Caribbean Publishing
Company, Ltd. v. Rummi`s
Claim Number: FA0702000921674
PARTIES
Complainant is Caribbean Publishing Company, Ltd. (“Complainant”), represented by Paul
D. McGrady, Jr., of Greenberg Traurig,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caribbean-yellowpages.com> (the “Domain Name”), registered by Respondent
on January 2, 2002 with Wild West Domains, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(NAF) electronically on February 21, 2007;
NAF received a hard copy of the Complaint on February
22, 2007.
On February 22, 2007, Wild West Domains, Inc. confirmed by e-mail to
NAF that the <caribbean-yellowpages.com> domain name is registered
with Wild West Domains, Inc. and that
Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On February 22, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 14, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@caribbean-yellowpages.com
by e-mail.
NAF confirmed that a timely Response was received and determined to be
complete on March 12, 2007.
On March 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel (to which
Respondent also agreed), the NAF appointed Christopher Gibson as Panelist.
NAF confirmed that the following Additional Submissions were received
from the parties in a timely manner, in
accordance with NAF Supplemental Rule No. 7: Complainant’s Additional
Submission of March 19, 2007, and a letter dated March 22, 2007 from
Respondent.
On March 27, 2007, NAF transmitted a communication from Respondent’s
representative, Andre Brvenik, indicating that he would no longer be acting as
attorney for Respondent.
A second Additional Submission was submitted by Respondent on April 6,
2007, Respondent’s Response to Complainant’s Additional Submissions. This second Additional Submission was
accompanied by a Notice of Appearance indicating that Brandon Kolb was now
acting as legal representative for Respondent.
The second Additional Submission was determined to be deficient by NAF
because it was received after the deadline for submissions and in violation of
NAF Supplemental Rule No. 7(e), which permits only one Additional Submission or
response (to an Additional Submission) per party.
On April 13, 2007, Complainant submitted its Objection to Respondent’s
Second Additional Submission.
Complainant requested that Respondent’s second Additional Submission be
disallowed, but in the alternative raised additional arguments as Complainant’s
second Additional Submission. NAF
indicated that this second Additional Submission of Complainant was deficient
because it, too, was received after the deadline for submissions and in
violation of NAF Supplemental Rule No. 7(e).
Finally, to complete the cycle of late submissions, Respondent on April
23, 2007 filed its Rebuttal to Complainant’s Objection to Respondent’s
Additional Submission. The NAF
considered this last filing of Respondent to be deficient for the same reasons
stated above.
The Panelist must decide whether to consider both parties’ second Additional
Submissions, as well as Respondent’s rebuttal.
The Panel has chosen to consider these submissions from both parties,
even though they were submitted late and in violation of Rule 7(e). The Panelist observes that Respondent
substituted attorneys, with the apparent consequence that the new
representative considered it important to file the second Additional Submission. Complainant objected to this submission, but
also submitted additional responsive arguments.
In the interest of giving a full hearing to the parties’ contentions,
the Panel will consider all of the submissions, including both parties’ second Additional
Submissions and Respondent’s rebuttal.
Complainant also brought a request to consolidate this case with Case
No. FA 914922.
This request was opposed by Respondent.
The Panelist, by order dated April 17, 2007, denied the request to
consolidate these cases.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it is the owner of the trademark CARIBBEAN
YELLOW PAGES CPC (& design); that the Domain Name is confusingly similar to
Complainant’s mark; that Respondent has no legitimate interests in the Domain
Name; and that Respondent has registered and is using the Domain Name in bad
faith. Complainant’s arguments are
reviewed below.
Rights in a trademark:
Complainant is a company that provides telephone directories focusing on
Complainant is the owner of the
Complainant’s principal website is located at
<caribbeanyellowpages.com>.
Complainant states that it expanded use of its mark onto the Internet in
1997, and has submitted evidence that its website has been available and in use
since at least November 1998. Complainant
therefore claims that it has also established common law rights to the mark,
CARIBBEANYELLOWPAGES.COM.
The Domain Name was registered by Respondent on January 2, 2002. Complainant contends that this registration
occurred well after Complainant had established trademark rights in its mark.
Confusingly similar: Complainant contends that the Domain Name <caribbean-yellowpages.com>
is confusingly similar to its trademark because the Domain Name incorporates
the dominant part of Complainant’s mark, CARIBBEAN YELLOW PAGES, adding only a
hyphen between words.
No legitimate interests: Complainant contends that
Respondent has no trademark or other intellectual property rights in the Domain
Name, and that Respondent’s use of Complainant’s mark is unauthorized, having
received no license or permission from Complainant. Complainant states that Respondent is
predominantly known as “Island Yellow Pages,” and has also been known as
“Island Super Pages” or “Rummi’s.”
Complainant has also submitted a WHOIS look-up record for the Domain
Name, indicating that the registrant is listed as “Rummi’s.”
Complainant contends that Respondent has never operated any bona
fide or legitimate business under the Domain Name, nor made non-commercial
or fair use of it. Instead, Respondent
is using the Domain Name to offer directly competing services.
Registered and using the Domain Name in bad faith:
Complainant contends that Respondent registered the Domain Name in bad
faith and is using it in bad faith. With
respect to registration in bad faith, Complainant contends that Respondent
offers competing services and had actual or constructive knowledge of
Complainant’s mark and rights.
Complainant contends that even if Respondent were able to claim lack of
knowledge,
Complainant further contends that Respondent has used the Domain Name
in bad faith by redirecting traffic to Respondent’s websites, which offer
competing services. Complainant argues
that Respondent’s conduct is squarely within the illustrations of bad faith in
the UDRP Policy, paragraph 4(b), which sets forth two applicable examples of
bad faith:
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your 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 your web site or
location or of a product or service on your web site or location.
Complainant contends that Respondent has intentionally attempted to
attract Complainant’s customers by creating a likelihood of confusion, and that
Respondent is using the Domain Name to create a false impression to consumers
that they have reached Complainant’s site.
Respondent’s use is therefore disrupting Complainant’s business.
Finally, Complainant contends that Respondent has engaged in a pattern
of such conduct, alleging that the Domain Name lists the same administrative
contact name and email as the respondent in the pending NAF Case No. FA 914922,
in which Complainant here has submitted a complaint concerning the following
domain names: <carribbeanyellowpages.com>,
<carribeanyellowpages.com> and <caribyp.com>.
B. Respondent
In its Response, Respondent contends that Complainant has no legally
protected rights to the terms “Caribbean Yellow Pages;” that Respondent has
legitimate interests in the Domain Name; and that Respondent has not registered
or used the Domain Name in bad faith.
Respondent’s arguments are reviewed below.
Respondent contends that Complainant’s trademark rights are limited
only to the mark CARIBBEAN YELLOW PAGES CPC in conjunction with the design, but
do not extend to exclusive rights for the terms “Yellow Pages” or
“Caribbean.” Respondent highlights that
the U.S. Patent and Trademark Office (USPTO) requires a disclaimer of any
exclusive right to use the term “yellow pages.” Further, the phrase “Caribbean Yellow Pages”
is generic and therefore incapable of trademark protection. In addition, Respondent contends that
geographical terms cannot be trademarked unless one can show distinctiveness,
and the terms “
With respect to legitimate rights, Respondent contends that it was
operating a business website for at least one year prior to Complainant’s
website being published. Respondent
therefore argues that it did not disturb or redirect any traffic away from
Complainant’s website, since this site did not yet exist at the time Respondent
first established its own site.
Additionally, Respondent contends that it has been known as Caribbean
Yellow Pages since 2003 and has operated under this name since that time. Respondent also alleges that Complainant has
practiced cybersquatting because it did not use its own registered domain name
<caribbeanyellowpages.com> for at least seven years.
Respondent contends that, even though Complainant and Respondent engage
in the same area of commerce, they do so using different and distinct
methodologies. Complainant specializes
in business to business directory services, while Respondent offers directory
services geared more towards individuals.
Respondent denies that it registered or has used the Domain Name in bad
faith, or that it has used it to redirect traffic to its own websites. Respondent states that it registered the
domain names <carribbeanyellowpages.com>,
<carribeanyellowpages.com> and <caribyp.com> in order to prevent
typosquatters from registering these names.
Respondent also refers to domain names registered by other third
parties, such as <caribbeanonlineyellowpages.com>, which
are “similar” but against which Complainant has yet to file any claim. Finally, Respondent states that it has never
used Complainant’s trademark on its website or claimed to be the same company,
but instead has used the tag line “a division of Island Super Pages.”
C. Additional Submissions
Complainant: Complainant’s first Additional Submission
highlights that Respondent fails to deny several assertions made by
Complainant, including that (i) the Domain Name is confusingly similar to
Complainant’s trademark; (ii) Complainant owns the U.S. mark, CARIBBEAN YELLOW
PAGES CPC; (iii) Respondent used the Domain Name to attract web traffic to its
website; and (iv) Respondent had actual or constructive knowledge of
Complainant’s trademark rights when it registered the Domain Name.
Complainant takes issues with several of Respondent’s arguments. In response to Respondent’s contention that
Complainant does not have exclusive rights because Complainant’s mark is
limited to CARIBBEAN YELLOW PAGES CPC in conjunction with the design,
Complainant asserts that the text element of a mark may be protected under the
Policy, and that the mere removal of “CPC” while still using the dominant part
of Complainant’s mark does not decrease the confusing similarity between the Domain
Name and Complainant’s mark.
Complainant emphasizes that not only has its trademark achieved
incontestable status under U.S. trademark law, but that the commercial
impression of a trademark, as stated by the U.S. Supreme Court, must be derived
from the whole, not from its elements separated and considered in detail. Thus, Complainant argues that the relevant
issue is whether the textual elements of Complainant’s mark, CARIBBEAN YELLOW
PAGES CPC, taken as a whole, are confusingly similar to the Domain Name. As to Respondent’s contention that
geographical terms cannot be trademarked unless the mark holder can show
distinctiveness, Complainant contends that
Complainant contests Respondent’s assertion that it had rights and
legitimate interests in the Domain Name because Respondent was using it to
direct Internet users to a website that pre-existed the establishment of
Complainant’s own site. Complainant
first offers evidence to make clear that it registered its own domain name
<caribbeanyellowpages.com> and commenced operating that site in 1998,
well before Respondent registered the Domain Name in 2002. Complainant argues that, to the extent
Respondent is asserting it offered services online before Complainant (albeit
using a domain name different from the Domain Name), this is not the proper
framing of the issue. The question to be
considered under the Policy is not when Complainant first operated its own
website, but whether Complainant had rights in its trademark before Respondent
registered the Domain Name. As to this
question, Complainant states that it had registered and used its trademark in
commerce for more than a decade before Respondent registered the Domain Name.
Among the other arguments made by Complainant, it asserts that
Respondent’s own statements describing its offering of slightly different
services actually emphasize the fact that Respondent is a direct competitor of Complainant. Complainant argues that whether or not it has
taken action against other potentially infringing domain names is irrelevant to
this case. Finally, Complainant contends
that the small disclaimer on Respondent’s website does nothing to minimize any
confusion and in fact increases the likelihood of confusion.
Respondent’s First Additional Submission:
Respondent submitted a letter dated March 22, 2007, from David Phillips
as President of Rummi.com. Mr. Phillips
indicates that he is the owner of the Domain Name but clarifies that he is not
an attorney. He states that he
registered the Domain Name in 2001, indicating that he did so because he saw
the need for an online directory for all of the
Mr. Phillips views Complainant’s UDRP Complaint as an attempt to take
away his online traffic. He explains
that:
While I understand that Caribbean Publishing was printing a directory
for several years, it is my understanding they were only printing approximately
70,000 copies of this for ALL the
When I began this venture in June of 2000, while living in the
Mr. Phillips argues that he has spent thousands of dollars to establish
his business over seven years of his life, and that his business should not be
given over to a competitor whose only reason for filing this case is to take
away his Internet traffic and attempt to convert his clients into advertising
with them.
Respondent’s Second Additional Submission:
Respondent, through its new substituted counsel, submitted a Response to
Complainant’s Additional Submissions.
Respondent emphasized that the question to be considered is not whether
Complainant has a registered trademark – Respondent does not deny that
Complainant holds the trademark CARIBBEAN YELLOW PAGES CPC and design, and
acknowledges that the UDRP does not provide the proper venue, in any event, for
a challenge to Complainant’s trademark registration. Instead, the question is whether, because of
the trademark CARIBBEAN YELLOW PAGES CPC, Complainant can monopolize the phrase
“yellow pages” and its derivatives.
Respondent also denies that the Domain Name creates confusion with
Complainant’s mark, in particular, because Respondent is only relying on the
generic and descriptive terms “Caribbean Yellow Pages,” which do not qualify
for trademark protection. Respondent
submits that the text “CPC,” as part of Complainant’s mark, distinguishes the
specific product as being a telephone directory produced by Caribbean
Publishing Company. In addition, if the
Internet user were to log onto Complainant’s site when intending to reach
Respondent’s site, there would be no confusion because Internet users are
familiar with the Internet and arriving at incorrect sites bearing similar domain
names, and they can easily correct their mistakes. Each of the parties’ sites contain
the relevant tradename affiliation on the opening page, and each site provides
distinguishable services, tailored to separate market segments.
Respondent further emphasizes that there is no intent to attract
Internet users who were looking for Complainant. In this regard, Respondent refers to the
previous submission of Mr. Phillips on this point, and stresses that there is no
reference to Complainant’s product, services, trade name or trademark anywhere
on Respondent’s website.
Finally, Respondent again contends that it has rights and legitimate
interests in the Domain Name, stemming from its consistent use of the Domain
Name to direct traffic to its website over several years. “The Respondent’s interest in the use of the
name has been established and continues to accrue as a result of several years
of uninterrupted use and a substantial amount of development.” Respondent emphasizes that substantial
Internet traffic arrives at the Domain Name, and Respondent’s site has achieved
larger market recognition than Complainant’s site. Respondent alleges that Complainant
registered a single domain name describing its trademarked product and “sat
dormant for nearly seven years while a company it claims to consider a
competitor developed another, similar name….”
Respondent argues that deciding in favor of Complainant under these
circumstances would amount to unjust enrichment.
Complainant’s Second Additional Submission:
Respondent’s second Additional Submission triggered a response from
Complainant. Complainant’s Second
Additional Submission argues that Respondent is attempting “to confuse the
straight forward issues in this dispute.”
Among the points raised, Complainant again emphasizes that trademarks
should be considered in their entirety and not “dissected” – Respondent
improperly dissects Complainant’s mark by separating out the “CPC” and “yellow
pages” elements. Second, Complainant
rejects Respondent’s contention that there is no confusion, asserting that the
mere addition of a dash or hyphen in the domain name does not diminish or
obviate confusion. Complainant also
takes issue with Respondent’s attempt to contend it is not a competitor. The letter of Mr. Phillips, CEO of
Respondent, refers to Complainant as a “competitor.” Finally, Complainant emphasizes that
Respondent cannot develop legitimate interests by being a “successful
infringer” of Complainant’s trademark.
Respondents Rebuttal: Respondent’s final submission briefly lists
several final points, most of which were previously covered. Among them Respondent contends that the
parties appear to agree that the only issue is whether the Domain Name is
confusingly similar to Complainant’s trademark; that considering Complainant’s
trademark in its entirety must include all of the elements (including CPC and
graphic, and not just “yellow pages” or “Caribbean yellow pages”); that the
ultimate issue is whether Respondent’s long use of the Domain Name infringes on
the protections of Complainant’s trademark; and finally that Complainant has
not rebutted any duty it had to have acted sooner to protect its rights.
FINDINGS
The Panel
finds that Complainant is the owner of the
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 that Complainant must prove each
of the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
The Panel finds that Complainant has clearly
established rights in its CARIBBEAN YELLOW PAGES CPC (and design) mark pursuant to Policy ¶ 4(a)(i). The trademark has achieved incontestable status under
Instead, the focus of both parties’
arguments has been on the issue of whether or not the Domain Name is
confusingly similar to Complainant’s trademark.
In particular, Complainant has asserted that the Domain Name <caribbean-yellowpages.com> is confusingly similar to its trademark because it contains the
dominant part of Complainant’s mark in its entirety and merely inserts a hyphen
between the terms “
While the Panelist would agree that the introduction of a hyphen, alone, would normally not be sufficient to avoid confusion between a domain name and a trademark, this is not the key point on which Respondent hinges its arguments. Respondent contends that there is no confusing similarity because the Domain Name consists only of the terms “caribbean” and “yellow pages,” which are generic, descriptive and incapable of being within the scope of Complainant’s trademark rights. Thus, the question of confusing similarity turns on whether the terms which comprise the Domain Name fall within the scope of Complainant’s protectable rights.
Both parties have made reference to
legal authorities under
This is of course a domain name
dispute and the standards and tests that are used when trademarks are said to
collide do not necessarily apply to the same degree. However it is worth
noting that the Supreme Court of the
Here, Complainant’s trademark had been registered
and used by Complainant, albeit primarily in the off-line context, for more
than 10 years prior to the date on which Respondent registered the Domain
Name. While Respondent attempts to
attack Complainant’s online activity as being limited – an attack to which
Complainant has submitted reasonable evidence in response – Respondent has
failed to address the prior off-line commercial activities of Complainant,
which would have contributed to distinctiveness and secondary meaning for
Complainant’s mark. In fact,
Respondent’s president, Mr. Phillips, appears to acknowledge that he was aware
that Complainant was “printing a directory for several years” and “printing
approximately 70,000 copies” of its directory for the
The final piece of the confusing similarity analysis relates to a direct comparison of the Domain Name with Complainant’s mark. Complainant contends that the relevant issue is whether the textual elements of Complainant’s mark, CARIBBEAN YELLOW PAGES CPC, taken as a whole, are confusingly similar to the Domain Name. Complainant further argues that Respondent’s position would improperly dissect Complainant’s mark by separating out the “CPC” and “yellow pages” elements. Both parties have cited Estate of P.D. Beckwith, Inc. v. Commisioner of Patents, 252 U.S. 538 (1920), in which the Supreme Court ruled that “the commercial impression of a trademark is derived from it as a whole.” Respondent, however, emphasizes that Complainant’s entire mark must be taken to include the “CPC” text (and the design element), which is the element that really serves to distinguish Complainant’s mark.
The Panelist disagrees with
Respondent’s position. The overall
impression when comparing the “Caribbean Yellow Pages CPC” mark with
“Caribbean-yellow pages.com” is one that easily yields a finding of confusing
similarity. See Gen. Steel Domestic Sales LLC v. Malinuskii, FA 140653 (Nat.
Arb. Forum, March 4, 2004) (finding <generalsteel.com> to be confusingly
similar to GENERAL STEEL CORPORATION mark).
In conclusion, the
Panel finds that the Domain Name is confusingly similar to Complainant’s mark.
As noted above, Complainant contends that Respondent has no trademark
or other intellectual property rights in the Domain Name, that Respondent’s use
of Complainant’s mark is unauthorized, and that Respondent is predominantly
known as “Island Yellow Pages,” and has also been known as “Island Super Pages”
or “Rummi’s.” Complainant submitted a
copy of the web page corresponding to the Domain Name, where the business name
that appears is “Island Yellow Pages.”
Complainant also asserted that Respondent has never operated any bona
fide or legitimate business under the Domain Name.
Respondent rejected these contentions, indicating that it has rights
and legitimate interests in the Domain Name based on its consistent and
uninterrupted use of the Domain Name over several years and with a substantial
amount of development. Respondent also
contended that it was operating a business website for at least one year prior
to Complainant’s website being published, and therefore argues that it did not
disturb or redirect any traffic away from Complainant’s website. Respondent asserts that it has been known as
Caribbean Yellow Pages since 2003 and has operated under this name since that
time. Respondent argues that Complainant
has “sat dormant” and took no measures to protect its rights, while Respondent
was developing its online business.
The Panel finds that Respondent cannot establish rights or legitimate
interests in the Domain Name. First, as
discussed above, Respondent’s arguments focus only on online activities and do
not weigh Complainant’s off-line commercial activities and use of its
trademark, which were established well before Respondent chose to register the
Domain Name. Second, Complainant
submitted evidence to show that its own website was available from at least
1998, more than three years before Respondent registered the Domain Name in
dispute. Respondent claims it was
operating its business website more than one year prior to Complainant’s
website being published, which would mean approximately 1997, yet Mr. Phillips
as CEO of Respondent indicates in his letter of March 22, 2007 that he
began his business venture in June 2000.
Thus, we have a chronology in
which Complainant obtained its registered trademark in 1991, then registered
its own domain name <caribbeanyellowpages.com> in 1997 and published and
maintained its website under that name since November 1998 at the latest. It was more than three years later, in January
2002, that Respondent registered the Domain Name, in the face of what appears
to be Mr. Phillips’ knowledge of Complainant’s and its business at that
time. It is no excuse that Respondent
was dissatisfied with Complainant’s business offerings in terms of meeting the
needs of the
Respondent has also provided no evidence in support of its statement
that it has been known as the Caribbean Yellow Pages since 2003. Instead, the documentation before the Panel
indicates that Respondent has been known as “Island Yellow Pages,” “Island Super
Pages” or “Rummi’s.” The current website
refers to Island Yellow Pages and “CBT.cc,” while Respondent indicates that the
website previously had the tag line “a division of Island Super Pages.” By contrast, Complainant submitted a copy in
its amended exhibits of a letter from its legal representative to Respondent
dated March 2004, in which it demanded that Respondent cease and desist from
using Complainant’s trademark and to transfer the Domain Name to Complainant. See Am. Online, Inc. v. World Photo Video & Imaging
Corp., FA 109031 (Nat. Arb. Forum May
13, 2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”).
All of these circumstances together suggest that, even in the face of
Respondent’s use of the Domain Name for its own business, such use has not
established rights or legitimate interests for Respondent. See
Or. State Bar v. A Special Day, Inc., FA 99657 (Nat.
Arb. Forum Dec. 4, 2001)
(“Respondent's advertising of legal services and sale of law-related books
under Complainant's name is not a bona fide offering of goods and services
because Respondent is using a mark confusingly similar to Complainant's to sell
competing goods.”)
Complainant contends that Respondent registered the Domain Name in bad
faith and is using it in bad faith, that Respondent had actual or constructive
knowledge of Complainant’s mark, and offered competing services. Complainant argues that Respondent’s conduct
is also squarely within the illustrations of bad faith in the Policy, paragraph
4(b), which sets forth two examples of bad faith:
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your 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 your web site or
location or of a product or service on your web site or location.
Complainant contends that Respondent has intentionally attempted to
attract Complainant’s customers by creating a likelihood of confusion, and that
Respondent is using the Domain Name to create a false impression to consumers
that they have reached Complainant’s site.
Finally, Complainant contends that Respondent has engaged in a pattern
of such conduct, registering other infringing domain names.
Respondent denies that it registered or has used the Domain Name in bad
faith, or that it has used the Domain Name to redirect traffic to its own
websites. Respondent contends that, even
though Complainant and Respondent engage in the same area of commerce, they do
so using different and distinct methodologies.
Respondent also argues, as noted above, that its website was established
before Complainant’s site, and therefore no traffic was “redirected” to
Respondent’s site. Respondent also
referred to domain names registered by other third parties which are “similar”
but against which Complainant has filed no claims. Respondent contends that it has never used
Complainant’s trademark on its website or claimed to be the same company, but
instead used the tag line “a division of Island Super Pages.” Finally, Respondent states that it registered
the domain names <carribbeanyellowpages.com>, <carribeanyellowpages.com>
and <caribyp.com> in order to prevent typosquatters from registering
them.
Weighing the parties’ arguments and the evidence, the Panelist determines that Respondent registered the Domain Name in bad faith and has used it in bad faith. First, the evidence supports the view that Respondent was aware of Complainant at the time when Respondent registered the Domain Name. Mr. Phillips acknowledges this much in his letter of March 22, 2007, where he described his motivation for starting his online directory service and registering the Domain Name:
While I understood that Caribbean
Publishing was printing a directory for several years, it was my understanding
they were only printing approximately 70,000 copies of this for ALL the
Clearly Mr. Phillips was aware of Complainant and its business activities at the time when he was commencing his operations – he states very clearly that he knew “[t]hey WERE NOT offering an online directory” at that time. Complainant, however, had registered its trademarks and commenced operations at least 10 years before this time. Even if Mr. Phillips, as CEO of Respondent, was not specifically aware of Complainant’s federally registered mark, this is no excuse under these circumstances. Here, imputing to Respondent constructive knowledge of Complainant’s trademarks – that is, the trademarks of a company operating in the same area of commerce (although offering slightly different products and services) and targeting the same geographic region – is not going too far. Bad faith registration can be found when a domain name registrant uses the mark of another with knowledge of the mark holder’s rights. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (finding evidence of bad faith includes actual or constructive knowledge of a mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002 (“There is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Nintendo of America Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that respondent, at the time of registration, had notice of complainant’s trademarks and thus registered the domain name in bad faith).
Respondent has made the same mistake that many other domain name registrants have made when registering a name: Respondent ignored what Complainant had been doing everywhere except on the Internet, as if this other activity had no relevance to his choice of a domain name, and no legal relevance even now as Respondent seeks to justify registration of the Domain Name. If the Panelist were to accept this approach, it would significantly undermine the legal rights and protections that arise through trademark registrations and conduct which takes place elsewhere than on the Internet. In the opinion of the Panel, Respondent exercised, at best, poor judgment and, at worst, calculation in its approach on these issues.
The Panel also finds that Respondent has used the Domain Name to attract Internet users to its website offering services in close competition with Complainant. Because of the confusing similarity between Complainant’s mark and the Domain Name, Internet users may mistakenly believe that Respondent’s website is sponsored by or affiliated with Complainant. There is at least initial interest confusion, which cannot be completely remedied by statements on the website itself. Although Respondent contends that its website existed first in time, Complainant has offered evidence to call this assertion into question. Furthermore, even if a website of Respondent might have existed earlier, it was a site published under a different domain name, not the Domain Name in dispute. The “likelihood of confusion” that is the concern of paragraph (4)(b)(iv) of the Policy is with respect to Complainant’s trademark, not simply who first established a website. Finally, it is of no relevance to this case that Complainant has not filed claims against every third party whom might have registered a confusingly similar domain name.
The Panel finds that Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ (4)(b)(iv). See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site); see also MathForum.com, LLC
v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly
similar to the complainant’s mark and the domain name was used to host a
commercial website that offered similar services offered by the complainant
under its mark).
The Panel concludes that, in the totality of the circumstances, Respondent’s registration and use of the Domain Names is indicative of bad faith under the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caribbean-yellowpages.com> Domain
Name be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: May 9, 2007
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