The Complainant is Pages Jaunes of France, represented by Béatrice Corne, France.
The Respondent is JN Frydman Xentral LLC of Florida, United States of America (“USA”) represented by Andre R. Bertrand & Associes, France. 2. The Domain Names and Registrar
The disputed domain names , and (the “Domain Names”) are registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2011, naming Moniker Privacy Services as respondent.
The Center transmitted its request for registrar verification to the Registrar on July 14, 2011. The Registrar responded on July 15, 2011, confirming that it had received a copy of the Complaint, that the Domain Names were registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Names, that the Domain Names were locked, and that the registration agreements for the Domain Names were in English. The Registrar also provided the full contact details for the Domain Names on its WhoIs database, which identified the Respondent as the registrant.
The Center forwarded the contact details provided by the Registrar to the Complainant by email on July 19, 2011, drawing attention to the difference between them and the respondent named in the Complaint and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 22, 2011.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 25, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response August 14, 2011. The Response was filed with the Center August 12, 2011. In it the Respondent elected the appointment of a 3-member Panel.
The Complainant submitted additional observations to the Center on August 19, 2011. The Respondent submitted additional observations which were received by the Center on August 23 and 24, 2011. The Center informed the parties that the Panel would be informed of the supplemental filings and that it would be in the sole discretion of the Panel whether to consider and/or admit them in rendering its decision.
The Center appointed Jonathan Turner, Nathalie Dreyfus and François Dessemontet as panelists on September 19, 2011. 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 paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Procedural Ruling
It is necessary for the Panel to decide whether to admit the parties’ additional observations. As stated in The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447,
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules; see e.g. the decisions of WIPO Panels inWIPO Case No.s. D2000-0166 , D2000-1151 , D2000-1571 et al., D2000-0270 and, recently, D2003-0229 et al. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In this case, the Panel does not consider that there are exceptional circumstances justifying the admission of the Complainant’s observations. In the view of the Panel, they do not contain any new material whose existence and relevance could not reasonably have been appreciated by the Complainant when it filed the amended Complaint. The Panel therefore declines to admit these observations.
The Respondent filed its additional observations in reply to the Complainant’s additional observations. Since the Panel does not admit the Complainant’s additional observations there is no cause to admit the Respondent’s additional observations. Factual Background
The Complainant provides online telephone directories, marketing and advertising services under the name “PagesJaunes” and has registered logos containing the name PAGESJAUNES as trademarks in France. The Complainant also holds domain names containing this name, such as , , and .
The Complainant’s predecessor, France Telecom, made a complaint under the UDRP against the Respondent’s predecessor, Les Pages Jaunes Francophones, in respect of the Domain Names and (see France Telecom v. Les pages jaunes francophones, WIPO Case No. D2000-0489). The Complaint was rejected by a unanimous decision of a 3-member Panel dated August 21, 2000. The Respondent and its predecessor were both companies of JN Frydman.
By a Judgment of May 28, 2008, the Tribunal de Grande Instance de Paris upheld the validity of the Complainant’s registered trademarks, found that the Respondent had infringed them and engaged in unfair competition by operating a website using the Domain Name , prohibited the Respondent from using the Domain Names , and , and ordered it to cancel these Domain Names. This Judgment was affirmed by a Judgment of the Court d’Appel de Paris of November 12, 2010.
However, the Respondent retained the Domain Names and, as at July 7, 2011, they were pointed to a web page displaying various links to other websites and a search facility. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are identical to its mark PAGESJAUNES, which is highly distinctive in France. The Complainant draws attention to the recent decision in Société PagesJaunes v. Markus Weiler, International Yellow Pages, Ltd,WIPO Case No. D2010-2035, which held that it was obvious that the disputed domain name was identical to the Complainant’s mark in the sense of the Policy.
The Complainant alleges that the Respondent has no link with its business and that it has not granted the Respondent any authorization to register the Domain Names. The Complainant refers to the decision in Cooperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v. Adam Culbertson, Culbertson,WIPO Case No. DNL2010-0075 for the proposition that parking pages built around a trademark do not constitute a bona fide offering of goods or services or a legitimate non-commercial use of a domain name. The Complainant concludes that the Respondent does not have any rights or legitimate interests in respect of the Domain Names.
In relation to bad faith, the Complainant relies on the Judgments of the Tribunal de Grande Instance and Cour d’Appel de Paris. It points out that the Respondent has not complied with them. It adds that the registration and use of the Domain Names damages the Complainant by confusing members of the public searching for the PagesJaunes business directory and by hampering the development and legitimate use of the PAGESJAUNES mark by the Complainant.
The Complainant requests a decision that the Domain Names be transferred to it. B. Respondent
The Respondent draws attention to the decision rejecting the Complainant’s predecessor’s complaint against the Respondent’s predecessor inWIPO Case No. D2000-0489. The Respondent submits that the present Complaint is a re-filing of that complaint which should not be admitted in the absence of special circumstances demonstrated in the Complaint. The Respondent cites WIPO Overview 2.0, section 4.4, in this regard.
The Respondent points out that “PagesJaunes” is a translation of “Yellow Pages”, which is a generic term used by many different companies for telephone directories. It also draws attention to use of the term “Pages jaunes” by a third party’s directory in France between 1887 and 1891 and more recently for other directories in France, Switzerland and Morocco. The Respondent also refers to various reports and decisions of the EU Commission, OHIM and the EU Court of First Instance in which “Yellow Pages” or “Pages Jaunes” have been regarded as generic.
The Respondent accepts that the Domain Names are similar to the Complainant’s registered marks but disputes their validity.
The Respondent relies on the decision of the Panel inWIPO Case No. D2000-0489 which (in the Respondent’s view) held that its predecessor had a legitimate interest in the Domain Names and . The Respondent contends that it has prior legitimate property rights in these Domain Names, originally acquired more than 14 years ago, which can no longer be contested.
On bad faith the Respondent refers to the rejection of allegations of bad faith in the decisions inWIPO Case No. D2000-0489 (concerning the Domain Names and ) and in Yell Limited v. Weborcus Software Systems Pvt. Ltd.,WIPO Case No. D2004-0008 (concerning the domain name ). The Respondent notes that the Complainant has other domain names which include “pagesjaunes” and does not need the Domain Names to operate its business. The Respondent adds that it has never tried to sell the Domain Names to the Complainant.
The Respondent asks the Panel to find the Complainant guilty of reverse domain name hijacking, pointing out that the Complaint failed to mention the decision inWIPO Case No. D2000-0489. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding in relation to each of the Domain Names, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of that Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in logos containing the words “PagesJaunes”. The Panel rejects the Respondent’s suggestion that these registrations are invalid, a suggestion which is contradicted by the Judgments of the French Courts.
The Panel does not regard the Domain Names as identical to these logos but is satisfied that they are confusingly similar. The words “PagesJaunes” are the dominant component of these marks and the Panel accepts that many Internet users in France are likely to assume that the Domain Names locate a website of the Complainant.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The decision inWIPO Case No. D2000-0489, on which the Respondent relies, did not affirm that its predecessor had a right or legitimate interest in the Domain Names and . It merely stated that the Panel was “unable to conclude that the Respondent has no legitimate right or interest in the domain name in issue”.
The Respondent appears to have used the Domain Names for a web page displaying automatically generated sponsored links to other websites. The Panel does not regard this as a bona fide offering of goods or services or as a legitimate non-commercial or fair use of the Domain Names. Nor is the Respondent commonly known by the Domain Names. In the Panel’s view the case does not fall within any of the examples in paragraph 4(c) of the UDRP.
Those examples are not exhaustive, but the Respondent does not appear to have any right or legitimate interest on any other ground, and the decisions of the French Courts appear to confirm this position.
On the evidence in the file, the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
It is clear from both the terms and the travaux préparatoires of the UDRP that the two elements of its third requirement are cumulative conditions: both registration in bad faith and use in bad faith must be proved for a complaint to succeed. Use in bad faith may be evidence of registration in bad faith but cannot turn a registration made in good faith ex post facto into one made in bad faith. This view has been upheld in numerous decisions under the UDRP; for an extensive analysis, see the decision of the majority of the Panel in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800.
The Complainant relies essentially on the Judgments of the French Courts and the Respondent’s non-compliance with them as proving the Respondent’s bad faith. But it is clear that all three of the Domain Names had been registered to the Respondent before the decision of the Tribunal de Grande Instance, since that decision ordered the Respondent to cancel them. Accordingly, these Judgments and the Respondent’s failure to comply with them do not appear to show that the Respondent had registered the Domain Names in bad faith.
The decision inWIPO Case No. D2000-0489 held that the Respondent’s predecessor had registered the Domain Names and in good faith. The Complaint does not identify any change of circumstance or evidence which would alter that assessment prior to the registration of the Domain Names in the name of the Respondent. Nothing in the file contradicts the likelihood that the Respondent regarded this decision as affirming the legitimacy of registering the Domain Names.
The Panel concludes that the Complainant has not proved that the Domain Names were registered in bad faith. In view of this finding it is not necessary to consider whether the Domain Names are being used in bad faith. Since one of the two essential elements of the third requirement of the UDRP is not satisfied, the Complaint must be rejected. D. Reverse Domain Name Hijacking
In accordance with paragraph 15(e) of the Rules, “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking …. the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse domain name hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel has found that the Complainant failed to prove that the Domain Names were registered in bad faith. However, in view of the findings in the Complainant’s favour by the French Courts and the Respondent’s contumelious disregard of these rulings, the Complainant may well have assumed in good faith that it need do no more to substantiate the Respondent’s bad faith.
In the circumstances, the Panel is not satisfied that the Complaint was brought in bad faith and will not so declare. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner
Presiding Panelist
Nathalie Dreyfus
Panelist
François Dessemontet
Panelist
Dated: October 5, 2011
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