Telstra Corporation Limited v. Mikhail Doubinski and Yury Sharafutdinov trading as AAA Marketing World
Case No. DAU2006-0008
1. The Parties
The Complainant is Telstra Corporation Limited, of Victoria, Australia, represented by Davies Collison Cave, of Australia.
The Respondents are Mikhail Doubinski
and Yury Sharafutdinov trading as AAA Marketing World, Mikhail Doubinski, of
New South Wales, Australia, represented by Karl S. Kronenberger of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <whitepage.com.au> is registered with NameScout
Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2006, along with a document containing Further Statements on July 12, 2006. On July 3, 2006, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On July 3, 2006 NameScout Corp. 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 “.au” 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 Respondents of the Complaint, and the proceedings commenced on July 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2006. The Response was filed with the Center on August 6, 2006.
The Center appointed Dr. Michael J. Spence as the
Sole Panelist in this matter on September 18, 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 a partly private and partly state-owned provider of telecommunications services in Australia. It is one of the largest publicly listed companies in that country, with sales revenue in 2005 of approximately AUD$22,161 million.
In 1980, the Complainant adopted the trademarks WHITE PAGES and WHITE PAGES (with a telephone hand set logo) to identify its telephone directories. It now owns five trademark registrations in Australia including the words “White Pages” and an application for a sixth. The earliest of these registrations is dated February 10, 1997. The Complainant also owns the domain name <whitepages.com.au> under which it provides on-line telephone directory services. This site has an average of 2.92 million unique visitors per month, 85% of whom visit the site at least once a week.
The Respondents are resident in Australia and trade
as AAA Marketing World. Since July 20, 2004, AAA Marketing World has been the
owner of the domain name <whitepage.com.au> under which it has run, apparently
since some time in 2005, a site described as a “blog hosting service”.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the domain name <whitepage.com.au> is confusingly similar to its portfolio of ”White Pages” marks; that the Respondents have no legitimate interest in the use of the domain name but have engaged in ”typo-squatting” for the purpose of free-riding on the Complainant’s reputation in its portfolio of WHITE PAGES marks; that the Respondent’s site was not launched under the <whitepage.com.au> domain name until after they had been contacted by the Complainant; that the Respondents knew of the Complainant’s marks before they registered their domain name; and that persons associated with the Respondents have registered several domain names confusingly similar to well-known trademarks, such that their bad faith in registering those domain names may be inferred. On these bases Complainant alleges that the requirements of UDRP paragraph 4(a) are satisfied and that the domain name should be transferred to the Complainant.
B. Respondents
The Respondents argue that the Complainant’s
mark is generic and highly descriptive; that the Complainant has brought no
proof of confusing similarity or secondary meaning; that the Complainant has
a legitimate interest in the domain name as a combination of descriptive words;
that the Complainant has provided no evidence of the illegitimacy of the Respondents’
use of the domain name; and that the Complainant has brought no evidence of
the Respondents’ bad faith. In particular, the Respondents point out that
they have never attempted to extract value in return for the transfer of the
domain name to the Complainant and that their website is not commercial.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no doubt that the domain name <whitepage.com.au> is confusingly similar to the Complainant’s portfolio of WHITE PAGES marks. As Complainant asserts, “[a]n Internet user or consumer viewing the term ‘white page’ (or <whitepage.com.au>) is likely to confuse it with the term ‘white pages’ (or <whitepages.com.au>) … [and] [a]n Internet user, intuitively entering the url ‘whitepage.com.au’ would almost certainly be doing so in an attempt to access Telstra’s WHITE PAGES® directories for Australia”. The absence of evidence of individual cases involving such confusion does not prevent the Panel from assessing its likelihood.
It is true, as the Respondents point out, that “[w]here the alteration
of a domain name —even by a single character—fundamentally changes
its meaning, the presumptions of typo-squatting is [sic] inapplicable …
A&F Stores, Inc., et al v. Chad Nestor …D2003-0260
…. eCrush.com, Inc. v. Cox, Davis & Simpson, LLC, et al ...
D2004-0552”. However, in this case
the deletion of the ”s” from the end of the term “white pages”
does not fundamentally change its meaning such that the case can be characterised,
in the words of the Respondents, as one involving “one stand-alone term
sometimes used as a domain name that happens, at a glance, to look like another
stand-alone term sometimes used as a domain name”. Terms in the plural
and in the singular are far more closely related than such a claim would imply.
The Panel finds accordingly that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Previous WIPO panels have established that, notwithstanding the general burden
of proof on a complainant, once a prima facie case that a respondent
has no rights or legitimate interests in the use of the domain name has been
established, it is for the Respondent to demonstrate that it has such an interest.
If the Respondent fails to do so, the Complainant is deemed to have satisfied
this element of the Policy (Croatia Airlines d.d. v. Modern Empire Internet
Ltd.,.WIPO Case No. D2003-0455, Belupo
d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.)
In this case, the Complainant has established a very strong reputation in the WHITE PAGES portfolio of marks. The Complainant has also not authorized the Respondents to use its marks in the disputed domain name or otherwise. This in combination with the argument that the Respondents must have known of the likelihood of confusion at the time of the registration of the <whitepage.com.au> domain name, and that it is conceivable that they nevertheless registered the domain name for the purpose of free-riding, in this Panel’s view constitutes a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The principal arguments of the Respondents in seeking to demonstrate such rights
or legitimate interests focus on the validity of the Complainant’s trademark
registration given the descriptive nature of the term ‘White Pages’,
and, more generally, on the need to keep descriptive terms free for other users.
As for the former argument, the Panel agrees with the majority in 402 Shoes,
Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie,WIPO
Case No. D2000-1223 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.
As for the latter argument, it is certainly important that descriptive terms be kept free for general use, and the prior UDRP decisions of WIPO panels cited in the Respondents’ arguments give full weight to that concern. The Respondents claim that the words ”white page” are descriptive of a blank page on which the author of a blog may write her thoughts, and point out that the domain name <white.page.co.uk> is used by a UK copywriting firm with this meaning. On this basis they allege that the words should not effectively be reserved to the Complainant as owner of the WHITE PAGES portfolio of marks.
“If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for...”
The Respondents have not established any of the circumstances under paragraph 4(c) of the Policy. In particular, while they point to the existence of another blog site that they own, they do not establish that they had made serious preparations to use the <whitepage.com.au> domain name before notification of this dispute. Given the very considerable extent of the reputation of the WHITE PAGES portfolio of marks, the strong likelihood of confusion between the Respondents’ domain name and the Complainant’s mark, and evidence that the Respondent and persons apparently associated with them have registered other domain names similar to well-known marks, the generic nature of the words constituting the domain name is not in this case sufficient to give the Respondents a legitimate interest in its use. It is worth noting that the term ”white pages” is not used in the UK for the telephone directory and so it is far more likely that an Internet user would understand the terms ”white page” in the domain name <whitepage.co.uk> descriptively, than she would in the Australian ccTLD domain name <whitepage.com.au>.
Accordingly, the Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s argument that the apparent purpose of the choice of domain name is commercial and, in particular, free-riding on the reputation of the Complainant’s trademarks is weakened to some extent by the apparent lack of evidence of commercial gain associated with the Respondents’ site. However the circumstances enumerated in the Policy as examples of bad faith are intentionally non-exclusive, and consideration of the bad faith element needs be undertaken with regard to all of the circumstances of the case.
In the present case, the reputation of the Complainant’s trademark is so strong, and the likelihood of confusion so evident, that in this Panel’s view it is one of the rare cases in which simply registering and using a domain name with a very high probability that it will cause confusion constitutes bad faith.
The Panel notes that the Respondents are resident in Australia and were in all likelihood aware of the Complainant's rights in the WHITE PAGES mark at the time of registration of the disputed domain name. The inference may therefore reasonably be drawn that the Respondent hoped in some way to make use of the reputation of the Complainant.
The fact that the Respondents are currently using the disputed domain name to offer what are touted as “free” blog hosting services with “no advertising” - which as a general proposition they are clearly entitled to do - does little to displace this inference in the present case.
The fact is that the Respondents are using the disputed domain name to offer their blog hosting services through a domain name that is virtually identical to a trademark widely associated throughout Australia with the provision of communications services by the Complainant; and they are doing so without any clear attempt to avoid confusion with the Complainant, for example by including a prominent disclaimer on the website. It is self-evident in these circumstances there is a very high probability of confusion between the domain name and the Complainant’s WHITE PAGES mark. It is also eminently foreseeable that such confusion would be likely to increase the number of hits on the Respondent’s site, and quite possibly result in increased registrations for the Respondent’s blog services.
In these circumstances it is difficult to avoid the conclusion that the domain name was in all probability registered and is now being used for precisely this purpose.
Moreover, bad faith may be inferred by a pattern of registering domain names
that are typographically very similar to well-known trademarks owned by third
parties (Julia Fiona Roberts v. Russell Boyde, WIPO
Case No. D2000-0210 and Vitro Edal v. ICG, WIPO
Case No. D2005-1105). The evidence establishes that this has, in fact, been
the practice of the parties closely associated with the Respondents, including
the person listed as the technical contact for the <whitepage.com.au>
domain name.
The Panel therefore finds that the domain name was registered and is being
used in bad faith.
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, <whitepage.com.au> be transferred to the Complainant.
Dr. Michael J. Spence
Sole Panelist
Dated: October 5, 2006
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