Alert 384 - UK - Re-filed Complaint results in transfer of Yellow Page domain names


In a UDRP decision of 15 March 2011 (Sensis Pty Ltd, Telstra Corporation Limited v Yellow Page Marketing BV, Case No D2011-0057), a WIPO Administrative Panel accepted a re-filed Complaint and ordered transfer of the disputed domain names to the Complainants. 

Background

Telstra Corporation Limited, a leading provider of telecommunications services in Australia, is the owner of a series of YELLOW PAGES registered trade marks, used in connection with both printed and online business directories.  Its wholly owned subsidiary, Sensis Pty Ltd, is the exclusive licensee of the marks. 

Yellow Page Marketing BV, a Dutch company, registered a series of domain names comprising the words 'yellow page' and the name of an Australian city/state e.g. 'yellowpage-sydney.com' (the ‘Domain Names’), which it used to host online business-to-consumer directories.

In May 2010, the Complainants filed a UDRP Complaint against the Domain Names.  This was filed as soon as possible, principally because the Complainants were concerned that the Respondent was using the Domain Names to perpetrate a scam. On 14 July 2010, the Panel held that although the Domain Names were confusingly similar to Telstra’s registered marks, the Respondent had shown sufficient ‘fair use’ to rebut the Complainants’ allegations of a lack of right to or legitimate interest in the Domain Names. 

In January 2011, the Complainants re-filed the Complaint.

Grounds for re-filing

A three-member Panel decided that the Complaint could be re-heard because:

  • new evidence had come to light regarding the Respondent’s conduct since filing of the original Complaint (Grove Broadcasting Co. Ltd v Telesystems Communications Limited, Case No D2000-0703 and Creo Products Inc. v Website in Development, Case No D2000-1490); and
  • the Complainants had not had an opportunity to comment on the original Panel’s own Google and United States Patent and Trademark Office searches from which the Panel concluded that YELLOW PAGES was generic in the United States. Parties should be allowed to comment where such investigations concern “… new or unanticipated factual or legal material … that … could be dispositive and … is reasonably subject to challenge or interpretation”. 

Decision

The Panel agreed with the original Panel regarding confusing similarity, but did not agree that the Respondent was making ‘fair use’ of the Domain Names. This was because new evidence suggested the Respondent was operating, and targeting businesses, in Australia. The original Panel’s observation that YELLOW PAGES was generic in the United States was not relevant to the Respondent’s ‘fair use’ because the Domain Names were Australia-centric and contained listings and advertisements paid for by businesses in Australia. Finally, the Panel found there was ample evidence to establish bad faith registration and use.

Our comment

This decision raises a number of important points in relation to UDRP procedure and the Respondent’s defence of ‘fair use’.

First, it upholds the established principle that there will be a proper basis for re-filing a UDRP complaint if new evidence is discovered that was not known when the original complaint was filed.

Second, it emphasises the importance of procedural fairness in WIPO administrative proceedings in allowing the parties to comment, where appropriate, on investigations conducted by a Panel of its own initiative.

Third, the Respondent’s presence in the country where the trade marks are registered; the nature of the Respondent’s business in that country; and the extent to which the disputed domain names are country-specific are all relevant factors in assessing ‘fair use’.