The Complainant is DeTeMedien Deutsche Telekom Medien GmbH, Frankfurt, Germany, represented by Bird & Bird Rechtsanwälte, Germany.
The Respondent is Miguel Garcia Quintas, Gran Canaria, Spain.
The disputed domain name <gelbe-seiten.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2008. On September 8, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 8, 2008, eNom 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”), 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 September 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2008.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 10, 2008. 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 Complainant is an affiliate of Deutsche Telekom AG, one of Europe's largest telecommunication companies. The Complainant publishes in cooperation with its partner publishing companies inter alia the German business directory “Gelbe Seiten” which is claimed to be the market leader in Germany for many decades. The Complainant has been using “Gelbe Seiten” as trade name since 1968. “Gelbe Seiten” is one of Germany's most printed books (27 million printed directories per year).
GELBE SEITEN is protected by more than 120 German, Community, and International trademarks, among others the word marks “Gelbe Seiten” and “GELBE SEITEN”. The first registration dates back to April 2, 1979. Opinion polls show that GELBE SEITEN is a famous trademark known by 97% of the German population. The Complainant also offers its services on the Internet, namely through the website “www.gelbeseiten.com”.
The Respondent registered the disputed domain name on September 20, 2002. When entering the domain name users are automatically transferred to the website “www.gueb.com”. This website is presented in the German language and displays several commercial links as well as a kind of search engine apparently provided by Google.
The Complainant objects to the use of the disputed domain name by the Respondent and bases its Complaint on the following grounds:
1. The domain name at issue is confusingly similar with the Complainant's famous trademarks. The hyphen between “gelbe” and “seiten” does not reduce the confusing similarity.
2. The Respondent makes no legitimate non-commercial or fair use of the domain name at issue. The Complainant has no relationship with the Respondent and has never authorized the Respondent to use the Complainant's marks as a domain name. The Respondent does not conduct any legitimate commercial or non-commercial business activity under the domain name.
3. The Respondent registered and uses the disputed domain name with the only purpose to divert customers to its own website for commercial gain. Accordingly, the domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
Except for the hyphen between “gelbe” and “seiten”, the disputed domain name is identical to the Complainant's trademarks. Accordingly, the domain name and the Complainant's trademarks are at least confusingly similar.
The fact that the German word mark GELBE SEITEN is subject to an order of invalidity issued by the German Patent and Trademark Office (DPMA) is immaterial to the present proceedings, as that decision is subject to appeal proceedings before the German Federal Patent Court. In any case, the second German word mark “Gelbe Seiten” and the figurative “Gelbe Seiten” trademarks are not affected by the DPMA's order.
The Complainant has thus fulfilled the requirements under paragraph 4(a)(i) of the Policy.
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the domain name at issue. The Panel also refers to the use of the disputed domain name as explained below under the third limb of the Policy.
The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
Considering the factual background of this case as set forth under section 4 above, it is apparent that the Respondent intentionally intends to attract consumers to its website for commercial gain by creating confusion about the source and sponsorship of its website.
It may also reasonably be inferred that the Respondent knew about the Complainant's trademarks and business when it registered the disputed domain name.
The Panel finds that the Respondent's conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <gelbe-seiten.com> be transferred to the Complainant.
Dated: October 24, 2008