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SATURDAY, 21 JUNE 2008
WIPO: Yell Limited v. Yell.travel
The WIPO arbitration panel has ruled that the domain name "Yell.travel" had been used and registered in bad faith and ordered that the domain be transferred to its legitimate owner, Yell Limited.
The Complainant in the proceedings, Yell Limited, operates an international directories business in the classified advertising market through printed, online and phone media in the UK and the U.S. and in the UK operates an online directory via its website “www.yell.com”. The Complainant further owns UK and Community Trade Mark registrations for the for the word “YELL”, which have been registered since 1997 and 2000 respectively. The Respondent, Yell.travel, based in Vitry Sur Seine, France obtained registration of the disputed domain name "Yell.travel" by way of transfer from Mr. Rob Stein in April 2008.
John Swinson, acting as sole panelist, found that the disputed domain name was confusingly similar to the Complainant’s trade mark as required by paragraph 4(a)(i) of the Policy. He further found that the Complainant made out an initial prima facie case that the Respondent lacks rights or interests in the disputed domain name. The disputed domain name currently redirects users to a website “www.yellowpages.fr”, which provides online business directory services that are similar to those provided by the Complainant, however the website has no apparent connection with the Complainant. On the point of "bad faith" the sole Panelist ruled that
"... [registration of the domain] in bad faith must occur at the time the current registrant took possession of the domain name (see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). The Respondent is not the original registrant of the disputed domain name."The Panelist then referred to previous decisions of the WIPO body, where it been established that
"... the acquisition of a domain name from a previous registrant constitutes registration within the meaning of the Policy (see for example MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270; Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639, Laure Pester (Lorie) and Sony Music Entertainment France SA v. Movie Name, WIPO Case No. D2003-0312; see also paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). For the purposes of this decision, the date of registration is considered to be the date the disputed domain name was transferred to the Respondent."In its decision the Panelist further stressed that it was not limited to the application of the circumstances of paragraph 4(b) of the Policy, which sets out a non-exclusive list of factors evidencing bad faith and as such, paragraph 4(b) allowed for the development of further factors. Based on the overall facts of the case - i.e. the original yell.travel website had included the statement “For over 100 years businesses and consumers alike have known and trusted the YellowPages for providing quality business directories. Now, we offer comparison travel services backed by a name you can trust" - the sole Panelist come to the conclusion that
"... the disputed domain name was being used to attract, for commercial gain, Internet users to a website that the Respondent had an interest in by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website."Looking at the purpose of the Policy it was held that it was the
"...overriding objective of the Policy ... to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademarks of another. ... The evidence ... supports the conclusion that the Respondent sought to profit from, or exploit the trademarks of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy."For all the above reasons and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist ordered that the domain name "yell.travel" had to be transferred to the Complainant. Finally, the Panelist stressed that he had not assessed whether the Complainant would satisfy the eligibility required for registering and using a .travel TLD. as this was a decision the .travel Registry Operator had to take.
Case reference: Yell Limited v. Yell.travel, Case No. D2008-0586 of 12 June 2008
Class 46: the Uniform Domain Name Dispute Resolution Policy can be found here.
Posted by: Birgit Clark @ 22.18
Domain names, WIPO Arbitration and Mediation Center,
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