Southwestern Bell Yellow Pages, Inc. v. (This Domain is For Sale) Joshuathan Investments, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Southwestern Bell Yellow Pages, Inc. v. (This Domain is For Sale) Joshuathan

Investments, Inc.

Case No. D2002-0850

1. The Parties

The Complainant in this administrative proceeding is Southwestern Bell Yellow Pages, Inc.,

a Missouri, U.S.A. corporation with its principal place of business in St. Louis,

Missouri, United States of America. The Complainant is represented in this proceeding

by Rita M. Irani, Esq., of Haynes and Boone, LLP, Houston, Texas,

United States of America.

The Respondent is "(This Domain is For Sale) Joshuathan Investments, Inc."

of Belize City, Belize.

2. The Domain Name and Registrar

The domain name at issue is <wwwsmartpages.com> (the "Domain Name").

The Registrar is BulkRegister.ocm of Baltimore, Maryland, United States of America.

3. Procedural History

The Complainant filed a Complaint by e-mail with the World Intellectual Property

Organization Arbitration and Mediation Center (the "Center") on September 10, 2002.

On September 12, 2002, the Center received a hard copy of the Complaint,

with supporting evidence.

On September 12, 2002, a Request for Registrar Verification was transmitted

to the Registrar, which confirmed, on the following day, that it had received

a copy of the Complaint, that the Domain Name was registered with it, and that

the Respondent was the current registrant of the Domain Name. The Registrar

transmitted to the Center the full whois details related to the Domain Name

and confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy (the

"Policy") applies to the Domain Name.

On September 16, 2002, the Center determined that the Complaint satisfied

the formal requirements of 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").

On the same day, the Center notified the Respondent of the commencement of this

proceeding and set October 6, 2002, as the date for the submission

of a Response.

The Center did not receive a Response. On October 8, 2002, the Center

sent to the Parties, by email, a Notification of Respondent Default.

The Complainant elected to have the Complaint resolved by a sole Panelist.

On October 21, 2002, the Center invited the undersigned to act as

Sole Panelist. On October 22, 2002, the undersigned provided a Statement

of Acceptance and Declaration of Impartiality and Independence. On October 24, 2002,

the Center appointed the undersigned, notified the Parties by email of this

appointment and set November 7, 2002, as the Projected Decision Date.

The Panel finds that it was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules. It has also independently determined

and agrees with the assessment of the Center that the Complaint meets the formal

requirements of the Policy, the Rules and the Supplemental Rules.

The language of this administrative proceeding is English, being the language

of the registration agreement.

4. Factual Background

The Complainant operates an online "yellow pages" site as "www.smartpages.com".

The Complainant is also the owner of record of several United States trademark

registrations for SMARTPAGES. Copies from the United States Patent and Trademark

Office’s TARR Database for United States Registration Nos. 2,369,994 ("SMARTPAGES"),

2,274,476 ("SMARTPAGES"), 2,340,138 ("SMARTPAGES"), 2,366,019

("SMARTPAGES" and Design), 2,351,579 ("SMARTPAGES" and Design),

and 2,316,632 ("SMARTPAGES" and Design) are part of the record. The

above US trademark registrations were obtained between August 1999 and July

2000. However, the record indicates that such mark were first used in either

May or June of 1998.

Complainant built up the goodwill in the SMARTPAGES marks by investing a substantial

amount of time, money, and effort into the promotion, advertising, and development

of the goods and services bearing the SMARTPAGES marks

The Domain Name was registered by the Respondent on April 18, 1999.

On September 6, 2002, Complainant conducted a domain check of the website at

"www.wwwsmartpages.com" to determine if the website had become active.

Complainant learned that the Domain Name had become an active link to a search

engine website. The site operator at this website posted a notice that the Domain

Name was for sale and, in connection with this offer for sale, this site posted

an e-mail address for potential buyers to present their offer for the domain

name. The e-mail address that was listed on that website was identical to the

e-mail address listed in the Registrar’s WHOIS administrative details.

Also on September 6, 2002, Complainant’s counsel sent an e-mail to the Respondent

at the e-mail address listed on the website and in the WHOIS database. On the

same day, Respondent called Complainant’s counsel. Respondent informed counsel

that he would transfer the domain name to Complainant for US$4,100.00 and apparently

claimed he had received such amount for the transfer of another domain name

in the past.

Respondent also apparently stated that it knew Complainant would prevail in

an ICANN proceeding, but Respondent would not voluntarily transfer the domain

name for less than $4,100.00.

A check by the Sole Panelist conducted on October 24, 2002[1],

confirmed that the URL "www.wwwsmartpages.com" redirects the Internet

user to a site called "www.top10sites.com", which prominently features

a link labeled as follows: "This Domain Name is for SALE. Click Here for

more Info." A pop-up window offering sex "free sex movies" simultaneously

opens.

5. Parties' Contentions

A. Complainant

The Complainant relies on the following arguments to ask that the Domain Name

be transferred to it.

The Complainant acquired rights through use and registration of SMARTPAGES

marks in the United States Patent & Trademark Office.

The domain name is virtually identical and confusingly similar to the Complainant

SMARTPAGES marks.

The Respondent has no rights or legitimate interests in the Domain Name. The

Respondent is neither a licensee of the Complainant, nor otherwise authorized

by the Complainant to use any of the Complaint’s SMARTPAGES marks. The Respondent

is not known (either as an individual, business, or other organization) by the

name "smartpages" or "wwwsmartpages." The Respondent has

no trademark or other intellectual property rights in the SMARTPAGES marks.

Moreover, the Respondent does not possess any other intellectual property rights

in any term that includes or incorporates the Complainant’s SMARTPAGES marks.

The Respondent’s only interest in the Domain Name is to reap commercial gain

from misleading consumers and attempting to sell the Domain Name.

The Respondent has registered and is using the domain name in bad faith. The

Respondent registered, used and continues to use the Domain Name clearly intending

to misdirect Internet users to other sites and offering to sell the Domain Name.

At the time it registered the Domain Name, the Respondent knew that the SMARTPAGES

marks were well-known by Internet users and that the Respondent would benefit

greatly by incorporating SMARTPAGES into its domain name because the Respondent

would take advantage of the tremendous goodwill and name recognition associated

with and represented by the SMARTPAGES marks. The Respondent cannot be allowed

to trade on the fame of the Complainant’s marks and goodwill, without having

to pay the price that the Complainant paid for that goodwill.

The Respondent intended at all times to divert Internet consumers away from

the Complainant’s online location at "www.smartpages.com" to a search

engine website owned, operated, or controlled by the Respondent. Moreover, the

Respondent’s actions of diverting Internet consumers to its search engine website

harms the goodwill represented by the Complainant’s SMARTPAGES marks by creating

a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement

of the Respondent’s site. It is also the cause of what some US courts have referred

to as initial interest confusion (See Brookfield Communications, Inc. v.

West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)).

The Respondent never used the domain name complained of for any bona fide,

non-commercial use. Rather, the Respondent’s conduct displays that the Respondent

acted at all times with an intent to (1) profit by coercing the Complainant

into paying a ransom for the domain name or by selling the domain name to one

of the Complainant’s competitors for a sum of money that was significantly more

than the out-of-pocket costs he incurred in registering the domain name, (2)

hold the Domain Name to prevent the Complainant’s legitimate use of the domain

name, as owner of the famous BELL marks, or (3) trade on the goodwill and name

recognition of the SMARTPAGES marks to attract Internet users to his redirected

search engine site.

The Respondent’s offer to sell the Domain Name to the Complainant in exchange

for $4,100.00 confirms that the Respondent clearly understood the value of the

SMARTPAGES marks. Attempts such as these, to trade on the goodwill of another’s

marks, clearly evidences a registrant’s bad faith.

The Complainant requests the Administrative Panel appointed in this proceeding

to issue a decision that the Domain Name be transferred to the Complainant.

B. Respondent

The Respondent has not submitted a Response nor any other comments.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this

proceeding and obtain the transfer of the Domain Name, the Complainant must

prove that each of the three following elements are satisfied:

1. The Domain Name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the Domain

Name (see below, section 6.2); and

3. The Domain Name has been registered and is being used in bad faith (see

below, section 6.3).

Paragraph 4(a) in fine of the Policy clearly states that the burden

of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint

on the basis of the statements and documents submitted and in accordance with

the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the

absence of exceptional circumstances, does not comply with any provision of,

or requirement under, the Rules or any request from the Panel, the Panel shall

draw such inferences therefrom, as it considers appropriate.

6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which

Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a

trademark or service mark; and (2) is the Domain Name identical or confusingly

similar to such trademark or service mark.

On the first point, the record shows that Complainant has rights in the trademark

SMARTPAGES, starting with its use in 1998, a year prior to the registration

of the Domain Name by the Respondent. Five USPTO registrations (for the word

SMARTPAGES and various designs incorporating such word) subsequently issued.

As to the second question, the Panel finds that the Domain Name is confusingly

similar to the Complainant’s trademarks. When a domain name wholly incorporates

a complainant’s mark, that is usually sufficient to establish confusing similarity

for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v.

ASD, Inc., WIPO Case No. D2001-0903

(November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and

Garwood S. Wilson, Sr., WIPO Case No.

D2000-1525 (January 29, 2001); Eauto, L.L.C. v. Triple S. Auto

Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO

Case No. D2000-0047 (March 24, 2000); Volvo Trademark Holding

AB v. Lost in Space, SA, WIPO Case No. D2002-0445

(August 1, 2002); Six Continents Hotels, Inc. v. Damir Kruzicevic,

WIPO Case No. D2002-0674 (September 10, 2002)).

Here, the Domain Name is the mark with the addition of "www."

The addition of "www," which most users will, in this Panel’s opinion,

associate with the three letters usually followed by a dot at the beginning

of a domain name, does not reduce or limit the likelihood of confusion. In fact,

the letters "www" may have the effect of focusing attention on the

word succeeding them. In the case of Reuters Limited v. Global 2000, Inc.,

WIPO Case No. D2000-0441 (July 13, 2000),

the Panel stated that "www" was the well-known acronym for "world

wide web" (normally used to refer to a type of publicly-accessible Internet

server) and thus had no distinguishing capacity in a domain name context and

concluded that the domain name <wwwreuters.com> was confusingly similar

to the REUTERS marks). As the Panel in that case noted: "A casual reader

of the domain name may wrongly think that there is a period between the ‘www’

and the succeeding word, and so wrongly assume that the domain name is in fact

comprised only of the succeeding word."

This practice of adding "www" (without the dot) concatenated to another’s

trademark was also referred to as "typo-piracy" in both the above-mentioned

Reuters case and in World Wrestling Federation Entertainment, Inc.

v. Matthew Bessette WIPO Case No. D2000-0256

(June 7, 2000).

The Panel thus finds that the Complainant has rights in the SMARTPAGES marks,

and that the Domain Name is confusingly similar to such marks.

6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?

The Complainants submits that the Respondent has no rights or legitimate interests

in the Domain Name based on the Complainant’s prior use of the SMARTPAGES marks

and was never authorized to use Respondent’s marks. The Respondent, whom did

not file a Response, did not dispute this contention nor provide information

as to its interests to use the Domain Name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights

or legitimate interests in the Domain Name, among other circumstances, by showing

any of the following elements:

"(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Respondent has not made any bona fide offering of goods or services under

the name SMARTPAGES. There are no elements showing that the Respondent is or

was commonly known by the Domain Name. There is no evidence that the Respondent

is making a legitimate noncommercial or fair use of the Domain Name.

Consequently, the Panel finds that the Respondent has no rights or legitimate

interests in the Domain Name.

6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation,

shall be evidence of the registration and use of a domain name in bad faith,

namely:

(i) circumstances indicating that the Respondent has registered or acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of the Respondent's documented out-of-pocket

costs directly related to the domain name; or

(ii) The Respondent has registered the domain name in order to prevent the

owner of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that Respondent has engaged in a pattern of such conduct;

or

(iii) The Respondent has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to

attract, for commercial gain, Internet users to the Respondent’s web site or

other on-line location, by creating a likelihood of confusion with the complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s

web site or location or of a product.

The Complainant must prove that the Domain Name was both registered and used

in bad faith.

It is not difficult to conclude that the Domain Name was registered in bad

faith. The Complainant’s marks are well known and the Domain Name was registered

a year after the Complainant started using its SMARTPAGES trademarks and then

offered for sale.

Indeed, the Respondent’s use of the Domain Name demonstrates an intentional

attempt to attract, for commercial gain, Internet users to another website and

then mostly with the intention of (a) offering the Domain name for sale for

substantially more than reasonable out-of-pocket costs, and (b) attracting,

for commercial gain, Internet users to the Respondent’s web site by creating

a likelihood of confusion (caused by the "typo-piracy") with the Complainant’s

marks. That in itself constitutes evidence of bad faith registration and

bad faith use under paragraph 4(b)(i) and (iv) of the Policy.

There is some evidence of a pattern[2] as contemplated

under paragraph 4(b)(ii) by the Respondent of registering domain names confusingly

similar with well-known marks "to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name."

In light of the foregoing, however, it is unnecessary to decide whether the

Complainant would win its case on that ground alone.

In light of the above, the Panel finds that the Domain Name was registered

and is being used in bad faith.

7. Decision

On the basis of the elements set out above, the Panel finds that:

1. The domain name <wwwsmartpages.com> is confusingly similar to the

trademarks SMARTPAGES, in which the Complainant has rights;

2. The Respondent does not have any rights or legitimate interests in respect

of the Domain Name;

3. The Domain Name was registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15

of the Rules, the Panel orders that the domain name <wwwsmartpages.com>

be transferred to the Complainant.

Daniel Gervais

Sole Panelist

Dated: October 30, 2002

1. Panel visits of the web site to which

the Domain Name resolves was done in several WIPO cases. See e.g., Lusomundo

B Sociedade Gestora De Parcipaçoes Sociais, S.A. And Lusomundo Audiovisuais,

S.A. v. Inmosoria And Andrés Ceballos Moscoso, WIPO

Case No. D2000-0523 (August 2, 2000); and Corinthians Licenciamentos LTDA

v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises, WIPO

Case No. D2000-0461(July 17, 2000). ACCOR, Société Anonyme à Directoire

et Conseil de surveillance v. Tigertail Partners, WIPO

Case D2002-0625 (August 29, 2002).

2. See WIPO cases Nos. D2000-1631;

D2001-0516; and D2001-0918.

Although the spelling of the Respondent's name was slightly different (no "s"

in "Joshuathan"), the address is the same.