WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V.

Case No. D2011-0057

1. The Parties

The Complainants are Sensis Pty Ltd. and Telstra Corporation Limited, both of Melbourne, Victoria, Australia, represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Yellow Page Marketing B.V. of Den Haag, Netherlands.

2. The Domain Names and Registrar

The disputed domain names <yellowpage-adelaide.com>, <yellowpage-melbourne.com>, <yellowpage-nsw.com>, <yellowpage-perth.com>, <yellowpage-queensland.com>, <yellowpage-southaustralia.com>, <yellowpage-sydney.com>, <yellowpage-tasmania.com>, <yellowpage-victoria.com> and <yellowpage-westernaustralia.com> (“the Domain Names”) are registered with PSI-USA, Inc. dba Domain Robot (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2011. On January 11, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 12, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 January 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2011.

The Center appointed W. Scott Blackmer, Alan L. Limbury and Willem J. H. Leppink as panelists in this matter on February 18, 2011. 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 Telstra Corporation Limited (“Telstra”), a publicly traded Australian business corporation that was formerly government-owned, is a leading provider of telecommunications, television, and Internet access services in Australia, with a principal website at “www.telstra.com.au”. Telstra owns the following trademarks registered with IP Australia:

The Complainant Sensis Pty Ltd. (“Sensis”) is a wholly owned subsidiary of the Complainant Telstra and is the exclusive licensee of the YELLOW PAGES trademarks. A copy of the license was furnished with the Complaint.

The YELLOW PAGES mark is used by the Complainants in connection with both printed and online business directories, as described on the Complainants’ website at “www.yellowpages.com.au” (the “Complainants’ YELLOW PAGES website”). Printed directories are issued for Australian State capitals and regions, such as “Sydney Yellow Directory” and “NSW – Central Coast Yellow Directory”. The online and print directories also display a “WALKING FINGERS” design mark registered to the Complainant Telstra. This design mark consists of a bordered silhouette image of a hand with the first two fingers extended downward, all in black on a yellow background, and is often displayed adjacent to the YELLOW PAGES mark. The directories publish business names, telephone numbers, street addresses, and other information under various categories of commerce. For additional fees, businesses may also publish advertisements in the directories.

The Respondent is a Dutch company that has produced online business-to-consumer directories since 2007, initially for Germany, Austria, and Switzerland and then for many regions of the United States of America and Canada. In 2010, the Respondent took steps to launch online directories for the Australian market.

The Respondent registered nine of the Domain Names on April 29, 2010, registering the tenth, <yellowpage-sydney.com>, on April 30, 2010. In each case, the Domain Name consists of the words “yellowpage” followed by a hyphen and the name of an Australian State capital or region.

The Domain Names each resolve to business directory websites focused on the city, state, or region indicated by the Domain Names. They offer search and social networking functions as well as paid “premium listings” including information beyond that provided in free “standard listings”.

The Complainants filed a UDRP complaint with the Center in 2010 concerning the same Respondent and the same ten Domain Names at issue here. That complaint was dismissed in Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page, Yellow Page Marketing B.V., WIPO Case No. D2010-0817 (“Sensis I”), as discussed further below. The decision was dated July 14, 2010.

As recounted in Sensis I, in 2010 the Respondent’s websites were each headed “YellowPage” with the relevant geographic name. The websites also displayed a black-and-yellow bordered logo of a hand with two fingers extended upward – essentially an inversion of the Complainants’ WALKING FINGERS logo, which often accompanies the Complainants’ registered YELLOW PAGES mark.

The Respondent’s websites associated with the Domain Names do not currently display the name “YellowPage” or the inverted hand logo. They display instead the relevant geographic name followed by a hyphen and “Directory.com”, as well as a logo featuring the letter “i” in a box. The Respondent’s name also appears at the foot of each page of the websites and in the “About Us”, “Contact”, and “Register Your Company” pages.

The Complainants filed the current Complaint against the same Respondent largely on the basis of new evidence, as discussed below.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Names are all confusingly similar to the Complainants’ YELLOW PAGES mark and that the Respondent has no rights or legitimate interests in the Domain Names.

The Complainant observes that the Sensis I decision was based on a finding that the Respondent had a legitimate interest in using “yellow page” domain names. The Complainant argues that new evidence supports the conclusion that the Respondent has no such legitimate interest in using that name, in combination with Australian geographic names, to form the Domain Names.

The Complainant asserts that the Domain Names were registered and used in bad faith, in an effort to mislead business owners seeking to advertise in the Complainants’ well-known YELLOW PAGES directories.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in the current proceeding.

Where appropriate, the Panel refers to the Response submitted by the Respondent in the earlier UDRP proceeding, Sensis I, which was attached to the Complaint in the current proceeding and which is described in the Sensis I decision.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

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

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

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

Under paragraph 15(a) of the Rules:

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Refiled Complaint

In Sensis I, the panel ruled against the same Complainants and in favor of the same Respondent, concerning the same ten Domain Names. The panel found that the Domain Names were confusingly similar to the Complainants’ YELLOW PAGES marks but concluded that the Complaint failed because there was evidence indicating that the Respondent “may have ‘descriptive’ fair use rights with respect to YELLOW PAGES in some jurisdictions”.

The Complainants explain their refiling of a UDRP Complaint against the Respondent, some six months after the decision was issued in Sensis I, on the following grounds:

- new evidence indicates that the Respondent misleadingly suggested in its response in Sensis I that it had no presence in Australia;

- the panel in Sensis I conducted online “private investigations” and relied on the results without giving the Complainants’ an opportunity to respond to them;

- additional evidence concerning the Respondent’s conduct has come to light since the filing of the complaint in Sensis I, partly as a result of an investigation by the Australian Competition and Consumer Commission and a pending enforcement action against the Respondent in the Australian Federal Court.

There is no provision in the Policy, Rules, or Supplemental Rules for an administrative rehearing or appeal of a UDRP decision, although neither of the parties is precluded from submitting the dispute to a court of competent jurisdiction at any time, before or after a decision is rendered in the UDRP proceeding (see Policy, paragraph 4(k)). Thus, the current Complaint must be assessed on its merits in establishing each of the elements required by paragraph 4(a) of the Policy. It cannot be treated simply as an appeal of particular findings or conclusions in the earlier UDRP proceeding.

The Policy itself is silent on the question of refiled complaints (that is, complaints involving the same parties and domain names). There is no express prohibition against refiling complaints, and the Policy does not state any explicit standards for accepting or rejecting refiled complaints for consideration by a new panel. It is conceivable that a well-funded complainant could simply refile successive complaints until it found a panel willing to order the transfer of the disputed domain name. This would not be a fair burden to impose on respondents, it would not be an efficient use of the resources of the dispute resolution service provider, and it would not promote consistency and predictability in UDRP decisions.

One provision of the Policy that may help deter such abuses is paragraph 15(e). This directs the panel to declare in its decision if a complaint “was brought in bad faith and constitutes an abuse of the administrative proceeding.” The panel is instructed to do so if it finds “that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder”. While a finding of attempted Reverse Domain Name Hijacking or harassment would not prevent the complainant from filing successive complaints, it is likely that such a finding would influence successive panels in weighing the merits of a refiled complaint.

In addition, paragraph 5(a) of the Rules, cited above, allows the panel to consider “any rules and principles of law that it deems applicable.” UDRP panels have dismissed some refiled complaints after referring to widely accepted legal principles such as res judicata (preclusion of identical claims), judicial efficiency, and the fundamental fairness of not imposing on respondents the burden of replying to repetitious complaints, sometimes expressed as a principle of “natural law”, “fair process”, or “due process”. Such principles, as well as common exceptions to the doctrine of res judicata, are found in both common law and civil law jurisdictions, and with application to civil, criminal, administrative, and arbitral proceedings, as illustrated by the following examples:

- Courts in England, Australia, the United States, Canada, New Zealand, and other common law jurisdictions refer to English precedents such as Henderson v. Henderson, 3 Hare 100, 67 E.R. 313 (High Court of Chancery, 1843) in applying the principle of res judicata.

- The English Code of Civil Procedure, 1908, sec. 11, generally prohibits courts from trying suits or issues, between the same parties, that have already been raised, heard, and finally decided by a court. This principle is widely followed in Commonwealth countries as well, in legislation or jurisprudence.

- The Seventh Amendment to the United States Constitution provides that facts tried by a jury shall not be “re-examined” in any federal court except “according to the rules of common law”. This is reflected in the Federal Rules of Civil Procedure, Rule 8.

- The French Civil Code, Article 1351, includes the concept of res judicata as “autorité de la chose jugée”, a principle that is also applied to arbitration decisions (Civil Code, Art. 1500; Code of Civil Procedure, Arts. 1476, 1500.

- Arbitration statutes in many countries expressly provide that final arbitral awards acquire the force of res judicata, as in Article 1059 of the Netherlands Arbitration Act of December 1, 1986, incorporated in the Code of Civil Procedure, Book 4.

- The Swiss Federal Supreme Court recently ruled, in setting aside an arbitral award, that res judicata is a doctrine of procedural public policy in Swiss law (Swiss Federal Supreme Court, First Civil Chamber, Decision 4A_490/2009 of April 13, 2009, published on July 2, 2010).

- The UNCITRAL Model Law on International Commercial Arbitration (which is reflected in many national laws) allows applications to set aside arbitral awards because of fraud or corruption, or on the ground that “a breach of the rules of natural justice occurred during the arbitral proceedings or in connection with the making of the award” (Sections 2(b)(ii)(a) and (b)).

- The European Convention on Human Rights (Article 4, Protocol 7) allows a concluded criminal proceeding to be reopened only if (a) it is in accordance with the law and penal procedure of the State concerned; (b) there is evidence of new or newly discovered facts; or (c) if there has been a fundamental defect in the previous proceedings, which could affect the outcome of the case.

- Justice Stewart of the United States Supreme Court summarized the rationale for claims preclusion or issue preclusion as follows: “As this court and other courts have often recognized, res judicata and collateral estoppel relieve parties of the costs and vexation of multiple lawsuits, conserve judicial resources, and by preventing inconsistent decisions, encourage reliance on a judication.” Allen v. McCurry, 449 U.S. 90, 94, 101 S.Ct. 411 (1980).

The Index of WIPO UDRP Decisions, section III.C.7 (“Refiling”) lists numerous decisions in which panels relied on paragraph 15(a) of the Rules to apply the principle of res judicata to refiled UDRP complaints. Two of the early decisions on this issue are frequently cited by UDRP panels, Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 (“Grove”), and Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490 (“Creo”).

In Grove, panelist Sir Ian Barker applied the common law principle that, once there is a decision following a defended hearing, a judicial complaint cannot be re-litigated unless either (a) the decision is overturned on appeal; or (b) limited grounds for rehearing or reconsideration have been established. Such grounds include the following:

- serious misconduct by a judge, juror, witness or lawyer;

- perjured evidence;

- the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and

- a violation of “natural justice” or due process.

On the discovery of new evidence, Sir Ian Barker referred to the leading English Court of Appeal case of Ladd v. Marshall [1954], 3All ER 745, for the following criteria:

- the new evidence could not have been obtained with reasonable diligence for use at trial;

- the new evidence must be material (i.e., it would probably have an important influence on the result);

- the new evidence must be credible, although it need not be incontrovertible.

The Creo panelist, Andrew F. Christie, followed this approach and enumerated additional conditions for entertaining a refiled complaint, again by analogy to “general principles of law relating to re-litigation of cases”. These included placing a “high” burden on the complainant to demonstrate that the refiled complaint should be considered, based on clearly identified grounds, proceeding to a decision on the merits only where the complainant made out a prima facie case to justify refiling. The Grove/Creo approach has been followed in subsequent UDRP decisions, such as the decision by three distinguished panelists in The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757.

In Jones Apparel Group Inc v. Jones Apparel Group.com, WIPO Case No. D2001-1041 (“Jones Apparel”), panelist David Perkins reaffirmed the value of upholding the principle of res judicata and deterring UDRP “forum shopping” by carefully scrutinizing refiled complaints. However, he noted that the four conditions named in Grove for accepting a refiled complaint were not meant to be exhaustive, and he argued persuasively for applying “common sense” to the circumstances of each case.

In the circumstances of Jones Apparel, the panelist accepted a refiled complaint where the earlier panelist found the respondent’s conduct abusive but also found inadequate evidence of the complainant’s trademark rights, and yet did not exercise its discretion under paragraph 12 of the Rules to request further evidence of trademark rights in that proceeding. The complainant remedied that lack in the second complaint and also supplemented the evidence of the respondent’s bad faith through “additional detective work”. The panelist did not consider this unfair or prejudicial to the respondent, which failed to submit a response in either proceeding.

The Complainants here quickly filed a UDRP complaint after learning that customers were being solicited by the Respondent, with some evidence that they were being misled as to a supposed affiliation with the Complainants. The Complainants’ haste, while understandable, resulted in launching a UDRP proceeding with incomplete evidence concerning the Respondent’s activities in Australia. This proved fatal to the Complainants’ cause in Sensis I:

“Complainant's argument concerning the ‘non-legitimate’ (i.e. scam) use of the disputed domain names by Respondent might have had greater force if the evidence Complainant presented was more persuasive. Complainant on several occasions repeated that it received complaints from its customers regarding telefaxes received from Respondent, but Complainant failed to provide any evidence of such complaints. Complainant must surely have anticipated the need to support such an allegation with evidence. Complainant provided a form of telefax transmission from Respondent, but that telefax does not indicate that it originates with Complainant [sic], does not indicate the recipient, does not demonstrate or suggest any frequency of use, and does not generally establish that Respondent has engaged in a ‘scam’.”

In Sensis I, the Respondent argued that it was not necessary for the Respondent to maintain a presence in Australia to operate an online directory service and denied that it was attempting to mislead Australian businesses. The panelist concluded that the Respondent could compete from abroad with the Complainants’ online YELLOW PAGES directory and advertising services, since the Respondent could legitimately use the term “yellow page” in other jurisdictions:

“The Panel determines that, in its assessment, Respondent is making fair use of Complainant's trademark term YELLOW PAGES in the disputed domain names because it is providing services under the disputed domain names outside the territorial jurisdiction where Complainant holds trademark rights, and with respect to Internet users in jurisdictions where the term YELLOW PAGES is not protected by trademark rights or is subject to fair descriptive use (e.g., the United States).”

The Complainants offer additional and subsequent evidence in the current proceeding that challenges the accuracy of the Respondent’s characterization of its business and conduct in Australia and, as a consequence, the prior panel’s conclusions concerning the Respondent’s legitimate interests in the Domain Names. This evidence is discussed further below. The Panel does not find that it rises to the level of demonstrating perjury or procedural misconduct on the part of the Respondent. However, the Panel is persuaded that much of this evidence is credible and material and could not reasonably have been known to the Complainants at the time of the earlier UDRP proceeding. Some of it is based on subsequent investigations by competition and law enforcement authorities, with greater powers and more time to obtain affidavits and documentary evidence. Consistent with the Grove/Creo approach and the reasoning of Jones Apparel, the Panel concludes that this is a proper case for considering a refiled complaint on its merits.

The Complainants also challenge the prior panelist’s use of information obtained from the panelist’s own Internet searches, without giving the Complainants an opportunity to examine and reply to that form of evidence. The Complainants view this as a violation of “natural justice”. Specifically, the prior panelist referred in footnotes to the following:

- the results of Google searches on the terms “yellow pages” and “yellow page”, to confirm that those terms appear to be used generically in some instances; and

- the results of a search of the online trademark database operated by the United States Patent and Trademark Office (USPTO), to establish that USPTO has required United States trademark holders to disclaim exclusivity with respect to the term “yellow pages”.

The Complainants observe that a Google search via an Australian Internet access provider will produce different results than one conducted in the United States, such as the prior panelist performed, with much more emphasis on the Complainants’ trademarked use of YELLOW PAGES. The Complainants further assert that they would have offered arguments, if given the opportunity, concerning the irrelevance of the USPTO position on the descriptive nature of the term “yellow pages” to the issue of fair use of the Domain Names in Australia.

It is true that panelists must proceed with care in examining information beyond the documents submitted by the parties. Those are accompanied by a signed certification of accuracy. Paragraphs 3(b)(xiv) and 5(b)(viii) of the Rules, respectively, require complainants and respondents to certify that the information contained in the complaint or response is, to the best of their knowledge, “complete and accurate”. No such certification validates information discovered independently by the panel. Moreover, a party can request an opportunity to reply to new or unforeseen arguments or evidence submitted by the opposing party. That opportunity is absent when the panel refers to new information for the first time in the decision, without first requesting “further statements or documents” from the parties under paragraph 12 of the Rules.

Nevertheless, UDRP panels frequently avail themselves of resources not supplied or mentioned by the parties, when these are publicly available and have a high degree of credibility for a relevant purpose. As reflected in a variety of UDRP decisions, such resources may include the following:

- published UDRP decisions and other official documents relating to the Policy, such as ICANN and WIPO reports;

- documents establishing relevant “rules and principles of law” pursuant to Rules, paragraph 15(a), such as constitutions, statutes and statutory instruments, legislative history, rules and regulations, international conventions, court decisions, administrative decisions, official guidance by trademark registration bodies, legal treatises, and scholarly articles;

- official trademark databases;

- official databases of registered companies and trade names;

- domain name registrars’ WhoIs databases and historical WhoIs databases;

- websites associated with the domain names, and websites linked from those websites, to establish how and by whom the domain names are used;

- historical versions of websites associated with domain names, prominently those available through the Internet Archive’s “Wayback Machine” (see, e.g., The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438, and decisions cited therein);

- other websites and social media pages operated by the parties or their associates, as well as advertising, press releases, and other public statements by the parties, especially where these tend either to corroborate or impeach the parties’ statements in a UDRP proceeding, reveal an admission against interest, or furnish information about an absent respondent;

- standard reference works, such as dictionaries, encyclopedias, Wikipedia, and materials published by relevant industry associations.

In most cases, the panel’s reference to sources such as these will not require exercising the panel’s discretion under Rules, paragraph 12 to invite “statements or documents” on the subject from the parties. The panel will use these resources, for example, to interpret and apply the Policy and Rules, establish relevant legal principles, fill in the factual gaps left by a silent respondent, or test the credibility and completeness of the parties’ statements in the UDRP proceeding. The Policy is designed to provide an administrative procedure for the speedy and inexpensive resolution of a particular kind of dispute, offering limited remedies that are not exclusive of recourse to judicial proceedings. Thus, unlike civil litigation and some arbitration procedures, the Policy and Rules do not contemplate a discovery process, successive rounds of pleading and motions, or evidentiary hearings. Accordingly, UDRP panels should be reluctant to request or allow additional submissions that would substantially delay the proceedings or burden the parties. It is not normally necessary or appropriate in the interest of fair process or natural justice to delay the UDRP proceeding so that the parties can comment on legal or factual materials that were in existence and foreseeably relevant to their positions when they prepared the complaint or response.

By contrast, it often would be fair – and helpful in reaching a just and informed decision – for a UDRP panel to request information and comments from the parties concerning new or reasonably unanticipated facts or legal issues. Such a standard is often applied in deciding whether to accept unsolicited supplemental filings by the parties, as when a complainant seeks to reply to an unexpected issue raised in the response (see Index of WIPO UDRP Decisions, section III.C.4). In our view, the same standard should apply when the panel is considering new or unanticipated factual or legal material on its own initiative, where that material could be dispositive and where it is reasonably subject to challenge or interpretation.

Under that standard, the Complainants, which have interests only in an Australian mark, should be given an opportunity to reply to the argument that fair use of the term “yellow page” in other jurisdictions establishes the Respondent’s “rights or legitimate interests” in these Australia-centric Domain Names. Hence, the Panel finds this also to be a sufficient reason for accepting the refiled Complaint, in the interests of achieving procedural fairness and a fully considered decision on this material issue.

B. Identical or Confusingly Similar

It is undisputed that the Complainants have rights in the YELLOW PAGES mark that is registered in Australia. Lacking only the plural “s” and the space between words that cannot be used in DNS addresses, the “yellowpage” portion of each Domain Name is nearly identical to the YELLOW PAGES mark. The addition of an Australian geographic name following a hyphen does not eliminate confusing similarity between the Domain Names and the mark, especially since many of the Complainants’ YELLOW PAGES directories are similarly labeled geographically.

The Panel agrees, therefore, with the finding in Sensis I that the Domain Names are each confusingly similar to the Complainants’ mark:

“Respondent has added (following a hyphen) a geographically descriptive term after “yellowpage” in each of the disputed domain names (e.g., “-adelaide”, “-melbourne”, “-victoria”). Because a YELLOW PAGES or “yellow page” directory has traditionally provided information regarding a geographically defined area, Internet users viewing “yellowpage-[geographic indicator]” will likely assume that the source or provider of the YELLOW PAGES directory or “yellow page” directory is clarifying the scope of geographic coverage of the directory, and is the source of the product or service. By adding a geographic identifier Respondent does not dispel confusing similarity between YELLOW PAGES and the disputed domain names. Since each of the disputed domain names employs a common format, this determination regarding confusing similarity applies without distinction to each of the disputed domain names (i.e., each is confusingly similar to Complainant's trademark).” (Footnotes omitted.)

The Panel concludes that the first element of the Complaint has been established.

C. Rights or Legitimate Interests

It is undisputed that the Complainants have not authorized the Respondent to use the YELLOW PAGES mark. The Policy, paragraph 4(c), lists other, nonexclusive circumstances under which a respondent could nevertheless demonstrate rights or legitimate interests in a domain name, including these:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights [ . . .] “

The Panel agrees with the conclusion in Sensis I that paragraph 4(c)(ii) of the Policy is not apposite. Although the Respondent is named Yellow Page Marketing B.V., that name does not include any of the Australian geographic terms found in the Domain Names, nor does it include any other term suggesting a connection with Australia. As the Sensis I panelist cogently remarked:

“Respondent was known as ‘Yellow Page (Netherlands) BV’ when it registered the disputed domain names. It is not clear that Complainant would have objected to Respondent's registration and use of the disputed domain names were they limited to the term ‘yellow page’ without inclusion of the geographic identifiers (e.g., ‘Adelaide’, ‘Melbourne’, and so forth) as such domain names (i.e. without geographic identifiers) are widely in use for many countries. Complainant's specific objection is that Respondent is targeting the Australian market, and has done so by incorporating Australian geographic terms in the disputed domain names. In light of the fact that the parties are in dispute concerning specific domain names involving Australian geographic identifiers, and that Respondent has not been known by domain names including those geographic identifiers (though it might have been commonly known as <yellowpage-netherlands.com>), the Panel considers that for purposes of this proceeding Respondent has not been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy.”

The Sensis I decision to deny the first complaint was based instead on paragraph 4(c)(i) of the Policy, concluding that the Domain Names were used in connection with a bona fide offering of goods or services:

“The central question regarding rights or legitimate interests is whether Respondent's use of the disputed domain names should be considered ‘fair use’.

It is commonly understood in trademark law that a descriptive term that has taken on the function of distinguishing the good or service of an enterprise (i.e. a trademark) may nevertheless be used ‘fairly’ by third parties in its descriptive sense without necessarily infringing the rights of the trademark holder (see, e.g., Case C-63/97, Bayerische Motorenwerke (BMW) and BMW Nederland BV v. Ronald Karel Deenik, 1999 E.C.R. I-905 (Court of Justice of the European Communities)).

The present proceeding presents a difficult jurisprudential issue regarding the fair use of trademark terms in domain names. Respondent is making non-infringing use of a trademark term in some jurisdictions (e.g., Complainant does not have trademark rights in YELLOW PAGES in the United States, and it appears that the U.S. Patent and Trademark Office (USPTO) requires applicants for trademark registrations incorporating ‘yellow pages’ to disclaim exclusive rights in that term). Respondent may have ‘descriptive’ fair use rights with respect to YELLOW PAGES in some jurisdictions (though Respondent has not expressly identified jurisdictions where YELLOW PAGES is registered as a trademark but nonetheless has been determined to be open to fair descriptive use) […] Respondent appears at least to have the right to use the term “yellow page” in a domain name in and for the United States. In U.S. trademark law, geographic identifiers generally may not be protected as trademark terms in their descriptive sense. Non-infringing or fair use in and for the United States should in principle extend to incorporating or combining ‘yellow page’ with terms describing geographic locations in Australia (where used in the United States) […]

The Panel considers that the service provided by Respondent under the disputed domain names is not geographically restricted to Internet users or business customers in Australia. It is perfectly plausible that a person in New Zealand, Vietnam or the United States may want to identify the vendor of a good or service in Australia and may use an online business to consumer directory to accomplish that objective. It may be that the most frequent users of online directories listing businesses in Australia will be located in Australia, but that should not necessarily preclude Respondent (who is not in Australia) from fairly providing a service for customers outside Australia. The Panel determines that, in its assessment, Respondent is making fair use of Complainant's trademark term YELLOW PAGES in the disputed domain names because it is providing services under the disputed domain names outside the territorial jurisdiction where Complainant holds trademark rights, and with respect to Internet users in jurisdictions where the term YELLOW PAGES is not protected by trademark rights or is subject to fair descriptive use (e.g., the United States).” (Footnotes omitted.)

The Complainants point to new evidence, outlined below, demonstrating the extent to which the Respondent was, in fact, operating in Australia and targeting Australian businesses. The Complainants also argue that possible fair use of the terms “yellow pages” or “yellow page” in the United States is not relevant, since the Domain Names all include Australian geographic names and were used for Australian directories.

This Panel agrees with that reasoning. While it is conceivable, as the prior panel suggests, that an Internet user in another country might want to consult an online directory of businesses in Australia, the paid listings and advertising come from the local businesses in Australia that are the subject of the online directories associated with the Domain Names. This Panel would not find that the Domain Names were legitimately used in connection with a bona fide offering of such services if the evidence indicated that the Respondent was aware of the Complainants’ Australian mark and sought, in bad faith, to exploit it by misleading the relevant local businesses in Australia as to source or affiliation. To avoid repetition, that issue, which reflects on the Respondent’s “rights or legitimate interests”, is discussed below in considering the element of bad faith.

D. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, on which the Complainants rely:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The Complainants furnished some evidence of such deliberately misleading conduct in the prior UDRP proceeding, and substantial additional evidence is included with the current Complaint. The panelist in Sensis I did not reach the bad faith issue, as a result of its conclusion that the Respondent had a legitimate interest in using the “yellow page” term in the Domain Names because that term could fairly be used outside Australia.

The record includes the following credible evidence of bad faith in the registration and use of the Domain Names:

- In its response in Sensis I, the Respondent admitted prior knowledge of the Complainants’ YELLOW PAGES mark and its business plan to compete with the Complainants in offering online “yellow page” business-to-consumer directory and advertising services in Australian markets.

- The Respondent’s websites associated with the Domain Names in 2010 were headed “Yellow Page”, followed by an Australian geographic name, similar to the Complainants’ pattern of displaying the YELLOW PAGES mark with an Australian geographic name.

- The Respondent’s websites associated with the Domain Names also formerly displayed a black-and-yellow bordered logo of a hand with two fingers extended upward, simply inverting the Complainants’ WALKING FINGERS logo commonly used with the YELLOW PAGES mark.

- The Respondent directly competed with the Complainants in establishing online Australian business directories and soliciting paid listings and advertising from local businesses.

- A telefax from “www.YellowPage-Adelaide.com”, provided by an Australian recipient, indicates that the Respondent was directly soliciting listings from Australian businesses using a name corresponding to one of the Domain Names and displaying the inverted “walking fingers” logo that mimicked the Complainants’ WALKING FINGERS logo. The name “Yellow Publishing Ltd”, with an address in Manchester, England, appeared at the bottom of the form. (This telefax was included with the complaint in the prior UDRP proceeding, where the Respondent did not deny in its Response that it solicited listings from Australian businesses in this manner.)

- Redacted letters between the Respondent and certain Australian businesses, furnished with the Complaint in the current proceeding, indicate that the Respondent used names corresponding to the Domain Names and the inverted “walking fingers” logo on its invoices and letterhead, displaying postal addresses for the Respondent in Sydney and Perth, Australia, as well as in the Netherlands.

- This correspondence also shows that at least some Australian businesses objected to paying amounts in excess of AU$ 1500 for advertising in the Respondent’s online directory, protesting that they were “misled” or mistaken.

- A blog at “http://yellowpagescam.blogspot.com” collects complaints from “Victims of Yellow Page B.V. Scam”. The posts appear to be written by persons in a variety of jurisdictions, including Australia, who feel they were misled concerning the affiliation of the directory services provider that they agreed to pay for a listing.

- An article from “The Brisbane Times” dated May 30, 2010 concerned a “fake Yellow Page scam” by Yellow Publishing Ltd, the English company named on the telefax mentioned above and also named as a co-defendant with the Respondent in the ACCC complaint described below. The article reported that Australian businesses in several cities were targeted with telephone calls and faxes, and that the company used “a bogus Yellow Pages logo with the distinctive ‘walking fingers’ pointing up instead of down.”

- A news release dated September 21, 2010 from the Western Australia Police warned citizens about a “national fraud” involving “a company calling itself ‘Yellow Page’”. According to the news release, the Western Australia Police had already seized over 1500 envelopes “destined for potential business victims” and had intercepted “over $140,000 worth of cheques sent back to the scammers”.

- In November 2010, several months after the decision was rendered in Sensis I, the Australian Competition and Consumer Commission (ACCC) instituted legal proceedings against the Respondent and Yellow Publishing Ltd in the Federal Court, Australian Competition and Consumer Commission v. Yellow Page Marketing BV [2010] FCA 1218. The ACCC complaint alleges that the Respondent “misled hundreds of businesses into thinking they were dealing with the Sensis Pty Ltd Yellow Pages ® directories”. The ACCC complaint contends that the Respondent made “false, misleading and deceptive representations about online directory business services, in breach of sections 52 and 53 of the Trade Practices Act 1974”. According to the ACCC complaint:

“The companies sent businesses unsolicited facsimiles and follow-up invoices to procure a subscription to, and payment for, their online business directories. The facsimiles and invoices contained prominent banner headings including the words 'Yellow Page' and an inverted walking fingers logo, along with an offer of a 'free' listing in Google when the offer was not free. Australian businesses which took up the offer were each charged $3096 over two years, payable one year in advance, which appeared in fine print at the bottom of the facsimile.”

- On November 8, 2010, the Federal Court granted interim injunctions restraining the Respondent from seeking payment from Australian small businesses.

The Respondent submitted no Response in the current proceeding, but in the earlier UDRP proceeding the Respondent acknowledged its awareness of the Complainants’ marks and argued that it held a good faith belief that those marks were invalid. The Respondent referred to “generic” use of the term “yellow page” in the United States and elsewhere and a 2009 German court decision invalidating trademarks held by the formerly state-owned German telecommunications company for GELBE SEITEN, the German-language equivalent of “yellow pages”:

“Whilst the Respondent was aware of the Complainants YELLOW PAGES directory at the time of seeking registration of the domain names which are the subject of the Complaint, the Respondent believed that either the term yellow page was a generic descriptive term used in relation to Business to Consumer directories in Australia or that any trade mark rights which might be held by the Second Complainant, being a former government telecommunications monopoly would be invalid.”

There is no evidence before the Panel that the Respondent or any other party has moved to invalidate the Complainants’ well-known and registered Australian YELLOW PAGES mark. As the Response in the prior UDRP proceeding acknowledged, the 2009 German court decision has since been reversed. In any event, the Panel does not find the Respondent justified in relying on trademark decisions in other countries to assume that the Respondent could ignore valid Australian trademarks and use confusingly similar Domain Names to sell services to Australian businesses.

Moreover, there is ample evidence before this Panel on the record in these proceedings that the Respondent intended to trade on the Complainants’ reputation, creating a likelihood of confusion as to source or affiliation not only with the confusingly similar Domain Names themselves but also by displaying a “Yellow Page” name on the associated websites, letterhead, fax solicitations, and invoices, along with a graphic logo that merely inverted the trademarked logo used by the Complainants. The Respondent reinforced the likelihood of confusion by displaying Australian postal addresses, contrary to its implications in the Response in the prior UDRP proceeding that it had no need of an Australian presence. These practices have been more fully investigated by the authorities since the decision was issued in Sensis I, resulting in a pending enforcement complaint and court-ordered interim injunctions against the Respondent.

The Panel finds that the Respondent registered and used the Domain Names in bad faith, seeking to mislead Internet users for commercial gain through confusion with the Complainants’ YELLOW PAGES mark, consistent with the example of bad faith given in the Policy, paragraph 4(b)(iv). This finding also undermines the Respondent’s claim, in the prior UDRP proceeding, to have legitimate interests in the Domain Names.

The Panel concludes, therefore, that the second and third elements of the Complaint have been established.

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, <yellowpage-adelaide.com>, <yellowpage-melbourne.com>, <yellowpage-nsw.com>, <yellowpage-perth.com>, <yellowpage-queensland.com>, <yellowpage-southaustralia.com>, <yellowpage-sydney.com>, <yellowpage-tasmania.com>, <yellowpage-victoria.com>, and <yellowpage-westernaustralia.com>, be transferred to the Complainant Sensis Pty Ltd.

W. Scott Blackmer
Presiding Panelist

Alan L. Limbury
Panelist

Willem J. H. Leppink
Panelist

Dated: March 15, 2011