yellowroadway.com

Yellow Corporation v. MIC

Case No. D2003-0748

The Complainant is Yellow Corporation, of Kansas, United States of America, represented by Ann K Burns, Esq., Fulbright & Jaworski, LLP, Dallas, Texas, United States of America.

The Respondent is MIC, C/O Syed Hussain, New Jersey, United States of America.

The disputed domain name <yellowroadway.com> is registered with BulkRegister.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2003. On September 25, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue.

On September 26, 2003, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 3, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2003.

The Center appointed Justin Hughes as the sole panelist in this matter on November 26, 2003. 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.

The Complainant, Yellow Corporation ("Yellow" or "Yellow Corporation") is a Fortune 500 company providing common carrier freight transportation, principally through trucking services in North America. Yellow Corporation has several federally registered trademarks using YELLOW, alone or in combination with other words, to designate its common carrier freight services and related business activities (Exhibit C). Roadway Corporation ("Roadway") is a smaller common carrier company. Roadway has its own family of federally registered trademarks using ROADWAY, alone or in combination with other words, to designate its common carrier freight services. Roadway has agreed to be acquired by Yellow (Exhibit E) and appears to have authorized Yellow to assert Roadway’s trademark rights in the present proceeding (Exhibit I). The holding of the Panel does not, however, turn on the adequacy or scope of this authorization to act as Roadway’s attorney in fact for the assertion of Roadway’s trademark rights.

Respondent MIC is located in Cloister, New Jersey. According to the BulkRegister WHOIS at Exhibit A of the Complaint Mr. Syed Hussain is both the administrative contact and technical contact for MIC. From other UDRP proceedings, it is evident that Mr. Hussain operates from this address as MIC, CPIC, and/or CPIC NET. For purposes of this proceeding, the Panel will refer to the Respondent as "MIC" or "Mr. Hussain".

On July 8, 2003, Complainant publicly announced its intended acquisition of the Roadway Corporation and the "planned subsequent formation of Yellow-Roadway Corporation (Complaint, paragraph 21, Exhibit E). Yellow Corporation made this announcement through a press release that received substantial attention in the relevant trade press. This planned acquisition is a sufficiently friendly merger (Exhibit E) that Roadway Corporation supports Yellow in this dispute (Exhibit I) and has authorized Yellow to assert Roadway’s trademark rights in ROADWAY in this proceeding (Id.).

On the same day as the formation of Yellow-Roadway Corporation was publicly announced, Respondent registered the domain name <yellowroadway.com> with Bulk Register (Complaint, paragraph 22, Exhibit A). Mr. Hussain does not appear to have acted with insider information. But he certainly acted expeditiously: he seems to have registered <yellowroadway.com> even before Yellow held its investor conference call on July 8, 2003, to discuss the merger (Exhibits A and E, 9:47am and 11:00am EAST respectively).

Complainant subsequently discovered that the domain name it would perhaps most covet for the new corporation was in Respondent’s hands. The dispute would not have arisen if one of the merging parties had registered <yellowroadway.com> themselves in the small window of time when the merger was imminent, but not publicly disclosed. Similarly, Complainant or Roadway might have filed an intent-to-use application for YELLOWROADWAY with the U.S. Patent and Trademark Office prior to public disclosure of the merger. Although such a registration would not have prevented Mr. Hussain’s action, it would have strengthened, to some degree, Complainant’s case in the present proceeding. Thus, the present dispute is a cautionary note to other businesses: the dispute arises because business decisions at Complainant and Roadway moved quicker than Complainant’s legal counsel or Internet marketing people could respond.

The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under 6.A-C below.

The Respondent did not reply to the Complainant’s contentions. Therefore, for purposes of this decision, the Panel accepts the Complainant’s contentions when supported by evidence.

Because there was no filing from the Respondent, all references to Exhibits are to Complainant’s Exhibits.

To prevail in a UDRP action, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

(i) The domain name in issue is identical or confusingly similar to the Trade Mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

The Complainant has properly made its case under each requirement.

This element of the Paragraph 4(a) requirements poses the most difficult problem for the Panel. While Complainant holds a family of federally registered trademarks using YELLOW in relation to common carrier freight services, Complainant does not contend that it or Roadway has filed any trademark applications in any jurisdiction for YELLOWROADWAY.

The present facts before the Panel provide two possible routes to establishing that the domain name is identical or confusingly similar: either (a) establishing that the Complainant has common law trademark rights in YELLOWROADWAY and that the domain name is identical or confusingly similar, or (b) establishing that the domain name is identical or confusingly similar to Complainant’s trademarks YELLOW, YELLOW CORPORATION, YELLOW GLOBAL, MY YELLOW and the rest of the YELLOW-based family of trademarks that the Complainant has registered as far back as 1982 (the "registered YELLOW marks").

The Panel does not offer an opinion on whether Yellow Corporation had any common law trademark rights in YELLOWROADWAY when Mr. Hussain acted on July 8. Such an inquiry would explore whether a corporation can acquire common law trademark rights instantly upon announcing a new corporate, product, or service name (particularly in a market where customers are highly sophisticated and pay attention to announcements by major market players). This Panel has previously expressed doubt about how quickly common law trademark rights arise, PlasmaNet, Inc. v. John Zuccarini,WIPO Case No. D2002-1101 (February 11, 2003), although that proceeding involved a word being used in a descriptive sense while "yellowroadway" is fanciful, if not arbitrary, in relation to common carrier services.

The decision in a similar corporate merger case - involving the same Respondent - proceeded from the premise that "Complainant(s) must first establish that they have trademark rights in combinations of ‘Warner’ and ‘EMI’" Time Warner, Inc. and EMI Group v. CPIC NET, WIPO Case No. D2000-0433 (September 15, 2000). I respectfully disagree that this the only way in which confusing similarity can arise. A surer analysis is to inquire whether <yellowroadway.com> is confusingly similar to the registered YELLOW marks. See, e.g. Astro-Med, Inc. v. Merry Christmas Everyone!, WIPO Case No. D2000-0072 (panel found merged company domain name confusingly similar to complainants’ individual marks); Shire Biochem v. Hussain, WIPO Case No. D2002-0453 (June 19, 2002) (concluding that <shirebiochem.com> was confusingly similar to SHIRE mark, although Complainant "did not have registration of the word ‘Biochem’ per se"). The Panel finds that the domain name <yellowroadway.com> is confusingly similar to the registered YELLOW marks.

"Yellow" is a common word and there are many domain names using "yellow" that would not be confusingly similar to the registered YELLOW marks for common carrier freight services. Some examples include "yellowsubmarine," "yellowalert," "yellowriver," "yellowdog," or "codeyellow"; other non-confusing examples include "yellowsucks" or "yellowistrouble" where the company’s market is overwhelmingly English-speaking and customers would see the additional words as distancing the domain name from the trademark.

But the domain name here combines the Complainant’s well-known trademark with the name of a well-known competitor in the same industry, immediately creating the impression for Yellow’s customers that the domain name is associated with these two particular companies and this particular industry. The confusing similarity would exist regardless of the merger of the two companies. For example, there are many uses in domain name registrations – particularly political uses - of the dictionary word "capitol" that would not be confusingly similar to the trademark(s) of Capitol Records, but a domain name like <capitol-sony.com> or <capitolmusic.com> would be. Similarly, "sun" is a common word, but a domain name <sun-microsoft.com> might be confusingly similar to the trademarks of both Microsoft and Sun Microsystems. See e.g. L’Air Liquide v. MIC, WIPO Case No. D2001-1246 (December 12, 2001) (<suezairliquide.com> confusingly similar to AIR LIQUIDE trademark regardless of unsuccessful merger); See also Yahoo! v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 (<yahooasian.com> confusingly similar to YAHOO! trademark); CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273 (June 18, 2003) (<wwwamctv.com> confusingly similar to trademark AMC where trademark designated television service).

In short, when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity. Here, the other word ("Roadway") points toward, not away from, the services offered by Yellow Corporation. Confusing similarity is established on that basis.

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name. There is no evidence that the Respondent has ever used YELLOWROADWAY or any similar trademark or trade name in the offering of goods or services; there is no evidence that the Respondent has ever used <yellowroadway.com> in connection with either bona fide commercial activities or expressive activities, whether such expressive activities were legitimate fair use of the trademarks YELLOW or ROADWAY as they are associated with services in the trucking industry or simply a fan site dedicated to the long and winding road in the Wizard of Oz.

Paragraph 4(b)(i) of the Policy establishes that evidence of the registration and use of a domain name in bad faith can include circumstances in which the Respondent "acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name" in excess of "out-of-pocket costs."

Communications between the parties were initiated by a demand letter from Complainant on August 21, 2003 (Exhibit F); this letter triggered telephone conversations between Mr. Hussain and Ms. Burns. In these conversations, Mr. Hussain made it clear that was willing to transfer the domain name for a price, but refrained from giving Ms. Burns a specific price. Mr. Hussain said that he had received offers for the domain name in the amounts of $2,000 and $5,000 and that he would only part with the domain name for an amount of money in that range (Exhibit G). The Panel interprets this coyness in discussions with Ms. Burns as an attempt to avoid a finding of bad faith under Paragraph 4(b)(i).

The Panel has no difficulty in concluding that Mr. Hussain’s intent was to extract a large payment from Yellow Corporation well in excess of his own expenses in acquiring the domain name. See World Wrestling Federation Entertainment v. Bosman, WIPO Case No. D1999-0001; Astro-Med, Inc.,supra ($2000.00 price formerger company name).Mr. Hussain’s reticence to discuss directly his price does not change the result.

For all the above reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <yellowroadway.com> be transferred to the Complainant.