WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SuperMedia LLC v. Superpages Vip
Case No. D2011-1293
1. The Parties
Complainant is SuperMedia LLC of Texas, United States of America, represented by Hitchcock Evert LLP, Texas, United States of America.
Respondent is Superpages Vip of Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name is <superpagesvip.com> which is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2011. On July 28, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 28, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 6, 2011. This Panel finds that it was properly constituted. This 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 is a company organized under the laws of Delaware, United States of America, which publishes print and on-line directories.
Complainant has rights over the following trademarks: SUPERPAGES, registration No. 2022484 with the United States Patent and Trademark Office (USPTO), registered on December 10, 1996, class 35; SUPERPAGES.COM, registration No. 2765993 with the USPTO, registered on September 23, 2003, class 35; and SUPERPAGES, registration No. 3086056 with the USPTO, registered on April 25, 2006, class 16.
The disputed domain name was created on March 31, 2010.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant publishes, directly or through licensees and related companies, print and on-line directories.
In Puerto Rico, Axesa Servicios de Información, S. en C. (Axesa) published an Internet Yellow Pages directory under the trademark SUPERPAGES pursuant to a license agreement with Complainant.
Annual sales of products and services under the SUPERPAGES mark were in excess of USD 1 billion in 2010.
The disputed domain name is confusingly similar to the trademarks over which Complainant has rights.
Complainant is the owner of the SUPERPAGES trademark which Complainant and its predecessor have used since 1996 in connection with publication of directories and the sale of advertising in those directories.
The only difference between the disputed domain name and Complainant’s trademarks is the addition of the nondistinctive suffix “VIP”. Such addition does not change the commercial impression created by the disputed domain name compared to Complainant’s trademarks. “VIP” has no clear meaning attached to SUPERPAGES but is a recognized short form for the phrase “Very Important Person”.
Panels have recognized as confusingly similar the use of a domain name that consists of a trademark in its entirety attached to a descriptive or nondistinctive term. A domain name consisting of a trademark coupled with a new term is not per se confusingly similar, but unless the additional term dispels any connection with the trademark owner it will be considered confusingly similar. In this case, the SUPERPAGES trademark remains the dominant feature of the disputed domain name.
SUPERPAGES trademark is an inherently distinctive mark having no descriptive or laudatory meaning in relation to the goods or services for which it is used and registered. It has been used continuously since at least as early as April 1996 and has achieved considerable recognition with the general public as indicating the source of directory and advertising products and services.
Respondent has no rights or legitimate interests in the disputed domain name.
As is clear from Respondent’s webpage, Respondent is using the disputed domain name as the address of a website offering services, namely Internet directory services, which are identical to those sold by Complainant under the SUPERPAGES and SUPERPAGES.COM trademarks (printouts of the website associated to the disputed domain name are attached to the Complaint).
Respondent does not have any trademark or intellectual property rights or any other legitimate interests in the disputed domain name. There is no evidence to suggest that Respondent ever used the disputed domain name and/or a name closely corresponding to Complainant’s trademarks prior to Complainant’s predecessors’ first use of the SUPERPAGES trademark in 1996. It is thus clear that the sole purpose of Respondent’s selection and use of the disputed domain name is to capitalize improperly on the reputation and goodwill established by Complainant and its predecessors by deceiving people into thinking that Respondent is the publisher of the SUPERPAGES directories.
The evidence demonstrates that Respondent has made every effort to confuse consumers by operating a confusingly similar website and purporting to offer directory publications of advertising. Such actions are strong evidence that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent’s selection of a domain name that is virtually identical (except for the addition of the non-distinctive suffix “VIP”) to the heavily promoted and well-recognized trademark of Complainant clearly indicates a bad faith interest.
Respondent’s decision was part of a scheme to pass-off Respondent’s services as those of Complainant by creating a likelihood of confusion with Complainant’s trademark SUPERPAGES.
The disputed domain name has been used as part of a scheme to confuse businesses that advertise in Complainant’s directories and cause them to send money to Respondent or persons affiliated with Respondent.
The methodology used in the scheme is described in the article “Over $140 Thousand and more than 350 Businesses, Victims of the Superpagesvip.com Scam” published on the Doctorshopper blog (copy attached to the Complaint).
Axesa’s customer Armadi Closets Metrpolitana, a business in Puerto Rico which advertises in its SUPERPAGES Internet Directory, received an invoice requiring a payment to be sent to SuperPages VIP, Inc. in Florida and gives the website address of the directory as “www.superpagesvip.com”. Armadi Closets Metrpolitana had not purchased any advertising from Respondent and contacted Axesa to obtain an explanation for the invoice which it wrongly believed had been sent to it by Axesa. Similar invoices have been sent to customers who have previously advertised in Complainant’s licensee’s Internet Yellow Pages directories in Puerto Rico in an attempt to induce the customers to send money to Superpages Vip.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the SUPERPAGES and SUPERPAGES.COM trademarks.
The disputed domain name entirely incorporates such Complainant’s trademarks, adding the suffix “VIP”, which is a common abbreviation for “Very Important Person”. The addition of such suffix is not enough to avoid confusing similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (e.g., Société Air France v. Nadine Schwab, WIPO Case No. D2008-1220; Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375).
Since the addition of the generic top-level domain (gTLD) “com” after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.2
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s SUPERPAGES and SUPERPAGES.COM trademarks.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent does not have any trademark or intellectual property rights or any other legitimate interests in the disputed domain name.
This Panel notices that Respondent’s name as registrant of the disputed domain name appears as “Superpages Vip”, that is, showing the disputed domain name as Respondent’s name. Having the disputed domain name as Respondent’s name as registrant is not, by itself, sufficient to establish that Respondent is in fact commonly known by the disputed domain name. Likewise, nothing warrants that Respondent’s name as registrant fully corresponds to the real name of Respondent (See Scanomat A/S v. Scanomat Administrator Domain, WIPO Case No. D2004-0932; Weber & Weber GmbH & Co. KG v. Kim, Hyoungil, WIPO Case No. D2004-0273). It seems to this Panel that Respondent might have adopted the disputed domain name as its name as registrant as a scheme to convey a false impression of “a/k/a” or “d/b/a”.
Complainant contends that Respondent is using the disputed domain name as the address of a website offering services, namely Internet directory services, which are identical to those provided by Complainant under the SUPERPAGES and SUPERPAGES.COM trademarks.
It is of this Panel’s view that Respondent is using the website associated with the disputed domain name to misrepresent a relationship between Respondent and Complainant in order to mislead Complainant’s customers or Internet users from Complainant’s official websites3. Furthermore, Respondent has sent Complainant’s customers some invoices, tarnishing the reputation and business of Complainant by suggesting that Complainant is requesting some kind of payment for advertising services under Complainant’s websites. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests on the disputed domain name, but rather the opposite may be validly inferred. This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by Respondent.4
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
In the website associated with the disputed domain name it is stated that Respondent has been in the United States of America and Puerto Rico for fifteen years, when in fact Respondent registered the disputed domain name in 2010, that is, fourteen years after Complainant’s registration of the SUPERPAGES trademark in 1996.
It is clear that Respondent should have been aware of the existence of Complainant’s trademarks and activities at the time it obtained the registration of the disputed domain name as the content of the website associated with the disputed domain name offers the same services provided by Complainant, that is, Internet Directory services5. The evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate with the intention to obtain some kind of profit from the reputation and goodwill of Complainant’s trademarks, which is evidence of Respondent’s bad faith registration of the disputed domain name.
The content of the website associated with Respondent’s disputed domain name may potentially be contested as an undue and unfair competition practice, created with the intention to generate confusion by attempting to attract Internet users to such confusingly similar website, or simply to disrupt or compete with such website in any other manner. Furthermore, the fact that Respondent sent invoices to Complainant’s customers requesting some kind of payment for advertising services is further evidence of Respondent’s bad faith.
It is of this Panel’s view that in using the disputed domain name, Respondent has sought to take advantage of, and create a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website under the disputed domain name.
In light of the above, it is this Panel’s finding that Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <superpagesvip.com> be transferred to Complainant.
Dated: September 20, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.