Telstra Corporation Limited v. “aussieyellowpages.com”, Peter Norfolk
Case No. D2007-1418
1. The Parties
The Complainant is Telstra Corporation Limited, of Melbourne, Victoria, Australia, represented by Piper Alderman, Australia.
The Respondent is “aussieyellowpages.com”,Peter Norfolk, of New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <aussieyellowpages.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2007. On September 26, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 27, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 5, 2007. The Complainant filed a further amendment to the Complaint on October 9, 2007. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on October 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2007.
The Center appointed Dr Clive Trotman as the sole panelist in this matter on November 12, 2007. 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 factual background is excerpted mainly from information supplied by the Complainant.
The Complainant, Telstra Corporation Limited, is an Australian Proprietary Company incorporated in 1991. The company is a major provider of telecommunications goods and services.
The Complainant is the registered owner of trademarks that include the words “YELLOW PAGES”, being the name given to classified listing and advertising pages in the telephone directory. Registration of the YELLOW PAGES trademark by the Complainant or its predecessors is traceable back to 1977. The Complainant also owns variants of the trademark, including ELECTRONIC YELLOW PAGES and TALKING YELLOW PAGES. The scale of the Complainant’s business extends to 85 different directories serving different places and includes 1.8 million listings. In recent months the Complainant’s websites have attracted more than 2 million unique (as defined) browsers monthly.
No information is available about the registrant of the disputed domain name <aussieyellowpages.com>, who has not responded in any way.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends and provides documentary evidence that it is the registered owner, and Sensis Pty Ltd is the exclusive authorized user, of a number of registered and pending Australian trademarks.
The mentioned registered trademarks have proceeded to registration on the basis of the extensive use within Australia of the trademarks by the Complainant and its authorized user.
Since 1997, the Complainant, through Sensis Pty Ltd, has made the Yellow Pages directory database available online by means of the Complainant’s website at “www.yellowpages.com.au”. The Complainant and Sensis Pty Ltd have each incurred considerable expense in developing and promoting this website.
Independent survey statistics indicate the Complainant’s website in the period from July 2006 to August 2007 was visited by between about 2.3 million and 2.6 million unique (as defined) browsers per month, and raw annual visitor numbers increased from about 35 million in 2003/2004 to 54 million in 2006/2007.
The Complainant quotes from the decision in a previous case (decided against the Complainant) the statement “it is clear that the complainant’s [Yellow Pages] mark is well known in Australia” (Telstra Corporation Limited v. Mandino Pty Ltd.,
WIPO Case No. DAU2006-0006).
The Complainant cites Telstra Corporation Limited v. Mikhail Doubinski and Yury Sharafutdinov trading as AAA Marketing World,
WIPO Case No. DAU2006-0008, in which the Complainant says that the Administrative Panel held that the Complainant’s related trademark WHITE PAGES has acquired a secondary meaning in Australia as being an indicator of origin for the Complainant’s goods and services, in addition to it being a valid registered trademark. In this context the Complainant submits that the term “Yellow Pages” has also acquired a secondary meaning in Australia as being an indicator of origin for the Complainant’s goods and services, in addition to it being a valid registered trademark.
The Complainant contends that it uses the trademark YELLOW PAGES in the format of sub-brands such as ELECTRONIC YELLOW PAGES and TALKING YELLOW PAGES. Thus the Respondent’s domain name <aussieyellowpages.com> is confusingly similar to the Complainant’s trademark. The word “aussie” means “Australian” and use of the trademark “Aussie Yellow Pages” means “Australian Yellow Pages”. By reason of its registered trademark rights, the Complainant is the only entity entitled to promote a directory in Australia under the name “Australian Yellow Pages”. Because the Complainant’s trademarks are so well known, people will always associate them with the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no obvious connection to the name “Aussieyellowpages”. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. There is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could use or own the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. A copy of the recent home page of the Respondent’s website is provided in evidence. Essentially it consists of a portal with links to other Australian domain names and evidently targets Australian users.
The Complainant contends that the Respondent is attempting to attract users for commercial gain by relying on initial interest confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s actions can have no plausible explanation other than to trade on the Complainant’s goodwill. The Complainant prominently displays its registered trademark rights in YELLOW PAGES and the Respondent would be well aware of them.
The Complainant contends that the nature of the Respondent’s website, which relates partly to adult dating services, appears expressly calculated to bring the Complainant and the Complainant’s business into disrepute. A recent check indicated that the business directory of the Respondent’s website contained no significant listings. The information provided on the website for making contact with its operators is not functional.
The Respondent is preventing the Complainant, who has a legitimate interest in the disputed domain name, from obtaining the domain name by registration.
Cease and desist letters to the Respondent dated February 19, 2007, April 17, 2007 and May 29, 2007 have not elicited any reply.
The Complainant requests the transfer to it of the disputed domain name <aussieyellowpages.com>.
B. Respondent
The Respondent did not reply or make any contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
It is noted that the Respondent has not replied to emails and that the physical contact address he provided appears not to exist. The ICANN Registrar Accreditation Agreement (2001) at paragraph 3.7.7.1 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them [...]”. The Panel is satisfied that the Center has fulfilled its responsibilities to attempt to contact the Respondent in accordance with paragraph 2 of the Rules.
A. Identical or Confusingly Similar
The Complainant has produced documentary evidence of its ownership of and rights in the registered trademark YELLOW PAGES, alone or in combination with certain other words and in the context of advertising and directories.
The disputed domain name is <aussieyellowpages.com>. It is well established in precedent that the gTLD identifier “.com” is of no consequence in the determination of confusing similarity. It is also well established that the addition of a prefix or suffix word or term to a trademark in order to form a domain name does not usually negate confusing similarity. The Complainant’s trademark YELLOW PAGES has been appropriated in its entirety with the addition of the descriptor “aussie”, which is widely understood to mean Australian. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark in the terms of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In the absence of any information about the Respondent, the Complainant has stated a prima facie case to the effect that as the exclusive owner of the trademark, it has no knowledge of the Respondent and has never given the Respondent any authority to use the trademark. It would appear from the available record that only Sensis Pty Ltd is the exclusive authorized user of the trademarks entered in evidence. The mere fact that the registrant “organization” is stated in the Whois data (along with the name of Mr. Norfolk) to be one “aussieyellowpages.com” does not without more establish that the Respondent is commonly known by that name. The Respondent has not refuted the Complainant’s prima facie case or offered evidence of activities that correspond with any of the illustrative circumstances in paragraph 4(c) of the Policy. The Panel finds that the Complainant has established this element of its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The circumstances listed in paragraph 4(b) of the Policy as indicative of bad faith are non-exhaustive and bad faith may be found alternatively.
Domain name disputes involving the words “yellow pages” in various countries have been numerous, including use of the equivalent words in languages including German, French and Spanish. In certain cases, distinguished on their facts, the relevant respondent has prevailed, sometimes partly on the basis of the generic nature of the words “yellow” and “pages” or their translations. Furthermore in the case of “White Pages” cited by the Complainant (Telstra Corporation Limited v. Mikhail Doubinski and Yury Sharafutdinov trading as AAA Marketing World;
WIPO Case No. DAU2006-0008), upon which the Complainant bases its present argument that “Yellow Pages” has acquired secondary meaning, the Panel in that case actually said (partly citing 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie,WIPO Case No. D2000-1223) “the Panel agrees [...] that “the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases, and the acquisition of secondary meaning” than WIPO Panels. This is because of “the summary nature of the procedures under the Rules”. For this reason the Complainant’s registration is presumed to be valid and the term “white pages”, which admittedly may be used generically for a telephone directory, is presumed to have acquired secondary meaning in the relevant jurisdiction” (emphasis added).
Particularly in the absence of challenge by the Respondent, the Panel accepts that in Australia the name “Yellow Pages” has secondary meaning and distinction and is validly trademarked by the Complainant. The evidence of the fame of the Complainant’s trademark in Australia, combined with the nature of the Respondent’s use of the same words, is sufficient for a finding of prior or likely constructive knowledge of the trademark on the part of the Respondent. Registration of a famous trademark of which the Respondent must have been aware and without legitimate reason has been held to be, in and of itself, evidence of bad faith (Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Guccio Gucci S.p.A. v. Mark O ‘Flynn,
WIPO Case No. D2001-0270; Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615; Société des Hôtels Méridien v. LaPorte Holdings, Inc.,WIPO Case No. D2004-0849). The Panel finds registration in bad faith proven.
Specifically in terms of paragraph 4(b)(iv) of the Policy, the Respondent uses a domain name and website containing the words or expressions “aussie” and “yellow pages”. The purpose of his activity is inescapable, namely to attract Internet users, particularly those who may have entered these words or expressions into search engines, or made a guess when seeking the Internet address of the Complainant’s relevant services in Australia. Given the borderless structure of the Internet, the Respondent’s website is equally accessible internationally. The Respondent can have no other plausible intention than to make commercial gain, whether by the collection of revenue from “click-through” referrals to other websites, or by ultimate sale of the website, or otherwise. Traffic to the Respondent’s website inevitably is generated at least in part by confusion between the Complainant’s trademark and the Respondent’s domain name. The Respondent’s activities are clearly encompassed by the provisions of paragraph 4(b)(iv) of the Policy and accordingly the Panel finds registration and use in bad faith to be proven.
The Center reports that the Respondent’s stated physical address appears to be non-existent. The Complainant states in evidence that the purported facility to contact the Respondent through his website does not lead anywhere. The use of false or misleading contact details in connection with the registration of a domain name further supports a finding of bad faith (Home Director, Inc. v. HomeDirector,
WIPO Case No. D2000-0111).
Conciliatory letters from the Complainant’s lawyers, asking the Respondent to cease and desist in his use of the Complainant’s trademark as a domain name, were not replied to. Failure to acknowledge or reply to a cease and desist letter can further support a finding of bad faith (Ebay, Inc. v. Ebay4sex.com and Tony Caranci,WIPO Case No. D2000-1632).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aussieyellowpages.com> be transferred to the Complainant.
Dr Clive Trotman Sole Panelist
Dated: November 27, 2007
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