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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yell Limited v. Ultimate Search

Case No. D2005-0091

 

1. The Parties

The Complainant is Yell Limited, Reading, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Herbert Smith, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Ultimate Search, Hong Kong, SAR of China, represented by Dann, Dorfman, Herrell & Skillman, PC, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names are:

<yel.com>;
<yellweb.com>;
<ukyellowpages.com>;
<londonyellowpages.com>.

(collectively referred to in this decision as “the disputed domain names”). All of the disputed domain names are registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2005. On January 28, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On February 16, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the disputed domain names. The Center then 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 Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was March 13, 2005. The Respondent submitted its Response to the Center on that date.

The Center appointed Warwick Smith, Clive Thorne and Alan L. Limbury as panelists in this matter, on March 24, 2005. The Panel finds that it was properly constituted. Each member of 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

The Complainant is a subsidiary of Yell Group Plc, a company which is listed on the London and New York Stock Exchanges. The main activity of the Complainant and its parent company is the provision of classified advertising services, either in the form of hard copy directories, or on-line directory services. One of the Complainant’s publications in the United Kingdom is the “Yellow Pages” telephone directory.

The Complainant says that the first edition of the Yellow Pages was published in 1966, as a section in a regional United Kingdom telephone directory. Since then, the Complainant and its predecessors in title (the General Post Office and British Telecommunications Plc – hereafter referred to as “BT”) have expanded the distribution of Yellow Pages to the point where, in 2003/4, there were 90 editions of Yellow Pages directories and 27.1 million copies distributed to homes and businesses across the United Kingdom. The Complainant says that approximately that number of directories have been distributed in the United Kingdom over each of the last 10 years. In total, over 1 billion Yellow Pages directories have been distributed to households and businesses in the United Kingdom.

The Complainant has provided details of substantial expenditure on advertising its Yellow Pages directories over the last six financial years – the annual advertising spend in those years has ranged between ₤11.6 million and ₤22.5 million.

The Complainant’s Trademarks

YELLOW PAGES

The Complainant is the registered proprietor in the United Kingdom, of a number of trademarks comprising or incorporating the words YELLOW PAGES. First, the Complainant’s predecessor in title, The Post Office, registered the word mark YELLOW PAGES in international Class 16 in respect of “directories of businesses and services, all having yellow pages”, with effect from August 15, 1979.

Secondly, BT registered the word mark YELLOW PAGES in the United Kingdom as a service mark, as of October 1, 1986, in Class 35 of the register. The class 35 registration covered the following:

“Advertising and publicity services, telephone answering services … data processing services … direct mail advertising services and compilation of direct mailing lists.”

BT also registered the word mark Yellow Pages in the United Kingdom, as of October 1, 1986, in Class 38 of the register, in respect of the following:

“Telecommunication, facsimile, telex, telephone, telegram, message collection and transmission services; services for the transmission of data and of information by electronic, computer, cable, radio … services for the transmission, provision or display of information for business or domestic purposes from a computer-stored data bank ….”

The Complainant has also produced evidence of various YELLOW PAGES device marks registered in the United Kingdom by either the Post Office or BT.

The YELL Mark and the YELL Device Marks – Registrations in the UK

The Complainant says that it is also the registered proprietor in the United Kingdom, of a number of trademarks comprising or incorporating the word YELL. First, BT registered the word mark YELL in international Class 9, with effect from July 11, 1996. That registration covered various telecommunications and data communications goods, computer software recorded on tapes, and a range of other goods generally associated with computer software and hardware and digital communications.

On October 25, 1995, BT registered the word mark YELL in the United Kingdom as a service mark in a number of international classes, including classes 35, 36, 37, 38, and 39. It is not necessary to refer to all of the services covered by this registration, but the Panel notes that the Class 35 registration covers “compilation of business directories”, and “compilation, provision, storage and retrieval of business and commercial information”. The Class 36 registration covers “interactive database information services”.

BT also registered in the United Kingdom (with effect from March 6, 2000) two “YELL” device marks. The first (referred to hereafter as “the YELL small square mark”) consisted of the words “YELL.COM” with the “dot” between the “YELL” and the “COM” consisting of a small square with rounded edges. This mark was registered in respect of certain goods in international Classes 9 and 16, and in respect of various services in international Classes 35 through 42. The Class 35 registration included “the compilation and publication of business directories”.

The second of the March 2000 registrations (referred to hereafter as “the YELL large square mark”) consisted of the YELL small square mark, with the addition of a large square with rounded edges in front of the “YELL”. This particular registration also covered certain goods in international Classes 9 and 16, and various services in Classes 35 through 42. The Panel notes that the Class 35 specification included “compilation and publication of business directories.

For convenience, the YELL large square mark and the YELL small square mark are collectively referred to hereafter as “the YELL device marks”.

YELL Registrations in the European Community

BT registered the word mark YELL in the European Community, with effect from October 21, 1998, in respect of certain goods in international Class 9. BT also registered the word mark YELL in the European Community in respect of a range of services, on May 29, 2000. Those services again included “compilation of business directories” in Class 35.

The YELL Mark and the YELL Device Marks – Registrations in the United States of America

The Complainant has produced evidence of BT having registered the word mark YELL in the United States, in Classes 9, 16, and 35 through 42. The application for this mark appears to have been filed on November 20, 1996, and the mark registered on October 13, 1998. The Class 35 registration covers the provision of business information services by electronic means, preparing advertisements for others and “dissemination of advertising of others via a global computer network”. The Class 35 specification also includes “telephone and business directory information services accessed via a global computer network”.

The Complainant itself applied to register the YELL large square mark in the United States, on August 10, 2000, and registration was effected on January 21, 2003. Again, the US registration of the YELL large square mark covered certain goods in international Classes 9 and 16, and certain services in Classes 35 through 42. The Class 35 specification included “telephone and business directory information services accessed via the internet … creating and placing advertisements and listings by means of a website; dissemination of advertising of others via the internet …”.

Other YELL Trademarks

The Complainant has produced evidence of various other registrations incorporating the word “Yell”, some in combination with the word “com” and some not. It is not necessary to refer to these other registrations.

The Complainant’s Website

The Complainant also operates an internet-based classified business information service, at “www.yell.com”. The Complainant says that it and its predecessor in title have supplied this service continually since January 1996, originally at “www.yell.co.uk”, and, apparently from around March 2000, at “www.yell.com”. The Complainant has annexed to the Complaint examples of national newspaper advertisements for these on-line services, marketed under the mark YELL, dating back to January 1996. Over the last six years, the Complainant has budgeted annual figures ranging between ₤800,000  and ₤8.1 million, to promote goods and services sold under or by reference to the marks YELL and YELL.COM.

The Respondent and the Disputed Domain Names

The Complainant has referred to a number of previous administrative proceedings under the Policy in which the Respondent has been a party, and in which the Respondent’s business activities have been described. The Respondent in its Response appears to accept the Complainant’s description of its activities, so the following description of those activities is taken by the Panel as accurate.

The Respondent’s business includes the registration of a portfolio of domain names incorporating common terms, generic terms, short terms and useful phrases. When it acquires a domain name, the Respondent “parks” the domain name by pointing it to a page of general interest links. Later, the Respondent creates a search page and search terms which are connected to the content of the domain name. The domain name is used in conjunction with an advertising subscription database operated by an advertising consolidator, on the basis of correspondence between terms in the domain name and search terms for which advertisers have paid subscriptions on a performance basis. (Taking the “www.londonyellowpages.com” home page, for example, “London” appears to have been one of the search terms adopted for the operator of the “www.inest.com” website.)

In this case the Respondent has used the targeted advertising service operated by a company called Overture, a subsidiary of Yahoo, Inc! The Complainant explains that many businesses have agreements with Overture pursuant to which Overture distributes their advertisements to third party websites such as the websites to which the disputed domain names resolve. The third party websites on which the advertisements are displayed receive revenue – the advertiser pays for the service in accordance with the number of hits its advertisement has received.

The disputed domain names were registered by the Respondent on the following dates:

<yel.com> – January 5, 1999;

<ukyellowpages.com> – February 8, 2000;

<londonyellowpages.com> – May 18, 2002;

<yellweb.com> – December 29, 2003.

The disputed domain names are all pointed to an on-line directory (or directories), listing categories of goods and services. Clicking on any of the goods/services listed, generates a list of advertisements for those goods and services, in the form of links to the websites of businesses providing the relevant goods or services. The on-line directory also lists a number of categories under the heading “Top Searches”. Some of the topics mentioned under that heading are “Travel”, “Health”, “Gifts”.

The Complainant has produced copies of the home pages for the websites to which each of the disputed domain names resolve. <yel.com> and <ukyellowpages.com> appear to resolve to an identical website, which appears to have been created in or about 2000 (the home page contains the claim “© 2000-2004”).

The home page to which <yellweb.com> resolves appears to be identical, except that it has various additional categories listed under the heading “Related Searches”. (That heading also appeared in June 2003, on the “www.ukyellowpages.com” website – the Complainant has produced a page from that website which it downloaded on June 13, 2003, and the topics listed under “Related Searches” on that page included a number of countries and cities, nearly all of which are in Europe. Specific categories listed under Related Searches on the June 2003 page included “Europe”, “London” and “Scotland”).

The page produced from the website at “www.londonyellowpages.com” is different. While it has the headings “Related Searches”, and “Top Searches” on the left hand side, the main body of the home page contains links to 10 other websites which, with one exception, appear to be concerned with travel to or accommodation in London, United Kingdom. However item 6 is headed “London, Ohio New Homes”. Under this heading, there is a link to a website at “www.inest.com”, which appears to be concerned with new home purchases and the building of new home communities. This link appears to have nothing to do with the City of London, United Kingdom – the only similarity appears to be the use of the word “London”, with that term in this case being a reference to the town of that name in Ohio, USA. The Complainant has only produced the home page from the site at “www.londonyellowpages.com”, but it says that the rest of the site also has no connection with London, U.K.

The 10 “London” links on the home page at “www.londonyellowpages.com” are headed “Sponsored links for LONDON”, and the trailer at the top of the home page is headed “londonyellowpages.com: best sites for LONDON”.

Correspondence between the Complainant and the Respondent

At some time on or before May 3, 2002 (the Complainant cannot recall when), the Complainant says it became aware that the Respondent had registered <ukyellowpages.com>. On that date, the Complainant wrote to the Respondent asserting that it had rights in the YELLOW PAGES trademark in the United Kingdom. The Complainant asked that the Respondent refrain from using <ukyellowpages.com>, or any term, sign, or trademark comprising or including the words YELLOW PAGES, in respect of any services directed at UK users.

While the letter of May 3, 2002 otherwise appears to have been correctly addressed to the Respondent’s Post Office Box in Hong Kong, for reasons which are not clear to the Panel, the word “United States” was added underneath “HK” in the address at the top of the letter.

The wording of the Complainant’s letter of May 3, 2002, suggests that <ukyellowpages.com> did not at that stage point to any website. However, the Respondent in its Response asserts that all domains it acquires are immediately pointed to a website on acquisition, and that there would only have been brief periods (eg when a server was down) when one of its domains would not be pointing to an active website.

On May 9, 2002, the Complainant wrote again to the Respondent. This time the letter was correctly addressed to the Respondent’s Hong Kong Post Office Box in “China” – ie no reference to the United States. The letter enclosed a copy of the Complainant’s earlier letter dated May 3, 2002. The wording of the letter dated May 9, 2002, indicated that by then the Respondent was hosting a classified business information website at “www.ukyellowpages.com”. The Complainant’s letter alleged that the Respondent was targeting residents and businesses in the United Kingdom, and that its actions constituted an infringement of the rights claimed by the Complainant in the United Kingdom in the mark YELLOW PAGES. The Complainant asked the Respondent to immediately refrain from using the word “ukyellowpages”, or any domain name, term, sign or trademark comprising or consisting of the word YELLOWPAGES or any other word confusingly similar to the trademark YELLOW PAGES. The Complainant sought a written assurance from the Respondent, within 10 days of the date of the letter, that it would immediately disconnect the UK sections of the website, and arrange either to cancel the registration of <ukyellowpages.com> or transfer it, at registration cost, to the Complainant.

The Complainant received no reply to either letter. The Respondent in its Response implies that it did not receive either of the Complainant’s letters, although it does not directly deny receiving the letters. (In its Response, the Respondent says that the fact of publication of its contact information in the WHOIS database “has the unfortunate result of causing a veritable flood of unwanted correspondence, solicitations, and offers, to be directed to the Respondent. Among literally thousands of items of correspondence the Respondent receives on any given day, which the Respondent attempts to filter although not always successfully, the Respondent obtains actual notice of very few.”).

Archive searches of the websites to which the disputed domain names have resolved over the years since they were registered, has not been possible – the Respondent has used robot.txt software to cause the archive to remove the history of the websites. The Respondent’s explanation for that, is that it is under a contractual obligation to prevent the archiving of stale content.

The Complainant says that at some time on or not long before June 18, 2003 (it cannot recall when), it became aware that the Respondent had registered <yel.com>. That knowledge prompted it to write to the Respondent on June 18, 2003. This letter appears to have been correctly addressed. In it, the Complainant drew to the Respondent’s attention its YELL mark and the YELL device marks, which were by then claimed to have been registered in the United Kingdom, the United States, Canada, Europe, and Australia. The Complainant advised that its YELL mark and the YELL device marks were registered in respect of a wide range of goods and services, including on-line and internet services, and classified directory services. The Complainant referred to its “established substantial common law rights” in the United Kingdom in the YELL mark and the YELL device marks, deriving from the extensive use of those marks made by the Complainant and its predecessors in title over a number of years. The Complainant asked the Respondent to refrain from using <ukyellowpages.com> or <yel.com> (or any domain name, term, sign, or trademark comprising or consisting of the word “Yell”) in respect of on-line or internet services, or the various other services for which the Complainant claimed trademark rights. The Complainant gave the Respondent a fortnight to confirm that it would not use the domain names <ukyellowpages.com> and <yel.com> on goods or services that were the same as, or similar to, those which were the subject of the Complainant’s intellectual property rights.

Again, this letter appears to have drawn no response from the Respondent.

October 2004 Internal Email

The Complainant produced an internal email dated October 18, 2004, in which one of its employees reported having mis-typed the <yell.com> domain name by inadvertently leaving out one of the “l”s. The Complainant says that that inadvertent mis-spelling led the employee to the Respondent’s website at “www.yel.com”, and prompted the Complainant to take action in respect of the <yel.com> domain name.

 

5. Parties’ Contentions

A. Complainant

Disputed Domain Name Identical or Confusingly Similar to Complainant’s Marks

1. The Complainant is the registered proprietor in the United Kingdom of the word mark YELLOW PAGES. It is also the registered proprietor of marks consisting of the expression “Yellow Pages” together with a device or devices.

2. The Complainant has built up a substantial reputation and enjoys valuable goodwill in the mark YELLOW PAGES in the United Kingdom, derived from its use of the mark, and the use of the mark by its predecessors in title, going back as far as 1966.

3. The domain names <ukyellowpages.com> and <londonyellowpages.com> are confusingly similar to the Complainant’s YELLOW PAGES marks.

4. The Complainant is the registered proprietor of the word mark YELL in the United Kingdom, the European Community, and the United States of America. It is also the owner of the YELL large square mark in the United Kingdom and the United States of America, and the YELL small square mark in the United Kingdom.

5. Since January 1996, the Complainant has enjoyed common law rights in the YELL mark and in the YELL device marks, deriving from the substantial use of those marks made by it and its predecessors in title over the period since January 1996.

6. The domain names <yel.com> and <yellweb.com> are confusingly similar to one or more of the Complainant’s YELL mark and the YELL device marks.

Respondent has No Right or Legitimate Interest

1. The Complainant has not authorized or licensed the Respondent to use the Complainant’s trademarks.

2. The Respondent has not been making a bona fide, or legitimate, use of the disputed domain names, for the following reasons:

(i) The Respondent had not been using the <ukyellowpages.com> domain name before the Complainant wrote to the Respondent on May 3, 2002, giving the Respondent notice of the dispute in respect of the <ukyellowpages.com> domain name. After May 3, 2002, the Respondent began using the <ukyellowpages.com> domain name by linking it to a website, and that was done with full knowledge of the Complainant’s rights in the YELLOW PAGES marks. The Respondent therefore did not use the domain name in connection with a bona fide offering of goods or services before it received notice of the dispute (Policy, para 4(c)(i)).

(ii) The Respondent has not been making a fair use of the <ukyellowpages.com> domain name. The Complainant put the Respondent on formal notice of its rights in the YELLOW PAGES trademark in the United Kingdom, but very shortly thereafter the Respondent set up a website which deliberately targeted United Kingdom residents.

(iii) In the domain name <ukyellowpages.com>, the letters “uk” suggest that the entity behind the domain name is based in the United Kingdom or has a connection with the United Kingdom. In fact the Respondent is not based in or providing services from the United Kingdom.

(iv) At the time Respondent commenced use of the <yel.com> domain name, the Respondent was or should have been aware of the Complainant’s rights in the YELL mark and in the YELL device marks. The Complainant was a major supplier of on-line classified directory services in the United Kingdom, and the Respondent operates in the same sector as the Complainant. The Respondent is a sophisticated user of the Internet and the domain name system. The Respondent was put on notice of the Complainant’s rights in the YELL mark, because the Complainant’s letter dated May 3, 2002, was signed by the Complainant.

(v) In any event, the Respondent has not been making fair use of the <yel.com> domain name, and in circumstances where the Respondent is actively competing with the Complainant its use of that domain name cannot have been in connection with a bona fide offering of goods or services. (The website to which <yel.com> resolves is an on-line directory of goods and services. That is precisely the service offered by the Complainant at “www.yell.com”.)

(vi) In respect of the domain name <londonyellowpages.com>, the use of the word “London” suggests the entity behind the domain name has a strong connection with London. In fact, the Respondent has no connection with London. Although the home page at the website at this domain name lists results with a connection to London, the rest of the website has no connection with London. Further, the Complainant’s letters of May 3, 2002, and May 9, 2002, clearly put the Respondent on notice of the Complainant’s rights in its YELLOW PAGES marks in the United Kingdom. Notwithstanding that notice, the Respondent registered the <londonyellowpages.com> domain name a few days later on May 18, 2002. The Respondent therefore cannot claim to have been using the domain name in connection with a bona fide offering of goods or services before receipt of notice of the dispute (Policy para 4(c)(i)). It should have been clear to the Respondent that the Complainant would object to the Respondent’s use of <londonyellowpages.com>, for the same reasons the Complainant had objected to the Respondent’s use of <ukyellowpages.com>.

(vii) For the same reasons, the Respondent cannot claim to have been making a fair use of <londonyellowpages.com> (Policy para 4(c)(iii)).

(viii) The Respondent failed to reply to the Complainant’s letters written in May 2002 and June 2003.

(ix) The Respondent was clearly on notice of the Complainant’s rights when the <yellweb.com> domain name was registered. For the reasons set out above in respect of the <yel.com> domain name, the Respondent has no right or legitimate interest in <yellweb.com>.

Registration and Use in Bad Faith

1. The Respondent’s registration and use of the disputed domain names falls within the category of bad faith registration and use described at paragraph 4(b)(iv) of the Policy. The Respondent registered and is using the disputed domain names intentionally to attract, for commercial gain, internet users to its website(s) by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website(s).

2. More specifically:

(i) The Respondent had actual or constructive notice of the Complainant’s rights in the YELLOW PAGES marks when it registered <ukyellowpages.com> in February 2000. The <ukyellowpages.com> domain was therefore registered in bad faith.

(ii) The Respondent had actual notice of the Complainant’s rights in the YELLOW PAGES mark when it registered <londonyellowpages.com>. That domain name was also therefore registered in bad faith.

(iii) The Respondent had actual or constructive notice of the Complainant’s rights in YELL and in the YELL large square mark and/or the YELL small square mark when it registered the yel.com domain name in January 1999. The <yel.com> domain name was therefore registered in bad faith.

(iv) By December 2003, the Respondent was aware of the Complainant’s rights in the YELL mark and the YELL large square mark and the YELL small square mark. The <yellweb.com> domain name was also therefore registered in bad faith.

(v) The registration of the <yellweb.com> domain name supports an inference that the <ukyellowpages.com>, <londonyellowpages.com>, and <yel.com> domain names were also registered in bad faith.

(vi) The Respondent’s subsequent use of the disputed domain names, including by incorporating sections directed at United Kingdom users or suggesting a connection with the United Kingdom, is a use of the disputed domain names intentionally to attract internet users to its websites by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its on-line directory of goods and services. That confusion was and is created by choosing domain names which are confusingly similar to the Complainant’s trademarks and supplying services on those websites identical to the services supplied by the Complainant.

(vii) The Respondent’s use of the disputed domain names was and is for commercial gain – it is a commercial entity which profits from third party advertisements on its websites.

(viii) The Respondent’s bad faith use of the disputed domain names gives rise to a strong inference of bad faith registration.

B. Respondent

Introduction

1. The expression “Yellow Pages” is generic and non-protectable outside of the United Kingdom. Inspection of the web pages at “www.ukyellowpages.com” and “www.londonyellowpages.com” makes it clear that the contents of those pages are directed to providing travel information to persons situated outside of the United Kingdom.

2. With regard to the Complainant’s claimed YELL mark:

(i) The mark consists of only a few letters, and neither <yel.com> nor <yellweb.com> can be considered confusingly similar to the Complainant’s marks; and

(ii) The Respondent is the prior user of the <yel.com> domain name, and the Complainant’s assertion of bad faith cannot therefore be supported.

Identity or Confusing Similarity

1. <ukyellowpages.com> and <londonyellowpages.com>

(i) The Complainant would not succeed in a proceeding based on relevant national law on the basis of asserting a right in the term “Yellow Pages”.

(ii) The Policy requires proof of additional criteria beyond the mere inclusion of an alleged proprietary term in a domain name.

(iii) The Complainant’s assertion that the term “London” necessarily implies an association with the United Kingdom is unjustified – London, Ontario, is a not insignificant Canadian city.

(iv) A corporation called Yellowpages.com Inc. has owned and operated the domain name <yellowpages.com> unchallenged in the United States for years. There is thus no basis for asserting that the use of the term “YELLOW PAGES” in a domain name would necessarily be confused with the Complainant – the most obvious and direct domain name form of the alleged mark is not itself associated with the Complainant.

2. <Yel.com> and <yellweb.com>

(i) The majority of the documents produced by the Complainant post-date the January 1999 registration date of <yel.com>.

(ii) Many of the documents produced by the Complainant incorporate figurative elements which, in combination with the brevity of the term “YELL” should be taken into account in determining the commercial impression created by the claimed marks.

(iii) “YELL” is an example of a relatively short alphanumerical string. Mere probability alone dictates that a larger number of domain names will incorporate some variant of a shorter string than a longer one, and it would be an odd result for the Policy to inadvertently confer greater rights merely as a consequence of mathematical probability. With marks consisting of very short alphanumeric strings, there must be a point at which the addition or elimination of the letters is more than a non-substantial change – proportionately, small variations can be substantial.

(iv) With reference to the domain name <yellweb.com>, there has to be a point at which domain names consisting of multiple syllables can not be considered “confusingly similar” to an asserted monosyllabic mark. That is the case in respect of the comparison between <yellweb.com> and the Complainant’s claimed marks.

(v) Other marks incorporating the term “yell” co-exist with the Complainant’s claimed marks. For example, in the United States, there are registrations for YELL-O-GRAM, REBEL YELL, YELL-O-GLOW, and RUN YELL TELL! The registration of these marks shows that it cannot be said that any domain name incorporating the word “yell” is necessarily confusing.

(vi) Y.E.L. Incorporated of Florida had maintained a United States registration for the mark Y.E.L. until the mark was cancelled in 2002. That mark is closer to the disputed domain name <yel.com> than the Complainant’s later registration of the YELL large square mark or the YELL small square mark.

Submissions Applicable to all of the Disputed Domain Names

1. The Complainant has not produced any evidence of actual confusion. The decision on “confusing similarity” should not be a matter left to the personal opinion of panelists.

2. There must be a difference between mere similarity, and confusing similarity. Otherwise, the word “confusingly” in paragraph 4(a)(i) of the Policy would be redundant.

Respondent’s Legitimate Rights or Interests

1. The term “yellow pages” is a generic term for a business directory, in every jurisdiction outside of the United Kingdom. The disputed domain names were not registered via a United Kingdom registrar, and the disputed domain names have been used in connection with advertising results produced outside of the United Kingdom by the Overture Division of Yahoo.com. The Respondent refers to Yell Limited v Weborcus Software Systems Pvt. Limited, WIPO Case D2004-0008, in support of the proposition that, because in the United States the expression “yellow pages” is considered generic, it should be concluded that a respondent residing in the United States has in good faith supposed that no claim could be made against it. (The Respondent says in its Response that the United States is the country “where the relevant business is conducted relative to these domains”).

2. The Respondent has been using the disputed domain names in connection with an active website, and in connection with the common understanding of the term “Yellow Pages” as providing a directory of information.

3. The information provided at the “www.londonyellowpages.com” website operated by the Respondent, is clearly directed to persons outside of London seeking information about travel to London. The web page contents are not intended to confuse or divert visitors seeking a business directory in London. The Respondent has not sought to convey the impression that it is located in the United Kingdom, or associated with any business entity in the United Kingdom.

4. Concerning the domain name <yel.com>, the Respondent is entitled to an equitable presumption of laches. <yel.com> was registered on January 5, 1999, more than six years prior to the filing of this proceeding. Also, the Respondent’s registration of <yel.com> is senior to the Complainant’s United States registration of the YELL large square mark. The Complainant cannot claim earlier use of any “YELL.COM” mark, as the Respondent had been using YEL.COM prior to the Complainant’s use of either of the YELL device marks.

5. The Respondent attempts to filter the thousands of items of correspondence it receives on any given day, and it obtains actual notice of very few of those letters.

6. The Respondent is not aware of any time since registration of the disputed domain names when the disputed domain names have not been connected with the advertising data bases used by the Respondent.

7. The Respondent is under a contractual obligation to prevent archiving of stale content on the websites to which the disputed domain names resolve.

Bad Faith Registration and Use

1. All of the non-limiting examples set out in paragraph 4(b) of the Policy require a knowing, willful intent to exploit rights known to belong to another. That is not the position in this proceeding.

2. For many years, the Respondent’s business has involved associating abandoned and expired domain names with advertising results generated by paid search advertising. That is a legitimate business activity.

3. The Complainant has not advanced any argument based on a “pattern” of registrations evidencing bad faith. There is no “pattern” of such registrations in this case, and the absence of such a pattern suggests that the disputed domain names were picked up by the Respondent in the normal course of acquiring abandoned domain names, and without any motivation informed by ill-intent directed towards the Complainant.

4. The registrations of the disputed domain names have not deprived the Complainant of the ability to reflect its alleged marks in other domain names.

5. The generally generic status of the term “Yellow Pages” is well-known, and the discovery that the Complainant claims exclusive rights in the United Kingdom was a surprise to the Respondent when it received the present Complaint.

6. With regard to the <yel.com> domain name, the Panel should draw the inference that the Respondent, observing that a three-letter domain name was due to expire, targeted registration of the domain name simply because it was a three-letter domain name. That is a more plausible inference than the proposition that, six years ago, the Respondent, fully aware of the Complainant’s claimed rights, intentionally registered <yel.com> to exploit those rights.

7. The Respondent has registered three-letter domain names in the past for use in the precise manner it has been using <yel.com> in this case (citing PwC Business Trust v Ultimate Search, WIPO Case D2002-0087; and Williams, Babbitt & Weisman Inc v Ultimate Search, NAF Case No 98813; in which the Respondent had registered the three-letter domain names <pwc.com> and <wbw.com>. In both cases the complaints were denied.)

8. The Respondent was not motivated to register <yel.com>, or any of the other disputed domain names, based on a predatory or abusive intent directed at the Complainant.

9. As at April 1999, four months after the Respondent registered <yel.com>, the site at <yell.com> was operated by Valley Technologies Inc of Danville, Arkansas. The Complainant’s predecessor, BT, did not even acquire <yell.com> until approximately September 1999. Hence if the Respondent was on notice of any use of <yell.com> when it registered <yel.com>, the Respondent would only have known about the use then being made of that domain name by a party in Danville, Arkansas.

10. <yel.com> was originally registered to Yel Electronics Limited on October 17, 1996. Apparently, Yel Electronics Limited allowed the domain name to lapse at the end of its registration in 1998, and the domain name was deleted from the registry and then registered by the Respondent in 1999. Yel Electronics Limited (which still maintains an internet presence at “www.yel-electronics.com”) has apparently never objected to the Respondent’s re-registration and subsequent use of the <yel.com> domain name.

11. In summary, the Respondent would have known the following when it registered <yel.com> in January 1999:

(i) A company in Florida had registered the mark Y.E.L. in the United States.

(ii) The domain name <yel.com> had been abandoned by a Hong Kong electronics company after having been used since 1996.

(iii) The domain name <yell.com> was registered and in use by an Arkansas communications company.

These facts do not support any inference of bad faith registration of <yel.com> arising from any animus directed towards the Complainant in this proceeding.

12. The Complainant has not proven each criterion of the Policy with respect to each of the disputed domain names, and the Complaint should be denied.

 

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, internet users to [the respondent’s] 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 [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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) Where [the respondent is] making a legitimate noncommercial 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.

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 that it deems applicable”.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved this part of the Complaint.

Ownership of Marks

The Complainant has produced registration certificates showing that the word mark YELLOW PAGES was registered by BT in October 1986 in international Classes 35 and 38, in the United Kingdom. Also in October 1986, BT registered certain YELLOW PAGES device marks in Classes 38 and 41. Both marks incorporated the well-known “let your fingers do the walking” device, depicting a hand with two fingers flipping over pages in a telephone directory.

BT or the Complainant has also registered the following “YELL” Marks:

1. The word mark YELL in the United Kingdom in Classes 35 through 42, with effect from October 25, 1995.

2. The YELL large square mark in the United Kingdom in Classes 35 through 42, with effect from March 6, 2000.

3. The YELL small square mark in the United Kingdom in Classes 35 through 42, with effect from March 6, 2000.

4. The word mark YELL in the European Community in Classes 35 through 42.

5. The word mark YELL in the United States in Classes 35, 36, 37, 38, 39, 41 and 42, with effect from November 20, 1996.

6. The YELL large square mark in the United States in Classes 35, 36, 37, 38, 39, 41, and 42, with effect from August 10, 2000.

The Complainant has not produced copies of assignments showing that BT has assigned the relevant marks to it. Notwithstanding that omission, however, the Panel is satisfied on the balance of probabilities that the present Complainant does have rights in the YELLOW PAGES word marks formerly owned by BT, and in the various “YELL” word or device marks registered by BT and referred to as items 1 to 6 above.

First, the Complainant says that BT is its predecessor in title, and that statement appears to be accepted by the Respondent (for example, near the end of the Response, the Respondent asserts that “the Complainant’s predecessor, BT Telecom, did not even acquire the domain name YELL.COM until …”).

Secondly, the Complainant is itself shown on the relevant certificate as registered proprietor of the YELL large square mark in the United States.

Thirdly, the registration certificate for the YELL large square mark in the United States (Registration No. 2676201) shows that the Complainant is the proprietor, “by assignment British Telecommunications Public Limited company (United Kingdom Limited Liab Co) ….” The registration certificate also refers to priority claimed under United Kingdom Application No. 2224870 filed March 6, 2000, and that is the registration number of the YELL large square mark in the United Kingdom.

Fourthly, the examples of advertising produced by the Complainant show the YELLOW PAGES device mark being used together with the YELL mark and references to the website at “www.yell.co.uk”. One example of this advertising includes the sentence “Yell ®, the website of Yellow Pages ® (http://www.yell.co.uk), was launched in January 1996 …”.

These factors are, in combination, sufficient to establish that the Complainant has rights in the YELL word mark and the YELL device marks.

Is “Yellow Pages” Generic?

In the Panel’s view, the fact that the United States or any other jurisdiction might regard the term “Yellow Pages” as generic and non-protectable, is not relevant under this paragraph of the Policy. The Policy does not require Panels in administrative proceedings such as these to look beyond the formal registration details; unless and until the trademark registrations are expunged, they are sufficient to give the Complainant a “right” for the purposes of paragraph 4(a)(i) of the Policy.

Confusing Similarity – <ukyellowpages.com> and <londonyellowpages.com>

In the Panel’s view, the disputed domain names <ukyellowpages.com> and

<londonyellowpages.com> are confusingly similar to the YELLOW PAGES marks in which the Complainant has rights. First, those two domain names incorporate the Complainant’s YELLOW PAGES marks in full. Numerous WIPO panels have found that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No D2002-0782, and the decisions referred to at pages 4 to 5 of the decision in that case.

There will no doubt be some cases where a domain name which incorporates in full another party’s registered trademark, will not be confusingly similar to that trademark because sufficient additional letters or numbers have been added to the registered mark to remove any confusion. That is not the position here. The expressions “uk” and “london” are geographical indicators which have specific and obvious application or reference to the Complainant as the publisher of YELLOW PAGES directories in the United Kingdom. Adding them to YELLOW PAGES only serves to exacerbate the confusion which is likely to be caused by the use of the mark YELLOW PAGES in the two disputed domain names. In that respect, the case is similar to Telstra Corporation Limited v India Yellow Pages, WIPO Case D2002-0651, where the domain names in issue were <australiayellowpages.com> and <australianyellowpages.com>. In Telstra Corporation Limited, the Panel had no difficulty in concluding that the two domain names in issue were confusingly similar to Telstra’s YELLOW PAGES marks, (which incidentally were registered in Australia).

The Panel therefore concludes, without difficulty, that the domain names <ukyellowpages.com> and <londonyellowpages.com> are confusingly similar to the YELLOW PAGES marks in which the Complainant has rights.

Confusing Similarity – <yel.com> and <yellweb.com>

The Panel also finds, again without difficulty, that the domain names <yel.com> and <yellweb.com> are confusingly similar to the word marks YELL and the YELL device marks.

Looking first at the domain name <yel.com>, the Panel notes that it is phonetically identical to the Complainant’s YELL mark and the YELL small square mark. Visually, <yel.com> is almost identical to those marks. The device aspects of the YELL device marks do not have any relevant impact, and nor does the generic expression “.com”. The only difference of any significance is that the <yel.com> domain name has only one “l”, whereas the Complainant’s marks have two “l”s. Given the phonetic similarity between the domain name and the YELL marks, the Panel regards the difference in the spelling of “yell” as insignificant, and certainly insufficient to prevent confusion. Looking at the respective “impressions”, or “ideas”, created by the mark and the domain name, the Panel considers that a significant number of internet users, particularly those in the United Kingdom, would see the <yel.com> domain name as evoking the same thoughts or ideas as the YELL mark with which they are familiar.

For those reasons, the Panel concludes that <yel.com> is confusingly similar to the Complainant’s YELL word mark, and to the YELL device marks.

Similar considerations apply to <yellweb.com>. The domain incorporates the Complainant’s YELL mark in its entirety, and the additions “web” and “com” are purely generic and do nothing to alleviate the confusion arising from the incorporation of the YELL mark in the domain name.

Turning to the Respondent’s general submissions under this part of the Complaint, the Panel first records its clear view that it is not necessary for complainants to provide evidence of instances of actual confusion (although in this case the Complainant has arguably done so, with its evidence of the mistake made by one of its employees in attempting to access the Complainant’s website at “www.yell.com”). One of the reasons for that (which is equally applicable to claims of trademark infringement or passing off in many jurisdictions), is that there could easily be hundreds if not thousands of instances of confusion which are never reported to or known by the Complainant. It will often simply not be worth the confused consumer’s trouble to report the matter to the trademark owner.

The other general submission made by the Respondent to which the Panel should refer, is the submission relating to trademarks consisting of very short alphanumeric strings. In short, the Panel does not find it necessary to consider that very general submission. The phonetic and visual similarities between <yel.com> and the Complainant’s YELL marks are such that there is no need for the Panel to address the theoretical difficulties raised by the Respondent.

B. Rights or Legitimate Interests

The Respondent raised the equitable defence of laches, and we will address that submission first. The argument is based on the Complainant’s alleged lengthy delay in challenging the <yel.com> domain name, which was registered over six years ago.

In the Panel’s view, while unreasonable delays in bringing a case may constitute a factor in a panel’s determination, there is no room in the Policy for the stand-alone application of a defence such as laches. The Panel is concerned only with the application of the three paragraphs of the Policy.

In that respect, the Panel respectfully agrees with the decision of the three-member Panel in Edmunds.com, Inc. v. Ult.Search Inc, WIPO Case D2001-1319, where the Panel said:

“Although the concept of “rights” under the second criterion in the Policy may include some kind of equitable right conferred on a Respondent by a Complainant, there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions. These doctrines, if applicable, could, include for example, laches (which would operate against a Complainant tardy in asserting its rights after it had known of an offending domain name) or “unclean hands” by a Complainant.”

The laches defence is accordingly rejected. However the Panel refers to its further findings in respect of the <yel.com> domain name.

The Complainant has not licensed or authorized the Respondent to use the YELLOW PAGES mark, or the YELL word mark or the YELL device marks, and the disputed domain names are all confusingly similar to one or more of those marks. In those circumstances, the evidential onus shifts to the Respondent to demonstrate that it has some right or legitimate interest (for an example of that approach, which is commonly adopted by WIPO Panels, see Sony Kabushiki Kaisha v Sony.net, WIPO Case No. D2000-1074). The Respondent has filed a Response, and the question for the Panel is whether that Response demonstrates some rights or legitimate interests in the disputed domain names.

First, we consider the examples of rights or legitimate interests set out in Paragraph 4(c) of the Policy.

Paragraph 4(c)(ii) of the Policy has no application – there appears to be no connection between any of the disputed domain names and the Respondent’s name or any trading name used by the Respondent’s business.

For the Respondent to bring itself within the category of right or legitimate interest set out in Paragraph 4(c)(i) of the Policy, the Respondent’s pre-notice-of-dispute use of the domain name must have been in connection with a bona fide offering of goods or services. To come within Paragraph 4(c)(iii) of the Policy, the Respondent’s use of the disputed domain names must have been fair. In respect of the <ukyellowpages.com>, <londonyellowpages.com>, and <yellweb.com> domain names, the Panel has come to the view that the Respondent has not been using those domain names in connection with a bona fide offering of goods or services. Nor has it been using them fairly. The Panel’s reasons for those views may be summarized as follows:

(i) The Respondent is an experienced, sophisticated user of the Internet. As the Panel said in Edmunds.com, Inc v. Ult. Search Inc., WIPO Case 2001-1319, “However, as the cases under the Policy involving this Respondent show, this Respondent is not unsophisticated and is well aware of its rights.”

(ii) The nature of the Respondent’s business is such that it is clearly in its interests to register domain names which are likely to generate maximum Internet traffic. The Respondent earns additional revenue for every “hit” on the websites of the advertisers whose sites are linked to the Respondent’s website. Any Yellow Pages-type website was bound to attract significant Internet traffic – anyone looking to find providers of particular goods or services, listed under category headings, would naturally look for a “Yellow Pages” site.

(iii) The Complainant and the Respondent operate substantially identical businesses. Both provide, on-line, links to providers of goods and services who are listed under subject categories. At least insofar as the United Kingdom market is concerned, the Complainant and the Respondent are commercial competitors.

(iv) The Respondent refers to its business of acquiring recently expired domain names, and the apparent attraction of domain names consisting of 3-letter alphanumeric strings. It refers to PwC Business Trust v. Ultimate Search, WIPO Case D2002-0087, relating to the domain name pwc.com, and Williams, Babbich & Weisman, Inc v. Ultimate Search, NAF Case No 98813, relating to the domain name <wbw.com>, and says that the acquisition of the domain names in those cases was accepted as a legitimate business activity. But in those cases the at-issue domain names were used in connection with goods or services which were quite different from those of the complainant trademark holders. Therefore those cases cannot assist the Respondent.

(v) The approach of the WIPO Panel in the Telstra Corporation case (WIPO Case No. D2002-0651) commends itself to the Panel. In that case, the Panel said:

“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.

… 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”.

The Panel respectfully agrees with that approach, and finds, on the balance of probabilities, that the Respondent was well aware of the Complainant or its predecessor’s Yellow Pages publication in the United Kingdom, from a date which pre-dated the registration of the first of the three disputed domain names presently under consideration.

(vi) In respect of the domain name <ukyellowpages.com>, it must have been obvious to the Respondent when it registered the domain, that a great number of internet users, particularly those in the United Kingdom, would assume that the domain name and any web site to which it resolved were associated with the publisher of Yellow Pages in the United Kingdom. When the Complainant wrote to the Respondent in May 2002, drawing attention to the Complainant’s rights in the YELLOW PAGES marks, the Respondent ignored the correspondence. (The Panel does not regard as credible the proposition that the Respondent did not receive these letters. For a sophisticated business such as that operated by the Respondent to adopt a policy of ignoring most of the correspondence sent to it, is simply not plausible).

(vii) In the Panel’s view, the foregoing factors lead inevitably to the conclusion that the Respondent has not acted bona fide in the registration and subsequent use of the <ukyellowpages.com> domain name, and nor has its use of that domain name been a fair use. The Panel finds as a fact that the Respondent has used this domain name with intent, for commercial gain, to misleadingly divert consumers to the website at the domain name.

(viii) It is even more clear that the Respondent cannot bring itself within Paragraphs 4(c)(i) or 4(c)(iii) of the Policy in respect of the <londonyellowpages.com> domain name. The <londonyellowpages.com> domain name was not registered until May 18, 2002, by which time the Respondent had received two letters from the Complainant drawing attention to the Complainant’s rights in the United Kingdom in the mark YELLOW PAGES. The Respondent proceeded to register the domain name in the face of that notice.

(ix) Inevitably, a significant number of internet users would assume that <londonyellowpages.com>, and any website to which it resolved, were concerned with the provision of “Yellow Pages”-type information relating to the City of London in the United Kingdom. That is clearly not the case, as the “London, Ohio” link demonstrates. Nor is there any merit in the Respondent’s submission that the website at “www.londonyellowpages.com” is primarily directed to prospective customers not in London or the United Kingdom, but seeking to travel there. While many of the links on the web page at “www.londonyellowpages.com” may be concerned with airfares to London (or other matters not connected with London at all), some are concerned with hotel accommodation in the city, and that would undoubtedly be of interest to numerous United Kingdom residents who live outside London.

(x) In the Panel’s view, the Respondent registered <londonyellowpages.com> with intent, for commercial gain, misleadingly to divert consumers to the website it intended to operate at that domain name. Its use of that domain name has therefore been neither fair nor in connection with any bona fide offering of goods or services, and Paragraphs 4(c)(i) and 4(c)(iii) cannot assist it.

(xi) The <yellweb.com> domain name was not registered until December 29, 2003, long after the Respondent had notice of the Complainant’s rights in the YELL word mark and the YELL device marks registered in the United Kingdom and in the United States of America. The Respondent was expressly put on notice of those rights by the Complainant’s letter dated June 18, 2003, and the Panel finds, on the balance of probabilities, that the Respondent did receive that letter. (The Respondent has not denied that it did). The Respondent is one of the Complainant’s competitors, and <yellweb.com> points to a website which clearly competes with the Complainant’s on-line business. The <yellweb.com> domain name wholly incorporates the Complainant’s YELL word mark, and the Respondent has offered nothing by way of explanation for its choice of that domain name. The Panel’s inevitable conclusion in those circumstances is that the Respondent registered the <yellweb.com> domain name with intent, for commercial gain, misleadingly to divert consumers to its own website at that domain, and that it has continued since registration of <yellweb.com> to use the domain name for that purpose. The Respondent therefore cannot rely on Paragraph 4(c)(i) or paragraph 4(c)(iii) of the Policy.

The Respondent has not established a right or legitimate interest in the <ukyellowpages.com>, <londonyellowpages.com>, or <yellweb.com> domain names under any of the subparagraphs of paragraph 4(c) of the Policy. Nor has the Respondent provided evidence of any other possible right or legitimate interest which would survive the Panel’s findings that the Respondent has not acted bona fide, or fairly, in respect of those three domain names. The Complainant has therefore established its case under paragraph 4(a)(ii) in respect of those three domain names.

Because the Panel takes the view that the Complainant has failed to establish that the Respondent registered the <yel.com> domain name, and has been using it, in bad faith, it is unnecessary for the Panel to make any finding under Paragraph 4(a)(ii) of the Policy in respect of that domain name.

C. Registered and Used in Bad Faith

The <ukyellowpages.com>, <londonyellowpages.com>, and <yellweb.com> domain names

The Panel is satisfied that the Complainant has proved bad faith registration and use of these domain names. The reasons for that view are set out in the part of this decision which deals with the question of whether the Respondent has a right or legitimate interest in the disputed domain names, under Paragraph 4(a)(ii) of the Policy, and particularly the matters which have led the Panel to conclude that the Respondent has not acted bona fide, or fairly, in respect of those domain names.

The facts fall squarely within Paragraph 4(b)(iv) of the Policy – the Respondent has used these three domain names with the intention of attracting, for commercial gain, internet users to its websites, by creating a likelihood of confusion with one or more of the Complainant’s YELLOW PAGES or YELL device marks, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant having proved all matters required to be proved under paragraph 4(a) of the Policy, these three domain names must be transferred to the Complainant.

The <yel.com> domain name

The position with this domain name is different. It was registered much earlier than the other domain names, and the Panel is unable to conclude with sufficient certainty that, in January 1999 when this domain name was registered, the Respondent was aware of the Complainant’s YELL word mark or either of the YELL device marks.

The bad faith required under Paragraph 4(a)(iii) of the Policy must be present at the time of registration of the domain name, as well as in the subsequent use of the domain name. (That is a well established interpretation of the Policy. See for example, the decision of the WIPO Panel in Yoomedia Dating Limited v Cynthia Newcomer/Dateline BBS, WIPO Case No. D2004-1085, where the Panel said: “Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc v. Screen Actors Modesl [sic] International Inc (SAMI), WIPO Case No. D2001-0782, the Panel stated that: “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.” WIPO Cases Nos D2000-0026; Teradyne Inc. Teradyne Inc. [sic] v. 4tel Technology, and D2000-0005; Telaxis Communications Corp v. William E Minkle, are to similar effect.)

In this case, the Respondent has shown that <yel.com> was previously registered to Yel Electronics Limited, and that the domain name expired in October 1998. The Respondent says that it was then targeting 3-letter domain names, and points to two other Panel decisions which make it clear that part of the Respondent’s operation did involve the acquisition of 3-letter domain names. In those two cases, the complainant’s respective businesses were not in competition with the Respondent.

While BT’s application to register the YELL word mark in the United States was pending as at January 1999, there is no evidence that the Respondent was aware of that application or of the Complainant’s registered or common law rights in the YELL mark and/or the YELL device marks in the United Kingdom or the European Community. The Respondent would certainly have known of the Complainant and its YELL mark if it had investigated the Complainant’s website at <yell.co.uk>, but there is no evidence that the Respondent did so. Investigating the ownership of <yell.com> at that time would only have led the Respondent to the Arkansas communications company which then operated a website at that address.

In the end, the Panel is of the view that there is just not sufficient evidence for it to reject as untrue the Respondent’s claim that it registered <yel.com> purely for the purpose of acquiring another valuable 3-letter domain name, and without any bad faith animus directed to the Complainant. The Respondent’s bad faith behaviour with regard to the other three domain names which are at issue in this proceeding has certainly caused the Panel concern, but in the end the Panel cannot see any basis for attributing the same bad faith intentions to the Respondent’s actions back in January 1999.

The Complainant having failed to prove bad faith registration and use in respect of the <yel.com> domain name, the Complaint must be dismissed insofar as it relates to that domain name.

 

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 names, <yellweb.com>, <ukyellowpages.com> and <londonyellowpages.com>, be transferred to the Complainant.

The Complaint relating to the domain name <yel.com> is dismissed.


Warwick Smith
Presiding Panelist


Clive Duncan Thorne
Panelist


Alan L. Limbury
Panelist

Dated: April 6, 2005

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2005/d2005-0091.html

 

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