WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yell Limited v. Weborcus Software Systems Pvt. Ltd.
Case No. D2004-0008
1. The Parties
The Complainant is Yell Limited, Reading, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by CMS Cameron McKenna, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Weborcus Software Systems Pvt. Ltd., c/o Ajay Arora, New Delhi, India, represented by Dubey & Partners - Advocates, New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <ukonlineyellowpages.com> is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 7, 2004. On January 9, 2004, the Center transmitted by email to Melbourne IT Ltd. trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On January 12, 2004, Melbourne IT Ltd. trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2004. In accordance with the Rules, paragraph 5(a), the Response was initially due on February 2, 2004. On the Respondentís request, and as tacitly agreed to by the Complainant, the term for responding to the Complaint was extended until February 23, 2004. On February 17, 2004, the Complainant filed supplemental documents in support of its Complaint. The Response was filed with the Center on February 23, 2004.
The Center appointed Michael Treis as the Sole Panelist in this matter on March 1, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel has decided, in its discretion, to admit and to consider the supplemented documents filed by the Complainant on February 17, 2004.
4. Factual Background
The Complainant distributes telephone directories and provides related services, also via the Internet, under the trademark YELLOW PAGES in the United Kingdom. Its annual turnover in goods and services sold under or by reference to the trademark YELLOW PAGES exceeds £500 million. It is a very well established provider of classified directory services. The Complainant is the successor in title of the General Post Office of the United Kingdom, who began using Yellow Pages as a classified section in its telephone directories in 1966, and of British Telecom, who spun off its business unit "BT Yellow Pages" to the Complainant in 2000. Both the Complainant and its predecessors in title have used the trademark YELLOW PAGES extensively in the United Kingdom, distributing over one billion copies of YELLOW PAGES directories to its households and businesses.
The Complainant owns a range of trademark registrations for YELLOW PAGES in the United Kingdom, in particular number 1,119,206 in Class 16 as of August 15, 1979 in respect of "directories of businesses and services, all having yellow pages," but also in respect of the provision of data and information through the internet (number 1,283,392 in Class 38 as of October 1, 1986).
The Respondent is a company based in India. It operates a website under the disputed domain name <ukonlineyellowpages.com>. This website offers directory and marketing services through the Internet. The services are directed to customers in various countries. The website was operated under the name (i.e. title or trademark) "Ukonlineyellowpages" until November 2003. On the Complainantís request, the Respondent then changed the name of the website to "UKOLYP." It did not change the domain name. The Respondent has established a company in the USA under the name "Ameri Yellow Pages Inc." and it plans to expand its Internet business further.
The Parties have been corresponding concerning this domain name dispute since November 6, 2003, when the Complainant sent the Respondent a demand letter. This letter was answered by the counsel of the Respondent by letter of November 10, 2003. The counsel of the Respondent refuted the allegation that the Respondent would have infringed the Complainantís trademark rights. This correspondence continued until November 18, 2003. Following commencement of the UDRP proceeding on January 13, 2004, the correspondence resumed and the Parties entered into negotiation concerning a possible settlement. This negotiation ended on February 17, 2004, when the Complainant dismissed the Respondentís offer to purchase the domain name for £8í000 as being unreasonable.
5. Partiesí Contentions
A. Complainantís Contentions
The Complainantís Contentions can be summarized as follows:
The Complainant has exclusive rights to the trademark YELLOW PAGES in the United Kingdom. The Respondent has infringed these rights by registering and using the Domain Name. In particular, the Domain Name is identical or confusingly similar to the Complainantís trademark and common law rights.
The Respondent has no rights or legitimate interests in respect of the Domain Name. Even if it has removed the trademark YELLOW PAGES from its website, it continues to trade in a deceptive manner. The Respondent has contacted several of the Complainantís customers pretending to be Yell Limited. It has represented itself as "YELLOWPAGES ONLINE" and approached existing customers of Yell Limited to solicit advertisements for the Respondentís website at the disputed Domain Name. The Respondent knowingly chose a Domain Name identical to the distinctive elements of the Complainantís trademarks which are widely recognized. By registering the Domain Name, the Respondent is intentionally seeking to create confusion in the mind of internet users as to the ownership and contents of the website which implies that the Respondent either runs or is associated with Yell Limitedís business in the United Kingdom. Therefore, the Respondent uses the Domain Name for the purposes of (i) tarnishing the trademarks and the goodwill of the Complainant, and (ii) deceptively acquiring the Complainantís customers.
The Domain Name was registered and is being used in bad faith. The Complainantís trademarks are well known and the Respondent registered the Domain Name and used the Complainantís trademarks and devices knowing that it would infringe the rights of the Complainant. The Respondent registered the Domain Name and has taken positive steps referring to the Domain Name with the purpose of diverting and causing confusion to both potential and current customers of Yell Limited, and actively contacted Yell Limitedís current customers to this end. The Respondent intentionally used the name of Yell Limited and the country where its principal activities take place, and intentionally included the term "online," in order to attract internet users globally who seek Yell Limitedís website. In so registering and using the Domain Name for identical services the Respondent is taking unfair advantage of Yell Limitedís rights, and is therefore deceptively attracting internet users and actively contacting existing customers of Yell Limited and referring them to their website.
The proposal of the Respondent that the Complainant acquire the right in the Domain Name for the amount of £10,000 is evidence of a request to transfer the Domain Name for monetary consideration in excess of documented out-of-pocket expenses directly related to the Domain Name, and is further evidence of the Respondentís bad faith.
B. Respondentís Contentions
The Respondentís Contentions can be summarized as follows:
The Respondent denies that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It asserts that the word "Yellow Pages" is a word from the English Dictionary. "Yellow Pages" means a printed telephone directory on yellow paper, listing businesses and other organizations according to the goods or services they offer. The word "Yellow Pages" is extensively used all over the world for such purposes. There are a number of other domain names incorporating the word "Yellow Pages" or variations thereof. Several of these domain names are used for websites targeting customers in the United Kingdom and in other European countries. In India there are several users of the word "Yellow Pages" both in print as well as in electronic media. Even in the United States the courts have determined that "Yellow Pages" is a generic term that is not protectable as a trademark (with reference to the UDRP decisions <pagesjaunes.com>, WIPO Case No. D2000Ė0489; <les-pages-jaunes.com>, WIPO Case No. D2000Ė0490; <yellowpagedirectories.com>, WIPO Case No. D2002Ė0973). The word "Yellow Pages" is not an invented word like Nokia, Toyota, Mitsubishi, etc., but is an English term that is commonly used all over the world including India.
The Respondent denies the allegation that it has no rights or legitimate interests in respect of the disputed domain name. The word "Yellow Pages" is a generic word used to describe telephone directories or for listing businesses and other organizations according to the goods or services they provide. No person or legal entity has an exclusive right to this word as such. A trademark registration for YELLOW PAGES can only be valid if it incorporates additional distinctive elements such as a logo or a device element. But as YELLOW PAGES is a generic word, no association, license or assignment is required for using this word in the context of a legal and bona fide business. The Respondent has no intention to take advantage of the goodwill of the Complainant and it has not sought to create confusion in the minds of prospective clients. On the insistence of the Complainant, the Respondent agreed to remove the word "yellow pages" from its website and changed the color of the website from yellow to blue. This makes it clear that the Respondent is not engaged in deceiving or confusing the clients of the Complainant. The Respondent has developed a business plan to expand its operations from India to the United Kingdom, USA and other parts of the world. The Respondent has invested considerable time and money in its business model. The Respondent has never created the impression that it belongs to the Complainant or has any association or relationship with the Complainant.
The disputed domain name has neither been registered nor used in bad faith. The Respondent is in the business of "appointment bureau and data specialists for financial mortgage and insurance and service industry at large." It plans to expand its business in India, the USA, the United Kingdom and in other parts of the world. It registered the Domain Name in December 2002, and it has been providing services under the Domain Name since August 2003. This shows that the Respondent has a well-planned business model and that it has not registered the Domain Name with the purpose of taking advantage of the Complainantís goodwill or selling it to the Complainant at a profit. The Respondent is not in the business of registering domain names and selling them at profits. As "Yellow Pages" is recognized as a descriptive and generic term in the parts of the world where the Respondent wants to expand its business, there can be no question of seeking to exploit the Complainantís goodwill. The Respondent has at no point in time represented that it would be related or associated with the Complainant in any manner. The fact that the Respondent did agree to settle the matter on a business-to-business basis and has made an offer to sell the domain name to the Complainant can not be interpreted as a sign of bad faith. Rather, given that the Respondent has invested considerable time and money in its business model, the offer was a reasonable business response.
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the UDRP, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the domain name holder has no rights or legitimate interest in respect of the domain name; and
(3) the domain name as been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the trademark YELLOW PAGES in which the Complainant has rights. The Complainant has established that it enjoys exclusive right to the trademark YELLOW PAGES in the United Kingdom.
Even if the term "yellow pages" is sometimes used to designate classified telephone directories in a descriptive manner, this does not yet result in a finding that YELLOW PAGES is a generic term and that the Complainant does not enjoy any exclusive rights in the trademark YELLOW PAGES in the United Kingdom. First, the fact that the Complainant has obtained a series of trademark registrations for YELLOW PAGES, alone or in combination with other elements, in the United Kingdom obviously proves, at least in the context of these UDRP proceedings, that under UK trademark law, the term YELLOW PAGES is capable of distinguishing the relevant goods and services of one company from those of another. Second, the fact that the term "yellow pages" may be considered as purely generic in certain countries does not have any direct relevance for the legal situation in other countries, in particular in the United Kingdom. Third, the fact that a certain percentage of the public uses a (registered) trademark in a descriptive manner does not yet mean that such trademark has become a descriptive term and that its legal protection has ceased. Only if the public at large would perceive a certain word as purely descriptive, the exclusive rights to a trademark corresponding to such word would be lost. Furthermore, the addition of the words "uk" and "online" do not distinguish the domain name from the trademark.
For these reasons, the first element Ė use of a confusingly similar trademark Ė has been shown.
B. Respondentís rights or legitimate interests in the domain name
Paragraph 4(a)(ii) of the UDRP asks whether the Respondent has any rights or legitimate interests in respect of the domain name. Under Paragraph 4(c) of the UDRP, the Respondent may demonstrate that he has a right or legitimate interest to a domain name for the purpose of Paragraph 4(a)(ii) by providing evidence of any of the following circumstances:
(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(2) an indication that the registrant has been commonly known by the domain name even if it has not acquired any trademark rights;
(3) legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Respondent did register the Domain Name in December 2002 and began providing the directory services under the Domain Name in August 2003, i.e. before the dispute began. The Respondent has therefore not only made the preparations to use the Domain Name in connection with an offering of services prior to the dispute, but has also used the Domain Name before the Complainant sent him a demand letter. Applying the criteria of Paragraph 4(c) of the UDRP, this could possibly be considered an evidence of the Respondentís legitimate interests in the Domain Name.
However, the Panel does not find that the Respondent has any rights or legitimate interest to the domain name. The first two letters of the domain name <ukonlineyellowpages.com> suggest that a company using this domain name for its website is based in the United Kingdom or at least is otherwise closely connected with the United Kingdom. The elements "ukonline" of the domain name are an implicit claim that the company using the domain name enjoys close links to the UK market. Consequently, a customer who seeks a website under the domain name <ukonlineyellowpages.com> will normally expect to find a service provider that has a close relationship to the UK and an intimate knowledge of the markets in the United Kingdom. A substantial part of the public might even assume that a company operating a website under the Domain Name is affiliated to the General Post Office or its successor British Telecom. Conversely, very few members of the public in the United Kingdom will expect a company providing the directory services under the Domain Name to be based in India. Even if it is true that globalization has lead to an intense exchange of services across national borders and that the internet does not know any territorial limits, it remains that certain domain names such as <ukonlineyellowpages.com> imply a certain geographical, legal and/or economical proximity to a certain country. The Respondent has not been able to establish that it is able to fulfill the promise that the Domain Name implies. It has stated that it has developed a business plan to expand its operations from India to the United Kingdom, USA and other parts of the world, and it has shown that it has established a company in the state of Nevada, USA. However, the Panel does not see how any of these two elements would result in a closer knowledge of the UK market for classified directory services in the short to mid term. Consequently the Domain Name is capable of misleading customers as to the geographical origin of the services provided by the Respondent, and the Respondent does therefore not have a legitimate interest let alone a right to the Domain Name.
C. Registered and Used in Bad Faith
To succeed with this Complaint, the Complainant has to prove that the Domain Name has been registered and is being used in bad faith. Based on the case file and on the allegations made by the Complainant, the Panel does not find that there is sufficient evidence that the Respondent did register and use the domain name in bad faith.
The term "bad faith" implies that the party acting in bad faith has known or at least should have known that its acts are not legally defendable. A party acting in bad faith must at least have a relatively strong reason to suspect that, by his actions, he is infringing the rights of third parties. However, the Domain Name contains the verbal element YELLOW PAGES, which is used in certain countries to describe classified directories. Even if the Complainant is able to assert exclusive rights to the term YELLOW PAGES in the United Kingdom, it remains that the protectability of this term as a trademark in other countries is very uncertain and has been denied by certain courts. In this context, the Panel refers to the WIPO Domain Name decisions D2000-0489, France Telecom v. Les pages jaunes francophones, D2000-0490, France Telecom v. Domain, and D2002-0973, Anuncios en Directorios S.A. DE C.V. v. Michael Alvarez. In the two first mentioned cases, the Panel found corresponding French term "Pages jaunes" to be clearly descriptive and therefore not capable of being protected as a trademark:
"The sheer fact that all over Europe, as well as in the US, Australia, Canada, India, Russia and other countries, business directories are known under the name Yellow Pages precludes the Complainantís claim to exclusivity, based on his trademarks, or a trade name or any other intangible asset. Some descriptive terms have to remain in the public domain in order for the information society to run smoothly. (WIPO Case No. D2000-0489 and WIPO Case No. D2000-0490 under 5.c)1.)"
And the Panel in WIPO Case No. D2002-0973, concerning the domain names <seccion-amarillo.com>, <yellowpagedir.com> and similar names, argued as follows:
"Taking into consideration that in the United States the terms involved in this dispute are considered generic and that the Respondent resides in the said country, it can be concluded that in good faith the Respondent supposed that no claim could be made against him."
These considerations, on which the before-mentioned UDRP decisions are based, also apply to the Respondent, who is domiciled in India where the term YELLOW PAGES is considered to be generic. In light of this situation, and absent any further elements indicating that the Respondent has sough to create confusion or to associate itself with the Complainant, the Respondent can not be said to have acted in bad faith by registering the Domain Name. The mere fact that the Respondent, had it made research concerning the law and the trademark registrations in the United Kingdom, could possibly have anticipated that the Complainant would assert exclusive rights in the words YELLOW PAGES in the United Kingdom does not yet result in a finding of bad faith.
In WIPO Case No. D2002-0651, Telstra Corporation Limited v. India Yellow Page, the panel held that the domain <australiayellowpages.com> had been registered in bad faith. However, in that case the respondent had registered 97 domains, each beginning with a country name and followed by <yellowpages.com>. Second, the respondent had not begun using the disputed domain, i.e. there was no bona fide offering of goods or services using the domain. Third, the respondent in that case had not replied substantively to the requests of the complainant to transfer the domain. Fourth and finally, this Panel believes that given the privatization of the telecom industry, it is quite possible that there are several sources of "Yellow Pages" in any given country. There need not be only one exclusive provider of Yellow Pages directories in any country. Therefore, the element "uk" in the Domain Name need not necessarily be associated with the Complainant, at least not by an Indian company. For these reasons, the Panel finds that the present case can not be decided in the same way as WIPO Case No. D2002-0651.
Finally, the Panel does not find that the settlement offer made by the Respondent to purchase the Domain Name for an amount of £8,000 is evidence of bad faith. The Respondent has been using the Domain Name since August 2003. The evidence presented in this case does not suggest that the Respondent has been in bad faith prior to the dispute. Under these circumstances, it is a reasonable business proposition to suggest that the Complainant purchases the rights in the Domain Name for the relevant amount, and this does not constitute bad faith. (cf.WIPO Case No. D2000-0223, Meredith Corp. v. City Home Inc.)
For all the foregoing reasons, the Complaint is denied.
Dated: March 15, 2004