The Complainant is Société PagesJaunes of Sèvres Cedex, France, represented by DS Avocats, France.
The Respondent is Markus Weiler, International Yellow Pages, Ltd., of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SARL. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2010. On November 24, 2010, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the disputed domain name. On November 24, 2010, Gandi SARL transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced December 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response December 26, 2010. The Response was filed with the Center December 6, 2010.
The Center appointed Richard Hill, Nathalie Dreyfus and François Dessemontet as panelists in this matter on January 31, 2011. The Panel finds that it was properly constituted. Each member of 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.
The Complaint was submitted in French, even though the Registry Agreement is in English, and the Complainant requests that the proceedings be conducted in French, because the principal of the Respondent resides in France, is fluent in French, and has participated in numerous proceedings in French courts; and because the registrar is a French company, as is the Complainant.
The Respondent has submitted its communications in English. From the record, it is clear that the principal of the Respondent is fluent in French.
According to 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present case, the registration agreement is in English, and the parties have not agreed to use some other language. The Panel does not find that the Complainant’s arguments are sufficient to justify a decision to proceed in French. Therefore the Panel decides that the proceedings will take place in English.
According to 11(b) of the Rules, the Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding. Since the Respondent is fluent in French, and since all three panelists are also fluent in French, the Panel holds that it is not necessary to order the translation of any documents; in particular, the Panel holds that it is not necessary to translate the Complaint. 4. Factual Background
The Complainant owns numerous trademarks for the term “Pages Jaunes” and uses them to provide professional directory services. The marks and the company’s services are very well known in France.
The disputed domain name was first registered by a French company whose principal is a German national who was living in France. The Respondent is a United Kingdom company whose principal is the same German national, still living in France. That individual is fluent in French.
Various French trademark registrations by a company whose principal is the same as the principal of the Respondent have been rejected because they were similar to the Complainant’s registered trademarks.
Various French courts have confirmed the validity of the Complainant’s registered trademarks, in particular holding that they were sufficiently distinctive when they were registered.
Various French courts have found against companies whose principal is the same as the Respondent’s principal. In particular, in January 2009, a court prohibited one such company from using for whatever purpose the Complainant’s marks, in particular PAGESJAUNES. And in March 2010 a court prohibited that company from using the disputed domain name, as well as many other domain names containing the Complainant’s marks. This court also awarded 100’000 Euros in damages to the Complainant.
In its submissions, the Respondent occasionally uses French words instead of the corresponding English word. The submissions are signed by the German national referred to above, who was indeed involved in the French court proceedings mentioned above, even though he was not personally a party in those proceedings.
The Respondent has requested that the disputed domain name be transferred to a French company whose principal is the same as that of the Respondent.
The Respondent states that it uses the disputed domain name to provide international yellow page directory services for francophone countries, including France.
The disputed domain name initially resolved to a web site offering sham referencing and later resolved to a web site promoting mobile telephone operating systems and related products. 5. Parties’ Contentions A. Complainant
The Complainant alleges that its activities consist of the publication and distribution of professional directories by various media, in particular on the web at the domain name . It owns registered French trademarks in various categories for the terms “PagesJaunes” and “PagesJ”. The company and its services are very well known in France.
According to the Complainant, a company controlled by the principal of the Respondent initially registered the disputed domain name. In March 2010, the French courts ordered that company to pay 40’000 Euros to the Complainant, in compensation for counterfeiting, and it ordered that the disputed domain name be cancelled. The domain name was cancelled, but was then immediately registered again by the Respondent, using a different registrar.
The Complainant states that it requested that the new registrar also cancel the disputed domain name. But the new registrar refused, because the legal entity that had newly registered the domain name was not the legal entity against whom the French court judgment was directed.
The Complainant alleges that the disputed domain name is identical, in the sense of the Policy, to its mark.
The Complainant states that the Respondent does not have any relation to it, nor was the Respondent authorized in any way to use the Complainant’s marks.
Further, according to the Complainant, the principal of the Respondent has attempted for many years to register marks and domain names identical to, or similar to, the Complainant’s well-know trademark, and this in order to offer fictitious online directory services. He has been condemned by various jurisdictions for counterfeiting the Complainant’s marks.
The Complainant alleges that the Respondent cannot have had any legitimate purpose in mind when it registered the disputed domain name and indeed it is using the disputed domain name to point to a web page that is offering fictitious directory services. The only purpose of the registration was to confuse Internet users and mislead them to think that the services were provided by the Complainant. B. Respondent
The Respondent states that the European trademark office has rejected an application for the mark PAGES JAUNES for lack of distinctive character.
The principal of the Respondent states that he was involved in various proceedings in France against the Complainant, but points out that he was not personally condemned by any court.
The Respondent points out that it is a different company from the company that was condemned in France.
Further, according to the Respondent, the various French court cases cited by the Complainant were acquired in bad faith and thus are not valid under French law for various reasons; those reasons are not summarized here because the Panel holds that it is not within its mandate to evaluate the validity of national court judgments. The Complainant alleges that the Complainant’s trademarks are used all in bad faith and are all only used for blocking competitors. For this reason a company whose principal is the same as the principal of the Respondent has filed a complaint with the European Commission Antitrust Division. The Respondent cites the “Avis du 14 décembre 2010 sur le fonctionnement concurrentiel de la publicité en ligne” of 14/12/2010 from the French Competition Authority, which states at 227 and 278 that the mark PAGES JAUNES, which has a tendency to become a generic name to designate professional directories, constitutes without doubt a barrier to entry; and that, because of the notoriety of its mark, the Complainant has a lasting competitive advantage vis-à-vis competing directory services.
The Respondent states that it uses the disputed domain name to provide international yellow page directory services for francophone countries (France, Canada, Belgium, Switzerland). The Complainant does not have exclusive rights to the words Pages Jaunes.
Further, says the Respondent, the Complainant’s marks are not word marks, they all include graphical elements. But a company whose principal is the same as the Respondent has acquired the French word mark PAGESJAUNES, for classes 39 and 45, that is transport (information related to transport; distribution of water or energy; towing; rental of vehicles, boats or horses; taxi services) and matrimonial agencies (establishment of horoscopes, funeral homes; cremation services, clothing rental; detective agencies). The Respondent intends to transfer the disputed domain name to that company.
The Respondent requests the Panel to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings. 6. Discussion and Findings A. Identical or Confusingly Similar
It is obvious that the disputed domain name is identical, in the sense of the Policy, to the Complainant’s marks. The Respondent argues that the Complainant’s marks are not valid, because they are not distinctive. The Panel cannot accept this argument. Firstly, the Complainant does own registered marks, and that suffices under the Policy: it is not within the scope of the Panel to second-guess the national trademark offices. See Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano,WIPO Case No. D2003-0661. Further, as the French courts appear to have repeatedly explained to the principal of the Respondent, a mark has to be distinctive when it is registered, so the fact that a new mark can no longer be registered because of lack of distinctiveness does not, on its own, suffice to invalidate the Complainant’s marks.
The Respondent alleges that the Complainant is abusing its dominant market position. Again, it is not within the scope of the Panel to second-guess national or supra-national competition authorities. Further, the conclusions of the report of the French Competition authority cited by the Respondent do not contain any findings, recommendations, or actions regarding the Complainant or its use of its marks. And national legislative provisions on descriptive trademarks usually dispose of the argument that a given trademark is a barrier to entry onto a market, even if there can be exceptions to this principle and competition law can be brought into play in specific situations. In the present case the French courts have repeatedly ruled in favor of the Complainant and, as noted above, it is not within the mandate of the Panel to second-guess those decisions.
The Panel holds that the disputed domain name is identical to a mark in which the Complainant has rights. B. Rights or Legitimate Interests
As the Complainant points out, its marks and services are very well known in France, so it is hard to see what legitimate service could be offered in France under the disputed domain name. The Respondent states that it intends to use the disputed domain name to provide professional directory services, including in France. That is, the Respondent admits that it intends to compete directly against the Complainant, in France, using a domain name that is confusingly similar to the Complainant’s marks. Such use of the disputed domain name is obviously illegal, and indeed the record contains various court decisions to that effect.
Since the Respondent admits that the planned use of the disputed domain name would be illegal, it cannot be said to have rights or legitimate interests in the disputed domain name.
The present case must be distinguished from France Telecom v Les pages jaunes francophones,WIPO Case No. D2000-0489. In the cited case, the Respondent was a United States entity. The panel held that the Complainant did not have world-wide exclusive rights to the use of the term “Pages Jaunes” and that unrelated various companies in countries other than France used the mark PAGES JAUNES. But, in the present case, the Respondent states that it intends to offer service in France. Similarly, the present case must be distinguished from France Telecom v. Domain,WIPO Case No. D2000-0490, because in the cited case the Respondent was a Canadian entity, and the Respondent was apparently not stating an intention to offer services in France.
The Respondent points out that a company whose principal is the same as that of the Respondent has a registered French trademark for the term “Pages Jaunes” and it proposes to transfer the disputed domain name to that company. But this does not change the situation regarding the present proceedings because the question before this Panel is whether or not the Respondent has rights or legitimate interests in the disputed domain name, not whether some other entity might have rights or legitimate interests, therein. C. Registered and Used in Bad Faith
As the Complainant points out, various companies whose principal is the same as the principal of the Respondent have had findings recorded against them by the French courts for counterfeiting, and have been prohibited from using the mark PAGESJAUNES in any way or form.
The Panel recognizes that the Respondent is a different company, but it also recognizes that the record clearly shows that it is the Respondent’s principal who is behind the registration of the disputed domain name. The record shows that that person is using multiple companies to register multiple domain names that are confusingly similar to the Complainant’s marks, either with the intent to compete with the Complainant, or with the intent to dilute the Complainant’s mark.
Indeed, the disputed domain name does not resolve to a web site related to professional directory services. It initially resolved to a web site offering sham referencing and later resolved to a web site promoting mobile telephone operating systems and related products.
This is not consistent with the registration policy in the domain “.pro”. Indeed, the official registration policy in the domain name “.pro” is (see ):
PRO is an exclusive top-level domain reserved for use exclusively by licensed business and service professionals and entities internationally. All applicants meeting the following qualifications may register a .PRO domain name:
Provides professional services
Admitted to or licensed by a government certification body or jurisdictional licensing entity recognized by a governmental body that regularly verifies the accuracy of its data
In good standing with the licensing authority
On the record and in the circumstances of this case, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith in the sense of the Policy. D. Reverse domain name hijacking
The Respondent requests the Panel to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings.
Since the Panel finds in favor of the Complainant, it dismisses this request. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel unanimously orders that the domain name, be transferred to the Complainant. The request for a finding of reverse domain name hijacking is dismissed.
Richard Hill
Presiding Panelist
Nathalie Dreyfus
Panelist
François Dessemontet
Panelist
Dated: February 9, 2011
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