World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yellow Pages Group Co. / Groupe Pages Jaunes Cie. v. Thomas Moll / Yellow Page Marketing B.V.

Case No. D2011-1833

1. The Parties

The Complainant is Yellow Pages Group Co. / Groupe Pages Jaunes Cie. of Verdun, Québec, Canada, represented by McMillan LLP, Canada.

The Respondents are Thomas Moll / Yellow Page Marketing B.V. of Amsterdam and The Hague, Netherlands, respectively, represented by Sim, Lowman, Ashton & McKay LLP, Canada.

2. The Domain Names and Registrars

The disputed domain names <yellowpage-alberta.com>, <yellowpage-britishcolumbia.com>, <yellowpage-canada.com>, <yellowpage-manitoba.com>, <yellowpage-newbrunswick.com>, <yellowpage-newfoundlandandlabrador.com>, <yellowpage-northwestterritories.com>, <yellowpage-novascotia.com>, <yellowpage-nunavut.com>, <yellowpage-ontario.com>, <yellowpage-princeedwardisland.com>, <yellowpage-quebec.com>, <yellowpage-saskatchewan.com>, and <yellowpage-yukon.com> are registered with PSI-USA, Inc. dba Domain Robot. The disputed domain name <yellowpage-group.com> is registered with Ascio Technologies Inc.

The disputed domain names are referred to collectively in this decision as the “Domain Names”.

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 PSI-USA, Inc. dba Domain Robot and Ascio Technologies Inc. a request for registrar verification in connection with the Domain Names. On October 25, 2011, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of those of the Domain Names for which it is the registrar, and providing the contact details for those Domain Names. On November 2, 2011, Ascio Technologies Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name <yellowpage-group.com>, and providing the contact details for that Domain Name.

In response to a notification on November 2, 2011 by the Center that the Complaint was administratively deficient, on November 5, 2011 the Complainant requested an extension until November 12, 2011 to file submissions in relation to the Center’s deficiency notification. The Center confirmed November 12, 2011 as the due date to file its submissions in response to the Center’s deficiency notification, and on November 12, 2011 the Complainant filed an amended Complaint.

The Center verified that 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 Respondents of the Complaint, and the proceedings commenced November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Response was filed with the Center on December 5, 2011.

On December 6, 2011, the Respondents filed a request for a one day extension of time for their Response. The Complainant did not oppose that request.

The Center appointed Warwick Smith, W. Scott Blackmer, and Alan L. Limbury as panelists in this matter, on December 29, 2011. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant

The Complainant is a corporation incorporated under the laws of Nova Scotia, Canada. It is a leading commercial search provider in Canada, and Canada’s largest telephone directory publisher. It operates a substantial online business directory, and it is the only national provider of print directories for businesses in Canada. The Complainant says that it provides these services to over 365,000 Canadian businesses.

In addition, the Complainant is a very substantial publisher of residential telephone directories in all of the major Canadian provinces. The Complainant’s business and residential directories are distributed to markets covering approximately 97% of Canada’s population.

From about 1948 until 2004, the Complainant (or its predecessors or licensees) marketed the business directories under a formative YELLOW PAGES mark. From about 2004, the directories have been offered to the Canadian market in association with a formative YELLOW PAGES GROUP mark.

The Complainant provided evidence of substantial expenditure promoting its YELLOW PAGES-branded print and online directory services in Canada. Since 2006, it has generated over CAD 1 billion in revenues each year from those directories.

The Complainant’s trademarks

The Complainant is the registered proprietor in Canada of a number of trademarks which consist of or incorporate the expression “Yellow Pages” (or its French equivalent “Pages Jaunes”). These marks include the word marks YELLOW PAGES and PAGES JAUNES, both registered on June 27, 1980, covering (among other goods and services) “Advertising businesses in directories and compiling and publishing business and telephone directories”.

Other Canadian trademark registrations owned by the Complainant include a design mark consisting of the familiar “walking fingers” design (appearing in a rectangle beneath the word “Electronic” and above the words “Yellow Pages”), registered in March 1982, and a number of design marks registered in 2004 which include a “walking fingers” element together with one or both of the expressions “Yellow Pages Group” and “Groupe Pages Jaunes”.

The Complainant’s Domain Names

The Complainant owns a number of domain names which incorporate the expressions “yellow pages” or “pages jaunes”. These include <yellowpages.ca> and <pagesjaunes.ca>, which resolve respectively to the English and French language “Yellow Pages” websites operated by the Complainant. The Complainant has owned these two domain names since October 2000. Since November 2002, the Complainant has also owned the domain name <yellowpagesgroup.ca>. It resolves to a website operated by the Complainant’s parent company, Yellow Media Inc., which provides information about the group and its activities (including those of the Complainant).

The Respondents and the Domain Names

All but three of the Domain Names were registered on December 9, 2009. The Domain Name <yellowpage-canada.com> was registered on November 4, 2010, the Domain Name <yellowpage-group.com> was registered on June 15, 2009, and the Domain Name <yellowpage-ontario.com> was registered on December 3, 2009.

The Respondent Yellow Page Marketing BV (“YPM”) has described itself on the website at “www.yellowpage-group.com” as an international provider of business to business directories specializing in creating a “Global but Local” online marketing service to a broad range of companies throughout the world. A printout from this website as it stood on August 12, 2011 showed that YPM’s head office was in Amsterdam, but that it maintained offices in a number of other countries, including Canada.

With an affidavit provided by its in-house legal counsel (intellectual property), the Complainant provided screen shots of the landing pages at the websites to which 13 of the Domain Names resolved on April 29, 2011 (the two Domain Names for which screen shots were not provided were <yellowpage-canada.com> and <yellowpage-group.com>). Each of the screen shots appeared to be in the same general form – each prominently featured the relevant Domain Name beside an inverted “walking fingers” device, and each contained a number of click-on links grouped under the general headings “Popular [name of relevant Canadian province] Keywords” and “Top [name of relevant Canadian province] Locations”. Each contained a “Find a Business” search facility, and click-through links headed “Social Networking Rate, review & share local businesses”, and “Reach 310,000,000! potential customers Registration is easy and for free”.

In its affidavit, the Complainant’s in-house counsel concluded that YPM was offering business directory and advertising services on the websites at these Domain Names, which were highly similar to the services offered by the Complainant in association with its YELLOW PAGES marks. The Respondents did not challenge that conclusion in their Response.

The Complainant also provided an affidavit sworn by a summer clerk employed by the Complainant’s solicitors. The Complainant’s clerk produced screenshots taken from the websites to which 14 of the 15 Domain Names resolved in early August 2011 (the 15th Domain Name, <yellowpage-canada.com>, resolved to the website at “www.yellowpage-novascotia.com”). The websites at the Domain Names with names incorporating the name of a Canadian province or territory appeared to be in the same general form as the corresponding April 2011 screenshots produced by the Complainant’s in-house counsel. In an “About Us” section, the YPM group was said to have been created in 1985, when it published an online business directory in Switzerland. The group then expanded its business directory services to Germany, Austria, and France, followed by the United Kingdom of Great Britain and Northern Ireland. YPM’s “Yellow Page” online directories were said to have been made available in the United States of America and Canada, by 2009.

The “About Us” text described the expression “yellow pages” as having its origins in the 1880s in Cheyenne, Wyoming, where a printer printing a directory is said to have run out of white paper, and used yellow paper instead. Over the ensuing years, the expression “yellow pages” was said to have become “synonymous with business listings throughout the world”.

The Complainant’s in-house counsel deposed that the Complainant has received numerous enquiries and concerns regarding unsolicited faxes consumers have received, which prominently displayed at least one of the Domain Names with a “walking fingers” logo, and which appeared to emanate from YPM. Its evidence was that a number of consumers indicated they were confused as to whether the faxes came from the Complainant, or whether by signing the faxes the consumer would be engaging the Complainant’s services. Some sample copies of such faxes were attached to the Complainant’s in-house counsel’s affidavit. Some of these consumers complained to their local “Better Business” bureau, or to Canada’s Competition Bureau (“the Competition Bureau”), alleging that they had been the subject of a scam carried out by YPM or one of its affiliates. (The Competition Bureau is an independent law enforcement agency, with responsibility for administering and enforcing Canada’s Competition Act.)

The Competition Bureau commenced an investigation, and on May 5, 2011 it posted a warning on its website, warning businesses and not-for-profit organizations to be wary of faxed order forms offering advertising opportunities in online business directories. The warning advised that:

“…The faxes include a logo that closely resembles the [Complainant’s] walking fingers logo and names similar to YellowPages.ca. If the business completes the form and provides an authorized signature, it will be invoiced for a two-year listing in an online directory. The form does not clearly and conspicuously indicate the material terms and, in particular, the service charge, which has been, in some cases, as high as $2,800, or the cancellation policy….”

Relevant Legal and Administrative Proceedings

On July 26, 2011, the Competition Bureau commenced a proceeding (“the Competition Bureau Proceeding”) in the Superior Court of Justice, Ontario, Canada, against YPM and a number of other parties. In the Competition Bureau Proceeding, the Competition Bureau sought orders against YPM and certain other respondents, inter alia declaring that, for the purposes of promoting the supply or use of online directory services, YPM and those other respondents have made representations to the public that were false or misleading in a material respect. Substantial monetary penalties were sought, together with orders directing YPM and the other concerned respondents to cease making the allegedly false or misleading statements. In addition, an order was sought requiring YPM and certain of the other respondents to publish a notice or notices, in such manner and at such times as the Court might specify, bringing the Competition Bureau Proceeding to the notice of the class of persons likely to have been reached or affected by the conduct of YPM and those other respondents.

The Competition Bureau’s application referred expressly to each of the Domain Names except <yellowpage-canada.com> and <yellowpage-group.com>. It alleged that the websites at each of the Domain Names referred to displayed features distinctive to the Complainant’s Internet directories, including use of the words “Yellow Pages”, a prominent “Walking Fingers” design, and extensive use of the color yellow. The websites were also alleged to misleadingly state that: “The term ‘Yellow Pages’ is not a registered name within the United States and is freely used by over two hundred companies in North America.” The application alleged that the unsolicited faxes were designed to create the (allegedly false) impression that the recipients were only being asked to update records for their existing Yellow Pages listings, which the recipients only had with Complainant (and did not have with YPM or any of the other respondents). As a result, those recipients were alleged to have believed that they were simply updating existing records with the Complainant, when in fact they were signing new contracts with YPM or one of the other respondents. YPM and certain of the other respondents are alleged to have proceeded on the basis that anyone who signed the fax and returned it then owed YPM CAD 2,856, half of which was due immediately.

The Competition Bureau also alleged that further misleading representations were made in invoices and correspondence sent by YPM or other respondents to the recipients of the faxes.

Certain interim orders have been made by the court in the Competition Bureau Proceeding, including orders made on August 10, 2011 enjoining the respondents, pending the motion return date, from sending any fax solicitations to anyone in Canada that included the “Walking Fingers” design (including any form of that logo that has been inverted), or the term “Yellow Pages”. The respondents were not prevented from sending solicitations that included the word “Yellow”, or the phrases “Yellow Business” or “Yellow Directories”. An interim order was also made on August 11, 2011, directing the respondents to modify an “Urgent Notice” which they had previously been directed to post on all websites operated by them drawing attention to the fact that a proceeding had been commenced against YPM by the Federal Trade Commission in the United States. The “urgent notice” was to be modified to include reference to the Competition Bureau Proceeding.

With its affidavit, the Complainant’s clerk produced screenshots from the landing pages at each of the 14 websites at the Domain Names, taken on August 18, 2011. Each of these landing pages contained a brief advisory statement notifying site visitors that the United States Federal Trade Commission and the Competition Bureau of Canada had separately commenced legal proceedings against YPM, and had obtained preliminary injunctions. Further information about these proceedings was included in the “About Us” sections of the websites, where site visitors were informed that the court proceedings related to deceptive practices allegedly engaged in by YPM, relating to the offering for sale of Internet directory listings. The “About Us” text went on to note that YPM did not believe that it had engaged in any improper conduct, and that it was committed to working with the respective competition authorities to address their concerns.

With the Response, the Respondents provided an affidavit from a law clerk employed by their solicitors, who reported on the progress of the Competition Bureau Proceeding and of certain other proceedings between the parties (to which we will refer shortly). The evidence was that the respondents have filed evidence and cross-examined the Competition Bureau’s witnesses in the Competition Bureau Proceeding, and that the Competition Bureau Proceeding has been given a hearing date of January 10, 2012. The Respondent’s clerk did not say how much hearing time had been allocated for the hearing, or when the Superior Court was expected to give a decision.

On October 28, 2010, YPM commenced an action in the Federal Court of Canada (“the Expungement Proceeding”) seeking orders that a number of the Complainant’s registered trademarks, including the Complainant’s YELOW PAGES, YELLOW PAGES GROUP, and “Walking Fingers” design marks, be expunged from the Canadian trademarks register. YPM alleged that the Complainant’s marks, and in particular the term “Yellow Pages”, were synonymous with business directories and, as such, had become generic in relation to those wares and services and were not distinctive of the Complainant. As part of its evidence in the Expungement Proceeding, YPM submitted a survey it had commissioned (“the Corbin Survey”) in an attempt to determine the extent to which business directory users in Canada perceived the term “Yellow Pages” to be a brand name, and if so, whether they associated that brand name with the Complainant. A copy of the survey was provided with the Response in this proceeding.

The Respondents’ contention based on this survey evidence is that 57% of Canadians either identify “Yellow Pages” as a descriptive name, or associate it with some company other than the Complainant as the source of the “Yellow Pages” directory (or associate it with more than one company).

The Respondent’s clerk gave evidence of the status of the Expungement Proceeding. It said that all affidavits have been filed, and cross-examination has been completed by both sides. The only remaining steps in the proceeding are the filing of the parties’ respective Written Records (copies of all evidence and written argument), and the requisitioning of a hearing. The Respondent’s clerk said that it is likely that the hearing will be completed by mid-2012. The Complainant did not seek to challenge that assessment.

In April 2011, the Complainant commenced a court proceeding against YPM and certain related companies, in the District Court at the Hague, Netherlands (“the Hague Proceeding”). In the Hague Proceeding, the Complainant sought, inter alia, a prohibition on trademark infringement by the respondents in Canada, “in particular by means of the use of the signs…..“YellowPage-[Canadian region].com”, domain names composed of “www.yellowpage-[Canadian region].com”, the logo containing the - regular or upside-down walking fingers or similar signs, or a combination of elements of such signs, for directory or similar services”. YPM argued in response that the Complainant’s “Yellow Pages” marks were invalid, and it referred to the Expungement Proceeding. It also contended that the Complainant did not have any urgent interest in the relief it had sought, pointing out that the Complainant had first sent a demand letter to it in January 2010. YPM said that it was not until October 8, 2010 that it received a demand letter from a Dutch attorney for the Complainant, and that a further copy of that letter was sent in March 2011. In the meantime, YPM had commenced the Expungement Proceeding in Canada.

In a decision given on June 6, 2011 on an application by the Complainant for preliminary relief, the District Court declined to grant the relief sought insofar as it related to the expression “Yellow Pages”. Relief was granted to the Complainant on its claims in respect of the “Walking Fingers” mark. The preliminary relief judge referred to the Corbin Survey, which had been put in evidence before him, and noted that the Complainant had not disputed the results of the survey – differences between the parties were over matters of interpretation of the results. The judge referred to the claimed “57% no exclusive brand recognition” figure in the Corbin Survey, and noted: “For now, given this result, the reliance on the nullity of the word mark “YELLOW PAGES” should be taken seriously.” The preliminary relief judge went on to refer to the Expungement Proceeding, and expressed the view that “the Canadian court will be better equipped to assess such validity”.

In its Complaint in this proceeding, the Complainant stated that it “understands that [YPM] has sought to appeal [the decision in the Hague Proceeding] and that the appeal process is pending.” The Respondent, on the other hand, stated that it was the Complainant who appealed the decision. The Respondent’s clerk sworn evidence supports the Respondent on this point.

The Complainant says that following the decision in the Hague Proceeding, YPM removed the inverted “Walking Fingers” trademarks from the websites at those of the Domain Names which included Canadian geographic indicators, but replaced them with a telephone receiver device which is similar to another of the Complainant’s registered marks (the Panel notes that the Complainant is the registered proprietor of two Canadian trademarks, Numbers TMA205312 and TMA266549, consisting of a telephone receiver device above the words “Yellow Pages” or “Pages Jaunes”, respectively). The Respondents did not dispute this assertion in the Response.

In addition to the above-mentioned court proceedings, the Complainant refers to two administrative proceedings under the Policy in which YPM was the named respondent. They are Sensis Pty. Ltd, Telstra Corporation Limited v. Yellow Page, Yellow Page Marketing BV, WIPO Case No. D2010-0817 (“Sensis I”), and the subsequent decision in a refiled complaint between the same parties – Sensis Pty. Limited, Telstra Corporation Ltd v. Yellow Page Marketing BV, WIPO Case No. D2011-0057. We will refer to the decision in the refiled complaint as “Sensis II”.

Sensis was the publisher of “Yellow Pages” directories in Australia, and its parent company and co-complainant Telstra held a number of registered YELLOW PAGES marks in Australia, which Sensis was licensed to use. In both Sensis I and Sensis II the administrative UDRP panels held that a number of disputed domain names in the form “yellowpage-[Australian geographic identifier – e.g. “Adelaide”, “Melbourne” etc].com” were confusingly similar to the complainants’ YELLOW PAGES mark. However in Sensis I the single member UDRP panel held that the complainants had failed to establish that YPM had no rights or legitimate interests in the disputed domain names, and the complaint was denied. The panel in Sensis I noted that in some jurisdictions YPM appeared to be making a non-infringing use of the expression “Yellow Pages”, in particular in the United States, where the complainants did not hold trademark rights in any “Yellow Pages” mark and the United States Patent and Trademark Office required applicants for trademark registrations incorporating the expression “yellow pages” to disclaim exclusive rights in that term. The Sensis I panel concluded that YPM was making fair use of the complainants’ trademark term YELLOW PAGES in the disputed domain names, because it was providing services under the disputed domain names outside the territorial jurisdiction where the complainants held trademark rights, and with respect to Internet users in jurisdictions where the term “Yellow Pages” was either not protected by trademark rights or subject to a fair descriptive use doctrine (as in the United States).

In Sensis II, the complainants provided new evidence, generally designed to show that YPM had been targeting the Australian market. This time, YPM did not submit any response. The three-member panel in Sensis II took the view that YPM’s use of the disputed domain names could not have been bona fide if the evidence indicated (as it did) that YPM was aware of the complainants’ Australian mark and sought, in bad faith, to exploit it by misleading the relevant local businesses in Australia as to source or affiliation. The Sensis II panel noted that there was no evidence that YPM or anyone else had moved to invalidate the complainants’ Australian-registered marks, and it found (with the benefit of the new evidence) that YPM had indeed registered and used the disputed domain names in bad faith. It ordered that the disputed domain names be transferred to Sensis.

YPM’s activities in Australia resulted in the Australian Competition and Consumer Commission (“the ACCC”) taking court action in November 2010 against YPM, similar to the action taken by the Competition Bureau in Canada (the ACCC’s principal allegation was that YPM had sent misleading faxes to Australian businesses in an attempt to obtain subscriptions to its online business directories). In a judgment given in April 2011, the Federal Court of Australia imposed monetary penalties on YPM, and enjoined it and its affiliate from registering domain names including the words “yellow page/s” in combination with “.au” or the name of a city, state or other location in Australia.

Finally under this subheading, the Federal Trade Commission in the United States has also filed a lawsuit against YPM relating to allegedly deceptive practices in offering for sale Internet directory listings. A temporary restraining order was made by the United States Federal court in August 2011. It appears that this litigation is ongoing.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(i) The Complainant has both registered and common law rights in its YELLOW PAGES, PAGES JAUNES, YELLOW PAGES GROUP, and GROUP PAGES JAUNES marks. The Expungement Proceeding does not affect those rights (citing Telstra Corporation Limited v. India Yellow Pages, WIPO Case No. D2002-0651 - it is not open to a UDRP panel to second-guess the decision of the national trademarks registrar).

(ii) The Domain Names are confusingly similar to the Complainant’s YELLOW PAGES or YELLOW PAGES GROUP marks – the deletion of the letter “s”, and the addition of the hyphen followed by a descriptive or geographic expression are not sufficient to avoid confusion. Equally, the Domain Names are confusingly similar to the Complainant’s French language marks, PAGES JAUNES and GROUPE PAGES JAUNES. A mere translation from French to English is not sufficient to avoid confusion, especially when the Domain Names are being used to target residents of a country such as Canada which is officially bilingual in English and French (citing Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318).

(iii) The Respondents have no rights or legitimate interests in respect of any of the Domain Names. First, they are not commonly known by any of the Domain Names, and therefore cannot claim a right or legitimate interest on that basis, under paragraph 4(c)(ii) of the Policy. Secondly, the Complainant has not authorized them to use any of its marks, or any confusingly similar expressions. Thirdly, they have not been making a fair use of the Domain Names, or using them in connection with any bona fide offering of goods or services, such as might have provided a defense under paragraph 4(c)(iii) or 4(c)(i) of the Policy.

(iv) The Complainant relies on the evidence of YPM’s unsolicited and misleading fax offers scheme, featuring the Domain Names prominently displayed on the faxes, and including the use of the expression “Yellow Page” and the inverted “Walking Fingers” design, in support of its allegation of mala fide conduct by YPM. The Complainant also contends that the websites at the Domain Names are an obvious mimic of its own websites at “www.yellowpages.ca” and “www.pagesjaunes.ca”. (Even after the decision in the Hague Proceeding, the design elements and color schemes on the Respondent’s websites have remained essentially unchanged. The inverted “Walking Fingers” device used by YPM has been replaced by a telephone receiver device, but the effect has simply been to substitute one of the Complainant’s trademarks with another.)

(v) The website at the Domain Name <yellowpage-group.com> has a very similar look and feel to the Complainant’s website at “www.ypg.com”, using the same color scheme, manner of use, and layout. The <yellowpage-group.com> website also displays, beside the words “Yellow Page Marketing Group”, a “walking fingers” logo which is virtually identical to one of the Complainant’s “Walking Fingers” registered marks. The fact that YPM continues to use a mark registered to the Complainant in Canada on a website which is clearly directed to Canadians, notwithstanding the order of the Court in the Hague Proceeding which enjoined such use, combined with the intentional copying of the Complainant’s website at “www.ypg.com” and the evidence of YPM’s deceptive business practices generally, make it clear that YPM is not making a bona fide offering of services with the Domain Name <yellowpage-group.com>. On the contrary, YPM has been using the Domain Names in a manner designed to intentionally mislead consumers into believing that they are engaging the services of the Complainant. Such use cannot be considered bona fide.

(vi) YPM has been operating in Canada and targeting Canadian businesses, and the “fair use” argument which prevailed in Sensis I should be rejected by the Panel for essentially the same reasons adopted (in respect of the Australian market) by the panel in Sensis II.

(vii) The Domain Names have been registered and used by the Respondents in bad faith. The Respondents obviously had actual knowledge of the Complainant’s extensive and long-held rights in its YELLOW PAGES and YELLOW PAGES GROUP marks, and YPM has used the Domain Names in bad faith in order to attract, for commercial gain, users to the websites operated by YPM at the Domain Names, by creating a likelihood of confusion with the Complainant’s trademarks and trade name. The filing of the Expungement Proceeding provides further evidence of YPM’s bad faith: if YPM honestly believed that such marks, when directed to Canadian businesses, are not distinctive of the Complainant, then it would not have blatantly copied the design, color scheme, layout, or manner of use of the Complainant’s websites, and would not have adopted the Complainant’s “Walking Fingers” and / or “telephone receiver” design marks. Further evidence of YPM’s general bad faith is apparent from the various international investigations, sanctions, and legal actions which have been launched against YPM. The facts are virtually identical to those found by the panel in Sensis II, where the panel found that YPM had registered and used the disputed domain names in bad faith.

(viii) Notwithstanding the Expungement Proceeding, the Hague Proceeding, and the Competition Bureau Proceeding, the Panel should exercise its discretion pursuant to Paragraph 18(a) of the Rules to issue a decision in this proceeding, rather than terminate or suspend this administrative proceeding. The Complainant is not a party in the Competition Bureau Proceeding, and no order has been sought in that proceeding for the transfer of the Domain Names to the Complainant. Just as the fact that the ACCC proceeding was pending in Australia did not prevent Sensis and Telstra Corporation from obtaining transfer orders from a UDRP panel in Sensis II, so the Complainant should not be prevented by the pending Competition Bureau Proceeding from seeking and obtaining a transfer of the Domain Names in this proceeding. Furthermore, one of the Domain Names (<yellowpage-group.com>), and YPM’s activities in relation to it, are not referred to in the Commissioner’s application in the Competition Bureau Proceeding.

(ix) Neither the Expungement Proceeding nor the Hague Proceeding specifically concerns the Respondents’ rights or interests in the Domain Names, and no remedy in respect of the registration of the Domain Names has been sought in either of those proceedings. Furthermore, a determination of the current dispute in the Complainant’s favor would not bind a court, and would not prevent the Respondents from seeking relief in court if they were dissatisfied with the result of this proceeding. Having regard to YPM’s documented deceptive practices, the confusion which continues to exist vis a vis the websites at the Domain Names despite the order of the court in the Hague Proceeding, and to the consequential ongoing damage to the Complainant’s goodwill in its long-held marks, the Panel should proceed with urgency to resolve the Complaint.

B. Respondent

The Respondents contend that the Complaint fails at the threshold issue of whether the Complainant has rights in Canada in a “Yellow Pages” trademark or service mark. The Respondents contend that no such rights have been proved, and that in those circumstances the Complaint must be refused. In the alternative, they argue that the Complaint should be terminated, or suspended pending resolution of the Expungement proceeding.

In support of their argument on the threshold trademark issue, the Respondents refer to YPM’s allegations in the Expungement Proceeding that the Complainant’s registered marks , and in particular the term “Yellow Pages”, have become generic in Canada (denoting business directories generally) and / or are no longer distinctive of the Complainant. They point to the Corbin Survey, in which 57% of the 400 Canadian survey respondents were said to be unable to identify “Yellow Pages” as the Complainant’s exclusive brand. The Respondents say that their “generic and / or non-distinctive” argument is fatal to the Complaint, whether the Complainant’s claims are based on its registered marks or on its alleged common law trademark rights.

In support of their termination or suspension argument, the Respondents argue that the court hearing the Expungement Proceeding will be in a much better position to determine any underlying rights in a “Yellow Pages” trademark than the UDRP Panel in this proceeding would be, as the court will have the benefits of a full evidential record and seeing the witnesses cross-examined under oath. Considerations of comity also suggest that the Panel in this proceeding should defer to the Federal Court of Canada (citing Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), WIPO Case No. D2008-1477, and the opinion of the dissenting panelist in Galley, Inc. v. Pride Marketing & Procurement / Richard’s Restaurant Supply, Inc., WIPO Case No. D2008-1285). The Respondents say that there will be no prejudice caused to the Complainant if the Panel terminates or suspends the proceeding, as the pending legal proceedings will be completed within several months, and the Complainant has not in any event acted expeditiously in initiating its Complaint in this proceeding.

On the issue of “rights or a legitimate interests in respect of the Domain Names”, the Respondent submits that the court in the Expungement Proceeding will be in a better position to determine whether the Respondents have any legitimate interest in the use of the descriptive term “yellow pages” in the Domain Names, than the UDRP Panel in this proceeding would be. They also say that the court in the Competition Bureau Proceeding will be better placed than the Panel in this proceeding to assess whether YPM / the Respondents’ use the Domain Names in connection with a bona fide offering of goods or services.

On the issue of registration and use in bad faith (Policy, paragraph 4(a)(iii)), the Respondents submit that the issues under this head will be better determined in the Expungement Proceeding and in the Competition Bureau Proceeding, for the reasons set out above.

6. Discussion and Findings

A. What the Complainant Must Prove under the Policy

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

B. Respondents’ Request for Time Extension for Response

The Panel elects to receive and consider the Response, which was filed only one day late. The Respondent sought the time extension promptly, explaining that the lateness was due to an incorrect assumption that where the last day for filing falls on a Sunday (as it did in this case), a response will be considered to be filed in time if it is submitted on the following Monday. The lateness has not caused any prejudice to the Complainant, and it has not opposed the Respondents’ request for the additional day’s grace.

C. Respondents’ Request for an Order Terminating or Suspending the Proceeding

Paragraph 18(a) of the Rules provides as follows:

“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

In this case, there are two separate legal proceedings between the Parties, both initiated prior to the commencement of this proceeding. They are the Expungement Proceeding and the Hague Proceeding. It is common ground between the parties that paragraph 18(a) is applicable1. The Complainant submits that the Panel should exercise its discretion to proceed to consider the Complaint; the Respondents submit that the proceeding should be terminated, or at least suspended pending resolution of the Expungement Proceeding.

The Panel has carefully considered the evidence and the Parties’ submissions, and has come to the view that the proceeding should be terminated. The Panel’s reasons for that view are as follows:

(i) The requirements of paragraph 4(a) of the Policy are cumulative – if a complainant cannot establish rights in a trademark or service mark which is identical or confusingly similar to the disputed domain name, the complaint must fail.

(ii) If the Court in the Expungement Proceeding were to hold that the Complainant’s YELLOW PAGES mark and / or its YELLOW PAGES GROUP figurative marks have become generic and / or are not distinctive of the Complainant, and therefore should be removed from the trademarks register, the Complainant would have no basis for relying on those registered marks (as it does) to make out its case under paragraph 4(a)(i) of the Policy . Any such findings in the Expungement Proceeding would also call into serious question (for present purposes the Panel need not put it any higher than that) the Complainant’s alternative arguments under paragraph 4(a)(i) of the Policy, that it enjoys common law rights in its YELLOW PAGES and YELLOW PAGES GROUP marks, and / or that the Domain Names are confusingly similar to the Complainant’s PAGES JAUNES and GROUPE PAGES JAUNES French language marks.

(iii) In an administrative proceeding such as this, with limited evidence and no opportunity to see witnesses cross-examined, the Panel is not able to say that YPM’s claims in the Expungement Proceedings are so obviously hopeless that they can be ignored. The Panel notes that there appears to be at least one jurisdiction where the expression “yellow pages” is regarded as descriptive or generic (the United States – see the decision of the Panel in Sensis I, supra), and the Panel notes the view of the preliminary relief judge in the Hague Proceeding that, given the result of the Corbin Survey, YPM’s reliance on the nullity of the word mark YELLOW PAGES should be “taken seriously”.

(iv) This is not a case where the Respondents have attempted to frustrate the proceeding under the Policy by filing a late application for expungement of the Complainant’s marks, after the proceeding under the Policy had been commenced. (Some UDRP panels have in such circumstances elected to proceed to a determination of the complaint, notwithstanding the concurrent court proceeding (see for example Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041, and the discussion of the relevance of late filing of a court proceeding in DNA (Housemarks) Limited v. Tucows.com, WIPO Case No. D2009-0367. The panel in the latter case noted that automatically granting a request to suspend or terminate might be subject to abuse by an unscrupulous respondent, allowing complication of or undue delay in resolution of cybersquatting disputes, in contravention of the scheme for their prompt resolution envisaged by the Policy). In this case, the Expungement Proceeding was filed approximately one year before the Complainant lodged the present Complaint, and the Complainant has not sought to challenge the Respondents’ evidence that a hearing is expected to take place in a few months time.

(v) It appears that the Complainant has been aware of the registration of most if not all of the Domain Names since early 2010. Its subsequent delay in issuing the present Complaint (or issuing appropriate court proceedings seeking orders for the transfer of the Domain Names) has not been explained. It was clearly focusing on the Domain Names when it issued the Hague Proceeding, as it sought an injunction in that proceeding restraining YPM from trademark infringement by the use of domain names composed of “www.yellowpage-[Canadian region].com”. It appears not to have sought orders in the Hague Proceeding transferring the Domain Names to it, but it has not explained why such an application was considered either impossible or inappropriate. Nor has the Complainant explained what became of the appeal which the Complainant itself apparently lodged against the June 2011 decision of the preliminary relief judge. It seems at least possible that until this proceeding was commenced the Complainant had been content to leave the issue of ownership of the Domain Names on one side, while other more pressing matters were addressed, including the issues in the Expungement Proceeding and the Competition Bureau Proceeding.

(vi) The Panel notes that the District Court in the Hague Proceeding took the view that the Canadian court hearing YPM’s applications in the Expungement Proceeding would be better equipped than it to assess the validity of the Complainant’s marks. The Panel in this proceeding is in no better position to make that assessment.

(vii) The Panel has considered the hypothetical position if it were to proceed with the Complaint and find in the Complainant’s favor. First, it is clear that YPM has a substantial investment in the North American market, including in Canada, and in that scenario it seems improbable to the Panel that the Respondents would let such a decision by the Panel go unchallenged, particularly with a hearing in the Expungement Proceeding only a few months away. The likelihood must be that the Respondents would commence a proceeding in the Netherlands (the “mutual jurisdiction” nominated by the Complainant in its Amended Complaint under paragraph 3(b)(xiii) of the Rules), and serve an appropriately verified copy of their complaint in that proceeding on the registrars, within the period prescribed by paragraph 4(k) of the Policy. If that were to occur, the registrars would be bound to refrain from implementing the decision ordering transfer of the Domain Names, pending receipt of a decision from the Dutch court determining the ownership question. Following the hypothesis a little further, it seems at least possible that the Dutch court hearing any such new proceeding might consider it appropriate to defer to the Federal Court of Canada on the question of the validity of the Canadian-registered trademarks. If that happened, no resolution of the Domain Name ownership issue would have been achieved before the decision of the court in the Expungement Proceeding was available, and nothing useful would have been achieved by the Panel proceeding to issue its decision now.

(viii) A number of additional matters were raised by the Complainant in opposition to the termination or suspension of the Complaint. First, it submitted that the Panel should not be deterred by the existence of the Competition Bureau Proceeding from proceeding to give a decision. It pointed to the panel in Sensis II electing to proceed notwithstanding the pending ACCC proceedings. Secondly, the Complainant submitted that a decision of the Panel in this case would not bind any subsequent court, and would not prevent the Respondents from seeking any relief in court if they were dissatisfied with the Panel’s decision. Thirdly, the Complainant pointed to alleged ongoing market confusion in Canada as a reason for the Panel to proceed to give a decision. The Panel is not persuaded by those submissions. First, it notes that there was no expungement proceeding pending in Australia when the panel in Sensis II proceeded to give its decision. Nor was any submission made to the Sensis II panel that the proceeding should be terminated or suspended (YPM did not file any response). The Panel accepts that any decision it gave in this proceeding would not prevent the Respondents from seeking relief in court if they were dissatisfied with that decision, but it does not see that as a reason favoring the giving of a decision, especially having regard to the points made in subparagraph (vii) of this list of reasons. As for the allegation of ongoing market place confusion, the Complainant has other avenues available to it to protect its position, including issuing any court proceedings it might consider appropriate.

(ix) The foregoing considerations point in favor of a decision terminating or suspending the proceeding. The Panel has considered the possibility of ordering a suspension pending judgment becoming available in the Expungement Proceeding, but in the end it has come to the view that suspension would be inappropriate. The Panel agrees with the view of the panelist in the DNA (Housemarks) case that “[t]ermination is far preferable to suspension, most importantly because the Policy, the Rules, and the Supplemental Rules make no provision for what may very well be a lengthy suspension, nor do they include a mechanism by which this matter might in practice be kept ‘pending’ and resumed or reinstated at some undetermined day in the future”. The Panel notes that, while the hearing in the Expungement Proceeding is likely to take place at some time in mid-2012, no evidence has been provided as to how long the hearing will take, or when a judgment might be available. The Panel cannot discount the possibility of delays.

The proceeding will be terminated under paragraph 18(a) of the Rules, without prejudice to the Complainant’s right to file a new Complaint against the Respondents under the Policy following the termination of the Expungement Proceeding (whether by final judgment of the Federal Court of Canada, or the striking out, discontinuance, abandonment or other termination of YPM’s claims in the proceeding). The decision to terminate will be published, to provide a public record of the facts and actions stated therein which may provide useful guidance or insight for future panels considering a dispute between these same parties or otherwise.

7. Decision

The Panel hereby orders, pursuant to paragraph 18(a) of the Rules, that this proceeding be terminated. This termination is without prejudice to the Complainant’s right to file a new Complaint against the Respondents under the Policy at any time following the termination of the Expungement Proceeding (whether by final judgment of the Federal Court of Canada, or the striking out, discontinuance, abandonment, or other termination of YPM’s claims in the Expungement Proceeding).

Warwick Smith
Presiding Panelist

W. Scott Blackmer
Panelist

Alan L. Limbury
Panelist

Dated: January 12, 2012


1 The Panel considers that the Complainant’s acceptance of that position was appropriate. The Expungement Proceeding puts in issue directly the validity of the Complainant’s YELLOW PAGES / PAGES JAUNES and YELLOW PAGE GROUP registered marks, and that is precisely the issue the Panel has to determine in this proceeding under paragraph 4(a)(i) of the Policy. The Panel is therefore of the view that the Expungement Proceeding is a proceeding “in respect of” a domain name dispute which is the subject of the present Complaint.

 

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