WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telkom SA SOC Limited v. Gregory Moodley / Boss Publishers

Case No. D2017-0539

1. The Parties

The Complainant is Telkom SA SOC Limited of Highveld, South Africa, represented by Adams & Adams Attorneys, South Africa.

The Respondent is Gregory Moodley / Boss Publishers of Durban, South Africa.

2. The Domain Name and Registrar

The disputed domain name <yellowpageslive.net> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 19, 2017.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 27, 2017. 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.

4. Factual Background

The Complainant is a South African state owned company incorporated on September 30, 1991 which operates in more than 38 countries across the African continent. Through its licensee, Trudon (Pty) Limited, and its said licensee's predecessors in title, the Complainant has compiled and published telephone directories branded under the YELLOW PAGES mark since 1950. Basic listings in the said directories are provided for free and revenue is generated from the sale of enhanced listings and advertisements on an annually recurring basis. Since 2005, the Complainant's said licensee has distributed more than 54 million copies of its YELLOW PAGES branded telephone directories and has operated an online directory at the website "www.yellowpages.co.za" since 2001.

The Complainant is the owner of a variety of South African registered trademarks for word marks consisting of or incorporating the mark YELLOW PAGES including, for example, mark no. 1986/04489 for the mark YELLOW PAGES in international class 35 in respect of telephone directory advertising registered on July 24, 1989.

The disputed domain name was created on October 8, 2015. According to a screenshot produced by the Complainant, the disputed domain name points to a website offering directory services and featuring the legend "CLICK, SEARCH, FIND". While the disputed domain name is registered to the Respondent, the Complainant states that the associated directory services website is operated by an entity named SA Pulse Media (Pty) Limited although the Complainant does not specify how it has identified this information.

The Complainant's attorneys sent a cease-and-desist letter by email to SA Pulse Media (Pty) Limited on April 8, 2016 and followed this up on April 25, 2016 with a further email. On April 26, 2016, the Complainant received an email from attorneys acting on behalf of SA Pulse Media (Pty) Limited who intimated that their client was overseas and that they would respond after May 5, 2016. No such response was received and the Complainant issued a further follow up letter on December 8, 2016 but no response was received to that letter.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant claims both registered and unregistered rights in the YELLOW PAGES mark. The Complainant notes that the disputed domain name wholly incorporates the Complainant's YELLOW PAGES mark and argues that this is sufficient to establish identity or confusing similarity between the disputed domain name and such mark. The Complainant adds that neither the remaining elements of the disputed domain name, namely the word "live", nor the generic Top-Level Domain ("gTLD") ".net" are sufficient to distinguish the disputed domain name from the Complainant's YELLOW PAGES mark.

The Complainant notes that the disputed domain name is being used in relation to the exact services in respect of which the Complainant has registered and is using its YELLOW PAGES trademark. The Complainant asserts that it has not authorized either the Respondent or SA Pulse Media (Pty) Limited to register or use any domain name incorporating its trademark and submits that there is no relationship or association between it and those persons or entities. The Complainant submits that the use of the disputed domain name by the Respondent amounts to an unauthorized use of an identical mark in relation to identical services that will likely lead to deception and/or confusion.

The Complainant contends that the Respondent was undoubtedly aware of the Complainant's rights in the YELLOW PAGES mark when the disputed domain name was registered because the disputed domain name wholly incorporates such mark and the Complainant, Respondent and SA Pulse Media (Pty) Limited are South African companies rendering identical services in the same geographical area. The Complainant focuses on the use of a black and yellow color scheme on the website associated with the disputed domain name which it notes matches the color scheme on its directories, together with the use of the legend "CLICK, SEARCH, FIND" which the Complainant notes is similar to a legend used by its licensee, namely "CLICK, FLICK, DIAL, FIND".

The Complainant concludes its submissions by noting that the registration and use of a domain name which is so obviously connected with a well-known product by someone with no connection with the product suggests opportunistic bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

(ii) the 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

In terms of the first element of the Policy, the Complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to such mark. The Complainant points inter alia to its YELLOW PAGES registered trademark described in the factual background section above. The Panel finds that the Complainant has rights in such mark for the purposes of the Policy. Turning to a comparison of the mark with the disputed domain name, the Panel notes that the Complainant's YELLOW PAGES mark is reproduced in the second level of the disputed domain name in its entirety, coupled with the word "live". It is well established in previous decisions under the Policy that the addition of a generic word to a trademark in a domain name does not prevent a finding of confusing similarity between such trademark and domain name. It is similarly well established that a gTLD suffix, such as ".net" in the disputed domain name, may be disregarded for the purposes of the comparison on the grounds that this is wholly generic and solely required for technical reasons.

In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in each disputed domain name:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence of such rights or legitimate interests (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).

In the present case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, on the basis of its submissions that the Respondent is using the disputed domain name in relation to the exact services in respect of which the Complainant has registered and is using its YELLOW PAGES mark, that the Complainant has not authorized the Respondent or any other person to register or use the disputed domain name and that the Complainant has no association with the Respondent or such other person.

Once the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent as outlined above. The Respondent has not filed a Response in this matter, nor has it contacted the Center informally to outline any potential case. In the absence of such Response or alternative contact, the Panel has been unable to identify any potential rights or legitimate interests which the Respondent might have put forward had it engaged with the administrative proceeding.

In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant's prima facie case regarding rights and legitimate interests and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

In its submissions, the Complainant emphasizes the similarity between the activities and appearance of the website associated with the disputed domain name and the manner in which the Complainant's YELLOW PAGES mark is typically used, notably the provision of a directory with a similar color scheme and use of a similar legend to that deployed by the Complainant itself in association with its mark. Given the reproduction of the YELLOW PAGES mark within the disputed domain name together with these similarities and the fact that the Complainant's mark is likely to be well-known in South Africa, bearing in mind its longstanding use as a directory website coupled with the wide distribution of YELLOW PAGES branded telephone directories in that country, the Panel has a strong impression that the Respondent is likely to have been aware of the Complainant's mark and more probably than not has been using the disputed domain name for commercial gain to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as contemplated by paragraph 4(b)(iv) of the Policy.

The Panel's strong impression of the Respondent's bad faith gained from the evidence on the record in this case is further fortified by the fact that when faced with the Complainant's allegations, both the Respondent and those said by the Complainant to be operating the associated website have chosen to remain silent beyond, in the latter case, a mere holding email. In the absence of any suitable submissions or evidence from the Respondent, the Panel cannot conceive of any potential good faith motivation for the registration of the disputed domain name or for the manner in which it is currently being used. In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <yellowpageslive.net> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: May 8, 2017