WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page, Yellow Page Marketing B.V. Case No. D2010-0817 1. The Parties
Complainant is Sensis Pty Ltd., Telstra Corporation Limited, of Melbourne, Victoria, Australia represented by Blake Dawson, LLP, Australia.
Respondent is Yellow Page, Yellow Page Marketing B.V. of Den Haag, Netherlands represented by Phillips Ormonde & Fitzpatrick, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , and are registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2010. On May 21, 2010, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On May 21, 2010, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2010. Respondent requested an extension to June 23, 2010 to file its Response, which was granted by the Center. The Response was filed with the Center on June 22, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 29, 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
Co-Complainants in this proceeding are Telstra Corporation Limited (hereinafter “Telstra”), organized in Australia, and Sensis Pty Ltd. (hereinafter “Sensis”), organized in Australia. Telstra is the parent corporation of Sensis, a wholly-owned subsidiary. Telstra is the owner of the trademark registrations relied upon by Co-Complainants in this proceeding, and Telstra has granted a license to Sensis to make use of its trademarks in a licensed territory that includes Australia.1 Co-Complainants are hereinafter referred to jointly as Complainant, except as otherwise expressly indicated.
Complainant has registered the word trademark and service mark YELLOW PAGES on the records of the Australian intellectual property office (“IP Australia”), registration number 545667, entered on register March 15, 1996, in International Class (IC) 16, covering “Telephone books, telephone directories and business directories”; registration number 545668, entered on register December 11, 1995, in IC 35, covering “Advertising services relating to the provision and promotion of telephone directories and telephone directory business supplements of all kinds”, as further specified; registration number 704079, entered on register August 24, 1999, in ICs 9 and 42, covering “Telephones and telephone equipment, apparatus and systems”, as further specified and, inter alia, computer programming, consultancy and research and development services, and; registration number 545669, entered on register March 15, 1996, in IC 38, covering “Telecommunication services and telephone services”.
Co-Complainant Sensis has registered the business name “Yellow Pages” on a number of state registries in Australia (e.g., on the business names registry of New South Wales).
Complainant indicates that it uses its YELLOW PAGES trademark in connection with the provision of goods and services throughout Australia, including advertising its services and those of third parties, including through online directories. According to Complainant, hardcopy versions of directories are divided by State and by region, and “there is a separate YELLOW PAGES directory for each capital city in Australia.”
Complainant refers to “colours and logos that are known to be associated with [Sensis'] goods and services in Australia”, but has not provided examples of such colors and logos. It has provided examples of webpages used by Respondent which Complainant states “contain colours and logos that are deceptively similar” to Complainant's.
According to the Registrar's verification report, Respondent is registrant of the disputed domain names. According to that report, each of the disputed domain names was registered on April 29, 2010, with the exception of that was registered on April 30, 2010.
Complainant asserts that it has received complaints from its customers regarding telefax solicitations from Respondent, and has provided a copy of such a telefax said to have been transmitted to businesses in Adelaide, Australia. The document provided by Complainant does not include a complaint from a recipient or recipients, but is the text of Respondent's telefax standing alone. That telefax is headed at the top left with a logo comprising a bordered box surrounding a human hand holding up two fingers and a thumb. The telefax page contains the following introductory text:
“YellowPage-A
now with free submission to
Please fax the completed form back to: [with toll-free fax number and deadline]”
[Following space for basic company data, the telefax form includes detailed terms and conditions of an offer from Respondent, beginning “the company listed above gives approval for the above given data and orders registration at YellowPage-A by Yellow Publishing Ltd.]”
At the bottom of the telefax form, the sponsoring company is listed as “YELLOW PUBLISHING LTD.”, with address in Manchester, United Kingdom and with email contact information.
The telefax page includes neither an express claim of affiliation with Complainant nor a disclaimer of such affiliation.
Complainant has also provided examples of webpages to which the disputed domain names resolve. A typical page is headed with the same box and human fingers logo appearing on the telefax described above, with the area inside the box colored yellow, and the remainder of the logo black. The typical page is headed “YellowPage-[geographic indicator].com”, and sub-headed “the [geographic indicator] business directory”. This is followed by a search box requesting the user to enter “Who/What” (and further requesting a “Keyword/Name”) and a separate search box requesting the user to enter “Where in [geographic indicator]” (and further requesting “City or ZIP”).
Respondent indicates that it initiated its online business to consumer directories business in 2007, and commenced publication of “yellow page” directories for Germany, Austria and Switzerland. Following a year of preparation, it commenced publishing such online directories in March 2009 for 35 regions of the United States, and claims that “[w]ithin 12 months of the launch of Respondent's yellow page directories in the United States over ten thousand businesses have registered with Respondent's United States yellow page directories”.
Respondent indicates that in January 2010 it launched its yellow page directories in Canada, and that today over 5,000 businesses have registered with Respondent's Canadian yellow page directories.
Respondent indicates that it began preparing to introduce its online yellow page directories in Australia in early 2010.
Respondent indicates that during 2008 it developed its business model based on a determination that the term “yellow page” is a generic descriptive term in some countries, including the United States, and that in many countries where the term was registered as a trademark it would be susceptible to invalidation. Respondent indicates that its conclusion is supported by a decision of the German Patent and Trade Mark Office (“German Trademark Office”) of May 15, 2009 canceling the German trademark registration for GELBE SEITEN (i.e. the German language equivalent of YELLOW PAGES in English) on the basis of bad faith registration by a former telecommunications monopoly.
The Registration Agreement in effect between Respondent and PSI-USA, Inc. dba Domain Robot subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant contends that it has rights in the trademark and service mark YELLOW PAGES in Australia as evidenced by various registrations and supported by use in commerce in Australia. Complainant further contends that it has rights in the “business name” YELLOW PAGES in Australia as evidenced by various business name registrations.
Complainant argues that the disputed domain names are confusingly similar to Complainant's trademark and business name, as they differ by only one letter, each followed by the name of a geographic location in Australia. Complainant contends that since consumers in Australia are familiar with the fact that its YELLOW PAGES directories are divided by State or region, consumers will assume that the disputed domain names are divided similarly by Complainant.
Complainant alleges that the use by Respondent on its websites of colors and logos that are deceptively similar to the colors and logos used by Complainant are deliberately and deceptively intended to confuse consumers. Complainant argues that Respondent's use of correspondence that takes advantage of Complainant's trademark and logos is further evidence of confusing similarity between Complainant's trademark the disputed domain names.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent has no “business presence in any of the Australian States or cities referred to as part of the domain names”. Complainant further contends that Respondent is engaged in a “scam” intended to deliberately mislead consumers into believing that services offered by Respondent are associated with Complainant. Complainant asserts that Respondent is not commonly known by the disputed domain names that have been registered only since late April 2010. Complainant states that Complainant, not Respondent, is commonly associated with the terms used in the disputed domain names. Complainant alleges that Respondent's use of the disputed domain names has not been legitimate or fair based upon the complaints it has received from its customers regarding the “alleged services offered by the Respondent show[ing] that consumers have been diverted and misled by the Respondent”. Complainant also argues that Respondent's website activities have the potential to tarnish Complainant, including because Respondent's directory websites incorporate “an upside down version of the Second Complainant's trade mark device and make clear reference to Australia and Australian States and cities, yet the Respondent has no presence in, or link to, Australia.”
Complainant argues that Respondent registered and is using the disputed domain names in bad faith by intentionally attempting to attract for commercial gain Internet users to the websites to which the domain names resolve by creating a likelihood of confusion with Complainant's YELLOW PAGES trademarks, and by creating the false impression that Complainant is the source and/or affiliated with the websites associated with the disputed domain names. Complainant further argues that Respondent was aware of the wide recognition of Complainant's trademark in Australia, and that it is highly likely that Internet users would visit the websites associated with disputed domain names and assumes sponsorship by or affiliation with Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant. B. Respondent
Respondent asserts that the disputed domain names plainly are not identical to Complainant's alleged trademark. Respondent contends that “yellow page” is descriptive of business to consumer directories and is not in and of itself a distinguishing or memorable feature of the disputed domain names. Respondent contends that the plural YELLOW PAGES “naturally refers to a hard copy directory such as that identified in the Complaint as being distributed by the Complainants, the singular yellow page naturally refers to an online webpage which provides Business to Consumer directory services”. Respondent asserts that colors and logos that constitute part of the design of webpages is irrelevant from the standpoint of the Policy to a comparison between the trademark and the disputed domain names. Respondent further asserts that Complainant's reference to complaints from consumers is devoid of evidentiary support.
Respondent contends that it has rights or legitimate interests in the disputed domain names because: (1) it acquired the business of two providers of online business to business directories in 2007, changed its name to “Yellow Page (Netherlands) BV” and commenced publication of business to consumer “yellow page” directories in Germany, Austria and Switzerland; (2) it was aware that in the United States and other countries the term “yellow page” was a generic descriptive term used in relation to business to consumer directories, and further formed the view that in many other countries where the term “YELLOW PAGES” was registered as a trademark, those trademark rights were likely to be invalid because, inter alia, they had been obtained in bad faith by former government telecommunications monopolies; (3) in March 2009 Respondent launched its yellow page directories for 35 regions in the United States (using a similar “yellowpage-[geographic indicator]” format as used in the disputed domain names); (4) in May 2009 the German Trademark Office canceled trademark registration for the German equivalent of YELLOW PAGES on grounds that the former telecommunications monopoly had acted in bad faith by seeking to register the mark; (5) in January 2010 Respondent launched its yellow page directories in Canada (using the similar “yellowpage-[geographic indicator]” used in the disputed domain names), and (6) in early 2010 Respondent decided to extend its yellow page directories to Australia and registered the disputed domain names in contemplation of that market entry. With respect to Australia, Respondent argues that it registered the disputed domain names in connection with a bona fide offering of services, namely its online business to consumer yellow page directory service, and that there is no need for Respondent to have a physical business presence in Australia to conduct its online business. Respondent asserts that the fact it is in competition with Complainant for online directory services does not mean that its telefax offer to customers is a “scam”, but instead the telefax provides evidence of the bona fide nature of its services. Respondent further indicates that it has been known as Yellow Page (Netherlands) BV or similar variants of that name since 2007, and that it has been known by the terms used in the disputed domain names.
Respondent asserts again that Complainant has provided no evidentiary support for its assertion that it has received complaints from customers, or the nature of those complaints.
Respondent argues that the Complaint has provided no evidence of any rights in a trademark device of Complainant other than in the words YELLOW PAGES.
Respondent asserts that its use of geographic terms for places in Australia referenced by its business to consumer directories is consistent with legitimate use of the disputed domain names.
Respondent asserts that it did not register the disputed domain names in bad faith with the intention of creating Internet user confusion. Respondent claims that it registered the disputed domain names for the legitimate purpose of expanding its business, involving the provision of yellow page directory services into Australia, and that including the term “yellow page” was intended to serve “a dual purpose of describing the nature of the services offered by the Respondent, namely online yellow page directory services and also of identifying the Respondent.”
Respondent states:
“Whilst the Respondent was aware of the Complainants YELLOW PAGES directory at the time of seeking registration of the domain names which are the subject of the Complaint, the Respondent believed that either the term yellow page was a generic descriptive term used in relation to Business to Consumer directories in Australia or that any trade mark rights which might be held by the Second Complainant, being a former government telecommunications monopoly would be invalid, consistent with the May 2009 decision of the German Patent and Trade Mark Office. After the domain names which are the subject of the Complaint were registered, a German Court reversed the decision of May 2009. The Respondent understands that this subsequent decision is currently on appeal in Germany.”
Respondent concludes that it is not using the disputed domain names to create Internet user confusion, but instead is using them for the legitimate business purpose of providing online business to consumer directory services in Australia, as are provided in other countries such as the United States and Canada.
Respondent requests the Panel to reject Complainant's request for transfer of the disputed domain names. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center transmitted the Complaint and notification of commencement of the proceeding to Respondent, and Respondent submitted a Response. The Panel is satisfied that each party had adequate opportunity to present its position in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, 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 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has furnished evidence of registration of the trademark and service mark (hereinafter “trademark”) YELLOW PAGES in Australia dating back at least 15 years, and has asserted substantial use in commerce of that trademark and service mark.
Respondent has not challenged the fact of Complainant's trademark registration in Australia, or that Complainant has used the trademark in commerce in Australia. Respondent has indicated that it believes Complainant's trademark registration is susceptible to invalidation on grounds that it constitutes a merely descriptive term, or perhaps was secured unfairly as part of a government telephone monopoly (as in the decision of the German Trademark Office).
Respondent has not provided the type of legal argumentation and support under Australian law that might arguably form the basis for the Panel to make a determination regarding whether the term YELLOW PAGES should be considered a merely descriptive or generic term within the meaning of Australia trademark law. Further, it is unnecessary to address whether a Panel determination regarding anticompetitive behavior alleged to be undertaken in connection with trademark registration is within the scope of the Policy because Respondent has not presented facts or law on this issue with respect to Complainant and its conduct regarding the Australian trademarks relied upon here.
In exceptional cases panels making determinations under the Policy have rejected the bona fide character of an otherwise valid trademark registration (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847). This is not such an exceptional case and the Panel does not question the bona fide character of Complainant's trademark registration.
The Panel determines that Complainant has rights in the YELLOW PAGES trademark in Australia based on the evidence of registration and use in commerce.
Respondent has asserted that the disputed domain names are not confusingly similar to Complainant's trademark. Respondent's principal argument is that YELLOW PAGES “naturally” implies a connection to a hard copy telephone directory whereas “yellow page” … “naturally” refers to an online business to consumer directory. The Panel fails to draw the “natural” inference suggested by Respondent. Since Internet websites often include a substantial number of “pages”, it is not apparent why Internet users would infer that a website would not be identified by YELLOW PAGES, even if historically YELLOW PAGES directories were in hard copy (for obvious technical reasons). A simple Google search of YELLOW PAGES by the Panel returned a large number of websites using YELLOW PAGES either in domain names and/or in search result descriptions.2 If Complainant's “natural” inference concerning the plural YELLOW PAGES was correct, it would be difficult to explain the proliferation of YELLOW PAGES websites. The Panel concludes that YELLOW PAGES and “yellow page”, without more, are confusingly similar.
Respondent has added (following a hyphen) a geographically descriptive term after “yellowpage” in each of the disputed domain names (e.g., “-adelaide”, “-melbourne”, “-victoria”).3 Because a YELLOW PAGES or “yellow page” directory has traditionally provided information regarding a geographically defined area,4 Internet users viewing “yellowpage-[geographic indicator]” will likely assume that the source or provider of the YELLOW PAGES directory or “yellow page” directory is clarifying the scope of geographic coverage of the directory, and is the source of the product or service. By adding a geographic identifier Respondent does not dispel confusing similarity between YELLOW PAGES and the disputed domain names. Since each of the disputed domain names employs a common format, this determination regarding confusing similarity applies without distinction to each of the disputed domain names (i.e., each is confusingly similar to Complainant's trademark).
The Panel determines that the disputed domain names are confusingly similar to Complainant's YELLOW PAGES trademark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent has deliberately adopted its trademark in connection with providing a substantially similar service in Australia, lacks physical presence in Australia, and is engaged in a pattern of fraudulent conduct in Australia (i.e. carrying out a “scam” involving Complainant's existing customers).
Respondent counters that the disputed domain names incorporate its business name since 2007, that it has developed and implemented a business plan involving the provision of online business to consumer directory services involving a number of geographic territories (including Austria, Canada, Germany, the United States and Switzerland), that it has formed a good faith belief that it is entitled to use the term “yellow page” in domain names to describe its services even if that term (or a close approximation) is registered as a trademark in a particular national jurisdiction, and that it is providing a bona fide service to consumers.
Respondent acknowledges that it was aware of Complainant's trademark registrations in Australia when it registered the disputed domain names. Respondent anticipated that it might need to seek invalidation of Complainant's Australian trademark registrations (presumably in order to avoid infringement liability). In this regard, Respondent may not rely on paragraph 4(c)(i) of the Policy to establish a bona fide offering of services under the disputed domain names “before any notice to you of the dispute” because Respondent should reasonably have anticipated that Complainant would object (as it rapidly did) to Respondent's registration and use of the disputed domain names.
Respondent was known as “Yellow Page (Netherlands) BV” when it registered the disputed domain names. It is not clear that Complainant would have objected to Respondent's registration and use of the disputed domain names were they limited to the term “yellow page” without inclusion of the geographic identifiers (e.g., “Adelaide”, “Melbourne”, and so forth) as such domain names (i.e. without geographic identifiers) are widely in use for many countries. Complainant's specific objection is that Respondent is targeting the Australian market, and has done so by incorporating Australian geographic terms in the disputed domain names. In light of the fact that the parties are in dispute concerning specific domain names involving Australian geographic identifiers, and that Respondent has not been known by domain names including those geographic identifiers (though it might have been commonly known as ), the Panel considers that for purposes of this proceeding Respondent has not been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy.
Respondent acknowledges that it is in business to make a profit, and its use of the disputed domain names could not reasonably be considered legitimate “noncommercial” use within the meaning of paragraph 4(c)(iii) of the Policy.
The central question regarding rights or legitimate interests is whether Respondent's use of the disputed domain names should be considered “fair use”.
It is commonly understood in trademark law that a descriptive term that has taken on the function of distinguishing the good or service of an enterprise (i.e. a trademark) may nevertheless be used “fairly” by third parties in its descriptive sense without necessarily infringing the rights of the trademark holder (see, e.g., Case C-63/97, Bayerische Motorenwerke (BMW) and BMW Nederland BV v. Ronald Karel Deenik, 1999 E.C.R. I-905 (Court of Justice of the European Communities)).
The present proceeding presents a difficult jurisprudential issue regarding the fair use of trademark terms in domain names.5 Respondent is making non-infringing use of a trademark term in some jurisdictions (e.g., Complainant does not have trademark rights in YELLOW PAGES in the United States, and it appears that the U.S. Patent and Trademark Office (USPTO) requires applicants for trademark registrations incorporating “yellow pages” to disclaim exclusive rights in that term).6 Respondent may have “descriptive” fair use rights with respect to YELLOW PAGES in some jurisdictions (though Respondent has not expressly identified jurisdictions where YELLOW PAGES is registered as a trademark but nonetheless has been determined to be open to fair descriptive use). Respondent has provided a decision of the German Trademark Office that invalidated trademark registration of the German-language equivalent of YELLOW PAGES. The grounds of that decision may be unique to the circumstances of that case and, in any event, the decision was reversed and is presently on further appeal. Respondent appears at least to have the right to use the term “yellow page” in a domain name in and for the United States. In U.S. trademark law, geographic identifiers generally may not be protected as trademark terms in their descriptive sense.7 Non-infringing or fair use in and for the United States should in principle extend to incorporating or combining “yellow page” with terms describing geographic locations in Australia (where used in the United States).
Complainant argues that Respondent should not be entitled to registration and “fair” use of the disputed domain names because Respondent (a) is specifically targeting businesses in Australia to sell its directory services (b) has no physical presence (or other obvious connection) to Australia and (c) is using the disputed domain names to “scam” Australian business customers of Complainant.
The Panel considers that the service provided by Respondent under the disputed domain names is not geographically restricted to Internet users or business customers in Australia. It is perfectly plausible that a person in New Zealand, Vietnam or the United States may want to identify the vendor of a good or service in Australia and may use an online business to consumer directory to accomplish that objective. It may be that the most frequent users of online directories listing businesses in Australia will be located in Australia, but that should not necessarily preclude Respondent (who is not in Australia) from fairly providing a service for customers outside Australia. The Panel determines that, in its assessment, Respondent is making fair use of Complainant's trademark term YELLOW PAGES in the disputed domain names because it is providing services under the disputed domain names outside the territorial jurisdiction where Complainant holds trademark rights, and with respect to Internet users in jurisdictions where the term YELLOW PAGES is not protected by trademark rights or is subject to fair descriptive use (e.g., the United States).
Complainant's argument concerning the “non-legitimate” (i.e. scam) use of the disputed domain names by Respondent might have had greater force if the evidence Complainant presented was more persuasive. Complainant on several occasions repeated that it received complaints from its customers regarding telefaxes received from Respondent, but Complainant failed to provide any evidence of such complaints. Complainant must surely have anticipated the need to support such an allegation with evidence. Complainant provided a form of telefax transmission from Respondent, but that telefax does not indicate that it originates with Complainant, does not indicate the recipient, does not demonstrate or suggest any frequency of use, and does not generally establish that Respondent has engaged in a “scam”.
The Panel acknowledges that its decision presents certain difficulties for Complainant in terms of enforcing its Australian trademarks in respect to domain names such as those in the present case which may be in use across several jurisdictions outside of Australia. However, the Policy is not intended to address all potential acts of trademark infringement. In an Australian court, Complainant may be able to demonstrate that through actions with a direct, foreseeable and substantial effect within the territory of Australia, Respondent is infringing Complainant's trademark rights. Moreover, if a court is presented with material evidence of misconduct on the part of Respondent (i.e. conducting a “scam” directed at Australian business customers), surely there are remedies under Australian law. But this Panel rendering a decision using its limited inquiry authority under the Policy is reluctant to try and convict Respondent of fraudulent activity on the basis of the single telefax form furnished by Complainant.
The Panel determines that Respondent has demonstrated sufficient legitimate “fair” use of the disputed domain names to rebut Complainant's allegation regarding Respondent's lack of rights or legitimate interests in the disputed domain names. This determination does not address whether Respondent may be infringing Complainant's trademark rights in Australia, nor does it address whether Respondent may be engaging in some other unlawful conduct under the laws of Australia. A dispute settlement proceeding under the Policy is not the appropriate forum for determinations of infringement and/or for specifically addressing allegations of fraud.
Complainant has not been able to demonstrate to the Panel on the evidence in this Policy proceeding that Respondent lacks rights or legitimate interests in the disputed domain names, and does not succeed in this proceeding. The Panel exercises administrative economy and does not address the question of bad faith registration and use. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Dated: July 14, 2010
1 Complainant has furnished a redacted license agreement between Telstra and Sensis that defines the licensed “Territory” to mean “all those countries where Sensis provides any of the Products or Services”. There is sufficient evidence to infer that Australia is included in the licensed territory as asserted by Complainant.
2 Panel search of “yellow pages” using Google search engine of July 12, 2010. The Panel also searched “yellow page”, which returned substantially fewer results, but nevertheless a large number. The number of ‘hits” for each set of search terms is so large that an objective comparison of the frequency of use of the “competing terminology” is not suggested by the Panel.
3 Addition of the generic top level domain identifier (gTLD) “.com” is not relevant for the purpose of analysis of confusing similarity under the Policy in cases such as this.
4 The Panel appreciates that the “information sets” covered by directories, including common “yellow page(s)” directories, today encompass many groups that are not defined by geography.
5 This Panel has rendered decisions allowing a third-party to establish rights or legitimate interests in a domain name based on trademark registration and use in a national jurisdiction other than where the complaining party holds trademark rights (Lexicon Marketing Operating Luxembourg, S.A.R.L v. Facundo de Giorgio,WIPO Case No. D2006-0730), and has allowed a third-party to establish a bona fide offering of goods or services prior to notice of a dispute in a country other than that where a trademark was conclusively registered (Hogrefe AG v. Ney Limonge,WIPO Case No. D2008-1206) and Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited,WIPO Case No. D2000-1001).
6 Panel search of “yellow pages” on the USPTO TESS database of July 11, 2010 indicates routine disclaimer by trademark applicants of exclusive rights in the term “yellow pages”. This implies that the USPTO has determined that the terms are generic or commonly descriptive. This does not prevent the registration of combination marks using “yellow pages”.
7 Collective and certification marks (e.g., wine growing regions) may be subject to a different treatment, but that is not relevant here.
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