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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. The Directors/ Blogger Pty Ltd

Case No. DAU2008-0005

1. The Parties

The Complainant is Telstra Corporation Limited, of Melbourne, Victoria, Australia, represented by Piper Alderman, Australia.

The Respondent is The Directors/ Blogger Pty Ltd, of Chatswood, New South Wales, Australia.

2. The Domain Names and Registrar

The disputed domain names <whitepagesaustralia.com.au> and <yellowpagesaustralia.com.au> are registered with IntaServe.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2008 naming Blogger Pty Ltd as Respondent. On February 14, 2008, the Center transmitted by email to IntaServe a request for registrar verification in connection with the domain names at issue. On February 22, 2008, after several reminders from the Center and the intervention of auDA, IntaServe transmitted by email to the Center its verification response stating that the registrant is “The Directors, Blogger Pty Ltd” and providing the contact details. In response to an invitation by the Center to amend the Complaint so as to include both “The Directors” and “Blogger Pty Ltd” as Respondents [sic], the Complainant filed an amendment to the Complaint on February 25, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .AU Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .AU Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .AU Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2008. The Response was filed with the Center on March 10, 2008. On March 13, 2007, the Complainant submitted an unsolicited supplemental submission.

The Center appointed Alan L. Limbury as the sole panelist in this matter on March 25, 2008. 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 the registered proprietor of numerous Australian trade marks for YELLOW PAGES, such as No. 545667, registered from November 12, 1990, “Yellow Pages Walking Fingers” device, No. 304264, registered from February 3, 1977 and WHITE PAGES, such as No. 577527, registered from April 30, 1992. It and its subsidiary and licensee, Sensis Pty Ltd have for many years published telephone directories throughout Australia under those marks.

5. Parties’ Contentions

A. Complainant

The Complainant says the terms “Yellow Pages”, “Yellow” and “White Pages” have acquired secondary meaning in Australia as an indicator of origin for its goods and services. It says the disputed domain names are confusingly similar to its marks and that the Respondent has no rights or legitimate interests in respect of the domain names, which were registered or subsequently used in bad faith.

As to legitimacy, the Complainant says the Respondent is not making a legitimate non-commercial or fair use of the domain names. Prior to January 15, 2008, the Respondent hosted a website at each domain name entitled “Yellow Pages Australia” and “White Pages Australia” respectively, displaying portal links to mostly Australian websites. Following a cease and desist letter from the Complainant’s solicitors, which sought certain undertakings, the website were taken down on or about January 15, 2008 and the domain names are not presently in use.

As to bad faith, the Complainant says the Respondent registered the domain names knowing it has no connection with them and was well aware of the Complainant’s rights. The websites operating until January 15, 2008 used the Complainant’s trade marks and recounted the history of the Complainant’s directories. The “Yellow Pages Australia” website home page displayed the Complainant’s “Yellow Pages Walking Fingers” device mark. A disclaimer appeared on that website but not on the “White Pages Australia” website. The Complainant says the disclaimer is ambiguous and positioned at the end of the page amid other text and therefore difficult to read.

The Complainant says the domain names were registered in order to prevent the Complainant from doing so. No plausible explanation exists as to why the Respondent chose “Yellow Pages” or “White Pages” as part of its domain names other than to trade on the goodwill built up by the Complainant. The domain names were used intentionally to attempt to attract, for commercial gain, internet users to the websites by creating confusion as to the source, sponsorship, affiliation or endorsement of the websites by means of initial confusion.

B. Respondent

The Respondent does not dispute that the domain names are confusingly similar to the Complainant’s trade marks.

As to rights or legitimate interests, it says the websites provided information on the company and that, under auDA regulations, this constitutes a close and substantial connection with the domain names.

As to bad faith, the Respondent points to the disclaimer: “This site is not the official Yellow Pages site, nor is it endorsed by Sensis. We are simply providing information on the service”. The Respondent says the websites bore no resemblance to the Complainant’s websites at <whitepages.com.au> and <yellowpages.com.au>, so no innocent Internet user arriving at the websites could possibly be misled or confused as to the source, sponsorship affiliation or endorsement of the websites.

On many occasions the Respondent offered to transfer the domain names to the Complainant for $A100 per website, so its true purpose was not to prevent the Complainant from registering them itself. In fact, agreement was reached to transfer the domain names for $A200, which would not even cover the cost of creating the websites, registering the domain names and transferring them. The agreement broke down over whether a Deed of Undertaking was part of the agreement. The Respondent has since agreed to transfer the domain names to the Complainant for no compensation whatever but the Complainant has nevertheless decided to plough ahead. The Respondent denies the websites were created in bad faith. They were created as informational websites purely providing useful data on the related domains. The Complainant has failed to demonstrate how any sort of ill-gotten commercial gain could be made from these websites and destroyed its own argument that the domains were registered in order to prevent the Complainant from doing so.

6. Discussion and Findings

As to the Complainant’s unsolicited supplementary submission, Rule 12 provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, as under the UDRP, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. Here the Panel is not prepared to admit the Complainant’s unsolicited supplementary submission.

Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires the Complainant to prove:

(i) the domain names are identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names (Note 2); and

(iii) the domain names have been registered or subsequently used in bad faith.

Note 1

For the purposes of this policy, auDA has determined that a “name […] in which the complainant has rights” refers to:

(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or

(b) the complainant’s personal name.

Note 2

For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

A. Identical or Confusingly Similar

There is no dispute that the domain names are confusingly similar to the Complainant’s WHITE PAGES and YELLOW PAGES marks and the Panel so finds.

The Complainant has established this element.

B. Rights or Legitimate Interests

The Complainant’s marks are distinctive and well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.

The Respondent’s sole contention amounts to a claim to have satisfied the eligibility criteria for registration through a close and substantial connection with the domain names. Even if this were so, Note 2, set out above, precludes reliance on eligibility to establish legitimacy. There is no other basis, on the material before the Panel, on which any finding of legitimacy could be made.

The Panel therefore finds the Respondent has no rights or legitimate interests in respect of the domain names. The Complainant has established this element.

C. Registered or Used in Bad Faith

The Respondent could not possibly have been unaware of the Complainant and its marks when registering the domain names. The information displayed on the websites to which the domain names led prior to January 15, 2008 was predominantly about the Complainant.

Those websites contained links of the kind from which click-through revenue is commonly generated. The domain names themselves would be likely to confuse Internet users into thinking that they were the Complainant’s domain names, before ever the Internet user arrived at the websites. The presentation of the websites would only serve to enhance that false impression. The disclaimer on one of the websites does nothing to alleviate the initial interest confusion generated by the domain names themselves.

Accordingly the Panel finds that the domain names have been used in bad faith intentionally to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of those websites.

The Complainant has established this element.

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 names <whitepagesaustralia.com.au> and <yellowpagesaustralia.com.au> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist

Date: April 8, 2008