WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DeTeMedien Deutsche Telekom Medien GmbH v. GSOL Online Marketing GmbH
Case No. D2011-1831
1. The Parties
The Complainant is DeTeMedien Deutsche Telekom Medien GmbH of Frankfurt am Main, Germany, represented by Bird & Bird Rechtsanwälte, Germany.
The Respondent is GSOL Online Marketing GmbH, Belinda Kranich, of Berlin, Germany, represented by Härting Rechtsanwälte, Germany.
2. The Domain Name and Registrar
The disputed domain name <gelbe-seiten-online.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2011. On October 25, 2011, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On October 26, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 2011. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 2, 2011. The Center verified that the Complaint together with the amended 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 November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response (as extended at Respondent’s request) was November 29, 2011. The Response was filed with the Center on November 29, 2011.
The Center appointed Daniel Kraus as the sole panelist in this matter on December 8, 2011. 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 Panel has received various Supplemental Filings and extension requests from the parties in relation thereto, including three Supplemental Filings from the Complainant on December 9, 2011, on December 13, 2011, on December 20, 2011, as well as an extension request from the Respondent on December 15, 2011 and a Supplemental Filing from the Respondent on December 19, 2011. The Panel did not accept any of the Supplemental Filings nor any request for extension to file them. Under the UDRP Rules, and applicable UDRP jurisprudence, panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In order for unsolicited filings to be accepted, some showing of "exceptional" circumstances is required. (see Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, <delikomat.com>; AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058, <autoway.com>; De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484, <de-dietrich-process-systems.com>; Wal-Mart Stores, Inc. v. Larus H. List, WIPO Case No. D2008-0193, <wa1mart.com>; NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984, <aliensport.com>; Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776, <lurpa.com>. The Panel finds that in the present case, those exceptional circumstances were not sufficiently shown to exist, except for the last supplemental filing from the Respondent on December 19, 2011, which included a decision by a German court rendered after the date of filing of the Claim. However, being an injunction inaudita parte, it was not considered by the Panel to have sufficient probing force to influence the Panel’s decision under the Policy in one way or the other, reason for which it was also refused. In any event, the present decision under the Policy would be in no way binding on a national court.
Accordingly, the Parties were invited to desist from making further unsolicited supplemental filings or requests for extension to reply to these unless advised by the Panel to do so.
4. Factual Background
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 and its partner publishing companies are shareholders of “Gelbe Seiten Zeichen 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 <gelbe-seiten-online.com> on August 12, 2011. The Internet page to which it refers is in German, and addresses mainly customers in Austria and in Germany.
5. Parties’ Contentions
The Complainant contends 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 labeled with the title “Gelbe Seiten” every year. It follows that Gelbe Seiten is one of Germany’s most printed books.
The Complainant submits evidence according to which 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 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, nor does the addition of the term “-online”.
According to the Complainant, 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 at issue.
Finally, the Complainant argues that the Respondent registered and uses the domain name at issue with the only purpose of free-riding on the notoriety of its trademark, with no legitimate interest and in bad faith.
The Respondent argues that the Complainant is in fact an affiliate company of Deutsche Telekom AG, one of the largest companies in the telecommunication sector in Europe and enjoys a position of leader on the market due to a State monopoly it had enjoyed for years.
The Respondent further argues, inter alia, that some of the Claimants trademarks applications were rejected or invalidated, referring to several court decisions, including from the CFI. That is in particular the case of CTM N° 4876603 for “further goods and services strongly relating to business directories”.
The Respondent further denies the existence of any risk of confusion between its domain name at issue and the Complainant’s trademarks – implicitly recognizing that the Complainant is the owner of relevant trademarks. It also contests their degree of notoriety, which is however not relevant in the present case. Finally, it argues that the low degree of distinctiveness combined with the fact that the Complainant was long enjoying a monopolistic position provided by the State leads to a low degree of distinctiveness and causes no similarity between the signs and no likelihood of confusion on the part of the public.
The Respondent further argues that it has legitimate interests in respect of the domain name at issue based, inter alia, on claimed fair use within Austria, and that it has neither registered it nor is using it in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that 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 still a valid trademark in Germany (see e.g. trademarks N° 1177265, 39644690 as well as 1033815), in which the Complainant has rights (both as a registered trademark and as a well-known trademark, as alleged 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. As of today, no final decision contests the validity of said trademarks.
The domain name <gelbe-seiten-online.com> consists of a combination of the terms “Gelbe Seiten” and the term “online” (the gTLD “.com” need not be taken into consideration when judging identity or confusing similarity). Whilst the term “gelbe-seiten” 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 linked by a hyphen and in small letters in the Respondent’s domain name. Internet users are accustomed to the fact that in domain names words are written with a hyphen (or together) which normally would be written separately. Therefore this small difference cannot exclude confusing similarity. The term “online” is descriptive for a list which is uploaded on a website. Consequently the only distinctive part of the domain name is the term “gelbe-seiten” which, as said before, is quasi identical to the Complainant’s trademark GELBE SEITEN. In conclusion, the domain name <gelbe-seiten-online.com> is confusingly similar to the trademark GELBE SEITEN, in which the Complainant has rights.
B. Rights or Legitimate Interests
For the purpose of this Policy proceedings the Panel finds that neither the “generic” or domain name at issue nor the trademark GELBE SEITEN are yet considered as descriptive terms in which the Respondent might have a legitimate interest. The domain name at issue is confusingly similar to the Complainant’s trademark GELBE SEITEN. The Respondent has no connection or affiliation with the Complainant, and the latter has not consented to the Respondent’s use of the domain name at issue.
Furthermore, this Panel finds that 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 domain name at issue for his own legitimate commercial or non-commercial activities, but rather free-rides on a well established trademark. Finally, the Respondent has not become commonly known under its domain name. The Panel finds no evidence suggestive of any rights or legitimate interests on behalf of the Respondent in this matter.
C. Registered and Used in Bad Faith
The Panel finds that in view of the validity and wide circulation of the Complainant’s trademarks 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 it registered the disputed domain name. By combining the term “gelbe-seiten”, which is quasi identical to the Complainant’s trademark, with the descriptive term “online”, it 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. By 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. The Panel finds that under the circumstances, the Respondent has attempted to attract Internet users to its 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.
The fact that the domain name at issue first leads to the Austrian version of the directory is not relevant. On the contrary, the fact that a click on a German flag leads to the German directory shows that the Respondent clearly aims at reaching the German market and benefit from the Claimants notoriety in Germany (as well as in Austria).
In conclusion the Panel holds that the Respondent has registered and is using the domain name <gelbe-seiten-online.com> in bad faith.
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-online.com> be transferred to the Complainant.
Dated: December 22, 2011