WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dex Media, Inc. v. c/o DexL and Domain Manager MediaVision Case No. D2009-1766 1. The Parties
The Complainant is Dex Media, Inc. of Kansas, United States of America, represented by Townsend and Townsend and Crew, LLP, United States of America.
The Respondent is c/o DexL of Washington, United States of America and Domain Manager MediaVision of Ontario, Canada, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with MyDomain, Inc. d/b/a NamesDirect. 3. Procedural History
The Complaint, naming c/o DexL as Respondent, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2009. That day the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain name and MyDomain, Inc. d/b/a NamesDirect 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 December 30, 2009 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 unsigned amended Complaint on January 4, 2010 and a signed version on January 5, 2010. 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 January 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2010. On January 26, 2010, the Respondent sought an extension of time to file the Response. On January 27, the Center extended the time for the response until January 31, 2010. The Response was filed with the Center on January 31, 2010.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 18, 2010. 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 provides local telephone directories in print, CD-ROM and online. It is the registered proprietor of numerous DEX and DEX-formative trademarks, including United States of America federally registered mark DEX, No. 3048735, registered on January 24, 2006 in International Class 35 in respect of computer services, namely providing on-line telephone directories via the global computer network, with a claim to first use in commerce on January 18, 1997.
The disputed domain name was registered on April 8, 2007. A search conducted by the Center on January 6, 2010 reveals that the disputed domain name resolves to a website headed “Local Directory” and containing local directory listings including “Local News, Local Obituaries, Local Weather, Local Job Listings and Local Newspaper”. 5. Parties' Contentions A. Complainant
The Complainant says it distributes over 600 different printed directories (having a circulation of approximately 80 million copies per year) and operates multiple online directory websites under the name DEX. It has spent over $50 million promoting them and is well known to consumers and to other directory providers by its name DEX. Its directories are directed to local markets and communities. It has continuously used DEX and derivatives thereof as trademarks and service marks in connection with the production and distribution of telephone directories since at least as early as 1997. Consequently, the Complainant possesses both registration rights and common law rights in the United States to the term “DEX” in connection with various goods and services related to telephone directories, advertising, marketing, and computer services with a priority date of 1997.
The Complainant says the disputed domain name is confusingly similar to its well-known DEX trademark and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the Respondent has not obtained the Complainant's permission to use the mark DEX nor to apply for or use any domain name incorporating the mark. The Respondent has no registered trademark or service mark rights for the mark DEX and is not known as DEX. No business or organization with which the Respondent is associated is commonly known as or identified by the disputed domain name.
As to bad faith, the Complainant says the Respondent is using the disputed domain name to generate revenue through the provision of goods and services that are identical to those offered by the Complainant; is using the disputed domain name in combination with Complainant's registered trademarks to deceive the public into purchasing goods or services believing that they originate from the Complainant; appears to be deliberately hiding its identity by the use of an identity shield company; has failed to investigate or clear trademark rights to the disputed domain name prior to registration and has failed to respond to requests from Complainant to cease infringement of the DEX mark. B. Respondent
The Respondent says that Dex is not a new word coined by the Complainant. It brings to mind the company Rolodex, which has eight registered trademarks with the USPTO. “DEX” is short for INDEX. The Complainant does not own the word “Dex”, nor the domain name , which is owned by Data Exchange Corporation. If the Complainant does not have the exclusive right to use and therefore obtain the ownership through a similar process of a much more valuable name like , it should not have the right to the disputed domain name .
Given the very large number of trademarks filed by the Complainant, it could have been expected to have registered the mark DEXLOCAL if that was considered important. In the absence of a trademark filed for DEXLOCAL by the Complainant, who appears to file a mark depending on the day of the week, the Respondent was fair to presume that the Complainant did not want to register the name or use the term “dexlocal”: Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903.
The disputed domain name is not similar to the DEX trademark. In EAuto LLC v. Tripe S. Auto Parts d/b/a Kung Fu Yea Enterprises Inc., WIPO Case No. D2000-0047, the panel decided that “The domain name is not identical to Complainant's Mark, EAUTO”.
The Respondent does not claim to be the Complainant nor does it offer products and services offered by the Complainant. The Respondent is a Canadian company. The disputed domain name is not similar to any of the Complainant's trademarks or service marks. The term “dexlocal” is meant to list an index of local events, tourist attractions, local services, and local government listings in Canada. An example of our position is Telenor and Nortel. They both offer similar products and services. The names are essentially in reverse but both are stand alone companies and no one really confuses one with the other.
The Complainant's Canadian trademark TMA687502, was registered on May 10, 2007, about one month after the disputed domain name was registered. Its application filed on June 13, 2008 remains pending.
Even disregarding thousands of other domain name registrations that contain the word “DEX”, the US Patent and Trademark office has about 175 live trademark applications or registered trademarks containing that term. As much as the Complainant claims to have the exclusive right to use the word “DEX”, the US Patent and Trademark office doesn't seem to agree. Examples of other trademarks registered in the United States containing the term “DEX” are VIGODEX, M 100 DEX, 3DEX, MEDEDEX, DEX–TEX, CITYDEX, CALL-DEX, GENDEX, DEXCLASSIS, POWERDEX, BIO-DEX, L-DEX, LINKDEX, CAPDEX, BIZDEX, DEX, CAN-IN-DEX, INFODEX, CDEX, EZDEX, DEXPAK, ROYALDEX, NORTHDEX, RATEDEX, AUTODEX, DEXFELX.
Many of the Complainant's DEX trademarks were not registered until after the Respondent registered the disputed domain name.
Cases cited in the Complaint involved much stronger marks than DEX, which is not exclusively owned by the Complainant.
As to legitimacy, the Respondent says that when the fee is paid for domain name registration to ICANN through a domain Registrar, a clear, legal, and legitimate right is established for any registrant to own that domain name.
Now there can clearly be issues like wilful and belligerent infringement by a registrant of a registered trademark like Google. Until there are rules established that only a company or a person with a registered trademark can register a domain name, all registrations are rightful and legitimate. So the Complainant's claim that only its business is legitimate and everyone else who tries to either start a business or buy a domain name has no right to do so is pretentious at best and arrogant at worst.
As to bad faith, the Respondent says the disputed domain name is operated by the Respondent. Clearly there is no revenue being generated based on goods and services similar to those of the Complainant. Nowhere does the website mention that this is a website operated by the Complainant nor is there reference to any of its marks or domain names. No printed directory nor anything printed is offered on the website.
Millions of domain registrations enjoy the privacy service offered by domain registrars to hide domain registration information from scammers, spammers or worse. Following standard industry procedure, the Respondent does not want unwanted emails or attempts by others to offer to buy this name.
The Respondent was not interested in selling the disputed domain name so did not reply to emails regarding it. This perhaps also explains why the Respondent did not reply to the Complainant's threatening emails because it did not consider it was infringing the Complainant's mark in Canada.
The disputed domain name was not registered in bad faith with the intention to sell it to others or to the Complainant. The Respondent has never contacted the Complainant to offer to sell the disputed domain name.
In the case cited by Complainant, America Online Inc. v. Dot Stop,WIPO Case No. D2001-0760, bad faith was found where there was no bona fide use. Here the disputed domain name has been in use by the Respondent.
In citing Maplin Electronics Limited v. Lee Jeongsoon,WIPO Case No. D2006-0011 the Complainant incorrectly compares its mark DEX to Maplin Electronics' trademark MAPLIN. There is only one US registered trademark MAPLIN whereas there are twenty-six other trademarks including “dex” owned by someone other than the Complainant. The Respondent urges the Panel to draw this distinction between the mark of the Complainant and other marks in the every single case cited by the Complainant. If the Complainant owned a trademark “dexlocal”, this matter would not be before the Panel at this time since the Respondent would have transferred the disputed domain name to the Complainant a long time ago. 6. Discussion and Findings
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(ii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy embodies no requirement that the complainant's trademark rights must have arisen before the disputed domain name was registered. See Valve Corporation v. ValveNET, Inc., v. Charles MorrinWIPO Case No. D2005-0038 and the cases there cited.
The Complainant's pending trademark registration applications in Canada and elsewhere do not give rise to trademark rights: see Aspen Grove, Inc. v. Aspen Grove,WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation,WIPO Case No. D2001-0904.
It is unnecessary to decide whether the Complainant has common law rights in the word “Dex”. It is common ground that the Complainant has registered trademark rights in that word. The disputed domain name is not identical to that mark since it comprises the mark with the addition of the word “local”. The gTLD “.com” is inconsequential and may be ignored: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
As the Respondent correctly points out, in EAuto LLC v. Tripe S. Auto Parts d/b/a Kung Fu Yea Enterprises Inc. WIPO Case No. D2000-0047, the panel decided that “The domain name is not identical to Complainant's Mark, EAUTO”.
However, the panel in that case found the domain name to be confusingly similar, saying: “When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”. Here the mark DEX, standing alone, is distinctive of the Complainant's paper and online directories and is wholly incorporated in the disputed domain name. The word “local” does nothing to detract from the distinctiveness of the DEX mark and the Panel finds the disputed domain name to be confusingly similar to that mark.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy: see for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753. That paragraph sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy.
The Complainant has not authorized the Respondent to use its trademark, which was first registered (in the United States) before the disputed domain name. Although the disputed domain name was registered at the time of the Complaint through a privacy service in the name of “c/o DEXLOCAL.COM”, according to the Registrar, in response to the Center, the registrant is “Domain Manager Media Vision”. Accordingly the Respondent does not appear to be known by the disputed domain name. These circumstances suffice to establish a prima facie case of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent.
Under this heading the Respondent relies solely on the fact that it registered the disputed domain name as giving it the right to that domain name. The Policy, however, provides a mechanism for cancellation or transfer of registered domain names even though the requirements of the Registrar have been complied with and even though the required fees have been paid. The Respondent's registration was subject to the dispute resolution policy of the Registrar, which incorporates the Policy. Accordingly, contrary to the Respondent's submission, due registration and payment of fees do not determine rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established this element of its case. C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii) requires the Complainant to satisfy the Panel that the Respondent has registered and is using the disputed domain name in bad faith. These conditions are cumulative. See, for example World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent argues that, in the absence of a trademark filed for DEXLOCAL by the Complainant, the Respondent was fair to presume that the Complainant did not want to register the name or use the term “dexlocal”, citing Oki Data Americas Inc. v. ASD Inc. WIPO Case No. D2001-0903. That argument was advanced by the respondent in that case but did not form part of the panel's reasoning. The conditions laid down in that case under which an authorised dealer may register and use a domain name that is identical or confusingly similar to the trademark of its supplier are not present here.
The Respondent's argument is nevertheless revealing because it is consistent with awareness on the part of the Respondent of the Complainant's DEX mark when the disputed domain name was registered. This, coupled with the use of the disputed domain name for a website offering local listings of a directory nature, leads the Panel to conclude that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's DEX mark as to the endorsement of the Respondent's website or of the services on its website. Under the Policy, paragraph 4(b)(iv), this is evidence of both bad faith registration and bad faith use.
Accordingly the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith. The Complainant has established this element of its case. 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.
Alan L. Limbury
Sole Panelist
Dated: March 4, 2010
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