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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Seat Pagine Gialle S.p.A v. Unifund Corporation

Case No. D2007-0960

1. The Parties

The Complainant is Seat Pagine Gialle S.p.A., Milano, Italy, represented by Studio Barbero, Italy.

The Respondent is Unifund Corporation, Beverly Hills, California, United States of America, represented by Traverse Legal, PLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <paginegialletv.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2007. On July 3, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 3, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a further communication from the Center, the Registrar confirmed inter alia that the disputed domain name, which was otherwise due to expire on August 31, 2007, would remain on registrar ‘lock’ for the duration of these proceedings, and that the language of the registration agreement is English. The Center then verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2007. The Response was filed with the Center July 27, 2007.

The Center appointed James A. Barker, Tony Willoughby and Franзois Dessemontet as panelists in this matter on October 9, 2007. 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 following facts appear to be uncontested.

The Complainant is the owner of a number of registered trademarks that incorporate the words “pagine gialle” (in English, “yellow pages”). These include an Italian mark registered in 1966, as well as other Italian marks, and marks registered in the European Union and an International Registration.

The Complainant’s business is in the field of providing telephone directories. The Complainant conducts significant advertising relating to its mark in (at least) Italy. The Complainant provided as an example, copies of the ‘Pagine Gialle’ of Turin, between 2000 and 2007. The Complainant also provides such directories in CD-ROM format.

The Complainant maintains a website at “www.paginegialle.it”. The Complainant has registered at least 80 other domain names that contain the words “pagine gialle”.

The disputed domain name was first registered on August 31, 2005 (as indicated in the ‘creation date’ in the Whois record).

At the date of this decision, the disputed domain name reverts to a directory or ‘portal’ website, with links almost exclusively in Italian to various products and services including for example ‘Abbigliamento’, ‘Arrendamento’, ‘Carta e stampa’, ‘Elettronica et elettrotechnica’, and ‘Meccanica’. That website features the heading “PagineGialleTV.com™ (Beta)”. To the left of that heading a ‘walking fingers’ symbol is pictured. Immediately below that heading is a banner featuring links to e.g. ‘Classifieds’ and ‘YellowPagesTV Global’. That banner also features, in its center, a search facility.

The Complainant sent a cease and desist letter to the Respondent dated September 11, 2006, and a reminders on September 27, 2006 and November 2, 2006. The Respondent did not reply to those letters.

5. Parties’ Contentions

A. Complainant

The Complainant makes the assertions set out in paragraph 4 of the Policy. These are summarized as follows.

The Complainant asserts that the disputed domain name is confusingly similar to its PAGINE GIALLE trademark. The Complainant notes in this respect that its trademark is wholly incorporated in the disputed domain name. It also refers to past proceedings under the Policy involving YELLOW PAGES trademarks, in which it was found that the domain names then in dispute were identical or confusingly similar to those trademarks. In particular, the Complainant refers to Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, Yell Limited v. Bob Grover, WIPO Case No. D2003-0968, BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413; Telstra Corporation Limited v. India Yellow Pages, WIPO Case No. D2002-0651.

The Complainant points out that ‘yellow pages’ (and its equivalent in other languages) is a “well-known designation for a commercial registry” in a number of countries and that the combined words are not descriptive. In this respect, the Complainant refers to the findings in DeTeMedien Deutsche Telekom Medien GmbH v. Gelbeseiten GmbH, WIPO Case No. D2006-0358.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trademarks are distinctive and well-known, therefore it can be inferred that the Respondent has sought to profit from the goodwill in those marks. The Respondent’s website is in Italian and, in the similar circumstances in DeTeMedien Deutsche Telekom Medien GmbH v. Gelbeseiten GmbH, WIPO Case No. D2006-0358 (which related to a US-based respondent registering a similar German variant of a YELLOW PAGES mark), a finding was made against the then respondent. The Complainant also asserts that the Respondent is neither known by the disputed domain name, and did not respond to its cease and desist letters.

The Complainant asserts that the disputed domain name was registered and has been used in bad faith. The Complainant referred to the cases cited above, which made findings against the respondents in which similar domain names were involved. The Complainant asserts that the Respondent was “perfectly aware” of its PAGINE GIALLE trademark on the basis that, among other things, the Respondent has set up a webpage similar to one published by the Complainant and that the Respondent’s website is in Italian. The Respondent’s website links to webpages containing sponsored links, through which the Complainant infers that the Respondent is seeking to earn ‘click through’ commissions.

B. Respondent

The following is a summary of the Response.

As background, the Respondent notes that its business is in the development of video content, including television, over the Internet. The Respondent’s business was developed through a number of companies, with Unifund Corporation (the named Respondent in this case) being formed as an intellectual property holding company. The Respondent’s principal is Mr. Nathan Sassover, who has developed, as part of the Respondent’s business, an ‘affiliate model’ for Internet TV which is intended to be ‘location based’. To that end, the Respondent or its associated entities have registered a variety of domain names in connection with its business, including .<applausetv.com> and <futurevisiontv.com>.

The Respondent denies the assertions in the Complaint; summarized as follows.

The Respondent denies that the disputed domain name is confusingly similar to the Complainant’s mark. The Respondent notes that registration of a trademark in Italy is not subject to examination. The Respondent claims that the trademark is not exclusive to the Complainant, is generic and descriptive. The Respondent refers for support to prior proceedings under the Policy, in particular: France Telecom v. Les pages jaunes francophones, WIPO Case No. D2000-0489; France Telecom v. Domain, WIPO Case No. D2000-0490; Yell Limited v. Weborcus Software Systems Pvt. Ltd., WIPO Case No. D2004-0008.

The Respondent states that it has a right and legitimate interest in the disputed domain name. It states that the circumstances described in paragraph 4(c)(i) and (ii) are present. That is, the Respondent claims that it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (which is taken to be evidence of a right or legitimate interest under paragraph 4(c)(i) of the Policy). The Respondent also claims that it is commonly known by the disputed domain name (which is taken to be evidence of a right or legitimate interest under paragraph 4(c)(ii) of the Policy).

For somewhat similar reasons, the Respondent asserts that it did not act in bad faith. The Respondent claims that there is no evidence in this case that the Respondent knew of the Complainant’s trademark or intended to cause confusion by registering the disputed domain name. The Respondent refers to a number of prior panel decisions in which the use of a generic term in a domain name prevented a finding of bad faith. The Respondent refers to two prior cases involving YELLOW PAGES marks which found in favour of the then complainants. The Respondent claims that the panels’ decisions in those cases contained factual errors and were based on speculation with no evidentiary support.

The Respondent claims that the Policy is not an appropriate forum for the resolution of this dispute, and requests a finding of reverse domain name hijacking against the Complainant.

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

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

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

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

The Complainant must prove each of these three elements, which are discussed in turn below immediately after consideration of the supplemental filings.

A. Supplemental Filings

In this case, both the Complainant and the Respondent made supplemental submissions in connection with their case, in particular a substantial further submission from the Complainant. Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A Panel has a discretion to admit or invite further filings under the paragraph 10(a), (b) and (d), and paragraph 12 of the Rules. The Panel takes the approach, taken by many previous panels, that such supplementary filings should not be admitted as a general rule. The Panel found that there was sufficient evidence to make a decision on the basis of the Complaint and Response. As such, the Panel did not admit the supplementary filings.

One exception is those attachments to the Response which the Respondent did not provide by the due date, but indicated in its original response would be provided subsequently. As the Respondent provided this further material shortly after the due date, it was not substantial in volume, and it was incidental to matters already flagged in the Response, the Panel has exercised its discretion to admit it.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates that mark entirely. The only difference is the addition of the generic abbreviation “tv”, which does not serve to distinguish the domain name in the trademark sense.

The Respondent contests this on a number of grounds. The Panel considered these arguments carefully but, in the circumstances of this case, did not accept them for the following reasons.

Firstly, the Respondent contends that the Complainant does not have exclusive rights to the terms “pagine gialle”. The Respondent’s argument is that those terms could not cause confusion because they could not be distinctively or exclusively associated with the Complainant. In other words, the Respondent claims to be an honest concurrent user of the terms. However, paragraph 4(a)(i) of the Policy does not require that the Complainant demonstrates that it has exclusive rights, as against all the world. It is enough for a Complainant to demonstrate that it ‘has rights’ in a mark. The Complainant has done this by providing evidence of its registered rights.

Secondly, the Respondent notes that the Complainant’s Italian-registered marks were not subject to detailed examination. However, this does not matter. Under paragraph 4(a)(i) of the Policy, it is enough that the disputed domain name is confusingly similar to the mark in which the Complainant ‘has rights’. The Complainant clearly ‘has rights’ in a registered mark, both in Italy and the EU (in which a Community trademark is, in any case, subject to an examination and opposition procedure). In Italy, the Complainant’s marks were first registered in 1966. The consensus under the Policy is that those marks are entitled to a presumption of validity. (See item 1.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)

Thirdly, the Respondent argues that the terms “pagine gialle” are “purely descriptive” of directory listings. The Panel did not, on balance, accept this. From a purely logical perspective, there does not seem to be any descriptive or generic relationship between the words “pagine gialle” and a directory service. The combination seems, in that connection, to be entirely invented. If it has a well-known association with a directory service in various jurisdictions, this appears more a feature of the success of the mark than because it is descriptive. The Respondent’s argument also appears to be inconsistent with its own use of the term “PagineGialleTV.com™” and the associated ‘walking fingers’ symbol on its website. This use suggests that the Respondent intended to display the term as a trademark, rather than use it as a mere generic description.

Fourthly, a more difficult issue the Respondent raises is whether the Complainant’s mark has been ‘genericised’ by widespread use. In other words, the Respondent argues that the term “pagine gialle” (and its equivalent in other languages) has been widely used as a descriptive reference to a directory service, and so has lost its distinctiveness for trademark purposes.

The Panel did not, however, find enough evidence to displace the presumption, established by the Complainant’s argument and the logical appearance of its mark, that its PAGINE GIALLE mark is distinctive and well-known as such.

One reason was that the Respondent did not support its own arguments that the mark is descriptive with persuasive evidence. The evidence the Respondent provides is that, for example, it conducted a Google search for “yellow pages” on the European Association of Directory Publishers website, resulting in 1,610 returns. However, it is obvious that widespread use (or, more accurately, incidences which show up on a Google search) does not, by itself, render a trademark generic. Otherwise this might lead to the absurd result that the more a trademark owner invested in and promoted his mark, the less protection that mark would receive. Further, it is not possible to distinguish, from merely a number of results in a Google search, whether any particular use of a term is descriptive or whether that use is as a trademark. Although the Respondent claimed that these uses were descriptive uses, the Respondent provided no direct evidence of this. The bulk of the Respondent’s evidence is, less relevantly, a large number of printouts of its own websites at “WorldNetCast.com”.

Another reason is that the Complainant may rely on the distinctiveness of its mark in Italy. Evidence of the use of the terms “yellow pages” in English, or other languages, does nothing to demonstrate that the mark PAGINE GIALLE is used as a descriptive term in Italy, where the Complainant principally does business.

Yet another reason is that the Panel considers that there would need to be strong evidence for a finding that a mark, which appears distinctive and long-established, has been diluted by widespread descriptive use. Such an approach might allow flagrant or assiduous trademark infringers to otherwise benefit from their own conduct – even conduct that is deliberately designed to ‘genericise’ a mark. In this connection, the Respondent’s registration of a number of ‘yellow pages’ domain names and references on its own website do not, by themselves, demonstrate that the terms are descriptive.

The Respondent also refers to three prior panel decisions involving ‘yellow pages’ trademarks, in which findings were made in favour of the then respondents. Two of those cases involved the French equivalent ‘pages jaunes’ (France Telecom v. Les pages jaunes francophones), WIPO Case No. D2000-0489; France Telecom v. Domain, WIPO Case No. D2000-0490; one involved (primarily) the Spanish equivalent ‘seccion amarilla’ (Yell Limited v. Weborcus Software Systems Pvt. Ltd., WIPO Case No. D2004-0008). But, while these cases made a finding for the then respondents on the bad faith ground, they made findings against the then respondents in relation to paragraph 4(a)(i) of the Policy. The Panel also notes that there seem to be a larger number of cases involving YELLOW PAGES marks (five were referred to by the Complainant – set out above) which made findings against the respondent on all grounds under paragraph 4 of the Policy.

In making all of these observations in relation to the third and fourth arguments above, the Panel notes that it has been open to other panels to make different findings on the extent to which a YELLOW PAGES mark is descriptive. To an extent, this may reflect the particular evidence provided in other proceedings compared this one, and the particular jurisdictions involved. It may also reflect that this issue is difficult, and it is reasonably open for a panel to take a different view in different circumstances. It may also reflect that the facts in this case are, to an extent, different than those in some of the prior cases in which findings were made for respondents. For example, in this case the Complainant has a Community trademark, registered in 2002, which was subject to a process of examination. This suggests that a determination has been made that the Complainant’s mark has been found elsewhere to be sufficiently distinctive for trademark purposes.

Accordingly, in all the circumstances of this case, and having regard to what appears to be the larger consensus of panels that has developed over time (cited above), this Panel takes the view that the Complainant’s mark is not relevantly descriptive.

The Panel finds that the Complainant has established the first element of the Policy.

C. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(a)(ii) of the Policy provides that a Respondent may demonstrate a right or legitimate interest by providing evidence:

- of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; or

- that the Respondent is commonly known by the disputed domain name.

In connection with the first type of evidence, many of the Respondent’s arguments are similar to those set out above. In particular, the Respondent argues that it has a legitimate business delivering TV over the Internet, and chose the disputed domain name because of its descriptive meaning. The Respondent therefore suggests that its use of the domain name is bona fide.

The Respondent provided evidence of operating a legitimate business concerned with Internet TV. However, as noted above, the Panel has found that there is not sufficient evidence for a finding that the Complainant’s mark is relevantly descriptive. Taking into account the Panel’s findings below in relation to bad faith, it follows that the Respondent cannot demonstrate a right or legitimate interest in respect of the disputed domain name on this basis.

In connection with the second type of evidence, the Respondent did not provide persuasive evidence that it is commonly known by the disputed domain name. The Respondent is named ‘Unifund Corporation’. It states that its principal is named Mr. Nathan Sassover. Much of the Respondent’s evidence is that it does business under the name ‘Worldnetcast’ and ‘WorldNetCast.com’.

There is no other evidence that the Respondent has a right or legitimate interest in respect of the disputed domain name. In particular, as noted above, the Respondent’s website refers to “YellowPages.TV.com™” and includes the ‘walking fingers’ design alongside that term. In other words, the Respondent appears to suggest, by the appearance of the ‘walking fingers’ design and the trademark symbol, that the Respondent itself has a registered mark. However, the Respondent provided no evidence or argument that it does, in fact, have such a registered mark. The Respondent’s use of the ‘walking fingers’ design and trademark symbol in this way also appear to contradict its statements that it uses ‘paginegialletv’ as a purely descriptive term. That is, the impression from the Respondent’s website is that it is itself purporting to use the term as a trademark, rather than to merely describe its services.

The Panel also notes that the Response does not clearly give an explanation for the content of the website to which the disputed domain name reverts. That website appears as a simple directory or ‘portal’ website, with a search facility. It is not clear how that website is consistent with the nature of what the Respondent says is its main business – the delivery of TV over the Internet.

The Panel finds that the Complainant has established the second element of the Policy.

D. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

It is important for a finding of bad faith that the Respondent knew of the Complainant’s trademark. The circumstances of this case support, on balance, an inference that the Respondent had such knowledge.

The Respondent’s “www.pagainegialletv.com” website is almost exclusively in Italian. It is also clear from the Respondent’s own evidence that the Respondent is a sophisticated user of the Internet, and purports to operate in the same field of business (directory services) as the Complainant, and targets Internet users in jurisdictions other than the United States of America, including Italy. From these facts, there is a reasonable inference that the Respondent knew generally of the Complainant’s mark when it registered the disputed domain name and subsequently used the disputed domain name.

This finding is not necessarily inconsistent with the Respondent’s own evidence. In particular, the Respondent provides an affidavit of its principal, Mr. Nathan Sassover, which states that (among other things), Mr. Sassover did not believe that the Complainant has a valid trademark. But it is not necessary for a Respondent to have knowledge of the validity of the Complainant’s trademark for a finding of bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

E. Reverse domain name hijacking

The Policy defines ‘reverse domain name hijacking’ as ‘using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name’. It follows from the Panel’s findings above, in relation to each of the three grounds in paragraph 4 of the Policy, that the Panel makes no such finding in response to the Respondent’s request for it.

The Respondent has also claimed that the Policy is not appropriately applied to this dispute. However, the Panel notes that, once the Complainant makes the assertions set out in paragraph 4 of the Policy (and otherwise complies with the Rules and Supplemental Rules), it is mandatory for the Respondent to submit to this administrative proceeding. The findings of the Panel in this case do not, however, prejudice the right of either party to take court proceedings.

7. Decision

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 <paginegialletv.com> be transferred to the Complainant.