WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Mandino Pty Ltd
Case No. DAU2006-0006
1. The Parties
The Complainant is Telstra Corporation Limited of Victoria, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Mandino Pty Ltd of Australia, represented by Mr David Khoury and Mr Emmanuel Khoury, Queensland, Australia.
2. The disputed domain names and Registrar
The disputed domain names and are registered with Bottle Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2006. On June 7, 2006, the Center transmitted by email to Bottle Domains a request for registrar verification in connection with the domain names at issue. On June 9, 2006 Bottle Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for the .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 June 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�4,�2006. The Response was filed with the Center on July 3, 2006.
On July 13, 2006, supplemental filings were received from the Complainant and the Respondent. The Rules do not allow for the filing of supplemental submissions as a matter of course. On that basis, and because it was unnecessary to do so, the Panel did not admit those submissions.
The Center appointed Mr. James A. Barker as the sole panelist in this matter on July�14, 2006. 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 is one of the two largest publicly listed companies in Australia. It is Australia’s leading telecommunications and information services company, offering a wide range of telecommunications and information services.
In addition to its role as a provider of telecommunications and data services, the Complainant also owns and produces the Yellow Pages business directories, the print version of which is distributed to nearly all homes and businesses in Australia. Although the Complainant owns the Yellow Pages directories (including all intellectual property in, or associated with, the directories), they are now collated, manufactured and marketed by Sensis Pty Ltd (Sensis) on behalf of the Complainant, pursuant to a services agreement between the two companies. Sensis is a wholly owned subsidiary of the Complainant.
The Yellow Pages directories owned by the Complainant are available in electronic, print, wireless and voice formats. Each Yellow Pages directory owned by the Complainant contains the names, addresses and telephone numbers of businesses in the part of Australia to which the particular directory relates (depending on the type, this could be the whole of Australia or a particular region of Australia). Businesses are required to pay fees to have their information listed in the Complainant’s Yellow Pages directories.
The Complainant has registered 27 trademarks containing the words “Yellow Pages” or “Yellow” (the latter in combination with other words) in Australia. The Complainant has also recently applied for registration in Australia of the word “Yellow” as a trademark.
The Complainant has undertaken extensive marketing of its marks in Australia.
The disputed domain names were registered by the Respondent on January�28,�2006, () and on February 3, 2006 ().
5. Parties’ Contentions
A. Complainant
The following contentions are summarised from the Complaint.
Identical or confusingly similar
The Complainant submits that the disputed domain names are confusingly similar to its registered Yellow Pages trade mark for the purposes of paragraph 4(a)(i) of the Policy. The Respondent uses the disputed domain names in connection with the same services for which the Complainant uses Yellow Pages, namely for the provision of on-line directory services for Australian businesses. It is significant that the Respondent is the Complainant’s competitor in the same trade: see Fast Enterprises Pty Ltd v. Gifts for Gifts Pty Ltd, LEADR auDRP WIPO Case No. 2005-0006.
The disputed domain names registered by the Respondent contain the words “Yellow Book” which closely resemble the Complainant’s Yellow Pages trade mark. The Complainant submits that except for the replacement of the word “Pages” with “Book” the disputed domain names are otherwise identical to the Complainant’s trade mark.
A domain name will be confusingly similar to a name or trade mark if it incorporates the primary, distinctive element of that name or trade mark: see Adaptive Molecular Tech., Inc v. Woodward, WIPO Case No. D2000-0006; Toyota Motor Sales USA v Rafi Hamid dba ABC Automobile Buyer WIPO Case No. D2001-0032. The disputed domain names incorporate the distinctive element of the Complainant’s mark.
The question of whether or not a domain name is confusingly similar to a well known trade mark may also be determined by a visual comparison between the domain name at issue and the trade mark: see Gateway Inc v. P Inc WIPO Case No. D2000-0109. In this case, the disputed domain names differ to Yellow Pages only by the replacement of the word “Pages” by “Book”. The confusing similarity of the disputed domain names to the Yellow Pages trade mark is reinforced when one considers the close association of the words “book” and “pages”. Both words deal with a similar subject matter, are associated with paper products and may as a consequence be closely acquainted with directories.
It is a well-established principle of trade mark law that two marks may be found to be confusingly similar when the idea engendered by both marks is the same, as this is more likely to be recalled than the precise details of the mark. See Gallaher Ltd v. International Brands Ltd (1967-1987) 1 NZIPR 43 (“SILK CUT” and “SILK LEAF”); Mothercare UK Ltd v Serry (A’asia) Pty Ltd (1991) 21 IPR 469 (“Mothercare” and “Mother Dear”); Johnson & Johnson v Kalnin (1993) 26 IPR 435 (“BAND>>IT” and “BAND-AID”); Tran v Meldrum (1999) 44 IPR 233 (“Hot Piranha” and “Hot Tuna”). These principles are equally applicable to the question of confusing similarity outlined in the Policy.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names for the following reasons:
(a) The name of the Respondent does not include any parts of the disputed domain names;
(b) The Respondent is not commonly known by either of the disputed domain names (as required under paragraph 4(c)(ii) of the Policy);
(c) The Respondent was not using the “Yellowbook” mark, nor had it even registered the disputed domain names, before the Complainant acquired rights in its YellowPages trade marks;
(d) The Complainant’s registration and use of its YellowPages trade mark predates the registration of the disputed domain names (by at least 20 years) and the Respondent does not have any association with the Complainant;
(e) The Respondent has used the Complainant’s “walking fingers” logo in connection with the disputed domain names.
Bad faith
The Complainant submits that the Respondent registered the disputed domain names, or subsequently used the disputed domain names, in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant submits the Respondent knew of the Complainant’s reputation in its Yellow Pages trade mark because of the initial get up of the Respondent’s Internet sites and use of the “walking fingers” logo thereon. Further, the Complainant submits that the Respondent was motivated to register the disputed domain names specifically because of the Complainant’s reputation in its Yellow Pages mark.
A finding of bad faith may also be made if the Respondent has failed to respond to requests by the Complainant to voluntarily transfer the contested disputed domain names: see Toyota Motor Sales USA v Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032. As discussed above, Respondent refused to voluntarily transfer the disputed domain names.
The Complainant also submits that the Respondent’s use of the disputed domain names amounts to bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant submits that the Respondent was intentionally attempting to misdirect Internet users away from legitimate Yellow Pages sites by creating confusion between the Respondent’s disputed domain names and Yellow Pages websites. The “walking fingers” logos contained on websites of the disputed domain names demonstrate the Respondent’s intent to create confusion in the minds of consumers as to the source of the Respondent’s websites.
Finally, the Complainant submits that the Respondent’s use and registration of the disputed domain names could not possibly have been in good faith, given the Complainant’s reputation in the Yellow Pages and “walking fingers” marks and the confusing similarity between the marks and the disputed domain names’ websites.
B. Respondent
The following contentions are summarised from the Response.
Identical or confusingly similar
The Respondent contends that “Yellow Pages” and “Yellow Book” are not confusingly similar. In trademark opposition proceedings concerning the mark “Yellow Duck” (the Complainant Corporation Limited v. Robert George Coles) the Complainant was not successful in arguing that it had rights in the word “Yellow”. The Complainant may have established a family of “Yellow Pages” trademarks but does not have a family of “Yellow” trademarks. It should not be found that the disputed domain names are confusingly similar to the Complaint’s trademark “Yellow Pages”.
The Respondent notes that other companies residing in the United States of America each hold and maintain the domain names and and have not been challenged in any way.
Rights or legitimate interests
The Respondent claims that its website is legitimate and owned by a legitimate Australian company. The site is broken down by Australian States and then into categories. The Respondent claims that it has no intension of selling, renting or otherwise transferring the disputed domain names. The Respondent operates a legitimate website complementing a group of websites operated by the Respondent which offer information directories.
The Respondent’s website and the disputed domain names are not misleadingly diverting consumers or tarnishing the Complainant’s name, trademark or service mark.
Bad faith
The Respondent disagrees with the allegations contained in the complaint, that the Respondent’s website is similar to that of the Complainant.
The Respondent considers that the disputed domain names acquired have been used in good faith. The Respondent states that what the ‘Yellow Book’ website provides is a complete local ‘AtoZ’ business directory consisting of 1.3 million business listings provides a search engine that incorporates Australian business websites, and that Respondent has spent approximately $500,000 over the 5 year period in developing the portal and data for the Yellow Book website.
6. Discussion and Findings
For the Complainant to succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
- the domain names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights (paragraph 4(a)(i));
- the Respondent has no rights or legitimate interests in respect of the domain names (paragraph 4(a)(ii)); and
- the domain names were registered or subsequently used in bad faith (paragraph 4(a)(iii).
These grounds are cumulative. If the Complainant does not demonstrate any one of them, the Complaint will fail.
The Panel notes that, with some substantive differences, the Policy is in similar terms to the Uniform Domain Name Dispute Resolution Policy (UDRP) on which it is based. Past proceedings under the Policy have applied decisions and authority under the UDRP. The Panel has similarly applied relevant past decisions under the UDRP in this case.
A. Identical or Confusingly Similar
Rights in a name, trademark or service mark
The Complainant submits that the disputed domain names are identical or confusingly similar to its registered mark “Yellow Pages” and that its mark is well known.
There is no dispute that the Complainant has registered rights in that mark in Australia. Substantial evidence of those rights was attached to the Complaint. The Complainant also attached substantial evidence of the use of that mark. It is clear that the Complainant’s mark is well known in Australia.
Identical or confusingly similar
The question is then whether the disputed domain names are identical or confusingly similar to the Complainant’s mark ‘Yellow Pages’.
It is well established in proceedings under the Policy and UDRP that domain name extensions are to be disregarded in determining whether a domain name is identical or confusingly similar to a mark. Those extensions are accordingly disregarded for that purpose.
The disputed domain names are self-evidently not identical to the Complainant’s mark.
The Panel also finds that the disputed domain names are not confusingly similar to the Complainant’s mark, for the following reasons.
The test of confusing similarity, in the context of the Policy, was set out in GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001; reiterated in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001. In the latter case, the Panel relevantly stated that:
“the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.”
Applying this test, the Panel finds that there is no confusing similarity between the disputed domain names and the Complainant’s mark.
The Complainant’s marks all combine the word “Yellow” with another word: including “Yellow Pages”, “Hello Yellow”, “Find it in Yellow”, and “Electronic Yellow Pages”.
The disputed domain names do not incorporate any of these marks entirely (and the Complainant does not argue that it has rights in the mark “Yellow Book”). The disputed domain names incorporate only a part of the Complainant’s marks: the word “Yellow”. “Yellow” is obviously a highly generic word. The Complainant has no registered mark in relation to that generic word alone. The Complainant says it has applied to register such a mark. However a trademark application does not, by itself, give the Complainant rights for the purpose of the Policy. (See the discussion by this Panel in TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Limited, WIPO Case No. DAU2006-0004.)
The Complainant makes essentially three arguments that the disputed domain names are confusingly similar to its mark.
Firstly, the Complainant notes that a domain name will be treated as confusingly similar to a mark if it incorporates the primary, distinctive element of that mark. The Complainant states that the replacement of the word “pages” with “book” in the disputed domain names does not detract from the dominant part of the Complainant’s “Yellow Pages” mark. However, the Complainant does not explicitly indicate what that dominant part is. It is clearly the distinctive combination of the two words “Yellow Pages”. The Complainant has rights in that combination. That combination is obviously not included in the disputed domain names.
Alternatively, the Complainant might argue that the distinctive element of its mark is instead the word “Yellow”. However, this element, being a highly generic word, is plainly not distinctive taken on its own. Neither has the Complainant provided evidence that the word “Yellow” has acquired distinctiveness in a trademark sense, exclusively associated with the Complainant.
Secondly, the Complainant also notes that the test of confusing similarity may be determined by a visual comparison. It states that the disputed domain names are only different to its mark by the replacement of the word “pages” by “book”. But the replacement of one word, in a two-word combination of generic terms, makes a significant difference to a visual comparison (as well as a phonetic comparison).
Thirdly, the Complainant argues that there is confusing similarity because the idea suggested by the disputed domain names is the same as the idea suggested by the mark. It refers to the test of confusion or deception established at common law (which, in Australia, may be relevant to actions other than only those for trademark infringement). The Complainant refers to a number of cases. Those cases, in essence, applied the principle that, in determining confusion between marks at common law, the imperfect recollection of consumers should be taken into account. For this reason, at common law, a meticulous side-by-side comparison is usually not appropriate in determining confusion.
The Complainant argues that this test is equally applicable to the question of confusing similarity under the Policy. The idea of a mark may clearly be relevant and has been applied in e.g. cases under the UDRP (see e.g. Jordan Grand Prix Limited v. Gerry Sweeney, WIPO Case No. D2000-0233). But it is a test with necessarily less room to operate in disputes under the Policy, because less factors will be relevant to the comparison, as noted above.
In any case, the relevance of the idea of the mark is related to the Complainant’s first argument. And so it would fail for the same reasons. Whether the idea of a mark is suggested by another is related to the question of whether a distinctive element of the first mark is incorporated in the second, on an overall comparison. (See e.g. in one of the cases referred to by the Complainant: de Cordova v Vick Chemical Co (1951) 69 RPC 103, at 105-106: “a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods he uses one or more of its essential features.” (emphasis added))
The Panel has not found that the essential features of the Complainant’s mark are sufficiently incorporated. This is not a case in which there are subtle differences between marks conveying the same impression or idea (like in e.g. Barnes & Noble College Bookstores Inc. v. Language Direct, WIPO Case No. D2003-0142, which applied the same principle). In the Panel’s view, for the reasons set out above, the differences are more than subtle.
B. Rights or Legitimate Interests, & Bad Faith
For the reasons set out above, it is not necessary for the Panel to consider these other elements of the Policy.
C. Court Proceedings
The Panel notes that this decision does not affect any available domestic proceedings between the parties under the relevant national law.
7. Decision
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Sole Panelist
Date: July 28, 2006
Full & Egal Universal Law Academy