WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dex Media, Inc., v. Michael Shaw Case No. D2008-1766 1. The Parties
The Complainant is Dex Media, Inc., Overland Park, Kansas, United States of America, represented by Townsend and Townsend and Crew, LLP, United States of America.
The Respondent is Michael Shaw, Montreal, Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2008. On November 17, 2008, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On November 17, 2008, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 22, 2008. The Center verified that the amended 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 November 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2008.
The Center appointed John Swinson as the sole panelist in this matter on December 23, 2008. 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 company organized under the laws of the State of Delaware. The Complainant is in the business of providing telephone directories in print, CD-ROM, and online form. The Complainant has been producing and distributing telephone directories since 1984. The Complainant also offers marketing and computer services such as search engine marketing, direct mail marketing, and website design and hosting.
The Complainant distributes over 600 different printed directories that have a combined circulation of approximately 80 million copies per year. The Complainant's printed directories are distributed in 28 States within the United States of America. The Complainant, its products and services are known to consumers and other directory providers by the name DEX.
The Complainant owns 16 U.S. registrations for trademarks containing the word DEX. For example DEX KNOWS (trademark no. 3023021), DEX MEDIA (trademark no. 3062590) and DEX PLUS (trademark no. 3188030). The Complainant also owns several registrations for trademarks containing the word DEX in Canada, Mexico and the European Union.
The Complainant owns over 1,000 domain names that incorporate the DEX mark. Examples are which was registered on May 7, 2002 and which was registered on March 10, 2000. 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions and arguments:
The disputed domain name is identical or confusingly similar to the Complainant's trademarks containing the word DEX.
The disputed domain name is legally identical or confusingly similar to the Complainant's DEX trademarks. The Respondent has used the name DEX in its entirety and has merely added a descriptive prefix and suffix.
The addition of “.com” is to be disregarded for the purposes of determining whether the domain name is identical or confusingly similar to the Complainant's DEX trademarks.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not given the Respondent permission or consent to use the DEX mark in any manner. The Respondent owns no registrations for any mark incorporating the term Dex.
Dex is not part of the name of the individual registering the disputed domain name, Michael Shaw. The Respondent, Michael Shaw is not known as “dex”. No business or organization which the Respondent is associated is commonly known as or identified by the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name is being used by the Respondent to generate revenue through provision of goods and services that are identical to the goods and services offered by the Complainant.
The Respondent in using the disputed domain name, in combination with the Complainant's trademarks, deceived the public into purchasing goods or services believing that they originate from the Complainant.
The Respondent is deliberately hiding its identity.
The Respondent has not investigated or cleared trademark rights to the disputed domain name before it registered the disputed domain name.
The Complainant has written to the Respondent requesting it to cease its infringement of the DEX mark. The Respondent has not responded to these requests. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element, the Complainant must have rights in a name, trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant's name, trademark or service mark.
The Complainant is the owner of 16 U.S. registrations for trademarks containing the word DEX, examples of which are provided in paragraph 4 above. The Complainant is also the owner of registered trademarks in Canada, Mexico and the European Union that contain the name DEX.
The Panel therefore finds that the Complainant has registered trademark rights in the word DEX. The next question is whether the disputed domain name is identical or confusingly similar to the Complainant's DEX trademarks.
The Complainant does not own a trademark registration for AMERIDEXSOLUTIONS and does not allege that it uses AMERIDEXSOLUTIONS. However, the Complainant submits that the disputed domain name is legally identical to the Complainant's trademarks because the disputed domain name incorporates the Complainant's trademark in its entirety. The Complainant relies on Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 where the domain name was held to be legally identical to the trademark QUIXTAR.
The Panel has also taken into consideration Blistex Inc. v. Online Multimedia Communications, Inc., WIPO Case No. D2000-0552 (the domain name was held to be legally identical to the trademark STRI-DEX) and Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (domain names such as and were considered to be confusingly similar to the DELL trademark). All of the above cases ruled that the addition of generic and descriptive terms such as “mortgage”, “mexico” and “.com” had no or little affect on the determination of the identity or confusing similarity between the domain name and the trademark.
The Panel does not accept the Complainant's submission that the disputed domain name is legally identical to the Complainant's DEX trademarks. While the Respondent has included the word “dex” in its entirety, it has been placed in the middle of the domain name, as opposed to the beginning or the end of the domain name as had occurred in the decisions outlined above.
The placement of the word “dex” in the middle of the disputed domain name is relevant for two reasons. First, the name DEX is less prominent in the disputed domain name than the trademarks in the above-cited cases. Second, the disputed domain name may be read as an entire word, “ameridexsolutions”, as opposed to the cases outlined above where the domain name consisted of a trademark with a generic word added as a prefix or suffix, creating two distinct words.
The Panel in this case finds that the disputed domain name is not identical to any of the Complainant's DEX trademarks. Therefore the Panel must consider if the disputed domain name is confusingly similar to the Complainant's DEX trademarks.
The word “dex” has no meaning in the English language and has been used by the Complainant since 1997 in connection with the production and distribution of telephone directories. The Complainant has registered numerous domain names that include the trademark DEX, for example , , , and .
The word “dex” is visually discernible in the disputed domain name. The word “solutions” is also conceptually similar to the type of good and services offered by the Complainant, such as telephone directories and marketing and computer services.1 In these particular circumstances, the use of the word “dex” in the disputed domain name creates a likelihood of confusion between the disputed domain name and the Complainant's DEX trademarks.
Furthermore, the use of the prefix “ameri” clearly implies a connection to the United States of America, which enhances the likelihood of confusion because it is well known by the Complainant's customers and competitors that the Complainant is an American based company.
The Panel therefore finds that in the circumstances of this case that the disputed domain name is confusingly similar to the Complainant's DEX trademarks. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The complainant must make a prima facie case that the respondent lacks rights or interests in the disputed domain name. If the complainant establishes a prima facie case, the burden of demonstrating rights or legitimate interests in the domain name is transferred to the respondent.
Paragraph 4(c) of the Policy provides a non-exclusive list of the ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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 Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name.
The Respondent is not connected in any way with the Complainant. There is no evidence that the Respondent, or any companies or organizations that he is associated with, are commonly known as “dex” or “ameridexsolutions”. The Respondent does not appear to have legitimate trademark or service mark rights in “ameridexsolutions”.
The Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, by failing to provide a response has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it has subsequently been used in bad faith.
Paragraph 4(b) of the Policy enumerates four circumstances which evidence a respondent's registration and use of a domain name in bad faith. The first three of those relate to registration:
“[T]he following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor.”
Paragraph 4(b) of the policy provides that the following circumstance shall be evidence of use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The pages from the website located at the disputed domain name, provided to the Panel by the Complainant, indicate that the Respondent is using the word DEX prominently and in a style that is almost identical to the style used in the Complainant's trademark number 3466560. The website located at the disputed domain name advertises goods and services that are of the same nature to the goods and services provided by the Complainant.
The Complainant provided the Panel with a copy of an invoice sent by the Respondent to a customer. The invoice also uses the word DEX in a prominent fashion and in a style that is almost identical to the style used in trademark number 3466560.
The Complainant provided a statement from an employee of one of their customers, a Ms. Bailey. Ms. Bailey works for Parkway Village Apartments and has been responsible for Parkway Village Apartment's “yellow pages directory” advertisement for a number of years. Ms. Bailey states that in June 2008 she received a telephone call from the Respondent and was asked if she wanted to renew her “yellow pages” advertisement. Ms. Bailey actually believed that she was being contacted by the Complainant. During the telephone conversation Ms. Bailey was asked to confirm the contact details of Parkway Village Apartments. Ms. Bailey was surprised by this request and asked the person whom she was speaking with if they were from DEX. The person replied “Yes, Dex”. Ms. Bailey received an invoice from the Respondent but believed that it was actually from the Complainant because the invoice she received had the DEX logo at the top of the page.
The evidence provided by the Complainant, and described above, indicates that the Respondent has registered and used the disputed domain name and the term “dex” to create the likelihood of confusion between the Complaint's DEX trademarks and the goods and services provided by the Respondent. The use of the word “dex” in a style that is almost identical to the style used in trademark number 3466560 creates an assumption that the disputed domain name is affiliated with, sponsored or endorsed by the Complainant.
The Panel is satisfied that the Respondent was aware of the Complainant and the Complainant's trademarks when it registered the disputed domain name on June 13, 2008. The Complainant has continuously used the DEX trademarks in connection with the production and distribution of telephone directories since 1997. The Respondent has created the likelihood of confusion in an attempt to exploit the Complainant's goodwill, derive profit for themselves and disadvantage the Complainant (see Just Car Insurance Agency Pty Ltd. v. Throne Ventures Pty Limited, WIPO Case No. DAU2008-0015; Groupe ROC-ECLERC v. Forsyte Corporation, WIPO Case No. D2008-1506; and Napoleon Perdis Cosmetics Pty Limited v. Rebecca Jones, WIPO Case No. DAU2006-0014).
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 domain name, be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: January 6, 2009
1 The Panel further notes, as discussed subsequently, that the Respondent also appears to have used the disputed domain name in a manner intended to create confusion between the Respondent and the Complainant.
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