WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gelbe Seiten Zeichen-GbR v. Yajun Zhang

Case No. D2016-2230

1. The Parties

The Complainant is Gelbe Seiten Zeichen-GbR of Frankfurt am Main, Germany, represented by Bird & Bird LLP, Germany.

The Respondent is Yajun Zhang of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <gelbeseiten.top> is registered with AlpNames Limited (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2016. On November 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2016.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 19, 2016. 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.

4. Factual Background

The Complainant is Gelbe Seiten Zeichen-GbR, a German company. The Complainant is a trademark holding company of DeTeMedien Deutsche Telekom Medien GmbH ("DeTeMedien"), affiliated company of Deutsche Telekom AG, one of Europe's largest telecommunication companies covering telecommunications and information technology.

DeTeMedien publishes, in cooperation with several publishing companies, the German business directory "Gelbe Seiten".

The Complainant owns several trademark registrations for GELBE SEITEN, including the following:

The Complainant is the owner of the domain name <gelbeseiten.de>.

The Respondent is Yajun Zhang, domiciled in Hong Kong, China.

The disputed domain name <gelbeseiten.top> was registered on April 1, 2016.

5. Parties' Contentions

A. Complainant

The Complainant argues the following:

I. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the disputed domain name contains the Complainant's famous and highly distinctive GELBE SEITEN trademark.

That the Respondent has written the term "Gelbe Seiten" together, which is not sufficient to exclude likelihood of confusion between said disputed domain name and the Complainant's trademark.

That the generic Top-Level Domain ("gTLD") ".top" does not prevent the disputed domain name from being confusingly similar to the Complainant's trademarks.

That the use of the term "gelbeseiten" suggests that the disputed domain name is somehow connected with, associated to, or authorized by the Complainant.

II. The Respondent has no rights or legitimate interest in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights to, or legitimate interests in the disputed domain name.

That the Complainant has not agreed to the Respondent's registration of the disputed domain name, and has not given the Respondent any license or any other right to use or register the disputed domain name.

That there are not any economic connections between the Complainant and the Respondent.

That the disputed domain name is not being used by the Respondent in connection with a bona fide offering of goods or services.

That the Respondent has not been commonly known by the disputed domain name <gelbeseiten.top>, and is not connected to the Complainant or the mark GELBE SEITEN in any way.

That the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

That the Complainant has made a prima facie case showing that the Respondent does not have any rights to, or legitimate interests in the disputed domain name, a fact that reverts the burden of proof to the Respondent.

III. The disputed domain names have been registered and are being used in bad faith.

The Complainant asserts that its trademarks had been registered for several years prior to the time of registration of the disputed domain name. That the Respondent must have been well aware of the Complainant and its trademarks when registering the disputed domain name.

That the Complainant's trademarks are registered at the Trademark Clearinghouse, a fact that proves the Respondent's positive knowledge of the Complainant's marks.

That the Respondent was aware of the Complainant's trademark rights before registering the disputed domain name, and at the time of registration of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(i) the disputed 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 disputed domain name; and

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

Since the Respondent has failed to reply to the Complainant's assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The Complainant has proven to be the owner of the trademark registrations for GELBE SEITEN in Germany and the rest of the European Union.

The disputed domain name is identical to the Complainant's trademark GELBE SEITEN, as it includes the latter in its entirety.

The addition of the gTLD ".top" is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant's trademarks (see Guinness World Records Limited v. ZhuoZhen Wu, WIPO Case No. D2015-0352; and Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, WIPO Case No. D2014-1040).

The first element of the Policy has been fulfilled

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

I. before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

II. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

III. the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant is the owner of trademark registrations for GELBE SEITEN in Europe.

According to the Complainant, it has not agreed to the Respondent's registration of the disputed domain name, nor has it granted the Respondent any license or right to use or register its trademark. The Respondent has not rebutted said allegation or offered any evidence against it.

The disputed domain name is inactive. In this regard, the Complainant asserts that the Respondent makes no use of the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Respondent has not offered any evidence to contest the Complainant's allegations.

The Respondent's name holds no connection to the disputed domain name. The Panel accepts the Complainant's uncontested assertion that the Respondent has not been commonly known by the disputed domain name.

The Panel considers that the Complainant has established a prima facie case that the Respondent has no rights to, or legitimate interests in the disputed domain name. This fact shifts the burden of proof to the Respondent (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D2000-1521; and Skipton Building Society v. skiptonassetmanagement.com, Private Registration, WIPO Case No. D2011-0222).

The record holds no evidence showing that the Respondent is making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

In similar UDRP cases, other Panelists have determined that, in the absence of evidence showing the contrary, the passive holding of a domain name cannot constitute a legitimate noncommercial fair use. In this case, the Respondent did not prove to have undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent has provided no arguments or evidence to prove a legitimate use of the disputed domain name which incorporates the Complainant's GELBE SEITEN trademarks (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408; Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195; Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483).

Therefore, the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

I. circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

II. the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

III. the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

IV. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The Complainant holds trademark registrations for GELBE SEITEN in Germany and the European Union.

The Respondent is domiciled in Hong Kong, and the Complainant has not provided any evidence to demonstrate its trademark's reach or recognition in said jurisdiction. However, the Complainant has submitted proof of registration for the trademark GELBE SEITEN in ICANN's Trademark Clearinghouse. According to Annex 6 to the Complaint, said registration took place prior to the date of registration of the disputed domain name.

Trademark holders who have registered their marks with the Trademark Clearinghouse receive the benefit of having said mechanism issue a warning to the potential registrant, notifying said registrant of a potential infringement in the event of registration of the domain name, this only occurs for a limited time after each new gTLD launches. In such case, the potential registrant is alerted at the time of attempting to register a domain name that matches a trademark registered with the Trademark Clearinghouse. Registrants who register a domain name in spite of this warning are on notice of the potential infringement of the relevant trademark (see International Business Machines Corporation v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1419; and Casumo Services Limited v. Ronny Iversen / Prioritet Norge AS, WIPO Case No. D2015-1653).

Even taking into account that the Complainant recorded its mark in ICANN's Trademark Clearinghouse, said Clearinghouse was programmed to issue an automated warning to registrants at the time of registration of related domain names for the first 90 days after the ".top" gTLD launched – which was in late 2014. Therefore, noting that the disputed domain name was registered in 2016, the Complainant's claims as to the Respondent's notice flowing from the ICANN Trademark Clearinghouse are grossly misplaced. Even so, knowledge of the Complainant's rights to the trademark GELBE SEITEN is sufficient to infer bad faith registration of the disputed domain name on the side of the Respondent (see Gelbe Seiten Zeichen-GbR v. Tom Eisenlohr, WIPO Case No. D2016-0540), and the Panel finds it more likely than not that the Respondent was aware of the Complainant's mark when it registered the disputed domain name.

The disputed domain name is inactive. Numerous precedents issued under the Policy have held that the passive holding of a domain name can, under certain circumstances, constitute bad faith use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393).

The circumstances of this case have led this Panel find bad faith in the Respondent's passive holding of the disputed domain name. The particular circumstances that have motivated such finding are as follows:

a) Even though the Complainant has not provided any proof of the fame and recognition of its GELBE SEITEN trademark, it does not strike the Panel as a term an individual located in Hong Kong would naturally seek,

b) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name,

c) Paragraph 2 of the Policy sets forth that it is the Respondent's responsibility to determine whether the domain name registration infringes or violates someone else's rights. The obligations imposed by Paragraph 2 of the Policy are an integral part thereof, they are applicable to all registrants, and cannot be ignored (see City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643).

d) The Respondent has registered a vast number of domain names under the gTLD ".top", leading this Panel to believe he is clearly familiar with the guidelines surrounding the registration of new gTLDs.

Given the previously detailed circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.

Moreover, there is no response to offer an explanation as to why the Respondent may have registered the disputed domain name.

Taking into account all of the above and in the absence of any evidence to the contrary, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

The third element of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gelbeseiten.top> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: January 2, 2017