The Complainant is Yell Limited, Reading, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Yell.travel, Vitry Sur Seine, France.
2. The Domain Name and Registrar
The disputed domain name <yell.travel> is registered with EnCirca, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2008. The Complaint originally nominated Mr. Rob Stein as the Respondent. On April 16, 2008, the Center transmitted by email to EnCirca, Inc. a request for registrar verification in connection with the domain name at issue. On April 22, 2008, EnCirca, Inc. transmitted by email to the Center its verification response confirming that “Yell.travel” is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient on April 29, 2008, the Complainant filed an amendment to the Complaint on May 1, 2008 electronically and in hard copies on May 5, 2008. The Center verified that the Complaint together with the amendment 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 May 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2008. The Response in the form of a single page e-mail was filed with the Center on May 8, 2008, followed by hard copies on May 13, 2008. Various additional observations from both parties followed by e-mail on May 21 and on May 22, 2008.
The Center appointed John Swinson as the sole panelist in this matter on May 29, 2008. 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 a company based in Reading, England. It operates an international directories business in the classified advertising market through printed, online and phone media in the United Kingdom (UK) and the United States of America (US). The Complainant operates an online directory for the UK via its website located at “www.yell.com”.
The Complainant is the proprietor of a registered UK Trade Mark for the word “YELL” which was registered on June 6, 1997. The Complainant is also the proprietor of a registered Community Trade Mark for the word “YELL” which was registered on May 29, 2000.
The Respondent is a company based in Vitry Sur Seine, France. The Respondent obtained registration of the disputed domain name by way of transfer from Mr. Rob Stein on or about April 15, 2008.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
The disputed domain name is identical to the Complainant’s trade mark registrations for the word YELL. For the purpose of paragraph 4(a)(i) of the Policy, it is irrelevant that the Complainant’s trade mark is registered in a different jurisdiction to the Respondent’s place of business. Nevertheless, the Complainant’s Community Trade Mark registration encompasses France, where the Respondent is located.
The disputed domain currently has no associated content. The disputed domain name re-directs Internet users directly to the website “www.yellowpages.fr” which is registered to Phonebook of the World. Phonebook of the World is not associated with the Complainant.
The disputed domain name previously resolved to a website which purported to offer users a tool to search many travel websites at the same time. It essentially functioned to redirect users to third-party travel websites. The website used the same yellow color scheme used by the Complainant on its website “www.yell.com” and contained two of the Complainant’s other registered trademarks YELLOW PAGES and the walking-fingers logo.
The Respondent is not commonly known by the disputed domain name.
The Respondent is using the Complainant’s well known YELL mark misleadingly to direct users to a website (“www.yellowpages.fr”) that is not associated with the Complainant. The services provided at “www.yellowpages.fr” are similar to the online business directory services provided by the Complainant and may be considered a competitor of the Complainant.
The disputed domain name was first registered on March 18, 2008. The travel-related website discussed above was launched (by Mr. Rob Stein) on March 25, 2008 (see Annexure 6 to the Complaint). On March 23, 2008, a representative of Yell.travel, Mr. Thompson of California, contacted the Complainant offering it an equity share in the disputed domain name, and proposing that the disputed domain name be linked to the Complainant’s “www.yell.com” website. It can be inferred that the Respondent was aware of the Complainant’s YELL mark and its website, “www.yell.com”.
The disputed domain name is being used in bad faith. The disputed domain name is not being used to provide a genuine commercial service, but is being used to re-direct potential users of the Complainant’s website to an unrelated, but very similar, third party website.
B. Respondent
The Respondent makes the following contentions in a response that does not contain the certification required by Rule 5(b)(viii) of the Rules for Uniform Domain Name Dispute Resolution Policy:
The Complainant’s marks YELL and YELLOWPAGES in the UK have no authority in another sovereign country. France is a sovereign country with its own trademark and IP laws which the Respondent complies with. The Respondent is within its rights to own the disputed domain name.
The Complainant contacted the Respondent to purchase the disputed domain name. The Complainant and Respondent were not able to agree on price. Subsequently, the Respondent asked the Complainant to partner with the Respondent to use the disputed domain name but the Complainant declined.
The Complainant filed this Complaint after it realised it could not obtain the disputed domain name from the Respondent. The Complainant is attempting to strong arm a smaller company and steal the intellectual property of the Respondent by using WIPO and the UDRP.
“Yell” is a term commonly used around the world. The Complainant should have similar issues with all of the other “yell” domains owned and operated by other companies around the world.
The Complainant can obtain the disputed domain name by paying the price in the Respondent’s initial offer or making a suitable counter offer.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights, and the disputed domain names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of two registered marks containing the word “yell” (see UK Trade Mark Registration No. 2042469 registered on June 6, 1997 and Community Trade Mark Registration No. 000,057,190 registered on May 29, 2000).
The Respondent contends that the Complainant’s YELL mark, registered in the UK, has no authority in the country in which the Respondent is located, France, and consequently the Respondent is within its rights to own the disputed domain name.
The Respondent’s contention is not relevant to an assessment under the Policy of whether the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has right. The Policy does not require the Complainant’s trademark to be protected in the Respondent’s country (see Frank E. Rijkaard v. Marc Pérez-Tejero,WIPO Case No. D2004-1044 and Infospace.com Inc. v. Infospace Technology Co. Ltd.,WIPO Case No. D2000-0074).
The Panel therefore finds that the Complainant has registered trade mark rights in YELL. The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s YELL trade mark.
The disputed domain name contains the entirety of the Complainant’s trade mark. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety it is confusingly similar to that mark (see for example Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc, WIPO Case No. D2000-0047). The addition of the top level domain “.travel” to the Complainant’s trade mark is of no significance. It is well established that the specific top level of a domain name such as “.com”, “.net” or “.travel” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Complainant contends that the Respondent is not commonly known by the disputed domain name. The Respondent has not provided any evidence to the contrary. Other than registering the disputed domain name under the name “yell.travel”, there is no evidence before the Panel to support a conclusion that the Respondent is commonly known by the disputed domain name. The Respondent provides no information about the entity called “yell.travel”, when it was established, what it does, and how it came to obtain the disputed domain name.
The Respondent is not making legitimate non-commercial or fair use of the disputed domain name. The disputed domain name currently automatically redirects Internet users to a website that provides online business directory services similar to those provided by the Complainant, “www.yellowpages.fr”. That website has no apparent connection with the Complainant. The Respondent provides no information as to why the disputed domain name resolves to the “www.yellowpages.fr” website or whether the Respondent is or is not associated with the owner of that website.
Previously, the provided evidence indicates that the disputed domain name resolved to a website which was used to divert customers to third-party travel websites. The Complainant alleges that the website to which the disputed domain name resolved used the same color scheme as the Complainant’s website “www.yell.com” and contained the Complainant’s YELL mark and other registered marks of the Complainant (the evidence provided by the Complainant was not in color, and so the panel cannot independently review this allegation; however, the Respondent does not dispute this). At that time, it is reasonable to infer that the initial registrant of the disputed domain name, Mr. Stein, was aware of the Complainant and the Complainant’s well known YELL mark was being used by Mr. Stein to misleadingly direct users to a website that was not associated with the Complainant. Although the Respondent only officially obtained registration of the disputed domain name on April 15, 2008, the evidence suggests that the Respondent was connected with the previous website to which the disputed domain name resolved (see the Panel’s discussed of Registration and Use in Bad Faith).
The Panel finds that the Complainant has made out an initial prima facie case that the Respondent lacks rights or interests in the disputed domain name. In its response, the Respondent did not attempt to demonstrate any rights or legitimate interest in the disputed domain name. Paragraph 15(a) of the Rules requires the Panel to “… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law it deems applicable.” Consequently, the panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Registration in bad faith must occur at the time the current registrant took possession of the domain name (see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). The Respondent is not the original registrant of the disputed domain name. It became the registrant of the disputed domain name on or around April 15, 2008. It has been established in a number of previous panel decisions that the acquisition of a domain name from a previous registrant constitutes registration within the meaning of the Policy (see for example MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270; Société Air France v. Vladimir Federov,WIPO Case No. D2003-0639, Laure Pester (Lorie) and Sony Music Entertainment France SA v. Movie Name,WIPO Case No. D2003-0312; see also paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). For the purposes of this decision, the date of registration is considered to be the date the disputed domain name was transferred to the Respondent.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is not limited to the application of the circumstances of paragraph 4(b) of the Policy, to determine whether the disputed domain name was registered (or used) in bad faith. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors (see for example Wild West Domains, Inc. v. Neo Jung,WIPO Case No. D2004-0243; Bayer AG v. Daniel H. Davies, Interplanetarium Corp.,WIPO Case No. D2003-0908).
The Panel infers that the Respondent had the requisite knowledge of the Complainant’s mark when it obtained registration of the disputed domain name. Although the Respondent officially obtained the disputed domain name on April 15, 2008, the evidence suggests that it had involvement with the disputed domain name prior to that time. The disputed domain name was originally registered on March 18, 2008. On March 23, 2008 a representative of yell.travel, Mr. Michael Thompson, offered the Complainant an equity share in the disputed domain name and proposed that the disputed domain name be linked to the Complainant’s website “www.yell.com”. The Panel notes that the Respondent’s Response to this Complaint was submitted and signed by Mr. Michael Thompson.
A press release announcing the launch of the websites at the disputed domain name was distributed on behalf of Yell.travel corporation on March 25, 2008. The press release invited advertising and media inquiries to contact the company at “[email protected]. The panel notes that the registrant email used by the Respondent when it obtained the disputed domain name was “[email protected]”. On March 25, 2008, the disputed domain name resolved to a website which offered users “comparison travel services” and an international YellowPages directory for travel related businesses. The Complainant contends that the website at the disputed domain name on March 25, 2008 used the same colour scheme as the Complainant’s website and used the Complainant’s YELL marks and other registered marks of the Complainant. The Respondent has not disputed these contentions.
It can be inferred from the Respondent’s invitation to the Complainant to link the disputed domain name and the Complainant’s website “www.yell.com” that the Respondent was aware of the commercial value in having an association with the Complainant and its YELL mark. The use of the Complainant’s colour scheme and other marks also supports this. Other factors relevant to bad faith include:
- the original yell.travel website appears to have been created only 7 days after the disputed domain name was registered and existed for, at most, 21 days;
- the original yell.travel website included the statement “For over 100 years businesses and consumers alike have known and trusted the YellowPages for providing quality business directories. Now, we offer comparison travel services backed by a name you can trust.”; and
- the current yell.travel website has no relationship with the travel industry as required by the registration eligibility requirements for .travel TLD’s (see http://www.travel.travel/PDFs/TravelPoliciesDecember2007.pdf).
The Panel is satisfied that the disputed domain name was being used to attract, for commercial gain, Internet users to a website that the Respondent had an interest in by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademarks of another. Match.com LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230. The evidence, in the Panel’s view, supports the conclusion that the Respondent sought to profit from, or exploit the trademarks of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
7. Remedy
Under Policy paragraph 4(i), where a Complainant has proved all three elements required under paragraph 4(a), the only available remedies are cancellation or transfer to Complainant. Under Rule 15(a), the Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable.
The Complainant has requested that the disputed domain name, <yell.travel>, be transferred it. As the Panel is satisfied that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, it will direct transfer of the disputed domain name to the Complainant. However, in making this decision the Panel has not assessed whether the Complainant would satisfy the eligibility required for registering and using a .travel TLD. The decision on whether the Complainant is eligible to register and use a .travel TLD is a decision for the .travel Registry Operator.
8. 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, <yell.travel>, be transferred to the Complainant.
John Swinson Sole Panelist
Dated: June 12, 2008
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