Complainant is SuperMedia LLC of Texas, United States of America, represented by Hitchcock Evert LLP, United States of America.
Respondent is Gina Parrado of Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is which is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2011. On July 28, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On July 29, 2011, Melbourne IT Ltd 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 August 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2011. On August 23, 2011, Respondent filed with the Center a communication as a response to the Complaint.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 7, 2011. This Panel finds that it was properly constituted. This 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
Complainant is a company organized under the laws of Delaware, United States of America, which publishes print and on-line directories.
Complainant has rights over the following trademarks: SUPERPAGES registration No. 2022484 with the United States Patent and Trademark Office (USPTO), registered on December 10, 1996, class 35; SUPERPAGES.COM registration No. 2765993 with the USPTO, registered on September 23, 2003, class 35; and SUPERPAGES registration No. 3086056 with the USPTO, registered on April 25, 2006, class 16.
The disputed domain name was created on September 25, 2006. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant publishes, directly or through licensees and related companies, print and on-line directories.
In Puerto Rico, Axesa Servicios de Información, S. en C. (Axesa) published an Internet Yellow Pages directory under the trademark SUPERPAGES pursuant to a license agreement with Complainant.
Annual sales of products and services under the SUPERPAGES mark were in excess of USD 1 billion in 2010.
The disputed domain name is confusingly similar to the trademarks over which Complainant has rights.
Complainant is the owner of the SUPERPAGES trademark which Complainant and its predecessor have used since 1996 in connection with publication of directories and the sale of advertising in those directories.
The only difference between the disputed domain name and Complainant’s trademarks is the addition of the descriptive prefix “smartbusiness”. Such addition does not change the commercial impression created by the disputed domain name compared to Complainant’s trademarks. Because “smartbusiness” is descriptive in the context of Internet directory services sold to businesses, the dominant part of the disputed domain name is “Superpages”.
Panels have recognized as confusingly similar the use of a domain name that consists of a trademark in its entirety attached to a descriptive or nondistinctive term. A domain name consisting of a trademark coupled with a new term is not per se confusingly similar, but unless the additional term dispels any connection with the trademark owner it will be considered confusingly similar. In this case, the SUPERPAGES trademark remains the dominant feature of the disputed domain name.
SUPERPAGES trademark is an inherently distinctive mark having no descriptive or laudatory meaning in relation to the goods or services for which it is used and registered. It has been used continuously since at least as early as April 1996 and has achieved considerable recognition with the general public as indicating the source of directory and advertising products and services.
Respondent has no rights or legitimate interests in the disputed domain name.
As is clear from Respondent’s webpage, Respondent is using the disputed domain name as the address of a website offering services, namely Internet directory services, which are identical to those sold by Complainant under the SUPERPAGES and SUPERPAGES.COM trademarks.
Respondent does not have any trademark or intellectual property rights or any other legitimate interests in the disputed domain name. There is no evidence to suggest that Respondent ever used the disputed domain name and/or a name closely corresponding to Complainant’s trademarks prior to Complainant’s predecessors’ first use of the SUPERPAGES trademark in 1996. It is thus clear that the sole purpose of Respondent’s selection and use of the disputed domain name is to capitalize improperly on the reputation and goodwill established by Complainant and its predecessors by deceiving people into thinking that Respondent is the publisher of the SUPERPAGES directories.
The evidence demonstrates that Respondent has made every effort to confuse consumers by operating a confusingly similar website and purporting to offer directory publications of advertising. Such actions are strong evidence that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent’s selection of a domain name that is virtually identical (except for the addition of the descriptive prefix “smartbusiness”) to the heavily promoted and well-recognized trademark of Complainant clearly indicates a bad faith interest.
Respondent’s decision was part of a scheme to pass-off Respondent’s services as those of Complainant by creating a likelihood of confusion with Complainant’s trademark SUPERPAGES.
The disputed domain name has been used as part of a scheme to confuse businesses that advertise in Complainant’s directories and cause them to send money to Respondent or persons affiliated with Respondent.
The methodology used in the scheme is described in the article “Over $140 Thousand and more than 350 Businesses, Victims of the S Scam” published on the Doctorshopper blog (copy attached to the Complaint).
Axesa’s customer George Vasquez Photographer, a business in Puerto Rico which advertises in its SUPERPAGES Internet Directory, received an invoice requiring a payment to be sent to Smart Business Super Pages, Inc. in Florida and gives the website address of the directory as “www.”. George Vasquez Photographer had not purchased any advertising from Respondent and contacted Axesa to obtain an explanation for the invoice which it wrongly believed had been sent to it by Axesa. Similar invoices have been sent to customers who have previously advertised in Complainant’s licensee’s Internet Yellow Pages directories in Puerto Rico in an attempt to induce the customers to send money to Superpages Vip.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent’s assertions may be summarized as follows:
The irregularities made by the company Superpages Vip referred in the Complaint belong only to Superpages Vip and such company does not have any relation with Respondent’s company.
The disputed domain name was legally acquired in 2006 with company registration number 63972681, which was verified by the Society of Business Records, determining its use and availability for sale of goods and services. Respondent’s purpose is the design and creation of “webpage ad”, for this reason Respondent obtained the name of its company Smart Business Super Pages.
The intention of Respondent’s company has been to insert different shops, companies and businesses in the network, design pages, as well as the interactive relationship with its customers, depending on their needs. Such services are not only provided in the United States of America and Puerto Rico, but also in several other countries.
Respondent contends that they have never wanted to profit from deceptive commercial gain nor try to confuse the consumers. Respondent asserts that they have always been identified with the real name of its company, without use of the disputed domain name in bad faith.
The registration of the disputed domain name will expire on September 25, 2011 and Respondent does not have any objection to change it and they are in the best position to reach an agreement without any major problem. 6. Discussion and Findings
Respondent’s communication sent to the Center on August 23, 2011, cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). However, Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the ground of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that he deems applicable. In the case at hand this Panel has decided to take into account such communication from Respondent.1
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the SUPERPAGES and SUPERPAGES.COM trademarks.
The disputed domain name entirely incorporates such Complainant’s trademarks, adding the prefix “smartbusiness”. The addition of such suffix is not enough to avoid confusing similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (e.g., Société Air France v. Nadine Schwab,WIPO Case No. D2008-1220; Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman,WIPO Case No. D2000-1375).
Since the addition of a generic top-level domain (gTLD) such as “com” after a domain name is technically required, it is well established that such element is disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.2
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s SUPERPAGES and SUPERPAGES.COM trademarks. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent does not have any trademark or intellectual property rights or any other legitimate interest in the disputed domain name and that Respondent is using the disputed domain name as the address of a website offering services, namely Internet directory services, which are identical to those provided by Complainant under the SUPERPAGES and SUPERPAGES.COM trademarks.
Respondent contends that its purpose was the design and creation of a webpage ad and that Respondent’s intention has been to insert different shops, companies and businesses in the network as well as the design of pages depending on their customer’s needs. Respondent asserts that the disputed domain name was legally acquired in 2006 with company registration number 63972681 (sic) and which was verified by the Society of Business Records determining its use and availability for sale of goods and services, and that way Respondent obtained the name of her company Smart Business Super Pages. However, Respondent did not provide any evidence on the foregoing. Assuming that Respondent owns a company named Smart Business Super Pages, that does not mean that Respondent has been commonly known by the disputed domain name and nothing in the file suggests so.
Respondent is using the website associated with the disputed domain name to offer ads and an on-line directory, that is, the same product marketed by Complainant.
Complainant contends that some Complainant’s licensee’s customers have received some invoices from Respondent (Complainant’s Exhibit E contains an invoice issued by Smart Business Super Pages Inc. for on-line directory listing service).
The evidence in the file shows that Respondent is using the website associated with the disputed domain name with the purpose of diverting Internet users from Complainant’s official website in order to attract consumers3. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name, but rather the opposite may be validly inferred.4
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Respondent denies having any relationship with the company Super Pages Vip. There is no evidence in the file that shows that the actions carried out by the company Super Pages Vip, referred to in the Complaint, may be attributed to or otherwise connected with Respondent or Respondent’s company Smart Business Super Pages Inc.5
In this Panel’s view, Respondent was probably aware of the existence of Complainant’s trademarks and activities at the time she obtained the registration of the disputed domain name as the content of the website associated with the disputed domain name offers the same services provided by Complainant, that is, Internet directory services.6 The evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate with the intention to obtain some kind of profit from the reputation and goodwill of Complainant’s trademarks, which is evidence of Respondent’s bad faith registration of the disputed domain name.
The content of the website associated with Respondent’s disputed domain name may potentially be contested as an undue and unfair competition practice, created with the intention to generate confusion by attempting to attract Internet users to such confusingly similar website, or simply to disrupt or compete with such website in any other manner. Furthermore, the fact that Respondent‘s company appears to have sent invoices to Complainant’s customers requesting some kind of payment for advertising services is further evidence of Respondent’s bad faith.
Thus this Panel finds that Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location.
In light of the above, this Panel finds that Complainant has established the element set out in paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: September 21, 2011
1 See Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; also, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447: “However as admitting the submissions in the Respondent’s e-mail would not in fact prejudice the Complainant or affect the outcome of this case, the Panel has decided to consider the Respondent’s submissions”.
2 See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525.
3 See Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258.
4 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 However, this Panel notes that some of the facts in the present case are very similar to those in SuperMedia LLC v. Superpages Vip,WIPO Case No. D2011-1293, since in both cases: (i) the respondents’ domiciles are in Quebec, Canada, as per the corresponding registrars’ reports; (ii) the services provided are Internet directory services; (iii) the respondents’ companies’ domiciles are in Florida, USA, (iv) invoices were sent to customers by such companies located at Florida, and (v) the disputed domain names entirely incorporate Complainant’s SUPERPAGES trademark.
6 See Ibersecurities, Agencia de Valores y Bolsa, S.A. v. Iberica Segurança, Eloy Lacasta,WIPO Case No. D2000-0738.
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