WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
France Telecom v. Domain
Case N� D2000-490
1. The Parties
The Complainants are:
France Telecom, 6 place d�Alleray, 75015 Paris, FRANCE, and
ODA, 7 avenue de la Cristallerie, 92310 S�vres, FRANCE.
Complainants are represented by Inlex Conseil, Patent and Trademark Attorney, 68 rue Pierre Charron, 75008 Paris, FRANCE.
Respondent is Domain, 1437 Young St., Suite 404, Toronto, ON M1C 5P5 CANADA.
2. The Domain Name and Registrar
The domain names in issue here is:
The Registrar with which the domain name is registered is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received France Telecom�s complaint on May 24, 2000. On May 25, 2000, the Center sent a request for registrar verification in connection with this case to Network Solutions. The administrative proceedings began on June 11, 2000. The Respondent defaulted.
The Center appointed the three following panelists:
François Dessemontet, presiding panelist;
Robert Fashler;
Christian-Andr� Le Stanc.
4. Factual Backgrounds
France Telecom is holder of the semi-figurative trademarks PAGES JAUNES filed in France:
- No 1430716 dated October 21, 1977 covering class 16;
- No 1430717 of same date for same class;
- No 1430719 of same date for same class.
Further, the Complainant is holder of the French semi-figurative trademark LES PAGES JAUNES no 97674262 of April 18, 1997, covering classes 9, 16, 38, 41 and 42.
The use of the trademarks in issue is extremely widespread in France, 25 millions copies of that directory being distributed free of charge to individuals or companies.
However, the concept and the name YELLOW PAGES has been known since 1954, at least in the United States. The general notion of a phone directory where entries are classified by trade and calling already appeared at the turn of the century.
Worldwide, the publishers of yellow pages are grouped into an association, named the Yellow Pages Publishers Associations, which comprises 199 publishers and 80 associate members. Some of them publishing yellow pages in India, Australia, Russia, New Zealand.
Other directories are named PAGES JAUNES in French-speaking countries, e.g.
Switzerland, Canada, Belgium and Luxembourg. Companies producing PAGES JAUNES directories in those countries are apparently operating on the web with domain names such as PAGESJAUNES.CH/CA/BE/ LU.
5. Discussion and Findings
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
a) Identity or Confusing similarity
There is no doubt that there is similarity between the French trademarks of the Complainant and the characteristic elements of the domain name in issue. The difference in the top-level domain name is of no relevance in this regard.
b) Legitimate Rights and Interests in Respect of the Domain Name
The only legitimate interest of the Respondent appears to be to keep the priority of right onto the domain name, which its prior registration of that domain name secured it.
Nonetheless, the Panel does not consider it in itself improper to keep a domain name for some time without using it. It cannot be said that there is no legitimate interest in trying to secure a priority of right and to maintain it. It might well be that under the laws of some jurisdictions, the registering of domain names to preserve a priority of right would not be deemed worthy of protection, as it has been judged under Swiss law for trade names that were registered in a purely defensive way 1. The administrative proceedings do not allow to inquire in details about the state of French and Canadian law in that regard, this difficult question being properly to be adjudicated by ordinary courts of law.
It might also be contrary to the policy of the registrar to allow for sites to be under construction for years without effective use, but this Panel has no authority in that regard, which is a contractual matter properly to be adjudicated under the contract between registrant and registrar and by proceedings between them.
Hence, the Panel is unable to conclude that the Respondent has no legitimate right or interest in the domain name in issue.
c) Registration and Use in Bad Faith
1. Bad faith Registration
The Panel finds that the verbal element Pages jaunes is clearly descriptive of a sort of directories which is well known under this very name in French, as "Yellow Pages" in English, "Amarillas P�ginas" in Spanish, etc. The Panel does not have to pass a judgment on the validity of trademarks that are registered under French law, but it should take into account the likelihood of them being found to be invalid in order to assess the good faith or bad faith of the Respondent.
In this regard, the Panel has to consider the need of the public to connect to web sites that offer directory services under the most common denomination for such services. The sheer fact that all over Europe, as well as in the U.S., Australia, Canada, India, Russia and other countries, business directories are known under the name Yellow Pages precludes the Complainant�s claim to exclusivity, based on its trademarks, or a trade name or any other intangible asset. Some descriptive terms have to remain in the public domain in order for the information society to run smoothly.
Now, this might lead to deny to the Respondent the exclusive use of its registered domain name. However, the present dispute is not between the Respondent and a third party, which the Respondent would charge with cybersquatting, but between the Complainant, which asserts an exclusivity on domain names consisting of pagesjaunes/�, and the Respondent. We conclude that the public interest is best served if the net users can access to business directories through more than one company and site. Further, we find that through the vast array of web sites which Complainant directly or indirectly controls, the Complainant can propose its services and derives enough income from advertising, so that its own interests are not imperiled by the coexistence with the Respondent�s domain name.
These findings also mean that the Respondent could not have acted in bad faith when acquiring the first registration on the domain name in issue.
2. Bad Faith Use
No finding of use in bad faith can be made against the Respondent. The Respondent did not try to sell or otherwise apply pressures for obtaining advantages in connection with the release of the domain name. The Respondent does not appear to collect well-known domain names that were left unoccupied by the companies most legitimately entitled to them.
For the reasons set above, the request to transfer or to delete the domain name shall be denied.
6. Decision
The Panel declines to order the transfer or the deletion of the domain name in issue.
François Dessemontet
Presiding Panelist
Christian-Andr� Le Stanc
Panelist
Dated: August 21, 2000
DISSENT BY PANELIST
I respectfully dissent from the majority decision in this case for the reasons given below.
Procedural History
I agree with the recounting of the procedural history of this case as set out in the majority decision.
One aspect of the procedural history is central to this dissent. The Respondent has not provided any Response to the Complaint or made any other submissions. In the circumstances, certain principles established by the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") are applicable, including, Rule 5(e) and 14(b), which read:
"5. The Response
. . . .
(e) If a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
"14 Default
. . . .
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate"
Rule 14 reinforces the principle established by Rule 5(e). It reads:
"15. Panel Decisions
(a) A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Having regard to the procedural history in this case and the foregoing Rules, it is my view that:
(a) this case should be decided exclusively on the basis of the evidence and submissions set out in the Complaint; and
(b) it is appropriate to draw the inference that the Respondent admits the evidence and submissions set out in the Complaint.
In some cases it is appropriate for panels to take official notice of facts that have not been placed in evidence by either party but are so generally known by the public that their existence could not credibly be disputed. There is some room for that in this case, but that does not alter my view of the appropriate analysis and outcome.
Factual Background
I agree with the first three paragraphs set out in Section 4 (Factual Background) of the majority decision. Those facts were all submitted in evidence in the Complaint. Those paragraphs identify French registrations held by the Complainant, France Telecom, S.A., for trademarks comprising or featuring the words PAGES JAUNES and confirm the fact that those trademarks are used very widely in France in association with directories distributed to individuals and companies.
Section 4 (Factual Background) of the majority decision then goes on to refer to the following facts:
"However, the concept and the name YELLOW PAGES has been known since 1954, at least in the United States. The general notion of a phone directory where entries are classified by trade and calling already appeared at the turn of the century.
Worldwide, the publishers of YELLOW PAGES are regrouped in an association, named the Yellow Pages Publishers Association, which comprises 199 publishers and 80 associate members. Some of them are publishing Yellow Pages in India, Australia, Russia and New Zealand. Some other publications are named PAGES JAUNES in French-speaking countries, eg. Switzerland, Canada, Belgium and Luxembourg. Companies producing PAGES JAUNES directories in those countries are apparently operating on the Web with domain names such as PAGES JAUNES.ch/ca/be/lu."
Those particular facts have not been placed in evidence by either the Complainant or the Respondent. It is possible to take official notice of the fact that the words PAGES JAUNES and LES PAGE JAUNES, and their equivalent in other languages, are used extensively in many countries in association with telephone directories. However, this Panellist has no basis for drawing any conclusions from those facts that would undermine the merits of the Complainants' case.
The fact that there is significant international use of YELLOW PAGES and PAGES JAUNES is consistent with a number of possible interpretations as to ownership and rights including:
(a) the Complainants might own registrations for PAGES JAUNES in all countries where the marks are used;
(b) other telecommunication companies might own registrations for these marks in particular countries; and
(c) the words might not be the subject of trademark registrations outside France and might be used freely as descriptive terms outside France.
However, no evidence directed to such facts has been put in evidence and I have no basis for taking official notice of such facts. If the Complainants have not accurately or completely represented the facts in this proceeding, it is the responsibility of the Respondent to make submissions to that effect. It did not, and Rule 14 directs the Panel, "in the absence of exceptional circumstances", to "draw such inferences therefrom as it considers appropriate". There are no exceptional circumstances present in this case that would justify departing from this principle. Hence, in my view, it is appropriate to draw the inference that the Respondent admits the assertions made by the Complainant.
If the Panel takes official notice of the fact that the words PAGES JAUNES and YELLOW PAGES have been used extensively in association with telephone directories in several countries, in the absence of evidence to the contrary, the natural inference is that these marks have acquired a great deal of distinctiveness over time and are probably famous. That assists the Complainants.
The factual background recited in the majority decision does not include the following relevant evidence:
(a) the Complainant, ODA, S.A., also holds four registrations in France for trademarks that feature the words LES PAGES JAUNES, namely:
Trademark
Reg. No.
Reg. Date
Classes
LES PAGES JAUNES
99800900
2 July 1999
9, 16, 35, 38, 41, 42
LES PAGES JAUNES
99800903
2 July 1999
9, 16, 35, 38, 41, 42
LES PAGES JAUNES
99800905
2 July 1999
9, 16, 35, 38, 41, 42
LES PAGES JAUNES
99800906
2 July 1999
9, 16, 35, 38, 41, 42
(b) the Respondent acquired the domain name (the "Domain Name") well after the Complainants began using and registered most of their PAGES JAUNES trademarks;
(c) the Respondent has not used the Domain Name for a website;
(d) the Complainants' PAGES JAUNES trademarks have a very strong reputation generated by extensive use over many years;
(e) the Respondent would have to have been aware of the existence of the Complainants' trademarks at the time that the Domain Name was acquired by the Respondent;
(f) The Complainants' directory is used extensively in France, being consulted approximately 55 million times per month;
(g) the Complainants operate a PAGES JAUNES website accessible through the URL ;
(h) to the Complainants' knowledge:
(i) the Respondent makes no use of the words LES PAGES JAUNES as a trademark,
(ii) the Respondent does not conduct any activity under the name LES PAGES JAUNES, and
(iii) the Respondent holds no trademark registrations for LES PAGES JAUNES in France or abroad.
Analysis
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("Policy") places a burden on the Complainants to prove the presence of three separate elements, which can be summarized as follows:
(a) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(b) the Respondent has no rights or legitimate interests in the Domain Name; and
(c) the Domain Name has been registered and is being used by the Respondent in bad faith.
I concur with the other Panellists in their finding that there is identity between the Complainants' trademarks and the Domain Name. Specifically, the Domain Name is identical or confusingly similar with the Complainants' trademarks. As well, the French registrations relied on by the Complainants demonstrate that the Complainants have rights in the Complainants' trademarks. Hence, the Complainants have met their burden regarding the first element required by Paragraph 4(a) of the Policy.
The second element that the Complainants must prove is that the Respondent has no rights or legitimate interests in respect of the Domain Name. It is relatively difficult for any complainant to prove beyond a shadow of doubt that a respondent has no rights or legitimate interests in a domain name. For the most part, that information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be light. In any event, the Policy gives respondents ample opportunity to demonstrate their rights and interests.
One of the few things that a complainant can do to raise an inference that a respondent has no rights or legitimate interests in respect of a domain name is to conduct a trademark search. The Complainants have done that in this case. The searches showed no registrations held by the Respondent. The Respondent has not made any submissions on this point. I am satisfied that, based on the evidence and submissions before the Panel, the Complainant has satisfied its burden regarding the second element of the test set out in Paragraph 4(a) of the Policy.
The third element of the test set out in Paragraph 4(a) of the Policy requires the Complainants to prove that the Respondent has registered and is using the Domain Name in bad faith. The Complainants have provided some evidence that their trademarks have been used for a long period of time, have a substantial reputation, and are encountered by individuals and businesses on a widespread and frequent basis. This supports the proposition that the Complainants' trademarks are extremely well known, if not famous, in France and possibly elsewhere.
The Complainants have established that the Respondent has not utilized the Domain Name for an active website, business or other operation. The Complainants assert that the Respondent must be trying to take advantage of or otherwise to exploit the Complainants' trademarks.
The Complainants also say that by maintaining ownership of the Domain Name, the Respondent is preventing the Complainants from using their own trademark LES PAGES JAUNES in the form of a domain name. Presumably, in making that assertion, the Complainants intended to refer to a domain name within the .com top level.
There is no evidence before the Panel tending to show that LES PAGES JAUNES is merely descriptive, lacking distinctiveness, or in the public domain. To the contrary, some of the Complainants' French registrations that feature the words PAGES JAUNES issued as early as 1987.
In the circumstances, it is difficult to conceive of a motivation for the Respondent registering and maintaining the Domain Name other than selling the Domain Name to the party with the greatest interest in acquiring it, namely the party who owns the corresponding trademark registrations.
The Respondent has not contradicted the Complainants' assertions regarding the third element of the test set out in Paragraph 4(a) of the Policy. In these circumstances, I am of the view that Rule 14(b) should be applied and the Panel should draw the inference that the Respondent admits the facts submitted by the Complainants on this issue. Accordingly, based on the facts in evidence and applying Rule 14, I am of the opinion that the Complainants have satisfied their burden regarding the third element of the test set out in paragraph 4(a) of the Policy.
Conclusion
For the foregoing reasons, I am satisfied that all of the requirements set out in Paragraph 4(a) of the Policy have been established by the Complainants in accordance with the Policy and the Rules. Accordingly, in my view, the Complainants should have been successful in this case.
Robert A. Fashler
Dissenting Panelist
September 4, 2000
Footnotes:
1. See Arr�ts du Tribunal F�d�ral 93 II 256.
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