The Complainant is DeTeMedien Deutsche Telekom Medien GmbH of Frankfurt am Main, Germany, represented by Bird & Bird, Germany.
The Respondent is Mr. André Wendt of Cologne, Germany.
The disputed domain name <gelbeseitentoplist.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 7, 2010, GoDaddy.com, Inc. 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 May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2010.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on June 15, 2010. 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 covering the entire spectrum of modern telecommunications and information technology.
The Complainant is the registered owner of the Community Trade Mark (CTM) 04876603, word mark GELBE SEITEN, registered in 2008 with priority of January 27, 2006 in all 45 classes of the Nice classification.
The Complainant and its partner publishing companies are shareholders of “Gelbe” and “Seiten-GbR”, a company constituted under civil law, which is the owner of numerous trademarks, consisting of, or containing as their dominant element the German terms “Gelbe Seiten”. Based on the articles of association of this company, the Complainant is entitled to enforce these trademarks. This trademark portfolio includes in particular two German word marks GELBE SEITEN: German registration number 1177265 GELBE SEITEN, registered with priority of August 2, 1990 in classes 35 and 41, and German registration number 39644690 GELBE SEITEN, registered with priority of October 15, 1996 in classes 9, 16 and 41.
The Complainant and its partner publishing companies have been publishing for decades the German business directory Gelbe Seiten.
The Respondent registered the domain name <gelbeseitentoplist.com> on August 19, 2009. When typing the domain name, users were transferred to the Respondent's personalized search engine, as evidenced by the Complainant. At present the domain name is linked to a Web page that is parked “for free” by the Registrar.
The Complainant submits that it and its partners offer their services and products relating to business directories under the trademark GELBE SEITEN. At present approximately 28 million printed directories are labelled with the title Gelbe Seiten every year. It follows that Gelbe Seiten is one of Germany's most printed books.
The Complainant submits appropriate evidence that the term “Gelbe Seiten” is known by at least 97% of the German population. Therefore it considers that GELBE SEITEN is a well-known trademark.
The Complainant furthermore submits that it offers its services also on the Internet, namely on the websites “www.gelbeseiten.com” and “www.gelbeseiten.de”.
The Respondent did not reply to the Complainant's contentions. He has therefore not contested the allegations of the Complaint and the Panel shall decide the case on the basis of the Complaint's submissions and all the interferences that can reasonably be drawn therefrom (Rules, paragraph 14(b)).
Whilst the term “gelbe Seiten” is the German term for “yellow pages” and therefore is descriptive of pages consisting of yellow paper, it is distinctive for commercial directories. GELBE SEITEN is therefore a valid trademark, in which the Complainant has rights (both as a registered trademark and as a well-known trademark, as correctly submitted by the Complainant). This has been confirmed, amongst others, by the decision in DeTeMedien Deutsche Telekom Medien GmbH v. Gelbeseiten GmbH, WIPO Case No. D2006-0358 and a court decision of the Hamburg District Court of January 24, 2008, Case No. 327 O 653/07.
The domain name <gelbeseitentoplist.com> consists of a combination of the term “gelbeseiten” and the term “toplist” (the gTLD “.com” need not be taken into consideration when judging identity or confusing similarity). Whilst the term “gelbeseiten” and the trademark GELBE SEITEN of the Complainant are not identical, they are quasi identical, since the only difference is that the words “Gelbe” and Seiten” in the Complainant's trademark are written separately and with capital initials, whilst they are written together and in small letters in the Respondent's domain name. Internet users are accustomed to the fact that in domain names words are written together which normally would be written separately. Therefore this small difference cannot exclude confusing similarity. The term “toplist” is descriptive for a list of excellence or ranking list. Consequently the only distinctive part of the domain name is the term “gelbeseiten” which, as said before, is quasi identical to the Complainant's trademark GELBE SEITEN. In conclusion, the domain name <gelbeseitentoplist.com> is confusingly similar to the trademark GELBE SEITEN, in which the Complainant has rights.
The disputed domain name <gelbeseitentoplist.com> is not a descriptive term, in which the Respondent might have a legitimate interest. It is confusingly similar to the Complainant's trademark GELBE SEITEN. The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are evident on the present record. The Respondent does not use the disputed domain name for his own legitimate commercial or non-commercial activities, if any, and he has not demonstrated any preparations for such use. Finally, as the Respondent does not promote his own commercial activities with the help of this domain name, the Respondent has not been able to become commonly known under it. The Panel finds no evidence suggestive of any rights or legitimate interests on behalf of the Respondent in this matter.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name <gelbeseitentoplist.com>.
The Respondent has not offered the domain name to the Complainant for sale and he does not use it for his own non-commercial activity. However, he did not simply stockpile the domain name. As evidenced by the Complainant, he used it for a link to a personalized search engine providing revenue for the Respondent.
In view of the well-known status of the Complainant's trademark GELBE SEITEN and the Complainant's use of the websites “www.gelbeseiten.com” and “www.gelbeseiten.de”, there cannot be any doubt that the Respondent was well aware of the Complainant's trademark when he registered the disputed domain name. By combining the term “gelbeseiten”, which is quasi identical to the Complainant's trademark, with the descriptive term “toplist”, he created a domain name that Internet users, being aware of the Complainant's trademark and websites, would expect to refer to the Complainant and its products and services. Typing the domain name into a web browser Internet users were, however, transferred to the Respondent's personalized search engine for the Respondent's commercial gain. Under the circumstances, the Respondent has attempted to attract Internet users to his website, for commercial gain, by creating a likelihood of confusion with the Complainant's trademark GELBE SEITEN as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
In conclusion the Respondent has registered and is using the domain name <gelbeseitentoplist.com> in bad faith. The fact that the Respondent ceased to use the domain name, after he had received the Complaint, and is now parking it at the Registrar, cannot be considered in favour of the Respondent, especially as he could at any time again use the domain name, e.g. for his personalized search engine or otherwise.
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 <gelbeseitentoplist.com> be transferred to the Complainant.
Gerd F. Kunze
Dated: June 28, 2010