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WIPO Arbitration and Mediation Center

The complainant is France Telecom, 6 place d’Alleray, 75015 Paris, FRANCE. The respondent are Les Pages Jaunes Francophones, Maximum Telecom svcs, 6201 Sunset Blvd # 124, Los Angeles, CA 90028, USA, and France Online 2373 Westwood Boulevard, Los Angeles, CA 90064, also at 8217 Beverly Boulevard Suit 28, Los Angeles CA 90048.

Complainant is represented by Inlex Conseil, Patent and Trademark Attorney, 68 rue Pierre Charron, 75008 Paris, FRANCE.

Respondent is represented by Andrй Bertrand, Avocat а la Cour, 26 rue Vignon, 75009 Paris, FRANCE.

This dispute concerns the domain names:

and

The Registrar with which the domain names are registered is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the Center) received France Telecom’s complaint on May 24, 2000. On May 25, 2000, the Center sent a request for registrar verification in connection with this case to Network Solutions. The administrative proceedings began on June 11, 2000. The response was received on June 20, 2000.

On June 23, 2000, an e-mail reply from the complainant was received. A response to the complainant’s reply was received from respondent on June 26, 2000. The Center issued an answer to respondent on June 27, 2000. The Respondent submitted a sur-reply on July 3, 2000.

The Center appointed the three following panelists:

François Dessemontet, presiding panelist;
Clive Thorne;
Christian-Andrй Le Stanc.

France Telecom is holder of the semi-figurative trademarks PAGES JAUNES filed in France:

No 1430716 dated October 21, 1977 covering class 16;
No 1430717 of same date for same class;
No 1430719 of same date for same class.

Further, the Complainant is holder of the French semi-figurative trademark LES PAGES JAUNES no 97674262 of April 18, 1997, covering classes 9,16,38,41 and 42.

The use of the trademarks in issue is widespread in France, 25 millions copies of that directory being distributed free of charge to individuals or companies.

As pointed out by the Respondent, the concept and the name YELLOW PAGES has been known since 1954, at least in the United States. The general notion of a phone directory where entries are classified by trade and calling already appeared at the turn of the century.

Worldwide, the publishers of yellow pages are grouped into an association, named the Yellow Pages Publishers Association, which comprises 199 publishers and 80 associate members. Some of them publishing yellow pages in India, Australia, Russia, New Zealand.

Other directories are named PAGES JAUNES in French-speaking countries, e.g. Switzerland, Canada, Belgium and Luxembourg. Companies producing PAGES JAUNES directories in those countries are apparently operating on the web with domain names such as PAGESJAUNES.CH/CA/BE/ LU.

The Respondent registered the domain name PAGESJAUNES.COM and PAGESJAUNES.NET on April 9, 1996 and April 25, 1997, respectively.

The entity, Les Pages Jaunes Francophones, which registered the domain names in issue is appears to hosted by the company France Online or Maximum Telecom Services, both share the same address in Los Angeles as the France Online. According to a screen display made on April 10, 2000, for PAGESJAUNES.NET and April 26, 2000, for PAGESJAUNES.COM, the sites are not yet operational.

5. Discussion and Findings

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent's domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

There is no doubt that there is similarity between the French trademarks of the Complainant and the characteristic elements of the domain name in issue. The difference in the top-level domain name is of no relevance in this regard.

The Complainant admits that the Respondent operates a web directory for French speaking businesses, at least under the domain name France.com registered on behalf of France Online (see Annex G of the Complainant and Remarks of June 23, 2000).

Now, it seems that the domain names in issue are still under construction, at least according to a visit (documented as Annex F) in April 2000.

Therefore, the only legitimate interest of the Respondent appears to be to keep the priority of right onto the domain name, which its prior registration of that domain name secured it.

Nonetheless, the Panel does not consider it in itself improper to keep a domain name for some time without using it. It cannot be said that there is no legitimate interest in trying to secure a priority of right and to maintain that right. It might well be that under the laws of some jurisdictions, the registering of domain names to preserve a priority of right would not be deemed worthy of protection, as it has been judged under Swiss law for trade names that were registered in a purely defensive way. The administrative proceedings do not allow to inquire in details about the state of French and U.S. law in that regard, this difficult question being properly to be adjudicated by ordinary courts of law.

It might also be contrary to the policy of the registrar to allow for sites to be under construction for years without effective use, but this Panel has no authority in that regard, which is a contractual matter properly to be adjudicated under the contract between registrant and registrar and by proceedings between them.

Hence, the Panel is unable to conclude that the Respondent has no legitimate right or interest in the domain name in issue.

1. Bad faith Registration

According to the Respondent, the trademarks of the Complainant are not valid, either under French law or under European law or U.S. Law.

The Panel finds that the verbal element Pages jaunes is clearly descriptive of a sort of directories which is well known under this very name in French, "Amarillas Pбginas" in Spanish, "Yellow Pages" in English, etc. The Panel does not have to pass a judgment on the validity of trademarks that are registered under French law, but it should take into account the likelihood of them being found to be invalid in order to assess the good faith or bad faith of the Respondent, which appears to be connected with France as well as the Complainant.

In this regard, the Panel has to consider the need of the public to connect to web sites that offer directory services under the most common denomination for such services. The fact that all over Europe, as well as in the U.S., Australia, Canada, India, Russia and other countries, business directories are known under the name Yellow Pages precludes the Complainant’s claim to exclusivity, based on its trademarks, trade name or any other intangible asset. Some descriptive terms have to remain in the public domain in order for the information society to run smoothly.

Now, this might lead to deny to the Respondent the exclusive use of its registered domain name. However, the present dispute is not between the Respondent and a third party which the Respondent would charge with cybersquatting, but between the Complainant, which asserts an exclusivity on domain names consisting of pagesjaunes/…, and the Respondent. We conclude that the public interest is best served if the net users can access to business directories through more than one company and site. Further, we find that through the vast array of web sites which Complainant directly or indirectly controls, the Complainant can propose its services and derives enough income from advertising, so that its own interests are not imperiled by the coexistence with the Respondent’s domain name.

These findings also mean that the Respondent could not have acted objectively in bad faith when acquiring the first registration on the domain name in issue.

2. Bad Faith Use

No finding of use in bad faith can be made against the Respondent. The Respondent did not try to sell or otherwise apply pressures for obtaining advantages in connection with the release of the domain name. The Respondent does not appear to collect well-known domain names that were left unoccupied by the companies most legitimately entitled to them. On the contrary, the professional activities of France Online seem to dictate to have some domain name of the sort in issue. Assuredly, the Panel cannot follow the argument of the Respondent’s learned counsel when he states that the Complainant could have registered the domain name in issue in 1995, when most non U.S. companies had to register domain names with a national top level domain name, such as the one Pagejaunes.fr of which the Complainant is an "indirect owner" (see annex R). In any case, the point is not decisive, as it is hypothetical.

Finally, in the present circumstances, the fact that the Respondent seems not to be an active company is not a sign of bad faith, since it clearly and unmistakably reacted when the Complainant opened the present proceedings, and gave full details about address and contact person.

For the reasons set above, the request to transfer or to delete the domain name shall be denied.

The Respondent requests the Panel to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings.

Now the present case presents complex issues of fact and legal issues, e.g. the validity of the French trademarks owned by the Complainant, the keeping of the domain name in issue on hold for four years, and the legitimate interests of the French-speaking directories to use their domain name undisturbed by the use of the web site of the Pagesjaunes francophones. It is not a case of "reverse domain name hijacking" but a case of a genuine commercial dispute arising between competitors as to the rights of each of them. Further, the Complainant could well win the case if it were to be brought to the French courts, if those courts are competent by reason of the common nationality of the real competitors, as was witnessed e.g. by the Atlantel case, one of the first French cases to be decided in circumstances akin to those of the present case, and in favor of the then plaintiffs.

The Panel declines to order the transfer or the deletion of the domain name in issue.

The Panel declines to declare that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceedings.

François Dessemontet
Presiding Panelist

Clive Thorne Christian-Andrй Le Stanc Panelist Panelist
Panelists

Dated: August 21, 2000

Footnotes:

1. See Arrкts du Tribunal Fйdйral 93 II 256.

2. TribGrande instance de Bordeaux, ordrйfйrй, 22 July 1996, N° 1366/96 – 1543/96