WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yell Limited v. Bob Grover
Case No. D2003-0968
1. The Parties
The Complainant is Yell Limited, Reading, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Herbert Smith, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Bob Grover, The Internet News, Singapore, Singapore, represented by ONLY.COM, Monaco.
2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2003. On December 9, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the domain name at issue. On December 10, 2003, CSL Computer Service Langenbach GmbH dba J 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 December 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2004. The Response was filed with the Center on January 12, 2004, with hard copies on January 19, 2004.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 23, 2004. 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.
Complainant filed a Supplemental Filing on January 23, 2004. The Panel decided in accordance with Rules Para. 10, (b) that the filing will be considered and consequently allowed the Respondent to file a reply hereto. Respondent�s Reply was received on February 9, 2004.
4. Factual Background
Complainant has registered the trademark YELLOW PAGES both as word mark and as word and device mark in the UK. The trademark has been registered since 1979 and is presently registered for class 9, 16, 35, 38 and 41. Copies of the relevant certificates were enclosed as annex to the complaint.
The complaint is further based on trademark rights acquired through extensive use in the UK for many years prior to the registrations mentioned above. Evidence to that effect was enclosed in the complaint. Part of this use was made by the Complainant�s predecessors in title, British Telecommunications Plc and The General Post Office. Complainant�s last edition of the Yellow Pages was published and distributed in approximately 2.78 million copies to homes and businesses in the UK. Complainant has during the last three years spent more than �51 million promoting the brand and the turnover for goods and services sold under or by reference to the brand has extended �1.5 billion.
No information has been provided on the recorded Registrant of the contested domain name, Bob Grover. ONLY.COM has informed they represent the Respondent and has further informed the Panel that they were asked to register the domain name in early 2003 for a US client. ONLY.COM Ltd. is the owner of a database of around 16 million international business records and has license to use these data and associated software to .
5. Parties� Contentions
Both parties have filed substantial and lengthy submissions and large quantities of Annexes. A large part of these submissions refer to previous correspondence between Complainant and various apparent representatives of the Registrant (Respondent). In the response and the parties� supplemental filings, the parties have further commented on various specific facts and arguments put forward by the other party. The Panel has used its discretionary powers to omit references to these parts of the submissions and the following is therefore the Panel�s summary of the arguments put forward by the parties that are of significance for making a decision under the UDRP.
A. Complainant
1. The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The domain name is confusingly similar to the Yellow Pages trademark in which the Complainant has rights. The only respect in which it differs from this mark is the replacement of the letter w in the word yellow with the two letters v. The manner in which the domain name is represented on Respondent�s website and the distribution by the Respondent or his associates of e-mails containing links to his website serves to create confusion both actual and potential among consumers and businesses.
2. Respondent has no rights or legitimate interests in respect of the domain name.
Complainant�s trademarks are alive and uncontested. Complainant contributes considerable resources to ensuring that its Yellow Pages marks do not become a common name in the UK. Reference to US Case Law is irrelevant for the actual case.
Further, the concrete use that Respondent has made of the contested domain name has not demonstrated that Respondent has any rights or legitimate interests herein. On the contrary use of the domain name and a walking finger logo together with a yellow colour in the e-mails that Respondent has been sending unsolicited to numerous holders of e-mail accounts makes it clear that Respondent has intended to cause confusion with Complainant�s business.
3. The domain name was registered and has been used in bad faith.
When the contested domain name was originally registered, the address of the Registrant was a UK address. This was changed to an address in Singapore shortly after Complainant had contacted Respondent.
The domain name has actually been used in the way described above through e-mails encouraging customers to input data concerning their businesses which is likely to cause confusion with Complainant�s activities under the mark Yellow Pages.
The Respondent has thus registered and is using the domain name intentionally to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship affiliation or endorsement of the Respondent�s website, cf. paragraph 4(b)(iv) of the Policy.
B. Respondent
1. Complainant has no exclusive right to the mark Yellow Pages.
Yellow Pages is a generic term which has been established under US Law through court decisions. Respondent is in the process of preparing a revocation action with the UK registry against Complainant�s marks in respect of class 38.
Furthermore, Respondent�s use of the domain name and a logo with walking fingers are not identical or confusingly similar to Complainant�s rights. When you look at marks in detail, there are several differences which are evident when the corresponding homepages are placed side by side as in an enclosed annex.
2. Respondent�s rights or legitimate interests in respect of the domain name.
Complainant has in a previous letter to ONLY.COM accepted that ONLY.COM could use the domain name as long as this does not refer to or is directed against the UK market. Complainant has also in general terms accepted that Yellow Pages and walking fingers are generic terms within the US. Respondent is thus allowed to use both of these marks.
3. The domain name has been registered and is being used in bad faith.
Due to the abovementioned facts that Yellow Pages is a generic term that is free of use for any person; the name cannot be registered in bad faith.
Only a minuscule number of those e-mails that were sent out were specifically targeted at UK addresses, which admittedly was an error by the Licensee. This use was immediately stopped when it was brought to ONLY.COM�s attention.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of several registered trademarks in the UK containing the words Yellow Pages and/or the walking fingers logo. The registrations are valid and stand uncontested at this point in time. The Panel must therefore base its decision on the presumption that Complainant has valid trademark rights to the word mark Yellow Pages and word ad device marks containing the words Yellow Pages and the walking fingers logo.
The contested domain name is quasi-identical to Complainant�s marks, the only difference being that the letter w is replaced by two v�s. The addition of the gTLD denomination .com shall be disregarded in this context.
B. Rights or Legitimate Interests
Respondent has not claimed and has thus not provided any evidence of having any rights to the contested domain name.
The question in this case is therefore whether Respondent has any legitimate interests in the contested domain name. In view of the Panel, this is not the case. It may well be that Yellow Pages is considered to be a generic term in some jurisdictions for a business directory, but no substantial evidence to this effect has been produced by the Respondent. Further, it must be taken into consideration that the contested domain-name is registered under the gTLD .com which makes a defence based on alleged facts related to specific territories questionable, especially in a case like this where actual use has taken place in a territory in which the domain name corresponds to a trademark.
In addition, the contested domain name does not consist of the alleged generic term but of the word that is quasi-identical. In view of the Panel this excludes a defence under the normative fair use doctrine.
C. Registered and Used in Bad Faith
Based on the very incoherent information provided by the Respondent it is not entirely clear to the Panel how the current Registrant and ONLY.COM, who acts on behalf of the Registrant are connected. Respondent has, however, informed that it was ONLY.COM who prepared the initial registration. Due to the previous contacts and correspondence between ONLY.COM and Complainant, the Panel finds that the Registrant has been fully aware of the trademark rights of Complainant when registering the domain name.
The domain name has been actively used in a way that is liable to cause confusion with Complainant�s business. The domain name has thus been used to send out e-mails to numerous persons and businesses in a manner that could lead the addressees to think that they were actually approached by Complainant. As explained above under A. the domain name is quasi-identical to Complainant�s trademark rights. The combination of use of the word Yellovvpages, a logo that is very similar to the walking fingers logo of Complainant and the wording of the e-mail itself leave little doubt that the domain name has been used intentionally to attract for commercial gain Internet users to Respondent�s website. This is the more so since it is apparent that many of those who have received Respondent�s e-mail are actual customers of Complainant.
7. Decision
Based on the above, the Panel finds that Complainant has proven that the codices set forth in the UDRP policy have been met and that the provided information has not in a credible way been rebutted by the Respondent. For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: February 27, 2004
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