The Complainant is PagesJaunes Société Anonyme of France, represented by DS Avocats, France.
The Respondent is Pages Jaunes Pro LTD of United Kingdom of Great Britain and Northern Ireland ("UK").
The disputed domain name <pagesjaunespro.com> (the "Disputed Domain Name") is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2011. On August 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 19, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 26, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceedings commenced on August 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2011. The Response was filed with the Center on August 30, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 21, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a French company that provides online phone directory, marketing and advertising services. The Complainant is a wholly owned subsidiary of Pages Jaunes Groupe ("Parent"), a French company registered with the Registry of the Commercial Court of Nanterre, France in 1955, and both the Complainant and its Parent trade under (names incorporating) the PagesJaunes name. The Complainant and its Parent own numerous trade mark registrations in France, including two registrations for LES PAGES JAUNES, which were registered by the Complainant on July 2, 1999. The Complainant and its Parent have also registered numerous domain names incorporating PAGESJAUNES, including <pagesjaunes-internet.fr>, <pagesjaunes.fr> and <pagesjaunes-internet.com>.
The Respondent is a company registered in the UK on September 9, 2010 and is engaged in the same field as the Complainant, namely the provision of online business directory, marketing and advertising services. The Respondent registered the Disputed Domain Name on September 6, 2010 and filed a Community Trade Mark ("CTM") application to register the mark "PagesJaunes.pro" on December 14, 2010.
As at the date of this decision, the Disputed Domain Name resolves to a business directory website (the "Website") which is operated in the French language.
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainant’s PAGESJAUNES mark:
(i) in assessing the similarity between the Disputed Domain Name and the Complainant's trade mark, the gTLD ".com" should be disregarded;
(ii) the Disputed Domain Name reproduces the Complainant’s trade mark in its entirety, which mark is well-known in France and is also the Complainant’s trade name and domain name;
(iii) the addition of the generic word "pro" as a suffix in the Disputed Domain Name does not eliminate or mitigate the identity between the Complainant's mark and the Disputed Domain Name. On the contrary, the incorporation of this descriptive word (which is an abbreviation for "professional") in the Disputed Domain Name increases the risk of confusion with the Complainant's mark as it suggests that the Website relates to specific directory services provided by the Complainant for professionals; and
(iv) in a recent decision dated February 9, 2011, the UDRP panel held that the domain name <pagesjaunes.pro>, registered by a company of M. Weiler (who also owns the Respondent company), was identical to the Complainant's trade mark.
(b) The Respondent does not have legitimate rights or interests in the Disputed Domain Name:
(i) the Respondent is in no way connected or associated with the Complainant’s business and the Respondent is not otherwise licensed or authorized by the Complainant to use its PAGESJAUNES mark for any purpose;
(ii) the Respondent has repeatedly been found to have infringed the Complainant’s intellectual property rights (“IPR”) in France, including in an administrative proceeding before the Center in the case of Société PagesJaunes v. Markus Weiler, International Yellow Pages, Ltd., WIPO Case No. D2010-2035; and
(iii) the Respondent admitted in the previous UDRP proceeding (described above) its intent to directly compete against the Complainant using a domain name confusingly similar to the Complainant's marks, and the Respondent has been repeatedly found to have infringed the Complainant's IPR in France in various other court proceedings.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent has registered the Disputed Domain Name for the sole purpose of commercially benefitting from Internet traffic leading to its Website by creating confusion in the mind of Internet users searching for the Complainant’s online services, thereby diverting such traffic away from the Complainant’s websites, particularly its “pagesjaunes.fr” website; and
(ii) the Respondent has been well-known to the Complainant as since 2008, its principal M. Weiler has been persistently registering trade marks and domain names reproducing or imitating the PAGESJAUNES mark in respect of fictitious online directory services.
The Respondent’s contentions can be summarised as follows:
(a) The Disputed Domain name is not identical to the Complainant's PAGESJAUNES mark and the Complainant does not have exclusive rights to the name "Pages Jaunes":
(i) the Disputed Domain Name, which includes the suffix "pro", is not identical to the Respondent's PAGESJAUNES mark, either visually or phonetically;
(ii) “yellow pages” or “pages jaunes” is a generic phrase used to describe telephone directories, or listings of businesses and other organizations according to the goods and services they provide; and
(iii) neither the Complainant nor any other person can have exclusive rights to the name "Pages Jaunes", which is generic in nature and not distinctive, as evidenced by (amongst other things) the Office for Harmonization in the Internal Market's rejections of applications (made by Francotel Francophone Télécom SARL in October 2010 and International Yellow Pages Ltd in October 2009) for trade marks incorporating the name "Pages Jaunes", on the basis of lack of distinctive character, such that a trade mark registration for such word mark alone is invalid.
(b) The Respondent does have legitimate rights or interests in the Disputed Domain Name:
(i) the Respondent owns the CTM trade mark PAGESJAUNES.PRO;
(ii) the Disputed Domain Name incorporates the trade name of the Respondent; and
(iii) the Website (and the Disputed Domain Name) is well-known in France as an (online) business directory and has been well-known since the beginning of 2011.
(c) The Disputed Domain Name has not been registered and is not being used in bad faith:
(i) the court decision in Paris of March 3, 2010 (which found, amongst other things, that Francotel Francophone Télécom infringed the PAGESJAUNES trade mark) was never enforced and therefore invalid;
(ii) the Commercial Tribunal of Roubaix’s decision of May 27, 2011 (which dismissed the petition of International Yellow Pages SARL against the suppression of 29 domain names incorporating the PAGESJAUNES mark by the relevant registry) rejected the Complainant’s voluntary intervention and this decision is on appeal before the Court of Lille; and
(iii) the Respondent is not engaged in confusing the clients of the Complainant.
(d) Counterclaims:
(i) the Complainant’s action against the Respondent was brought in bad faith and constitutes an abuse of administrative proceedings; and
(ii) the Complainant has been repeatedly engaged in such anti-competitive practices, as evidenced by complaints filed against the Complainant with the Competition division of the European Commission and any UDRP decision ordering the transfer of the Disputed Domain Name to the Complainant would be anti-competitive in nature and thereby violate the Respondent's rights.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in respect of the LES PAGES JAUNES trade mark on the basis of its registrations for the LES PAGES JAUNES mark in France (which significantly predate the registration of the Disputed Domain Name), the distinctive and prominent component of which is clearly PAGESJAUNES, as evidenced by the numerous trade mark and domain name registrations owned by the Complainant and its Parent incorporating PAGESJAUNES. In addition, the Panel finds the fact that the Complainant operates under the "PagesJaunes" name as a wholly-owned subsidiary of PagesJaunes Groupe, which Parent has numerous registrations for the PAGESJAUNES mark (and variations thereto) and has traded under the "PagesJaunes" name since at least 1955, is persuasive evidence that the Complainant has sufficient rights in the PAGESJAUNES mark for the purposes of this Complaint (see Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107; and Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756). This is particularly the case given that the Policy does not require a complainant to have exclusive rights in the relevant trade or service mark (see Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993).
The Panel rejects the Respondent’s contention that the Complainant’s trade mark is invalid on the grounds that the “Pages Jaunes” name is generic and thus lacks the requisite distinctive character, as the Complainant has evidenced ownership of the relevant registered trade marks, which ownership is sufficient proof of the requisite rights. See Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and Uniroyal Engineered Products, Inc. v Nauga Network Services, WIPO Case No. D2000-0503, which support the view that it is sufficient for the Panel to rely upon the decisions of national trade mark offices.
This case can be distinguished from the decision in the cases of France Telecom v Les pages jaunes francophones, WIPO Case No. D2000-0489 and France Telecom v. Domain, WIPO Case No. D2000-0490 upon which the Respondent relies to prove that the PAGESJAUNES mark is generic and not protectable as a trade mark, on the basis that neither of the respondents in these cases had been offering services in France (where the complainants had registered trade marks for the PAGESJAUNES mark). The Panel notes that the question to be decided in the present proceedings is not whether the Complainant's French trade mark registration for PAGESJAUNES confers exclusive rights to that mark throughout the world, but rather, whether the Complainant has rights in the PAGESJAUNES trade mark. Further, while the Respondent relies on the decision in the case of Anuncios en Directorios S.A. DE C.V. v. Michael Alvarez, WIPO Case No. D2002-0973 to support the contention that it is not possible to have exclusive rights in the PAGES JAUNES or YELLOW PAGES trade mark, despite this complaint being ultimately unsuccessful, the panel recognized that a Mexican registration for YELLOW PAGES was sufficient to establish exclusive rights in that country, even if the trade mark may not confer exclusive rights in another jurisdiction due to its generic nature.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case ”.com”, should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the PAGESJAUNES mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s mark is the inclusion of the word “pro” as a suffix. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of generic words, such variations do not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. 2010-0100; Diageo Ireland v. Guinessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088. The Panel accordingly finds that PAGESJAUNES is the distinctive and prominent component of the Disputed Domain Name, such that the addition of the word “pro” does nothing to distinguish the Disputed Domain Name from the Complainant’s trade mark. The Panel further finds that given that the Complainant provides services that include business directory services, the “pro” component of the <pagesjaunespro.com> domain name (whereby “pro” is clearly an abbreviation of the word “professional”), if anything, effects to increase the likelihood that users of the online service would be misled into thinking that the Disputed Domain Name is in some way associated with the Complainant (see Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456).
The Panel accordingly finds that the Disputed Domain is confusingly similar to the PAGESJAUNES mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorized to use its PAGESJAUNES mark. Further, the Complainant contends that the Respondent has been repeatedly found liable in official court and administrative proceedings for counterfeiting the PAGESJAUNES mark. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests.
The Respondent submits that it owns a CTM registration for the PAGESJAUNES.PRO mark. However, the Panel notes that this application was filed on December 14, 2010 and it has not proceeded to registration. Irrespective of what rights the Respondent has in the PAGESJAUNES.PRO mark, the Panel finds that this does not confer legitimate rights or interests in the Disputed Domain Name as the overall circumstances (including the fact that the relevant trade mark application was only filed after the creation of the Disputed Domain Name and the Panel’s findings of bad faith on the part of the Respondent in a previous WIPO decision (as detailed below)), indicate that such trade mark was obtained primarily to circumvent the application of the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379; and British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817, which support the principle that trade mark registrations are not conclusive evidence of a respondent’s requisite rights or legitimate interests in a disputed domain name, particularly absent evidence of good faith.
The Panel accepts that the Complainant has not licensed or otherwise authorized the Respondent to use the PAGESJAUNES trade mark. Accordingly, the only ways for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy would be through use of the Disputed Domain Name in connection with a bona fide offering of goods or services or by demonstrating that the Respondent has been commonly known by the Disputed Domain Name.
The Respondent contends that the fact that it has used the Disputed Domain Name in connection with a bona fide offering of goods and services indicates that it has rights and legitimate interests in the Disputed Domain Name, however, it failed to provide any evidence in support of this contention.
The Respondent contends that the Disputed Domain Name incorporates its trade name and that the Website has been well-known in France as an (online) business directory since the beginning of 2011. The Panel notes that at the time of the Complaint, both the Respondent and the Disputed Domain Name had been in existence for less than one year. In contrast, the Complainant’s various domain names incorporating PAGESJAUNES had already been in existence for up to 12 years, and such domain names incorporate the trade names of both the Complainant and its Parent, the latter of which has been trading under the name “Pages Jaunes Groupe” since at least 1955. Although the Panel accepts that the comparable duration of use of a particular domain name is not conclusive proof of the domain name owner’s rights or legitimate interests therein, it finds that in the circumstances of the present case, it is more likely than not that the Respondent’s use of the Disputed Domain Name up to the time of the Complaint had not been sufficient to confer any requisite rights or legitimate interests in the Disputed Domain Name on the Respondent. In addition, the Panel finds that any recognition by Internet users of the “Pages Jaunes” component of the Disputed Domain Name has not been sufficiently demonstrated to be recognition attributable to the Respondent independently, absent any confusion or association with the Complainant or its Parent, the latter of which the Panel considers likely.
On the basis of the Panel’s findings of bad faith on the part of the Respondent, the Panel further finds that the Respondent’s intentional infringing use of the Complainant’s PAGEJAUNES trade mark in connection with the Disputed Domain Name precludes a finding that the offering of goods or services on the Website constitutes a bona fide offering (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; and Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. Tvdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253).
The Panel accordingly finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and that element 4(a)(ii) of the Policy is satisfied.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith. Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Case No. FA 0094313). Given that the PAGESJAUNES trade mark was well-established for many years in France at the time that the Disputed Domain Name was registered and given that the Website offers services in the same industry located in the same market as those offered by the Complainant, the Panel accepts that it is more likely than not that the Respondent was aware of the PAGESJAUNES trade mark at the time of registering the Disputed Domain Name. Further, the Complainant’s contention that the Respondent’s business is in some way associated with an individual named M. Weiler (in that the company International Yellow Pages SARL, of which M. Weiler is the manager, is listed as an intermediary of the Respondent on its Website), is implicitly conceded by the Respondent through its repeated references to M. Weiler in its Response and supporting documentary evidence. The Panel notes that such individual is the manager of at least two companies which have been found liable for numerous counts of infringement of the PAGESJAUNES mark (and its variations, as owned by the Complainant and its Parent) in various court and administrative proceedings, the most recent of which involved a disputed domain name that is near identical to the Disputed Domain Name, namely <pagesjaunes.pro>. It is accepted by the Panel that the association of the Respondent’s business with M. Weiler is compelling evidence that the Respondent was aware of the PAGESJAUNES trade mark at the time of registering the Disputed Domain Name. The Panel accordingly finds that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s competing business, such that the registration was made in bad faith.
Given the long-standing repute of the PAGESJAUNES mark, in which the Panel has accepted that the Complainant has rights, the Panel finds that the Respondent is using the Disputed Domain Name to trade off the Complainant’s reputation and goodwill for commercial gain, by attracting to the Website Internet users (who the Panel believes would be drawn to the Website on the mistaken assumption that the Website was authorized by or connected with the Complainant) and thereby benefitting from such confusion by generating revenue from sponsored advertising links. The Panel considers this to be clear evidence of the Respondent using the Disputed Domain Name in bad faith (see Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052; and TAG HEUER S.A. v. JBlumers Inc./Jerlad Blume, WIPO Case No. D2004-0871).
The Panel finds that the link between the Respondent and M. Weiler (as detailed above) and M. Weiler’s past record (in court and administrative proceedings) of infringing the intellectual property rights of the Complainant and its Parent in respect of the PAGESJAUNES marks, is persuasive evidence that the present case falls within a pattern of registering domain names incorporating PAGESJAUNES, which clearly constitutes bad faith (see NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128).
Additionally, although the Respondent’s use of a proxy registration service is not in and of itself an indication of bad faith, the fact of such use when taken in combination with other indicators of bad faith (as detailed above), is accepted by the Panel as further evidence of bad faith on the part of the Respondent (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
In these circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Name in bad faith, and element 4(a)(iii) of the Policy has been satisfied.
Reverse Domain Name Hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The Panel notes that the onus of proving bad faith on the part of the Complainant is generally on the Respondent and finds that in the present case, this burden has not been discharged by the Respondent, who has raised the bare allegation of Reverse Domain Name Hijacking in the absence of any supporting evidence. Further, the Panel notes that the body of relevant case law indicates that a finding of Reverse Domain Name Hijacking is unlikely in circumstances where the complainant has successfully established each of the three essential elements required under the Policy (see Mondial Assistance S.A.S. v. Compana LLC, WIPO Case No. D2007-0965). Accordingly, the Panel finds that the Complainant has not engaged in Reverse Domain Name Hijacking.
As the Respondent has made a bare allegation of anti-competitive conduct on the part of the Complainant without substantiating the same with any supporting evidence, such allegation is dismissed by the Panel.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pagesjaunespro.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: October 7, 2011