WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yellow Pages Media, Inc. v. Yellow Pages Media, Inc
Case No. D2005-0718
1. The Parties
The Complainant is Yellow Pages Media, Inc., Irvine, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.
The Respondent is Yellow Pages Media, Inc, Oklahoma City, Oklahoma, United States of America.
2. The Domain Name and Registrar
The disputed domain name <yellowpagesmedia.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2005. On July 8, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. That same day Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 July 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2005.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 25, 2005. 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
Complainant owns United States Registration No. 2,496,869, filed June 25, 1999, for YPM YELLOW PAGES MEDIA (“the Mark”). The Mark is used in connection with the following services: marketing research and placements of advertisements for others in yellow page telephone directories and consultations relating thereto. Complainant claims that it has extensively used the Mark since at least as early as August 1, 1999 as well as on its website (“www.ypm.com”).
Respondent registered the Domain Name on December 18, 1999. According to Respondent’s website, Respondent publishes small community driven telephone directories and works with small businesses who want to advertise in such directories.
5. Parties’ Contentions
The Complainant contends the following: the Domain Name is substantially identical to the Mark with the exception that the Domain Name is without the “YPM.” Accordingly, based on the sight, sound and meaning of the Domain Name and the Mark, the marks are sufficiently identical such that there is initial interest confusion.
The Respondent has no rights or legitimate interests in the Domain Name. Respondent has no relationship with or permission from Complainant to use the Mark. Insofar as Complainant filed an application to obtain a registration for the Mark on June 25, 1999 and the Mark was registered, pursuant to 15 U.S.C. § 1057(c), Complainant has a constructive use date back to June 25, 1999. Respondent cannot show use prior to June 25, 1999. A search on “www.archive.org” evidences that Respondent’s use of the Domain Name dates back only to the year 2001 which is after June 25, 1999. Further, a LexisNexis search shows that Respondent filed a fictitious business Name Yellow Pages Media Inc. on August 2, 2002 which is also after the June 25, 1999 date. Additionally, a search on the USPTO website with “Yellow Pages Media” in the owner’s name evidences that Respondent does not have any trademark applications on file with the USPTO. Respondent’s website before the filing of this dispute was an “under construction” webpage. Hence, Respondent did not make any demonstrable preparation to use the Domain Name before any notice of this dispute. And Respondent’s use of the Domain Name is commercial and not a fair use.
The Domain Name was registered and is being used in bad faith. Respondent had at least constructive notice of the Mark by virtue of the registration. Respondent began using and making preparations to use the Domain Name only after this proceeding began. In addition to having constructive notice, Respondent has not responded to Complainant’s cease and desist letter sent to Respondent on April 11, 2005. Rather, it has posted an advertisement for its business after receiving the cease and desist letter. Moreover, by using the Domain Name, Respondent has attempted to attract for commercial gain Internet users to Respondent’s website by using a Domain Name that is confusingly similar to the Mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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.
When a Respondent defaults, the Panel may draw such inferences as it considers appropriate. However, even where a Respondent defaults, that does not automatically result in a holding for Complainant. Rather, as set forth in the Policy, Complainant bears the ultimate burden of establishing the required elements. On the record presented here, the Panel finds that Complainant failed to prove the third element 4(a)(iii). That determination has been addressed below. Thus, the Panel need not make determinations on the other two elements.
A. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product.”
The only one of these criteria that Complainant raises is (iv). However, Complainant failed to present any evidence that Respondent intentionally committed the acts set forth and, for the reasons mentioned below, the Panel is not convinced that Respondent’s use of the descriptive phrase Yellow Pages Media for its services could cause confusion. In the absence of evidence that Respondent’s conduct falls within the circumstances set forth above, Complainant must provide other evidence of both registration and use in bad faith. Levi, Ray & Shoup, Inc. v. Capitol Systems Corporation, WIPO Case No. D2005-0700 (August 31, 2005).
Complainant argues that Respondent registered and is using the Domain Name in bad faith because it had constructive notice of its rights in YPM YELLOW PAGES MEDIA by virtue of its United States registration. In relying on constructive notice, however, Respondent also had constructive notice of the fact that Complainant had to disclaim rights to YELLOW PAGES MEDIA in order to obtain rights in the mark YPM YELLOW PAGES MEDIA for its services, namely, marketing research and placements of advertisements for others in Yellow Pages telephone directories. In fact right on the face of the registration it states: “No claim is made to the exclusive right to use ‘YELLOW PAGES MEDIA’ apart from the mark as shown.” An argument could be made that Complainant has not even demonstrated rights in YELLOW PAGES MEDIA. See Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035 (March 2, 2005) (holding that where complainant disclaimed rights to “MINIBAR SYSTEMS” except when used in conjunction with a graphic mark, it failed to show that it had rights in a mark that are identical or confusingly similar to “minibarsystems.com”); Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002) (holding that where complainant disclaimed rights to “SCUBA DIVING” except when used in conjunction with “RODALE’S” (the registration was for “RODALES SCUBA DIVING”), it failed to show that it had rights in a mark that are identical or confusingly similar to “scubadiving.biz”); Innovative Measurement Solutions Inc. v. Hart Info Systems, D2001-0552 (June 18, 2001) (holding that where complainant disclaimed rights to “FORMULATION WORKSTATION” apart from “THE WORKFLOW SOFTWARE FOR FORMULATORS” (the application was for “FORMULATION THE WORKFLOW SOFTWARE FOR FORMULATORS”), it failed to show that it had rights in a mark that are identical or confusingly similar to <formulationworkstation.com>). But the point is that insofar as Respondent adopted a domain name which uses a phrase that is descriptive of its services and for which Complainant had no exclusive rights, the Panel is not convinced that Respondent adopted and is using the Domain Name in bad faith. Cf., Dewey Ballantine LLP v. Person Technology Group aka Traxi Technologies LLC et. al., WIPO Case No. D2004-1032 (January 27, 2005)(“complainant’s rights in the DB mark do not empower it to prevent usage of the same term by others in a purely descriptive sense.”).
In this regard, it also bears mentioning that Complainant attempts to rely upon its “extensive use” of the mark YPM YELLOW PAGES MEDIA generally and on its website. There was no evidence presented in the record supporting the “extensive use” of the Mark and with regard to Complainant’s website, the “extensive use” is really exclusive use of “YPM” by itself, for example:
1. The logo on the website features prominently “YPM” and almost in an unreadable size and manner underneath “YPM,” the phrase “YELLOW PAGES MEDIA.”
2. Under “About Us” the description reads: “YPM is a full service, international yellow pages advertising agency.” Further down the page it reads: “Founded in 1981, YPM is comprised of industry professionals who have many years of marketing experience and yellow page expertise.”
3. Under a drop down titled: “YPM Advantages,” the site provides: “YPM provides a high level of pro-active quality service to help our clients manage their national yellow pages program.”
4. Under “YPM Mission Statement” it states: “YPM is an organization of dedicated marketing professionals committed to providing our customers with a caliber of service and marketing expertise unequaled in our field.”
5. There is also a portion of the site dedicated to “YPM Valud Added Services.”
6. Complainant’s website address is “www.ypm.com”.
In addition to its constructive notice argument, Complainant asserts that because Respondent neither responded to its cease and desist letters nor ceased using the Domain Name, this behavior constitutes bad faith. As stated by another Panel: “It might just as easily support an interpretation that Respondent was well aware that she has not infringed the mark and has no obligation to respond to groundless demands.” PRL USA Holdings, Inc. v. Elyn Latta, WIPO Case No. D2002-0314 (May 31, 2002).
Lastly, Complainant claims that because Respondent delayed in using and preparing to use the Domain Name until after Complainant began this proceeding, that such activities constitute registration and use in bad faith. Under all of the circumstances presented here the Panel is not convinced that Respondent’s delay in using the Domain Name amounts to evidence of bad faith as contemplated by the Policy. Even if this were a case of passive holding, “[p]assive holding of a domain name neither precludes nor compels a finding of bad faith.” Levi, Ray & Shoup, Inc. v. Capitol Systems Corporation, WIPO Case No. D2005-0700 (August 31, 2005).
The Policy aims at bad faith domain name registrations, i.e the registrant’s intention should be assessed. In a case with no response it is of course more difficult to assess the registrant’s intentions than in cases with a response. This fact should however not be detrimental to the complainant. On the contrary, in a case with no response the complainant’s allegations will not be rebutted and therefore carry more weight than if they were contested by the respondent.
In the present case the Panel cannot say with certainty which intentions the Respondent had when it registered the disputed domain name. However, on the balance of probability, taking into account in particular the descriptive character of the mark and the domain name, it is not likely that the Respondent registered the domain name with the Complainant in mind in order to free ride on the Complainant’s goodwill.
For all of the foregoing reasons, Complainant has not satisfied Paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Date: September 3, 2005