confirmed by way of email dated April 18, 2017 that Respondent has “gone ahead and pulled down their website” and that Complainant “can use the domain name as they wish”. Previously, the disputed domain name resolved to a website purportedly offering Internet services.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant also contends that an employee of Respondent was the respondent in a previous UDRP panel decision relating to the trademarks YELLOW FIBER and YELLOWFIBER NETWORKS, concerning the domain name <yellowfibernetworks.com> (Yellow Fiber Networks, Inc. v. Yellow Fiber Networks Limited, WIPO Case No. D2013-1173). In this regard, Complainant submits a declaration of its representative in Kenya, hired to investigate Respondent’s alleged business activities and the relationship between Respondent and the respondent in the prior proceeding. This research states that said relationship exists, and that Respondent does not offer Internet related services. Therefore, Complainant contends that Respondent knew of Complainant prior to registering the disputed domain name and that Respondent has put up a fake website under the disputed domain name.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant contends that Respondent had registered and is using the disputed domain name in bad faith.
Respondent did not submit a response to the Complainant’s contentions. However, by email dated April 18, 2017, Respondent’s counsel confirmed receipt of the dispute and confirmed that Respondent wish “to settle the dispute since they wish to oblige to the complainants request for transferring the domain to them”. Respondent also states that they had “no intention of interfering the complainant[’]s business” and “that complainant can go ahead and use the domain name as they wish”.
6. Discussion and Findings
Respondent’s counsel has indicated in their response email of April 18, 2017 that Respondent wishes to settle the dispute and comply with Complainant’s request to transfer the disputed domain name. Respondent’s counsel has also indicated that Complainant “can go ahead and use the domain name as they wish”. This is duly noted, as is Respondent’s choice to take down the website, as confirmed in the same email of April 18, 2017, which the Panel has subsequently confirmed following a quick review of the website under the disputed domain name.
However, the Parties do not appear to have settled the dispute, and no request for suspension of the proceedings has been made by Complainant. It can therefore be surmised either that Complainant does not wish to settle the matter, or that Respondent has ultimately failed to respond to Complainant’s requests to settle the matter.
It is obvious, however, that Respondent intends to relinquish its rights to the disputed domain name and to have the same transferred to Complainant. Respondent does not, however, admit any liability as to the registration of the disputed domain name.
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) considers whether a panel can decide a case solely based on a respondent’s consent to transfer:
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent’s consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g., in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”
It is clear that a panel may decide at its discretion to order the transfer of a disputed domain name on the sole basis of the unilateral and unambiguous consent given by the respondent in the case. In this case, it appears that there is an unilateral and unambiguous consent to have the disputed domain name transferred to Complainant. However, for the sake of thoroughness, the Panel has considered whether the disputed domain name is in compliance with the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is noted that a previous UDRP panel had rendered a ruling transferring the domain name <yellowfibernetworks.com> to the present Complainant. In this previous UDRP decision, the panel found that complainant had common law trademarks for YELLOW FIBER and YELLOWFIBER NETWORKS. Complainant has provided evidence, in this case also, that it has been using these common law trademarks for approximately ten years and has promoted its trademarks through Internet advertising, press releases and at industry tradeshows.
It is also noted that the disputed domain name is confusingly similar with the Complainant’s used marks YELLOW FIBER and YELLOWFIBER NETWORKS. The Complainant is right that the addition of the geographical term “africa” at the end of a trademark “heightens the confusing similarity by suggesting that the [disputed domain name] is related to Complainant”, as this leads the public to consider that the disputed domain name indicates that the Complainant is operating in Africa through the website <yellowfiberafrica.com>.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has asserted that it has not permitted Respondent to use its marks YELLOW FIBER or YELLOWFIBER NETWORKS and that the website under the disputed domain name was “a bare bones website that does not have any true functionality”. Respondent has offered no rebuttal on this point. Rather, it has taken down the website and has offered to transfer the disputed domain name to Complainant.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of non-exhaustive factors that a panel can take into account to determine whether a disputed domain name was registered and is being used in bad faith. The panel may depart from there and analyze the situation in order to determine whether the requirement that the disputed domain name was registered and is being used in bad faith is fulfilled.
In the present instance, the Panel is persuaded that there is evidence of bad faith registration and use, in the fact that Respondent’s employee had previously registered a similar domain name, <yellowfibernetworks.com>, which was found to be registered and used in bad faith. Respondent therefore “knew or should have known” of Complainant’s common law marks YELLOW FIBER and YELLOWFIBER NETWORKS prior to its registration of the disputed domain name. The Panel accepts Complainant’s contentions regarding bad faith registration and use of the disputed domain name.
The Panel therefore finds that Respondent had registered and used the disputed domain name in bad faith.
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 <yellowfiberafrica.com> be transferred to the Complainant.
Nasser A. Khasawneh
Date: May 13, 2017