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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. India Yellow Pages
Case No. D2002-0651
1. The Parties
The Complainant is Telstra Corporation Limited, c/o Pacific Access Pty Ltd, 181-189 Victoria Parade, Collingwood, Victoria 3066, Australia.
The Respondent is India Yellow Pages, 74 Nagindas Master Road, Modi & Modi Building, No. 1, Fort, Bombay, Maharashtra, 400 001, India.
2. The Domain Names and Registrars
The Domain Names are <australiayellowpages.com>, <australianyellowpages.com>.
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center, (the "Center") by email on July 26, 2002, and in hard copy form on July 12, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
It is convenient to mention here that the Respondent contends that payment has not been properly made on the basis that the fee for one contested domain name is $1,500, so the fee for two contested domain names should be $3,000. The Respondent is in error. The WIPO fee for two contested domain names is the same as for one contested domain name.
Network Solutions, Inc has confirmed that the domain names <australiayellowpages.com> and <australianyellowpages.com> (the "Domain Names") were registered through Network Solutions, Inc and that India Yellow Pages is the current registrant. Network Solutions, Inc has further confirmed that the Policy is applicable to the Domain Name.
On July 29, 2002, in accordance with the Rules, paragraph 2(a), the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was August 18, 2002.
The Response was received by the Center on August 13, 2002.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is September 5, 2002.
4. Factual Background
Telstra Corporation Limited ("the Complainant") is a company incorporated in Australia and is Australia’s leading provider of telecommunications and information services. Amongst other things the Complainant produces the Australian Yellow Pages business directories. Those directories are available in electronic, print, wireless and voice formats.
The Complainant is the registered proprietor of a number of Australian trademark registrations relating to its Yellow Page directories. Of those registrations the Panel only proposes to refer to three, namely numbers 545,667, 545,668 and 545,669 for the words YELLOW PAGES in classes 16, 35 and 38, all of which date back to the date of application, November 12, 1990.
In addition to the Complainant’s registered rights, it is plain from the evidence set out in the Complaint that the Complainant is the owner of significant unregistered rights (common law rights) associated with its Yellow Pages publications in Australia.
The name of the Respondent, India Yellow Pages, appears to be a business name of an Indian company, Cybernetic Informatics (India) Pvt. Limited, founded by Mr Mahendra Gandhi, the Administrative and Technical Contact for the Domain Names.
A description of the Respondent and its business appears under the "About Us" heading on the website to which the Domain Names are connected. It reads as follows:
"Mr. Mahendra Gandhi - MD
Established CIIPL in 1996. At that time the information technology and Internet technology was growing exponentially. The Organisation is dedicatedly providing business related information on World Wide Web (www) to the end-users via its registered domain.
CIIPL is a pioneer company in India in the field of providing comprehensive authentic business related information on INTERNET under its website address "http://www.indiayellowpages.com". This is a professionally managed company with high growth rate. The promoter, Mr. Mahendra Gandhi, belongs to a very old business family, which has been active in Business since more than five decades in the different segment. Mr. Gandhi is a Mechanical Engineer and a Pilot and is associated in the IT profession since a decade. Mr. Gandhi had a dream to position Indian business houses of all stature on global map through Internet, which is the vision of our growing Organisation. The conceptualisation of websiteaddress as "www.indiayellowpages.com" in 1996 was a unique idea in itself. Today we boast that CIIPL holds 97 domains of world’s major countries. Our domain names are registered as http:// name of the country followed by <yellowpages.com>. Out of these 97 country domains, 14 are on-line, 7 are signed and in pipeline. All these Portals are interlinked with each other. The objects and activities of CIIPL are global. Our presence could be felt in 21 world’s major countries today and in all 97 countries by 2003."
On the same website under the heading "Our Products and Services" the following appears:
"www.indiayellowpages.com (IYP) is a country portal designed on the concept of conventional "Yellow Pages" keeping in mind easy navigation of the site for easy access of information by a surfer. The domain <indiayellowpages.com> is one of the Portal specific to yellow pages Portals out of 14 operational country portals (CIIPL totally has 97 Yellow Pages domains worldwide).
Each country portal is categorised alphabetically from A-Z with the same look and feels all interlinked with each other and offering the same features of the portal. Each alphabet listing has Categories beginning with that alphabet, which are specific to the surfers information requirement. Apart from business information. CIIPL has designed the portal offering customer affordability packages of different types of advertisements like Home Pages, Full Pages, Half Pages, Premium Classifieds, Banner and Panels with options to host information's on the clients selected categories or speciality pages. IYP provides in-depth information on current issues, world news, business and sports updates, stock market etc."
The Respondent registered the Domain Names in June 1997, but the Complainant only became aware of the registrations in March 2002. In April and May 2002, there was correspondence between the parties (not included in the evidence before the Panel) in the course of which the Complainant claims that it drew the Respondent’s attention to its rights and requested transfer of the Domain Names. The Respondent did not reply substantively to that request and this Complaint was then launched.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to trademarks in which it has rights. It points to its Australian trademark registrations for YELLOW PAGES and produces substantial support for the proposition that by virtue of its Australia-wide trade in and around its Yellow Pages publications over the last decade it has acquired common law rights in the name YELLOWS PAGES in Australia. It contends that to Australians the term YELLOW PAGES means the product of the Complainant. The Complainant contends that there are features on the Respondent’s website (e.g. Australian insignia and a picture of a Yellow Pages directory), which are likely to lead people to believe that the site is a site of the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. In support it claims that (1) the Respondent has no relevant trademark registrations in either Australia or India, its home jurisdiction; (2) the Complainant’s rights pre-date the dates of registration of the Domain Names; (3) The Respondent was not using the Domain Names prior to the Complainant’s acquisition of rights in the mark YELLOW PAGES; (4) nobody can use the Domain Names without trading off the Complainant’s goodwill; (5) the Respondent has not offered any bona fide goods or services using the Domain Names; (6) the Respondent is not commonly known by the Domain Names.
The Complainant contends that the Domain Names were registered in bad faith and are being used in bad faith. The Complainant contends that the Respondent registered the Domain Names in order to prevent the Complainant reflecting its trademark in a corresponding domain name and has engaged in a pattern of registering the famous trademark of others as part of domain names. In this context the Complainant points to the fact that the Respondent is the proprietor of over 90 other Yellow Pages domain names featuring that name combined with a country prefix.
The Complainant contends that there are other grounds for a bad faith finding, namely (1) the fact that the website to which the Domain Names are connected is still under development and ‘inactive’; (2) the fact that in selecting the Domain Names the Respondent had or must have had the Complainant and/or its trademark/service in mind; (3) the fact that the Respondent failed to respond substantively to the Complainant’s cease and desist letter; (4) the Respondent’s refusal to provide the Complainant with an address/fax number to enable the Complainant to make direct contact with the Respondent.
The Complainant seeks transfer of the Domain Names or, failing transfer, cancellation of the Domain Names.
The Respondent denies all the Complainant’s contentions.
It denies that the term ‘Yellow Pages’ is susceptible of trademark rights on the basis that the term is a dictionary expression. As to the Complainant’s Australian registered trademarks the Respondent claims that the three registrations referred to in section 4 above are irrelevant because they do not in their specifications of goods/services make specific reference to ‘Internet Yellow Pages’. The Respondent criticizes others of the Complainant’s registrations on other grounds, but, as indicated above, the Panel proposes to ignore those other registrations for the purposes of this dispute.
The Respondent contends that the Respondent’s website makes it abundantly clear as to the identity of the site owner and the nature and purpose of the site. The Respondent denies that there is any likelihood of confusion.
The Respondent contends that its website is active and sets out clearly the nature of its business proposal. It claims to have had ten applicants in response to that proposal, but says that none of the applicants were deemed suitable. It claims that the proposal on offer at the website to which the Domain Names are connected is a bona fide business proposal. It claims to have rights and/or legitimate interests in respect of the Domain Names.
As to the bad faith claims, the Respondent recites the four examples of bad faith set out in paragraph 4.b. of the Policy and denies that any of them are applicable.
Furthermore the Respondent answers the Complainant’s allegations regarding the alleged inactivity of the Respondent’s website, the failure of the Respondent to respond to the Complainant’s cease and desist letter and the alleged failure of the Respondent to provide details of the Respondent’s address and/or fax number. In the view of the Panel this dispute can be resolved without reference to any of those allegations and the Panel sees no need, therefore, to refer further to those allegations and/or the Respondent’s responses thereto.
Finally, the Respondent contends that the Complainant’s launching of this Complaint is "an attempt to snatch the domains" and therefore constitutes Reverse Domain Name Hijacking.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove in relation to each domain name that:
(i) The Domain Name 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely: -
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Identical or confusingly similar
The Respondent invites the Panel to go behind the Complainant’s Australian trademark registrations on the basis that the name YELLOW PAGES is a dictionary term and incapable of constituting a trademark. It is not open to the Panel to second-guess the Australian trademark registrar. The fact is that unless and until those registrations are expunged, the Complainant has registered rights in the trademark and service mark YELLOW PAGES. Accordingly, the Panel finds that YELLOW PAGES is a trademark or service mark in which the Complainant has rights.
The Respondent claims that the three registrations cited above are irrelevant to this dispute. They cover, inter alia, printed business directories, advertising services in relation to the provision and promotion of business directories in any medium and telecommunications services and telephone services. The Respondent claims that the registrations do not cover Internet Yellow Pages. The Respondent asserts that printed Yellow Pages and Internet Yellow Pages are wholly different concepts.
The Panel disagrees. Nowadays a high proportion of printed matter is also available in electronic form on the Internet. In the view of the Panel people familiar with a trademark for printed matter are very likely to associate an identical mark for similar material on the Internet with the proprietor of the mark for the printed matter.
In this case the Domain Names are not identical to the Complainant’s registered trademarks. Are they nonetheless confusingly similar? The only difference is that the Domain Names feature in addition to the Complainant’s trademark a prefix which precisely defines the geographical scope of the Complainant’s rights and precisely describes the Complainant’s product.
The Respondent also appears to argue that since the Internet knows no boundaries, no local territorial right such as an Australian trademark registration should be capable of interfering with the broader global concept. In this case the Respondent’s global concept expressly embraces the Australian market. The Domain Names, as used by the Respondent to form part of website addresses, clearly relate to planned business directories relating to Australia.
The Panel has no hesitation in finding that the Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights. In coming to that conclusion in relation to the Complainant’s registered rights, it is not necessary for the Panel to deal with the Complainant’s unregistered rights and in particular those arising from the Complainant’s use of the mark YELLOW PAGES at "www.yellowpages.com.au". The Respondent appears to ignore those rights altogether. Even if it is the case that the Complainant’s website post-dates the registration of the Domain Names (the Panel does not know whether or not that is so), at the time of registration of the Domain Names the Respondent will have known, along with all other Internet service companies, that on-line versions of Yellow Page directories were an inevitable and natural progression from their printed equivalents.
Respondent’s Rights or Legitimate Interests
The Panel agrees with the Respondent that the various country portal websites of the Respondent, including those connected to the Domain Names are active websites and notwithstanding that, pending the arrival of suitable business partners, they remain to be fully developed. Currently, they serve directly or indirectly to advertise the Respondent’s business proposal. For the purposes of this dispute the Panel accepts that the Respondent’s business proposal is a genuine one. Is that sufficient to give the Respondent rights and/or legitimate interests in respect of the Domain Names within the meaning of paragraph 4(c) of the Policy?
While the Respondent has been making demonstrable preparations to use the Domain Names for an offering of services, can they be said to be bona fide?
As indicated above and as is apparent from the Respondent’s website, the Respondent knew at the time of registration of the Domain Names that:
(1) in most countries of the world printed directories known as Yellow Pages are produced by local telecommunications companies. On the Respondent’s website they are described as ‘conventional "Yellow Pages"’.
(2) On-line versions of the conventional directories were an inevitable and natural development.
Moreover, notwithstanding the Respondent’s views on the registrability of the term "Yellow Pages", the Respondent will have known that in any given country there can only be one source of "Yellow Pages". In other words, the Respondent will have known that in any given country, the producer of Yellow Pages will have exclusive local rights.
Furthermore, it is apparent that those behind the Respondent are experienced businessmen. Manifestly, in formulating their business plan they will have carefully selected the relevant territories whose names were to feature in the Respondent’s "Yellow Pages" domain names and in making that selection will have conducted some basic research of the countries in question.
One way or another, the Respondent, at the time of registration of the Domain Names, will have known of the existence of the Complainant’s Yellow Pages, at any rate the printed version. Additionally, when registering the Domain Names the Respondent simply cannot have been unaware that a business directory service provided over the Internet by reference to the names "Australia Yellow Pages" and/or "Australian Yellow Pages" will be thought by many to be associated in some way with the by then well-known Australian printed publication going under the name of "Yellow Pages".
In the view of the Panel, registering a domain name in such circumstances, knowing of the potential for confusion, cannot give rise to a right or legitimate interest in respect of the domain name in question. The fact, if it be a fact, that visitors to the website to which the Domain Names are connected will immediately see that the site is not the Complainant’s site is not good enough. The Respondent will be deriving a potential business opportunity from those visiting the site expecting to find the Complainant’s site, who might not otherwise have visited the site. Moreover, when the Respondent finds business partners making it worth the Respondent’s while to develop the Australian business directory into a fully operational directory with its potential for advertising and other revenue, it is not difficult to imagine how confusion and deception will occur.
Indeed, the Panel cannot envisage how the Domain Names could be used for an operational on-line business directory without causing severe confusion among Internet users with the Complainant and its Australian "Yellow Pages" directories. The Panel notes that the Respondent denies the likelihood of confusion, but takes the view that it is a denial of the obvious and is to be disregarded.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Panel has found that when the Domain Names were registered the Respondent knew of the Complainant’s "Yellow Pages" in printed form in Australia, knew that an on-line version was a natural and inevitable development and that any business directory operated on-line under the name "Australia(n) Yellow Pages" would be likely to result in confusion and deception of Internet users.
The Panel finds that the Domain Names were registered in bad faith and are being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
In light of the foregoing findings, namely that the Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered in bad faith and are being used in bad faith, the Panel dismisses the allegation of Reverse Domain Name Hijacking and directs that the Domain Names, <australiayellowpages.com> and <australianyellowpages.com>, be transferred to the Complainant.
Dated: September 5, 2002