The Complainant is DeTeMedien Deutsche Telekom Medien GmbH of Frankfurt am Main, Germany, represented by Bird & Bird, Germany.
The Respondent is Internet Pages Ltd of British Virgin Islands (an Overseas Territory of the United Kingdom of Great Britain and Northern Ireland).
The disputed domain names <gelbeseiten2007.com>, <gelbeseiten2008.com>, <gelbeseiten2009.com> and <gelbeseiten2010.com> (the “Disputed Domain Names”) are registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2009. On February 10, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Disputed Domain Names. On February 10, 2009, 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. 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 the Respondent of the Complaint and the proceedings commenced on February 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 13, 2009.
The Center appointed Jacques de Werra as the sole panelist in this matter on March 20, 2009. 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 (in English, “Yellow Pages”) is protected by more than 120 German, Community, and international trademarks (“the Trademarks”). The first trademark 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 Disputed Domain Names were registered on August 18, 2006. Three of the four Disputed Domain Names host parking websites which feature links under various subject headings some of them are in German language and refer to products competing or related to Complainant's activities (even if the fourth one is presently not active, i.e. <gelbeseiten2008.com>, it appears based on the information available in the Internet location tool bar to be inactive due to a malfunction of the domain parking system so that it seems that this domain name was also designed to be used in a domain parking program).
The Complainant sent a cease and desist letter to the Respondent on September 3, 2008, which remained unanswered.
The Complainant claims that the Disputed Domain Names are confusingly similar with the Complainant's Trademarks which are distinctive and enjoy a very high level of recognition in Germany (as established by polls). The inclusion of the relevant years (2007, 2008, 2009, 2010) after the Trademarks in the Disputed Domain Names does not affect the fact that the Disputed Domain Names are still confusingly similar to the Trademarks.
The Complainant further claims that the Respondent makes no legitimate noncommercial or fair use of the Disputed Domain Names. The Complainant has no relationship with the Respondent and has never authorized the Respondent to use the Complainant's Trademarks as a domain name. The Respondent does not conduct any legitimate commercial or noncommercial business activity under the Disputed Domain Names. The Respondent is not commonly known by the Disputed Domain Names or by conducting any activity under the name “Gelbe Seiten” neither in Germany nor abroad. Given that the terms “Gelbe Seiten” are understood only by German speaking people, the registration of the Disputed Domain Names derives its value only from the well-known Trademarks owned by the Complainant.
The Complainant finally alleges that the Respondent registered and uses the Disputed Domain Names in bad faith while knowing that the Disputed Domain Names were visually, phonetically and conceptually identical to the Trademarks and with the only purpose to obtain commercial gain as a result of the commercial exploitation of the Trademarks. The Complainant also alleges that the Disputed Domain Names create a likelihood of confusion as to source or affiliation with the Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in an administrative proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy.
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
The Complainant has demonstrated that it is the owner of several GELBE SEITEN Trademarks registered in Germany and in other countries. This has not been challenged, or called into question by the Respondent. The Comlpainant is, in the absence of evidence to the contrary, entitled to rely on a validly registered trademark. See Respiratorius AB v. Dr. Bengt Skogvall, WhoisGuard, WIPO Case No. D2007-1447.
The Complainant alleges that the Disputed Domain Names are confusingly similar to the Trademarks.
In this case, the Panel is satisfied that the Trademarks are fully embodied in the Disputed Domain Names and that the Disputed Domain Names are confusingly similar to the Trademarks given that the inclusion of the relevant years (2007, 2008, 2009 and 2010) after the Trademarks in the Disputed Domain Names does not exclude the confusing similarity between them.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's Trademarks and that the condition of paragraph 4(a)(i) of the Policy is consequently met.
In accordance with paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; however, according to paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests to the Disputed Domain Names by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the respondent of the dispute, the respondent's use 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 contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and that none of the conditions mentioned above are met.
Even though the two words “Gelbe Seiten” (in English, “Yellow Pages”) are individually dictionary terms in the German language, the has not replied or brought any evidence that it chose those terms for inclusion together in the Disputed Domain Names because of their dictionary (as opposed to their trademark) meaning. By not answering, the Respondent has not provided the Panel with any potential explanation justifying the use of the years (2007, 2008, 2009 and 2010) in the Disputed Domain Names.
As a result, based on Complainant's uncontradicted allegations and evidence, the Panel holds that the Respondent did not register the Disputed Domain Names with the intention to use them in the generic meaning, but rather did so in order to take advantage of the reputation of the Trademarks of Complainant, as well as of the high level of knowledge which the German speaking population has of the combination of the words “gelbe” and “seiten”. The Panel consequently adopts the position taken by other panels. See e.g. DeTeMedien Deutsche Telekom Medien GmbH v. Gelbeseiten GmbH, WIPO Case No. D2006-0358 and The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
On this basis, the Panel finds that Respondent has not made a bona fide offering of goods or services and that Complainant has established that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Panel thus concludes that the condition of paragraph 4(a)(ii) of the Policy has been established by the Complainant.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is in bad faith:
(i) respondent has registered or 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 his documented out-of-pocket costs directly related to the domain name; or
(ii) 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 he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on his website or location.
In this case, based on Complainant's uncontradicted allegations and evidence, the Panel is of the opinion that the Respondent has intentionally registered the Disputed Domain Names in order to attract, for commercial gain, Internet users - and particularly German speaking Internet users - to its websites in order to generate traffic and use them for commercial purpose on the basis of domain name parking programs. This constitutes a bad faith use of the Disputed Domain Names. See DeTeMedien Deutsche Telekom Medien GmbH v. Miguel Garcia Quintas, WIPO Case No. D2008-1358.
Based on the foregoing, the Panel finds that the Respondent has registered the Domain Names and is using them in bad faith so that the requirements of paragraph 4(a)(iii) of the Policy are met.
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 names <gelbeseiten2007.com>, <gelbeseiten2008.com>, <gelbeseiten2009.com> and <gelbeseiten2010.com> be transferred to the Complainant.
Jacques de Werra
Dated: April 2, 2009