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WIPO Arbitration and Mediation Center LTV Gelbe Seiten AG v. Yellow Pages Case No. D2009-0338 - yellowpages24.com

 

1. The Parties

The Complainant is LTV Gelbe Seiten AG of Zurich, Switzerland, represented by Bratschi Wiederkehr & Buob, Switzerland.

The Respondent is Yellow Pages of Egg bei Zurich, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <yellow-pages24.com> (the “Disputed Domain Name”) is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2009. On March 16, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On March 16, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2009.

The Center appointed Jacques de Werra as the sole panelist in this matter on April 27, 2009. 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

The Complainant is a Swiss company which was incorporated in 1974 and the corporate goal of which is to publish phone directories. Under a joint venture with the Swiss company “local.ch Ltd” (which is a fully-owned subsidiary of the Swiss national telecom company), the Complainant publishes private and business directories under the names “The Yellow Pages”, “Die Gelben Seiten”, “Les Pages Jaunes” and “Le Pagine Gialle”. These directories are made available online at “www.yellow-pages.ch” and http://yellow.local.ch as well as in print format.

The Complainant is the owner of various Swiss trademarks incorporating the terms “Yellow Pages” registered for various goods/services in all or some of the classes 16, 35, 38, 42, among which (“the Trademarks”):

- THE YELLOW PAGES, No. P-425153, registered on 10 May 1996;

- THE YELLOW PAGES ONLINE, No. 466340, registered on 3 November 1999;

- THE YELLOW PAGES – DIE GELBEN SEITEN (& design), No. 512788, registered on 17 July 2003;

The Disputed Domain Name was registered on August 20, 2008. The Disputed Domain Name is used to operate an on-line phone search directory on a webpage which is visually similar to the ones operated by the Complainant and which also incorporates the Trademarks. The Respondent’s name is “Yellow Pages” which corresponds to the Trademarks owned by the Complainant. The Respondent’s name appears as the one of a company even though it is not registered in the Swiss commercial registry (Swiss commercial companies are generally required to do).

5. Parties’ Contentions

A. Complainant

The Complainant claims that it has not consented to the Respondent’s registration of the Dispute Domain Name and that it has not granted any license to the Respondent or any other right to use the Trademarks as a domain name.

The Complainant further claims that the Respondent has no legitimate interest in the use of the Dispute Domain Name, that the Respondent has not made before any notice of the dispute a bona fide offering of goods of services. Respondent’s use of the Disputed Domain Name for a phone directory as well as Respondent’s use of a logo on the Disputed Domain Name which is virtually similar to the Trademarks owned by the Complainant rather leads to hold that the Respondent must have known of the Complainant’s business activities, of its webpage and of the Trademarks. The Complainant thus claims that the Respondent fraudulently tries to take advantage of the reputation of the Complainant.

The Complainant further claims that the Respondent has not been commonly known by the Disputed Domain Name or by conducting any activity under this name, that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name and that the Respondent did not register it with the intention to use it in the generic meaning of these terms, but rather to take advantage of the reputation and of the market development of the very well know Trademarks of the Complainant (as evidenced by a survey). On this basis, the Complainant contends that Respondent’s use of the Disputed Domain Name is made to distract consumers looking for the Complainant’s service towards its own web page in order to generate internet traffic. But, the Respondent’s main objective is to use the Disputed Domain Name for a fraudulent purpose, i.e. to obtain payment from Swiss companies for an alleged insertion on the database on the Disputed Domain Name, whereby the Respondent is creating a confusion with the services offered by the Complainant.

The Respondent uses the Disputed Domain Name in a fraudulent scheme by sending invoices to Swiss business entities requesting payment for being included in the on-line directory run by the Respondent on the Disputed Domain Name, whereby these invoices refer to the Disputed Domain Name and unduly use the name “the Yellow Pages” which corresponds to the Trademarks owned by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in an administrative proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy.

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of the Trademarks which are registered in Switzerland. This has not been challenged, or called into question by the Respondent. The Complainant is consequently, in the absence of evidence to the contrary, entitled to rely on these validly registered trademarks. See Respiratorius AB v. Dr. Bengt Skogvall, WhoisGuard, WIPO Case No. D2007-1447.

The Complainant alleges that the Disputed Domain Name is confusingly similar to the Trademarks.

In this case, the Panel is satisfied that the verbal elements of the Trademarks are fully embodied in the Disputed Domain Name and that the Disputed Domain Name is confusingly similar to the Trademarks given that the addition of the hyphen and of numbers (“24”) after the verbal elements of the Trademarks in the Disputed Domain Name does not exclude the confusing similarity which exists between them.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Trademarks and that the condition of paragraph 4(a)(i) of the Policy is consequently met.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; however, according to paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by proving, on a non-exhaustive basis, any of the following circumstances:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and that none of the conditions mentioned above are met.

Even though the two words “Yellow Pages” are individually dictionary terms in the English language, the Respondent has not replied or brought any evidence that it chose those terms for inclusion together in the Disputed Domain Name because of their dictionary (as opposed to their trademark) meaning. In addition, by not answering, the Respondent has not provided the Panel with any potential explanation justifying the use of the numbers (“24”) in the Disputed Domain Name.

As a result, based on the Complainant’s uncontradicted allegations and evidence, the Panel holds that the Respondent did not register the Disputed Domain Name with the intention to use them in the generic meaning, but rather did so in order to take advantage of the reputation of the Trademarks of the Complainant, as well as of the high level of knowledge which the Swiss population has of the services offered by the Complainant under the Trademarks.

On this basis, the Panel finds that the Respondent has not made a bona fide offering of goods or services and that the Complainant has established that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Panel thus concludes that the condition of paragraph 4(a)(ii) of the Policy has been established by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Disputed Domain Name is used as well as was registered in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is in bad faith:

(i) respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he has engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.

In this case, based on the Complainant’s uncontradicted allegations and evidence, the Panel is of the opinion that the Respondent has intentionally registered the Disputed Domain Name in order to unduly benefit from the name and reputation of the Trademarks and of the Complainant’s services. The Panel indeed cannot think that the Respondent registered the Disputed Domain Name without having in mind the Trademarks of the Complainant. This view is confirmed by the fact that the Respondent is using the Disputed Domain Name for a business directory on a webpage which is visually similar to the websites of the Complainant and which incorporates the Trademarks.

In addition, the Complainant has shown that the Respondent is using the Disputed Domain Name as a part of fraudulent scheme aimed at obtaining a financial remuneration from prospective Swiss business entities by sending them invoices which create a confusion with the official business directory services offered by the Complainant on which the Disputed Domain Name is mentioned. On this basis, the Panel is convinced that this constitutes a bad faith use of the Disputed Domain Name. See by analogy Dow Jones & Company Inc. v. Ms. Sorokin, WIPO Case No. D2008-0027 (holding as bad faith use the fact that Respondent attempted to lure, for unlawful commercial gain, Internet users to the respondent’s fraudulent scheme by creating a likelihood of confusion with the complainant’s trademark.

Based on the foregoing, the Panel finds that the Respondent has registered the Disputed Domain Name and is using it in bad faith so that the requirements of paragraph 4(a)(iii) of the Policy are met.

7. Decision

For all 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 <yellow-pages24.com> be transferred to the Complainant.

 

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