Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia, represented by King & Wood Mallesons, Australia.
Respondent is Open Business Directory Ltd. of Dubai, United Arab Emirates, internally represented.
The disputed domain name <yellow-page-australia.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2013. On August 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. The Response was filed with the Center on September 10, 2013.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 18, 2013. 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.
Complainant is an Australian telecommunications and information services company. Sensis Pty Ltd is a wholly owned subsidiary of Complainant.
Sensis is responsible for selling, compiling, producing and marketing the Yellow Pages and White Pages directories in Australia. Sensis’ history stretches back to the creation of the first Australian telephone directory in 1880. The first Yellow Pages directory was launched in 1975.
Complainant owns (and Sensis is the licensee of) an extensive portfolio of Australian YELLOW PAGES trademarks, which are registered in respect of, amongst other things, print and online telephone directories and advertising services. Below is a partial listing of Complainant’s registered trademarks:
TRADEMARK NO | TRADEMARK | CLASS | STATUS |
|
545667 |
YELLOW PAGES |
16 |
Registered from November 12, 1990 Renewal due November 12, 2020 |
|
545668 |
YELLOW PAGES |
35 |
Registered from November 12, 1990 Renewal due November 12, 2017 |
|
545669 |
YELLOW PAGES |
38 |
Registered from November 12, 1990 Renewal due November 12, 2020 |
|
704079 |
YELLOW PAGES |
9 |
Registered from March 1, 1996 Renewal due March 1, 2016 |
|
304264 |
|
16 |
Registered from February 3, 1977 Renewal due February 3, 2018 |
Complainant has also registered the name “Yellow Pages” as a business name in all Australian states and territories.
In 1994, Pacific Access Pty Ltd (Sensis’ predecessor) launched one of the worlds’ first online classified business directories. Since then, Complainant has made the Yellow Pages database available online by means of its digital sites, including the Yellow Pages website located at “www.yellowpages.com.au”. More than 4.3 million searches a week are made with Complainant’s Yellow Pages website. In June 2013, Complainant’s Yellow Pages website and mobile site had more than 6 million unique visitors. In the past ten years, Complainant’s Yellow Pages website and digital sites have had more than 646 million visits.
Complainant holds 63 domain names containing the term “Yellow Pages” (or a deliberate misspelling), many of which resolve to Complainant’s website at “www.yellowpages.com.au”.
The Domain Name was registered on June 17, 2013.
Complainant has submitted a Complaint supported by substantial evidence. Complainant’s arguments are reviewed below.
Identical or Confusingly Similar: Complainant contends that the Domain Name is identical or confusingly similar to trademarks or service marks in which Complainant has rights. Complainant explains that its rights in the Yellow Pages directories have been protected over the decades by a rigorous intellectual property regime including the registration of trademarks, systematic monitoring of competitors, and swift initiation of legal action where required. Such action may involve the filing of complaints with the Center, some of which have been successful, including Telstra Corporation Limited v. “aussieyellowpages.com”, Peter Norfolk, WIPO Case No. D2007-1418, in which the Panel ordered transfer of the domain name <aussieyellowpages.com> to Complainant, holding that “in Australia the name ‘Yellow Pages’ has secondary meaning and distinction and is validly trademarked by the Complainant”.
Complainant states that its intellectual property rights have been exploited through extensive and award-winning advertising and promotions over the decades. Between 1978 and 2013, Complainant spent approximately AUD 389,830,000 on advertising the Yellow Pages directories and products. Reflecting the success of the Yellow Pages marketing, in 2004 it was described by the Superbrands Council (an independent body made up of some of Australia’s leading marketing, communication and business experts) as “a potent brand in its own right” and “one of Australia’s most loved and memorable brands”. When consumers see the term “Yellow Pages” in Australia, Complainant urges that they recognize Complainant’s business as the source. Complainant has also incurred considerable expense in developing and promoting its digital sites, which are, combined, one of Australia’s most visited online business classifieds directories.
Complainant argues that due to its iconic reputation, the prospect of confusion exists. This is particularly so in this case where Respondent has used words that are nearly identical to Complainant’s marks in relation to the same goods or services, in an attempt to willfully mislead consumers. Complainant states that the Domain Name, <yellow-page-australia.com>, is confusingly similar to Complainant’s trademarks because it replicates Complainant’s YELLOW PAGES trademark almost in its entirety (only lacking the plural “s”), and includes the geographical identifier “Australia”, which further serves to confirm that consumers are likely to call to mind Complainant. The combination of these terms also shows that Respondent’s conduct is clearly targeting the Australian jurisdiction.
Complainant argues that the Domain Name is so confusingly similar to Complainant’s marks that any Australian consumer faced with the Domain Name will inevitably call to mind Complainant. Moreover, Complainant explains that this appears to be Respondent’s intention, and is part of Respondent’s broader strategy to swindle consumers out of thousands of dollars, as explained below.
Rights or Legitimate Interests: Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name because Respondent is not making a legitimate noncommercial or fair use of the Domain Name, has not been commonly known by that name, and is not using the Domain Name in connection with a bona fide offering of goods or services. In particular, Complainant contends that in circumstances where Respondent is using the Domain Name to perpetrate a scam, in which Respondent’s website targets Australian consumers in an attempt to lure them into an unfair agreement by falsely representing that Respondent’s website is Complainant’s Yellow Pages directory, or is otherwise connected, associated, sponsored, approved and/or affiliated with Complainant, such conduct cannot give rise to rights or legitimate interests.
Complainant has submitted evidence in support of its position that Respondent is using the Domain Name to support a scam, intended by Respondent to deceive Australian small businesses into agreeing, by mistake, to pay thousands of dollars each. The crux of this scam is that Respondent sends unsolicited facsimiles to Australian businesses (many of which are existing customers of Complainant), which feature a prominent header “Yellow Page Australia”; feature a “walking fingers” logo which mirrors a number of Complainant’s registered trademarks; offer a free Facebook page; and seek “confirmation” of pre-filled business details, implying that the recipient is already one of Respondent’s customers, when this is not the case. The facsimile attempts to entrap recipients to agree to a two year contract at a cost of AUD 99 per month, totaling AUD 2,376; to make payment one year in advance (i.e., make a lump sum payment of AUD 1,188 now, and another in 12 months’ time); and with the contract being rolled over automatically for another year (making it three years, and a total cost of AUD 3,564) if the recipient does not terminate the agreement in writing at least three months before its expiry. Recipients who fall for this con are unwittingly signing up to pay thousands of dollars each for directory services that they likely do not want, and that Complainant is by no means sure actually exist. Respondent’s next step in its scheme is to send, by post, an invoice for AUD 1,188, addressed to the recipient’s business. The invoice requires payment within 14 days of the invoice date. Complainant has been contacted by a number of its customers which have been invoiced by Respondent. On at least two occasions, Complainant’s customers assert that they received the invoice on an unsolicited basis, and had not previously received a facsimile or any other correspondence from Respondent. Complainant has concerns that its customers who receive an unsolicited invoice from Respondent may pay it, thinking by mistake that the invoice has come from Complainant.
Complainant contends that the Domain Name is a supporting aspect of the scam, designed to reassure visitors, who likely go to the site after receiving a misleading facsimile, that Respondent is Complainant’s Yellow Pages directory, or otherwise associated with it or Complainant in some way.
To support Complainant’s assertion that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, Complainant has also provided information about Respondent’s conduct around the world. According to Complainant, Respondent has been conducting similarly questionable business activities in other jurisdictions, namely, the United States and Canada, using corresponding domain names: <yellow-page-usa.com> and <yellow-page-canada.com>. The United States’ Better Business Bureau (BBB) works to protect consumers from scams, including business directory scams. The BBB has a website search function for consumers in the United States and Canada to “check out” questionable businesses. The BBB website includes two listings for “Open Business Directory Ltd”, one in Boston and one in Canada. More than 1,300 complaints have been filed against the Boston business, including 853 classified as “serious”. The Boston listing relates to the website at “www.yellow-page-usa.com”. The site looks very similar to Respondent’s website. The contact details are the same as on Respondent’s website. The Canada listing relates to the website at “www.yellow-page-canada.com”. Again, the site looks very similar to Respondent’s website and the contact details are the same. More than 347 complaints have been filed against the Canadian business, and on July 11, 2011, the BBB issued an alert for the business. Internet searches reveal numerous complaints posted by individuals and businesses, on websites including “Rip Off Report” and “Scambook”, after having been unwitting entrapped following their receipt of similar facsimiles from Respondent.
Respondent’s website clearly targets Australian consumers, and is intended to trade off Complainant’s reputation, in that: the Domain Name itself includes the geographical identifier “Australia”; the website prominently features a logo incorporating the name “Yellow Page Australia”; the background of the website is a rotating series of photographs featuring iconic Australian images, similar to those that appear on Complainant’s Yellow Pages directory covers; the footer of the website lists “Locations”, which are all Australian cities or towns including Port Macquarie, Melbourne, Adelaide, Sydney, Richmond and Tamworth, similar to the way in which Complainant’s Yellow Pages directories are released on a regional basis; the website invites visitors to search for local businesses, and to sign up for an online listing, in the same way that Complainant’s Yellow Pages website does; and the website does not contain an “About Us” page, or any disclaimer, which could potentially make a clear differentiation between Respondent and Complainant.
Complainant states that in Australia, the term “Yellow Pages” is not generic, and Complainant holds exclusive rights to use the term. Complainant has not licensed or authorized Respondent to use the term “Yellow Pages” in Australia. By using the term “Yellow Page” together with the geographical identifier “Australia”, Respondent is clearly intending to defraud Australian consumers and divert them to its site for commercial gain. In such circumstances, there can be no legitimate fair use of the Domain Name.
Complainant has submitted evidence that Respondent is in fact contacting consumers in Australia, many of which are existing customers of Complainant. Such evidence includes: articles from local newspapers including The Portland Observer, The Naracoorte Herald, The Mareeba Express and The Port Macquarie News, which published articles warning readers about Respondent’s conduct; the website for Ridgeway Accounting, located in Toowoomba, Queensland, which issued a warning to customers after receiving a facsimile from Respondent; a Facebook post by an individual, located in Melbourne, who responded to a post by Complainant on its Facebook page, indicating that she had received a facsimile from Respondent; three complaints from July 2013 on the “Reverse Australia” site asking “Who Called Me?” from 1800 153 700, the number displayed on the facsimile, reporting that it is a scam; an article from Business Review Weekly (BRW), dated August 2, 2013, warning Australian small businesses; an article from the ACCC’s SCAMwatch website, dated August 2013, warning small businesses to be alert to Respondent’s conduct; at least 73 complaints received by Complainant; and at least 90 reports from Australian small businesses to the ACCC, after having received a facsimile from Respondent. Since around August 7, 2013, Complainant has also been contacted by a number of its customers, which have been invoiced by Respondent. On at least two occasions, the invoices were received by Complainant’s customers on an unsolicited basis. Neither recipient recalls receiving a facsimile from, or sending anything back to, Respondent. Another customer of Complainant who contacted Complainant after receipt of an invoice asked to remain anonymous, due in part to personal fears about what Respondent might do should her identity and concerns become known.
Complainant urges that Respondent’s conduct of sending unsolicited invoices is a very significant issue. As is evident from the invoices, each plainly states that payment should be directed to “Yellow Pages Australia”, which is also identified as being a “Service Agent”. The address on the return envelope also includes the name “Yellow Pages Australia”. It goes without saying that “Yellow Pages Australia”, both in the invoice, and on the return envelope, is not Complainant. Here, Respondent has made no attempt to distinguish at all by removing the letter “s” from the name “Yellow Pages” (to the extent that such removal can be said to distinguish). Both the invoice and the return envelope display identical reproductions of Complainant’s trademark YELLOW PAGES. It goes without saying that this use of “Yellow Pages Australia” is likely to mislead or deceive customers into thinking the source of the invoice is Complainant, when this is not the case; appears to be an attempt to pass off Respondent as being Complainant’s legitimate Yellow Pages business in Australia or associated with it somehow; and appears to be a clear case of trademark infringement given that the use of “Yellow Pages” is identical to the Complainant’s registered trademarks for YELLOW PAGES (Australian Trade Mark Nos. 545667, 545668 and 704079).
Given that Respondent is in business to make a profit, with its facsimiles seeking more than AUD 2,300 from recipients, its use of the Domain Name cannot be considered noncommercial. Respondent also cannot claim to be using the Domain Name in connection with a bona fide offering of goods and services. Indeed, Respondent’s online directory appears to have no listings as at the date of filing the Complaint. Further, Respondent has not been “commonly known” by the name “Yellow Page Australia”. Both the “Contact Us” page of its website, and the information available through the Registrar’s WhoIs database, indicate that Respondent is commonly known by the name “Open Business Directory Pty Ltd”.
Complainant has attempted to correspond with Respondent concerning this matter. On July 16, 2013, Complainant sent a letter to Respondent, requesting that Respondent provide written confirmation by July 24, 2013 that it would cease operating its website from the Domain Name, and cancel or transfer the Domain Name to Complainant. Upon receiving no response, on July 24, 2013, Complainant sent a second letter to Respondent, which required a response by July 30, 2013. Having still received no response, Complainant’s authorized representative sent a third letter to Respondent dated July 31, 2013, which required a response by August 7, 2013. On August 6, 2013, Complainant’s representative received the first page of a response from Respondent, by facsimile. The second page of the facsimile was corrupted. On August 6, 2013, Complainant’s representative sent an email to Respondent requesting a complete version of the facsimile. On August 7, 2013, having still not received a complete response, a fourth letter was sent to Respondent, which addressed the corrupted facsimile, but also the development that customers of Complainant had been invoiced by Respondent. Later on August 7, 2013, Respondent sent a complete version of the facsimile dated August 5, 2013.
Respondent’s reply does not deter Complainant from seeking to file this Complaint in the interests of consumer protection in that: the response makes a bare assertion that Respondent is acting in good faith, without explaining the unfair nature of the facsimile; the response does not address Respondent’s unsolicited invoices at all; the reply asserts that Complainant does not have any unregistered rights within Australia. This is clearly inaccurate, given that Complainant has both registered and unregistered rights in Australia in, amongst other things, the name “Yellow Pages” and its walking fingers logo; the reply refers to a recent LRO decision, which reinforces Complainant’s position, in that the panel found in favor of Complainant’s application for the new gTLD <.yellowpages>, finding that “The [Complainant] has generated strong brand recognition in the term YELLOW PAGES as being the mark of the [Complainant] in Australia and among its international clients” (Hibu (UK) Limited v. Telstra Corporation Limited, WIPO Case No. LRO2013-0013); the reply asserts that the walking fingers logo used in the facsimile “differs to that” registered by Complainant, when the only difference is that the logo has been flipped vertically; and the reply contends that an “online searcher would make up their own mind as to whether the website is associated with another Provider or not”. This cannot be the case where the Domain Name includes the word “Australia” and the website content clearly targets Australia. Any Internet user faced with Respondent’s website is likely to call to mind Complainant, as is the apparent intention of Respondent.
Registered and Used in Bad Faith: Complainant contends that the Domain Name was registered and is being used in bad faith, for the reasons that have been summarized above. Internet users who visit Respondent’s website, likely after receiving a misleading facsimile from Respondent, might well be led to believe, by mistake, that the website is Complainant’s Yellow Pages directory, is produced by Complainant, or is otherwise connected, associated, sponsored, approved and/or affiliated with Complainant. The fact Respondent has created this likelihood of confusion is, in Complainant’s view, no accident. Indeed, the Domain Name and website are part of a larger scheme which attempts to trick Australian businesses (many of which are Complainant’s existing customers) into parting with thousands of dollars each.
According to Complainant, if Respondent was a genuine entrant wishing to compete in the business directory market in Australia, Respondent would know, or should have known about the existence of Complainant and its trademark rights. Rather, it appears that Respondent did know about the existence of Complainant and its trademark rights, and chose not only to ignore them, but to willfully infringe them, in order to deceive consumers in what can be described as bad faith conduct, at the very least.
Respondent has submitted a Response, in which it contends that the Complaint should be denied. Respondent acknowledges that Complainant has a dominant position for directory services within the Australian marketplace, but states that it is not intending to mislead any business or use the Domain Name in bad faith. Instead, Respondent claims Complainant has been acting against fair competition as there has been adverse publicity against Respondent’s business, which has been supported in part by Complainant.
Identical or Confusingly Similar: Respondent states that the term “Yellow Pages” is a generic term used throughout the world in the business directory services sector. Respondent states that the Domain Name is not identical to Complainant’s trademark because it incorporates the word “Australia”. Respondent claims it sought to create a difference between Complainant and Respondent and included the name “Yellow Page” as well as the name of Respondent’s company providing the service, in order to distinguish between Respondent and Complainant on Respondent’s order form.
Respondent contends it would be anti-competitive and inequitable to further Complainant dominance within the online business directory market in Australia by preventing Respondent from using the words “Australia” and “Yellow”, both of which cannot be trademarked. Respondent urges that because the online market is global, a potential customer seeking a business or service in Australia would be unable to use the service provided by Respondent if Respondent is prevented from using the word “Australia” in its domain name. Respondent is also aware that the word “Yellow” is widely used in the business directory sector and Respondent is not using this term in bad faith but simply as a familiar term in this sector. According to Respondent, a potential customer would normally search for this word and if Respondent is prevented from using this term in the Domain Name, it would restrict and damage Respondent’s business. Similarly, the word “page” is a generic term used widely throughout the online business directory sector. Moreover, the word “page” is used to refer to the “home page” of Respondent’s service.
Rights or Legitimate Interests: Respondent contends that the Domain Name is legitimately owned by itself, and that Respondent is seeking to provide a genuine alternative with additional free services to those offered by Complainant. Further, Respondent claims that, by its order form’s design and clear terms, Respondent demonstrates that it is not seeking to mislead any businesses to enter into a contract for Respondent’s services.
Respondent states that it has, for many years, provided similar online directory services to businesses both in the United States and worldwide, and has used the name “Yellow Page” in order to market its services. The Domain Name (and legitimate rights) merely enables Respondent to expand its business model to Australia. Respondent is not intending to mislead or confuse as to the use of the Domain Name. Instead, if the Domain Name were transferred to Complainant, this would interfere with fair competition by restricting Respondent from using words that are well known globally and used without restriction. A restriction on use of the word “Australia” would interfere with Respondent’s ability to market its customer services outside of Australia to the global market.
Thus, Respondent contends it has a legitimate interest in the Domain Name. Respondent has used a number of different domain names in both the United States and Europe and, accordingly, is not seeking to mislead any business and is not a scam as has been alleged by Complainant in the Complaint.
Registered and Used in Bad Faith: Respondent urges that it is not using the Domain Name in bad faith. Respondent states that it has been providing an online business directory service and marketing service since 2010, and has undertaken such business in the United States since that time. Following the establishment of the business in the United States, Respondent developed its business in Europe and continues to provide such services to many customers. Respondent states that, as it was successful in the United States and other countries, it saw the opportunity to extend its business to Australia. Respondent accordingly registered the Domain Name to enable it to provide the online business directory service.
Respondent explains that if it was seeking to use the Domain Name in bad faith, it would not have provided details of Respondent’s company, Open Business Directory Ltd, within the terms of the order form provided to potential customers. Respondent argues that its order form is clear as to the name of the company providing the service and as to the fees payable. There is nothing within those terms to suggest that there is any association or affiliation with Complainant. The yearly fee is invoiced only after the work has been undertaken, and the service continues throughout the contract period. If it was acting in bad faith, it would have been beneficial to instead use a name similar or identical to that of Complainant in the order form. Respondent’s form does not infringe on any domain name or trademark of Complainant.
Respondent’s business model and services include providing a free Facebook page to its customers, which is similar to services offered by other companies within the marketplace. Respondent argues it is entitled to offer these services without being accused that it misleads and impacts upon Complainant’s business activities. Further, Respondent contends that Complainant’s view of Australian businesses as “unwitting recipients” of Respondent’s order form and information is “demeaning to Australian businesses.” According to Respondent, businesses are expected to undertake due diligence when reading and signing any document.
Respondent also states that it uses the “walking fingers” design mark, which is used by many companies providing an online business directory service. That design, which differs from the version used by Complainant, together with the format of Respondent’s order form, are such that they would not create confusion with the service being provided by Complainant. Respondent states that it offered to enter into discussions with Complainant’s representative regarding a change of the design, but received no reply. Respondent offers that it will re-design this design mark so as not to be accused of seeking to confuse the public, despite all other factors on Respondent’s order form, which differentiate Respondent’s service from that of Complainant’s.
Respondent states that it provides a bona fide service to its customers, including a webpage for all of its customers from the details on the order form. The online business directory continues to be updated and improved, and provides an alternative with additional services to that of Complainant.
Finally, Respondent concludes that it is a new company entering into the Australian marketplace and does not perceive itself as a serious competitor to Complainant, but that it does wish to continue its business model in Australia without hindrance and restriction. Respondent denies that it is acting in bad faith, but instead asserts that Complainant is seeking to restrict fair competition.
The required elements of the Policy are well understood and have been discussed in many prior UDRP decisions. In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
Complainant has well-established rights in its YELLOW PAGES trademarks, which are registered in Australia. Contrary to Respondent’s argument that these words are generic, Complainant’s rights in these marks are well-known and protected throughout Australia.
The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of the common or descriptive term typically being regarded as insufficient to prevent the likelihood confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Moreover, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. UDRP panels have usually found the incorporated trademark to constitute the dominant component of the domain name. See WIPO Overview 2.0, paragraph 1.9.
In this case, the Domain Name lacks the plural “s” as found in the YELLOW PAGES mark and includes hyphens between the words “yellow-page.” Nonetheless, this portion of the Domain Name is nearly identical to Complainant’s YELLOW PAGES marks. The addition of “Australia” as a geographic reference following a hyphen, as noted above, does not work to eliminate confusing similarity between the Domain Name and Complainant’s mark, but only reinforces it. This is particularly so where, as here, Respondent has used the Domain Name in relation to the same goods or services as Complainant’s trademark. See e.g., Telstra Corporation Limited v. India Yellow Pages, WIPO Case No. D2002-0651 (involving the domain names <australiayellowpages.com> and <australianyellowpages.com>), the panel found confusing similarity where “[t]he only difference is that the Domain Names feature in addition to the Complainant’s trademark a prefix which precisely defines the geographical scope of the Complainant’s rights and precisely describes the Complainant’s product”).
Accordingly, the Panel finds Complainant has satisfied the first element of the Policy.
A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name. Once such prima facie case is made, respondent faces the burden of demonstrating rights or legitimate interests. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. First, the Panel observes that Complainant has prior longstanding rights in its YELLOW PAGES trademarks. When the Domain Name was recently registered by Respondent in June 2013, Complainant’s marks were well established and the evidence indicates that Respondent was well aware of them. Moreover, Respondent does not contend that it was authorized to use Complainant’s YELLOW PAGES trademarks or otherwise known by this name, or that it was making a legitimate noncommercial or fair use of the Domain Name.
Complainant has also provided detailed evidence to indicate that Respondent was using the Domain Name in connection with misleading business practices, including sending certain facsimiles and unsolicited invoices to potential customers in Australia, while using Complainant’s YELLOW PAGES trademark in certain of these communications (“Yellow Pages Australia” including the plural “s”) and a “walking fingers” logo that mirrors a number of Complainant’s registered trademarks, without proper disclaimers to avoid confusion with Complainant.
Since Complainant’s rights in its trademarks long predate Respondent’s registration of the Domain Name, and given the evidence that the Domain Name was being used in connection with misleading business practices, the burden is on Respondent to establish rights or legitimate interests in the Domain Name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.
Respondent has argued that the Domain Name uses words that are well known globally and used without restriction. Respondent also denies any sharp business practices, focusing on the order form that it sends out to potential customers. Respondent also indicates that the business services for its website linked to the Domain Name are offered to consumers outside of Australia. Respondent’s contentions fail to adequately recognize the following points: (i) it is the combination of the words “yellow” and “pages”, as incorporated in Complainant’s YELLOW PAGES trademarks, that is protected, not these words used singularly; (ii) part of the reason the YELLOW PAGES trademarks are well-known globally is that Complainant has invested hundreds of millions of dollars promoting its trademarks and brand; and (iii) the trademarks and brand are protected and therefore restricted from use by third-parties in Australia, which is where the evidence indicates that Respondent has been targeting its business practices as described by Complainant and supported by ample evidence.
As the Panel determined similarly in Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057:
“While it is conceivable […] 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.”
Here, the deceptive practices alleged by Complainant (and supported by the evidence submitted with the Complaint) extend beyond the order form used by Respondent. Respondent failed to respond to Complainant’s allegations concerning the larger scheme as set forth in Complainant’s submission, including use of a confusingly similar Domain Name, confusing faxes sent, unsolicited invoices and return envelopes bearing “Yellow Pages Australia” (with the plural “s”), and lack of any proper disclaimer to distinguish Respondent from Complainant.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy.
The Panel concludes that Complainant has established bad faith registration and use of the Domain Name by Respondent under paragraph 4(b) of the Policy, based on several factors. First, Respondent incorporated Complainant’s YELLOW PAGES trademarks into the Domain Name generating confusing similarity, without justifiable reason for doing so and with knowledge of Complainant and its trademarks. Moreover, Respondent registered the Domain Name on June 2013, many years after Complainant commenced using its trademarks in commerce in Australia. These circumstances suggest that Respondent intentionally targeted Complainant when it registered the confusingly similar Domain Name.
Second, the Panel finds that Respondent has been using the Domain Name to attract, for commercial gain, Internet users to Respondent’s website linked to the Domain Name in a manner that confuses and misleads Internet users into thinking there is an association between Respondent and Complainant. Moreover, Respondent offers competing new services on its website. See Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478 (finding bad faith on a showing that respondent used the domain name at issue to redirect the Internet users to its own website where it sold goods competing with those of complainant).
This case is similar to an earlier UDRP case, Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., supra, where the Panel held that:
“the Respondent intended to trade on the Complainant’s reputation, creating a likelihood of confusion as to source or affiliation not only with the confusing 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 Panel therefore finds that Respondent registered and is using the Domain Name in bad faith, seeking to mislead Internet users for commercial gain through confusion with Complainant’s YELLOW PAGES mark.
For all of the above reasons, the Panel finds that the Domain Name was registered and is being used in bad faith pursuant to Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <yellow-page-australia.com> be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: October 19, 2013
