WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BellSouth Intellectual Property Corporation v. Real Yellow Pages
Case No. D2003-0413
1. The Parties
The Complainant is BellSouth Intellectual Property Corporation, a Delaware corporation with offices in Wilmington, Delaware, United States of America. The Complainant is represented in this proceeding by Jeffrey A. Brown of Kilpatrick Stockton LLP of Atlanta, Georgia, United States of America.
The Respondent is Real Yellow Pages, an entity in Des Moines, Iowa, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <real-yellow-pages.net>. The registrar is Tucows, Inc. of Toronto, Ontario, Canada.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and accompanying Rules for the Uniform Domain Name Dispute Resolution Policy (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on May 28, 2003. On May 29, 2003, the Center requested that the registrar Tucows, Inc. verify the registrant for the disputed domain name. On May 30, 2003, Tucows reported to the Center that the registrant was the Respondent, and that the domain name was active. Tucows also gave the Respondentís administrative and technical contact particulars.
In its Complaint section Vlll, per paragraph 3(b)(xiii) of the Rules, the Complainant submitted to jurisdiction in Michigan, United States of America, because the Complainant incorrectly believed this to be the location of the registrar. As a result, on June 11, 2003, the Center sent a Deficiency Notification informing the Complainant the registrarís main office was in Toronto, Ontario, Canada. The Complainant corrected this deficiency by filing a Complaint Amendment on June 16, 2003, in which it submitted to jurisdiction at the Respondentís location: Des Moines, Iowa, United States of America.
On June 16, 2003, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail, and this proceeding officially began. In accordance with the Rules paragraph 5(a), the due date for the Response was set at July 6, 2003. The Respondent did not file a timely Response and, on July 7, 2003, was declared in default.
The Administrative Panel submitted a Declaration of Impartiality and Independence on August 2, 2003, in accordance with paragraph 7 of the Rules. The Center proceeded to appoint the Panel on August 4, 2003. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by August 18, 2003.
4. Factual Background
For many years prior to the 1984 divestiture of AT&T, the Complainantís predecessors published telephone directories including a classified or "Yellow Pages" section intended primarily for use in the southeastern United States. Upon divestiture, the Complainant BellSouth Advertising & Publishing Corporation, a BellSouth affiliate, began to publish telephone directories across the southeast, and currently publishes directories in North Carolina, South Carolina, Georgia, Florida, Alabama, Mississippi, Louisiana, Tennessee and Kentucky. These directories include advertisements and business listings, which are classified by category headings.
On November 1, 2002, the Respondent registered the disputed domain name, <real-yellow-pages.net>.
On December 6, 2002, the Complainant sent a cease and desist letter via courier and e-mail to the administrative contact of the disputed domain name registration, demanding that the Respondent discontinue its use of the domain name and assign the domain name to the Complainant. The courier packet was returned as undeliverable, and the e-mail address was not recognized (Complaint Exhibit H). On December 20, 2003, the Complainant sent the same message to the Respondent at the contact information for another domain name, <iowaonweb.com>, and this time the message was delivered. The Respondent has never responded (Exhibit I).
5. The Partiesí Contentions
- This Complaint is based on the trademarks and service marks owned by Complainant as follows:
THE REAL YELLOW PAGES, United States Federal Registration No. 1,663,388, issued November 5, 1991; No. 1,781,368 issued July 13, 1993; No. 2,088,738 issued August 19, 1997; and No. 2,207898 issued December 8, 1998 (Complaint Exhibit C).
- The trademark THE REAL YELLOW PAGES was first used in interstate commerce on August 28, 1984. The mark has been used on all of the Complainantís classified directory covers since 1984. This mark has appeared on over fifty million directories published annually. The mark has been used in virtually every conceivable advertising media, including printed materials (such as brochures, newspapers, billboards, direct mail, and sales ads), radio, television, and other electronic media, such as electronic yellow pages directories.
- In 1997, BellSouth launched "The Real Yellow Pages Online," which is the present manifestation of its online directory service (Exhibit E).
- Due to the inherent and acquired distinctiveness of the mark, its longstanding and extensive use and its degree of public recognition, the mark THE REAL YELLOW PAGES is a famous trademark. Accordingly, consumers have come to recognize the Complainantís mark as indicating a product or service originating with a BellSouth company.
- The disputed domain name <real-yellow-pages.net> is virtually identical and confusingly similar to Complainantís famous THE REAL YELLOW PAGES mark. The only difference between the domain name and Complainantís mark is Respondentís omission of the word "the" and the addition of dash marks. Because the Complainant, its predecessors, and its affiliates use "The Real Yellow Pages" in connection with a variety of services, including print and online directories, the omission of the word "The" along with the addition of dash marks does not distinguish Respondentís domain name from Complainantís trademarks.
- Additionally, THE REAL YELLOW PAGES has become a central motif in Complainantís family of marks. Accordingly, the public has come to perceive goods and services related to telecommunications and directories that are offered under "Real" marks as emanating from the Complainant.
- The Respondent has no rights or legitimate interests with respect to the disputed domain name because Complainantís (and its predecessorís) first use of the marks, including the mark THE REAL YELLOW PAGES, predates by over eighteen (18) years any use Respondent may have made of the mark as a trade name, domain name, or mark.
- Since Complainantís trademark registrations were issued twelve (12) years before Respondent registered the disputed domain name, Respondent is charged with constructive knowledge of them under the Lanham Act. Therefore, for purposes of paragraph 4(c) of the Policy, Respondentís use was not bona fide because it was made with knowledge of Complainantís prior rights in the mark.
- Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the disputed domain name. Other than as Respondentís domain name and on other websites found at the disputed domain name, Complainant has found no evidence that Respondent ever used the disputed domain name as a trade name.
- The Complainant has not authorized Respondent to use the mark in the disputed domain name.
- Respondentís use of the disputed domain name is not legitimate noncommercial speech. As of the filing of this Complaint, the Respondentís website has only been used in connection with an Internet directory and a yellow pages search engine.
- Complainant reasonably believes that Respondent, prior to its adoption and use of the domain name, was aware that Complainant was the owner of the mark because of the widespread and long-standing advertising and marketing of goods and services under these marks.
- Respondentís link to Complainantís <realyellowpages.com> domain name evidences that Respondent is familiar with the Complainant and its services.
- Respondentís use of the disputed domain name indicates its knowledge of Complainant, its marks, and services. When Complainant first became aware of Respondentís use of the disputed domain name, Respondent was using it to re-direct traffic to a site located at "www.iowaonweb.com," which is a directory/search engine and related advertising services that directly compete with the Complainant (Complaint Exhibit G).
- On December 6, 2002, Complainant sent a cease and desist letter via Federal Express and e-mail to the administrative contact of the disputed domain name demanding that Respondent discontinue its use of the disputed domain name and assign it to the Complainant. The Federal Express package was returned as undeliverable and the e-mail address was not recognized. Thus, it appears that Respondent has provided false contact information. Prior panel decisions show that false contact information is sufficient to establish bad faith registration and use under the Policy at paragraph 4(a)(iii).
- The link to the Respondentís "www.iowaonweb.com" website was disconnected and redirected to "www.varietysearch.com," a website operating under the name <varietyyellowpages.com> which includes Complainantís federally registered trademark (Complaint Exhibit J).
- The Respondent derived online advertising revenues from its links to its "www.iowaonweb.com" and "www.varietysearch.com" sites. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís site. The Policy specifically classifies such conduct as evidence of bad faith under paragraph 4(b)(iv).
The Respondent is in default and thus did not submit any contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name, <real-yellow-pages.net> turned over to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has exhibited a number of trademarks registered with the United States Patent and Trademark Office for the trademark, THE REAL YELLOW PAGES. Among these are: No. 1,663,388 dated November 5, 1991, in international class No. 16; and No. 2,088,738 dated August 19, 1997, in international class No. 35 for directory advertising programs (Exhibit C).
The disputed domain name, <real-yellow-pages.net>, differs from the Complainantís trademark, THE REAL YELLOW PAGES, in insignificant ways only. The Respondent has only amended the article "The" and added a dash between the words. The Panel finds these alterations do not alleviate identity or confusing similarity. It goes without saying that the upper domain indicator ".net" is not to be taken into consideration when comparing terms for identity or confusing similarity under the Policy.
The Panel therefore finds the Complainant has satisfied its burden of proof under the Policy at paragraph 3(a)(i) to show the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Legitimate Rights or Interests
The Complainant contends that it has never authorized the Respondent to use its THE REAL YELLOW PAGES trademark. The Complainant also contends that the Respondentís use of the disputed domain name, i.e., to furnish business contact information for payment, does not constitute a legitimate right or interest contemplated under Policy paragraphs 4(c)(i-iii).
The Respondent, being in default, did not come forward to attempt to show its use of the disputed domain name could be allowed under the Policy. The only possible argument the Panel can see in the Respondentís behalf would be under 4(c)(i): "before any notice to you of the dispute, your 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."
However, in view of the notoriety of the Complainantís trademark, the Panel does not see how the Respondent could have been in bona fide when it used the Complainantís trademark to offer its paid information services.
Registered and Used in Bad Faith
The Complainant contends that the Respondent furnished false contact information to the registrar of the disputed domain name, Tucows, Inc. Thus, when the Complainant attempted to contact the Respondent about the disputed domain name, both the Complainantís e-mail and its courier packet were returned. Although this is not a specific bad faith ground under the Policy, paragraph 15(a) of the Rules gives the Panel the latitude to find other bad faith grounds where appropriate. And as the Complainant points out, a number of prior Panels have found that deliberately furnishing false contact information to a disputed domain name registrar can constitute bad faith in registration and use. The Panel agrees this is the case here. (See Verio Inc. v. Sunshinehh, WIPO Case No. D2003-0255 (June 24, 2003) where the Panel remarked "The Respondent is elusive," and this contributed to a finding of bad faith in registration and use. In a similar vein, see Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (April 11, 2000) where "false and misleading" contact information led to a finding of bad faith in registration and use).
Furthermore, the Complainant has demonstrated that the Respondent uses the disputed domain name to offer paid business contact information services. This is a violation of the Policy at 4(b)(iv), which states "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location." The Panel finds the Complainant has shown the Respondent registered and is using the disputed domain name in bad faith per paragraph 3(a)(iii) of the Policy.
Based on the discussion above, and on Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the disputed domain name, <real-yellow-pages.net>, be transferred from the Respondent, Real Yellow Pages, to the Complainant, BellSouth Intellectual Property Corporation.
Dennis A. Foster
Dated: August 19, 2003