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and Mediation Center
DeTeMedien Deutsche Telekom Medien GmbH v. Gelbeseiten GmbH
Case No. D2006-0358
1. The Parties
The Complainant is DeTeMedien Deutsche Telekom Medien GmbH, Frankfurt am Main, Germany, represented by Bird & Bird Rechtsanwдlte Munich, Germany.
The Respondent is Gelbeseiten GmbH, Lewes, Delaware, United States of America,
represented by Rechtsanwalt Dr. Harald von Herget, Berlin, Germany.
2. The Domain Name and Registrar
The disputed domain name <gelbeseiten.com> is
registered with Network Solutions, LLC.
3. Procedural History
The Complain was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006 by e-mail and in hardcopy on March 24, 2006.
On March 22, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue.
On March 27, 2006, Network Solutions, LLC 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 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 Centre formally notified the Respondent of the Complaint, and the proceedings commenced on March 28, 2006.
In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2006.
On April 11, 2006, the Respondent requested an extension of the delay of about 14 days to file its Response by fax. The Center acknowledged receipt of the Respondent’s fax on April 12, 2006 and stated it would like to receive the Complainant’s comments on the request before rendering its decision on this matter.
On April 18, 2006, in the absence of any comments from the Complainant in respect to the Respondent’s request for extension, and subject to the Panel’s authority pursuant to the Rules, paragraph 14, the Center informed the Parties that the Response due date was postponed to April 25, 2006.
The Response was filed with the Center on April 25, 2006. An Amended Response was also filed with the Center on April 26, 2006. As this filing was received after the extended Response due date, the Center acknowledged receipt of this Amended Response and stated it would be treated as a Supplemental Filling. The Center mentioned that this Supplemental Filing would be brought to the attention of the Panel, which would decide whether to consider it or not, pursuant to the Rules, paragraphs 12 and 14.
On May 3, 2006, the Center acknowledged receipt of the Complainant’s Supplemental filing. The Complainant requested the Panel not to consider the Amended Response of the Respondent dated April 26, 2006, for its decision, as in the absence of any exceptional circumstances this document had not been filed in accordance with the Rules, paragraph 15 (a). Nevertheless, as the Respondent filed two Responses, the Complainant requested the Panel to take into consideration these unsolicited supplementary filings by reason of mutual fairness. The Center noted that mention of this filing would be made to the Panel, which shall retain final authority as to whether it should be requested from the Center and considered or not.
The Center appointed Dr. Kamen Troller to sit as sole panellist on the Panel in this matter on May 8, 2006.
The Panel finds 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. Absent exceptional circumstances, the Panellist was required to forward its decision to the Center in accordance with paragraph 15 of the Rules, by May 22, 2006.
On May 19, 2006, pursuant to the Rules, paragraph 12, the Panel informed the Parties it had requested to consider the Supplemental Filings submitted by the Respondent on April 26, 2006, and by the Complainant on May 3, 2006. Pursuant to the same paragraph, the Panel issued the following Procedural Order no. 1:
“Each Party shall, within ten (10) days of the issuance of the present Procedural Order and in accordance with WIPO Supplemental Rules for UDRP, paragraph 3, submit a reply to the other Party’s supplemental submission, accompanied by any further documents considered relevant in support thereof.
(i) Each submission pursuant to paragraph (1) of the Procedural Order shall include a declaration as follows:
“[Complainant/Respondent] certifies that the information contained in this submission is to the best of the [Complainant’s/Respondent’s] knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
(ii) The decision due date is hereby postponed to June 5, 2006.”
Pursuant to the Panel’s Procedural Order No. 1, the Parties filed their
Supplemental filings with the Center before the expiry of filing delay on May
4. Factual Background
The Complainant is DeTeMedien Deutsche Telekom Medien GmbH, Frankfurt am Main, in Germany, an affiliate company of Deutsche Telekom AG, one of Europe’s largest telecommunication companies covering the entire spectrum of modern telecommunications and information technology.
The Complainant publishes in cooperation with several publishing companies the leading German directory “Gelbe Seiten”.
The trade name “Gelbe Seiten” is in use of commerce since more than 40 years by the Complainant and respectively by its legal predecessors. “Gelbe Seiten” is used as product name under which the business of directory-services is conducted. Year by year approximately 30 Million printed directories are labelled with the title “Gelbe Seiten”.
The Complainant offers its services also in the Internet namely on the website “gelbeseiten.de”.
The Complainant is the owner of more than 100 national, international and European trademark registrations including or being composed only by the verbal elements “Gelbe Seiten”. Figurative German mark GELBE SEITEN (DE-1033815, covering class 35, 41) has a priority from 02.04.1979. Furthermore, the Complainant holds international figurative mark GELBE SEITEN (IR-576237, basic application dated 02.04.1979, covering class 35, 41), German wordmarks GELBE SEITEN (DE-1177265, priority from 02.08.1990, covering class 35, 41) and “GELBE SEITEN” (DE-39644690 priority from 15.10.1996, covering class 9, 16, 41) as well as European wordmarks GELBE SEITEN DER DETEMEDIEN (CTM-001506880, priority from 14.02.2000, covering class 9, 16, 35, 41) and “DeTeMedien Gelbe Seiten” (CTM-001506955, priority from 14.02.2000, covering class 9, 16, 35, 41) (Complainant’s Annex 4).
The Respondent is Gelbeseiten GmbH, a company that was founded on October 13, 1999 in Delaware, USA. Its former company name was Tritron GmbH, a company that was incorporated on January 19, 1999, in Delaware, USA (Respondent’s Annexes 1-4 to Supplementary Filing).
The Panel could not determine exactly in what type of business Gelbeseiten GmbH is in.
The Respondent does not claim to have registered any trademark with the words “gelbeseiten”.
The domain name is registered with Network Solutions, LLC. The response of Network Solutions, LLC to the request for registrar verification of the Center lists Gelbeseiten GmbH, firstname.lastname@example.org, in Delaware, USA, as the registrant, administrative and technical contact, whereas David Petterson, email@example.com, in Gibraltar, is mentioned as billing contact.
The WHOIS record for “gelbeseiten.com” shows that it was created on September 3, 1999 and that its database was last updated on July 1, 2004. (Complainant’s Annex 1).
The domain name resolves to a webpage addressing Internet visitors in German with the following slogan (Complainant’s Annex 7):
“Lerne Pokerspielen und werde schnell reich! 100% Extra Bargeld fьr alle neuen Spieler bei Bestpoker.com. Mit Bonuscode GEL100 bekommen Sie 100 Euro dazu”.
“Improve how to play poker and become rich quick! 100% Extra cash for all new players on bestpoker.com. With bonus code GEL100 you will receive 100 Euro extra”.
By clicking on the icon “Clicken Sie hier” (click here) shown on the webpage, the visitors are re-directed to the website “bestpoker.com”, which is a commercial online poker platform proposing a wide range of products and services for poker players (Complainant’s Annex 8).
Finally, it has been admitted by both Parties that the disputed domain name
<gelbeseiten.com> is similar to the Complainant’s registered trademarks.
5. The Parties’ contentions
A. The Complainant
The Complainant has requested that the disputed domain name be transferred to the Complainant in accordance with the Rules, paragraph 4(i).
The Complainant’s allegations can be summarized as follows:
i. Identical or Confusingly Similar
The Complainant claims that “Gelbe Seiten” is considered to be a well-known sign in Germany.
The Complainant filed a recent opinion poll (dated November 2005) generated by one of Germany’s most recognized marketing research institutes, “TNS Infratest”. According to this opinion poll, “Gelbe Seiten” is known by 97,0% of the German public (Complainant’s Annex 5).
The Complainant states that by comparing the Complainant’s trademarks to the domain registered by the Respondent, it becomes clear that – apart from the use of small letters – both appellations are phonetically, visually and conceptually identical:
Gelbe Seiten <gelbeseiten.com>
In its Supplemental Filing dated May 3, 2006, the Complainant adds that it
is prevailing panel case-law, that for the finding of confusing similarity the
content of a website (whether it is similar or different to the business of
the trademark owner) is irrelevant (see WIPO Case No. D2000-1698 – <guiness.com>;
WIPO Case No. D2001-0110 – <ansellcondoms.com>).
ii) No rights or legitimate interest of the Respondent
The Complainant contends that the Respondent has no legitimate interest in the use of the disputed domain name: To the Complainant’s knowledge, the Respondent makes neither use of the words “Gelbe Seiten” as a trademark, nor has he been commonly known by the domain name or by conducting any activity under this name, nor is he holding any better trademark rights or other better rights “Gelbe Seiten” in Germany or abroad: No respective trademarks were found in the name of the Respondent in Germany, the European Community (Community trademark) and with WIPO (Complainant’s Annex 6). Finally, there were no matches found by Google’s and Yahoo’s search engine (Complainant’s Annex 3) from which it might have been possible to determine any rights or legitimate interests in the disputed domain.
The Complainant has not consented to the Respondent’s registration of the domain name in dispute and has not given to the Respondent any respective license or any other right to use or register the sign as a domain name. There are no economical connections between the Parties.
The Complainant claims that the Respondent is currently using the disputed
domain in order to divert and mislead German speaking consumers attracting them
to a commercial gambling website. For this purpose, the Respondent chose the
domain name <gelbeseiten.com>, composed of German words and, therefore,
targeting German users.
The Complainants contends that the Respondent has no legitimate interest in using the Complainant’s famous trademark in order to mislead and divert consumers attracting them to a commercial gambling website that is totally unrelated to the content they expecting to find on the domain consisting of the famous trademark GELBE SEITEN.
In its Supplemental Filing dated May 3, 2006, the Complainant emphasizes that the Respondent confines itself in alleging a pretended “name or mark gelbeseiten”, however, without substantiating or proving any right or legitimate interest.
In its Supplemental submission filed pursuant to Procedural Order No. 1, the Complainant states that, even searching in specific online-directories for Lewes/Delaware, the alleged place of business of the Respondent as registered in the WHOIS register, no matches are found under the name “Gelbeseiten GmbH” (Complainant’s Annex 9).
The Complainant mentions also that if ever the Respondent was doing any real business, this would surely not be under the alleged name “Gelbeseiten” but at best under the name “bestpoker”.
iii) Registered and used in bad faith
According to the Complainant, the domain name has been registered in bad faith as demonstrated by the following facts:
The Respondent registered the disputed domain name <gelbeseiten.com> on September 3, 1999 and, therefore, several years after filing and registration of the Complainant’s trademarks mentioned above. By this time “Gelbe Seiten” was already protected by the aforementioned European, international and German trademarks for the Complainant and was a well-known brand in Germany. Thus, the Respondent choosing the identical German words for the disputed domain had to be well aware of the Complainant and its trademarks and trade names when registering said domain.
Registration in bad faith is also emphasized by the fact that the Respondent acts as a German corporation “GmbH” being the German abbreviation of “Gesellschaft mit beschrдnkter Haftung” (Limited Liability Corporation). This German legal form of company does not exist in Delaware/United States of America were the Respondent is supposed to be based pursuant the above mentioned contact data provided by the Registrar (Complainant’s Annex 1).
Furthermore, the Respondent should have undertaken a clearance search in order to check whether the domain name was free of use and would not violate third party’s interests. By performing such a search the earlier rights of the Complainant would have been detected.
In addition, the Complainant claims that the domain name is being used in bad faith because of the following reasons:
The Respondent uses the domain currently in the course of trade. With this German domain name he clearly targets the German speaking audience that knows the trademark GELBE SEITEN as a famous trademark. With this domain name the Respondent tries to gain profit from misdirected German website searchers who were looking for “Gelbe Seiten” i.e. the Complainant’s (internet) services: As shown before, the Respondent addresses its German target audience looking for the Complainant’s services in German language to redirect them to the commercial online poker platform “bestpoker.com” (Complainant’s Annex 8). Thus, the Respondent tries to obtain advantages of the well-known trademark GELBE SEITEN for purposes of gambling business. The fact that the Respondent uses a German domain, to address internet users in German language with the above mentioned slogans in order to attract them on the commercial gambling website that is totally unrelated to the content they were looking for evidence the Respondent’s use in bad faith.
Last but not least the Complainant claims that the Respondent prevents the Complainant from using the domain in the course of its own business.
In its Supplemental Filing dated May 3, 2006, the Complainant emphasizes one
more time that the disputed domain name is in any case actually used in bad
faith: The Respondent alleges being an American Corporation domiciled in Delaware/US.
The Complainant states that, even assuming, that this allegation was indeed
substantiated and proven, quid non, the use of (non-native) German language
for the disputed domain name indicates the use in bad faith as its not only
deepening, but establishing similarity to the infringed marks (see Parfьmerie
Douglas GmbH v. Khatnani S.A., WIPO Case
The Complainant contends that using an identical domain while having no connection
to the Complainant and its mark or products suggests “opportunistic bad
faith” (see Research In Motion Limited v. Dustin Picov, WIPO
Case No. D2001-0492).
In its Supplemental submission filed pursuant to Procedural Order no. 1, Complainant emphasizes that the allegations of the Respondent stating he bought the domain from Bizpages Ltd., the domain being originally registered by a private person in Switzerland, are not proven and therefore contested by the Complainant. Furthermore and under the assumption, these allegations were true – quid non –, the Panel will draw inferences about whether the domain name was registered and used in bad faith given the circumstances surrounding registration and alleged transfer. The fact that the domain has been transferred several times underlines its registration for the purpose of selling it to third persons and preventing the Complainant from using this important generic domain in the course of its own business. It has, therefore, been registered in bad faith. The Respondent did not prove or even claim a legitimate interest or use of the alleged prior owners.
The Complainant adds finally that the Respondent intentionally attempts to attract, for commercial gain, German speaking Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known trademark. Consumers will erroneously assume a commercial link between the website and the famous trademark GELBE SEITEN as to the source, sponsorship, licensing or affiliation.
B. The Respondent
The Respondent has requested the Panel to deny the remedies requested by the Complainant.
The Respondent’s allegations can be summarized as follows:
i) Identical or Confusingly Similar
The Respondent contends that, even if the disputed domain name is similar to the brand, which is claimed by the Complainant, there is no danger of confusion because of the different branches of business.
ii) No rights or legitimate interest of the Respondent
The Respondent alleges that the Complainant has no better legitimate interests than the Respondent in the disputed domain name, because it is not called by this name as well.
The results of the search engine “Google search” shows that the Complainant is named on the second page for the mark GELBESEITEN in the web but has no similarity in word or tone. Therefore, according to the Respondent, the Complainant is not allowed to request a dispute.
In its Supplemental filing dated April 26, 2006, the Respondent claims that it has legitimate interests in the disputed domain name, because it bears the name or mark GELBESEITEN since October 1999 what can be proofed by the Delaware authorities as well. Therefore, the Respondent contends it had and has a vested interest on a homonymous domain.
iii) Registered and used in bad faith
The Respondent states that the domain name was not registered for the purpose of selling, renting or other financial advantages. The Respondent assured the domain <gelbeseiten.com> because of its homonymous business “gelbeseiten GmbH”. Therefore it is not being used in bad faith. In contrast it was necessary for the Respondent to appear on the internet by the same name.
The Respondent contests that “GmbH” is not a legal form of company in Delaware/United States of America. According to the Respondent, this shortcut means a limited liability company formed under the laws of the State of Delaware, having 1 or more members. [Title 6 Commerce and Trade, § 18 –101 Definitions (6)].
Furthermore, the Respondent claims that the domain name is not being used in bad faith: The Complainant cannot act on the assumption that the Respondent tries to gain profit from misdirected German website searchers. If the Complainant really assumed that German website searchers would looking for a German company by feeding a “com” address, the Complainant would have had ensured this disputed domain too.
Finally, the Respondent alleges that there is no other way to get to the domain of the Respondent because there are no matches or links found by Googleґs and Yahooґs internet search engine in view of the Respondents or its company name. The amended search results show how less frequented the disputed domain is. Therefore is no reason for concerning misleading directory-searchers.
In its Supplemental filing dated April 26, 2006, the Respondent explains that it bought the domain <gelbeseiten.com> on July 1, 2004, by Bizpages Ltd. It was first registered by a private person in Switzerland in 1999, then bought by bizpages 1999 and sold to the Respondent.
In its Supplemental submission filed pursuant to Procedural Order No. 1, the
Respondent repeats finally that “GmbH” is the shortcut meaning of
a limited liability company formed under the law of the State of Delaware, USA.
The Respondent emphasizes that if the Complainant alleges that it is only the
German abbreviation for “Gesellschaft mit beschrдnker Haftung”
it should catch up on the Statutes of Delaware. Nevertheless, the Respondent
claims that the affidavit of incorporation of the “Tritron GmbH”,
which is the former name of the Respondent, will disabuse the Complainant (Respondent
6. Discussion and Findings
A. Procedural Matters
There are no specific procedural matters to be determined.
B. Substantive Matters
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Names), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Names are 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 in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names has been registered and is being used in bad faith.
i) Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of several GELBE SEITEN registered in Germany and some other countries.
The Complainant alleges that the Disputed Domain Name <gelbeseiten.com> is identical or confusingly similar to this trademark.
The Respondent alleges that there is no risk of confusion between the Disputed Domain Name and the trademark GELBE SEITEN.
In the assessment of whether a domain name and a trademark are confusingly
similar, all relevant circumstances must be taken into account, in particular,
the degree of oral, visual or conceptual similarity between both terms, the
similarity of the goods or services they are used for, and the distinctiveness
the trademark has either per se or by virtue of the mark’s recognition,
see Dr. Ing. h. c. F. Porsche AG v. The Training Shed, WIPO Case No.
D2003-0644, and Tchibo Frisch-Rцst-Kaffee GmbH v. Hans Reischl, WIPO
Case No. D2001-0079.
The Panel considers that:
The Complainant’s trademark, GELBE SEITEN, is embodied in the Disputed
Domain Name. The fact that the two words gelbe seiten are separated and that
they are in part written with Capital Initials in Complainant’s mark on
the one hand, and that on the other hand, in Respondent’s Domain Name,
they are presented in one word and are followed in addition by the suffix “.com”
does not prevent them from being confusingly similar, due to their phonetic,
visual and conceptual identity. This has been established in many previous Panel
decisions, see for instance V&S Vin & Sprit AB v. Canal Prod Ltd.,
WIPO Case No. D2002-0437, as well as the
ones cited by the Complainant.
Accordingly, in regard to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is quasi identical and therefore confusingly similar to the Complainant’s trademark.
ii) No Rights or Legitimate Interests
In accordance with paragraph 4 (a) (ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; however, according to paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the Disputed Domain Names by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Respondent contends that he does have a right or a legitimate interest in the Disputed Domain Name.
The Panel needs to consider whether the Respondent, by having registered the domain name in 1999, basing the registration on an identical company name, and using the domain name for attracting visitors to a poker game, has been using the domain name, before any notice of the dispute was given to him, for a bona fide offering of services.
The two words “gelbe Seiten” belong to the common language. They constitute a descriptive generic term for thin sheets of paper or other suitable material of yellow color and must be kept at the free disposal of the public to designate those objects or matters related thereto.
The term “Gelbe Seiten”, or “Pages Jaunes “ in French, “Pagine Gialle” in Italian, “Yellow Pages” in English, and so on in a great number of languages/countries, is furthermore an extremely well known designation for a commercial registry. Notwithstanding its generic character, this term has been apprehended in many countries by an important national company and registered as trademark for issuing a book with yellow pages and giving commercial and other information about companies and for offering services related thereto.
The Respondent has used a particular combination of two dictionary words belonging to the public domain and constituting a very well known valid trademark for a certain kind of goods and services (commercial register) for use as registered name of a US firm and as domain name for a poker game site.
The words Gelbe Seiten are neither descriptive for commercial registers nor for poker games – in both cases, they constitute imaginary or fantasy designations, which may validly be registered as trademarks or as company names.
The Panel considers that Respondent did not register the domain name <gelbeseiten.com>
with the intention to use it in the generic meaning (thin sheets of yellow color),
but to take advantage of the reputation of the trademark of Complainant, of
the high level of knowledge which the German speaking population has of the
combination of the words “gelbe” and “seiten”. The Panel
joins the prevalent attitude of other panellists, as e.g. in the “Digital
Home”, WIPO Case No. D2003-0790,
the “Antigua Sports”, WIPO
Case No. D2004-0543, or in a very recent decision WIPO
Case No. D2006-0340, where the 3 member Panel found:
“Respondent correctly asserts that it may
be legitimate for a respondent to register a domain name consisting of a dictionary
word that is not a well-known trademark and use that website to post links that
are relevant to the common meaning of the dictionary word. See, e.g., Landmark
Group v. DigiMedia.com, L.P., NAF File No. 285459 (August 6, 2004); see also
National Trust for Historic Preservation v. Barry Preston, WIPO
Case No. D2005-0424 (August 10, 2005); WIPO
Decision Overview § 2.2. As the Panel explained in the Landmark Group case,
though, this business model is legitimate only if “the domain names have
been registered because of their attraction as dictionary words, and not because
of their value as trademarks.”
If the question thus comes down to the Respondent’s motives, it would seem relevant that a registrant (located in the United States) has registered a domain name corresponding to a German-language mark apparently deemed famous in Germany, for a German-language commercial purpose unrelated to the generic words used.
On this basis, the Panel determines that Respondent has not made a bona fide offering of goods or services and that Complainant has established that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
iii) Registered and Used in Bad Faith
Paragraph 4(a) (iii) of the Policy requires the Complainant to prove use as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is in bad faith:
(i) Respondent has registered or has 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 his documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 he has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on his website or location.
The Panel considers that:
The Respondent does not fall into the categories of bad faith registrants and users of domain names listed in paragraphs 4(b)(i)-(iii) of the Policy. Complainant has in fact not established that Respondent tried to sell the domain name, or that due to Respondent’s registration, Complainant has been prevented from using the term “Gelbe Seiten” or even “gelbeseiten” for its own business or that this business was disrupted.
The solution of this case lies in Paragraph 4(b)(iv) of the Policy.
There is no doubt that Respondent has intentionally registered the domain name <gelbeseiten.com> to attract, for commercial gain, German speaking Internet users to his poker game website.
Does Respondent create a likelihood of confusion in the sense of the aforementioned Paragraph 4(b)(iv)? The answer is: yes, he does.
It results from the market analysis submitted by Complainant, that the term “Gelbe Seiten” is extremely well known by the German public as a commercial business register (97%), 10% of the population link it spontaneously to Complainant, and over 50% link it in one way or another to the postal service. Given this status, the Panel considers that the Respondent has registered and used the disputed domain name, which is confusingly similar to the Complainant’s mark, to distract consumers looking for the Complainant’s service towards its own web page.
The Panel finds that Complainant has established that Respondent’s behavior
falls under Paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in application of Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the litigious domain name be transferred to Complainant.
Dr. Kamen Troller
Dated: July 17, 2006