Westmore · UDRP DecisionGelbeseiten.online, Gelbeseiten.xyz
The Panel ordered transfer of <gelbeseiten.online> and <gelbeseiten.xyz>. It found both domain names identical to the Complainant's GELBE SEITEN mark, found no rights or legitimate interests based on the Complainant's unrebutted prima facie case, and inferred bad-faith registration and use from the longstanding trademark rights, the domain names' identity to the mark, presumed Trademark Clearinghouse notice, the sale page associated with <gelbeseiten.online>, and the absence of bona fide use.
The timeline behind gelbeseiten.online
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind gelbeseiten.online — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
How each disputed name was decided in this proceeding.
The decision illustrates how exact reproduction of an established mark across multiple new-gTLD domain names, combined with a sale page, passive holding, and respondent default, can satisfy all three UDRP elements. It is also notable that the Panel treated Trademark Clearinghouse registration and presumed notice as part of the evidence supporting likely awareness at registration.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Gelbe Seiten Zeichen-GbR v. Tom Eisenlohr Case No. D2016-0540 1. The Parties The Complainant is Gelbe Seiten Zeichen-GbR of Frankfurt am Main, Germany, represented by Bird & Bird LLP, Germany. The Respondent is Tom Eisenlohr of Berlin, Germany. 2. The Domain Name and Registrar The disputed domain name <gelbeseiten.online> is registered with Dynadot, LLC; the disputed domain name <gelbeseiten.xyz> is registered with NameCheap, Inc. (the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2016. On March 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2016 and March 20, 2016, the Registrars transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint on February 9, 2016, and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2016. The Center appointed Torsten Bettinger as the sole panelist in this matter. 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 Gelbe Seiten Zeichen-GbR of Frankfurt am Main in Germany, a trademark holding company of DeTeMedien Deutsche Telekom Medien GmbH (“DeTeMedien”). DeTeMedien is an affiliated company of Deutsche Telekom AG, one of Europe’s largest telecommunication companies covering the entire spectrum of modern telecommunications and information technology. DeTeMedien publishes, in cooperation with several publishing companies, the leading German directory “Gelbe Seiten”. The trade name “Gelbe Seiten” has been used by the DeTeMedien and its legal predecessors for more than 45 years. Approximately 26 million printed directories labelled with the title “Gelbe Seiten” were published in 2014. DeTeMedien also offers its services on the Internet on the website “www.gelbeseiten.de”. The Complainant is the owner of many national, international and European trademark registrations for GELBE SEITEN, including German registrations DE-30771493 (December 16, 2010), DE-1177265 (June 5, 1991), DE-39644690 (October 21, 1998) and Community Registration CTM-00486603 (June 19, 2008) (collectively, the “Trademarks”). The Trademark was also registered with the Trademark Clearinghouse on December 16, 2010. The Respondent registered the disputed domain names on October 9 and 24, 2015, long after the Complainant began using its <gelbeseiten.de> domain name and the registration of the GELBE SEITEN trademarks in Germany and the European Union. The Complainant states that Respondent does not have, and never has had, permission to use the Trademarks or to register and use domain names incorporating the Trademarks. To date, the Respondent has failed to make any genuine use of the disputed domain names. The Panel visited the websites associated with the disputed domain names on April 20, 2016, and observed that the domain name <gelbeseiten.online> resolves to a registrar-provided “For Sale” page and that the disputed domain name <gelbeseiten.xyz> does no display any content. 5. Parties’ Contentions A. Complainant The Complainant states that each of the three elements of paragraph 4(a) of the Policy is satisfied. With regard to the first element of the Policy, the Complainant states that the disputed domain names are identical to its registered GELBE SEITEN marks, distinguished only by the generic Top-Level Domain (“gTLD”) designations “.online” and “.xyz”. Concerning the second element of the Policy, the Complainant states that the Respondent is not entitled to use the disputed domain names and never has never been, and is not currently, commonly known by the disputed domain names. The Complainant further notes that the Respondent does not make active use of the disputed domain names. Finally, with regard to the third element of the Policy, the Complainant notes that the Respondent does not make any genuine use of the disputed domain names, and that the disputed domain names were acquired long after the Complainant established it trademark rights. The Complainant states that the Respondent’s intent was to sell the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin , WIPO Case No. D2009-0323 ; BWT Brands, Inc and British American Tobacco (Brands) , Inc v. NABR , WIPO Case No. D2001-1480 ; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic , WIPO Case No. D2000-1698 . The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark GELBE SEITEN as evidenced in the annexes to the Complaint. The disputed domain names incorporate the Complainant’s trademark in their entirety. The incorporation of a trademark in its entirety into a domain name may often be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works , WIPO Case No. D2005-0941 . The Panel finds that the addition of a gTLD such as “.com,” “.net,” or “.xyz” may generally be disregarded when determining whether the disputed domain names are confusingly similar to the Complainant’s trademark. PRL USA Holdings, Inc. v. Spiral Matrix , WIPO Case No. D2006-0189 . The Panel thus finds that the disputed domain names <gelbeseiten.online> and <gelbeseiten.xyz> are identical to the Complainant’s GELBE SEITEN mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show any circumstances demonstrating its rights or legitimate interests, including but not limited to one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may be deemed to lack a right or legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o. , WIPO Case No. D2004-0110 . In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant confirms that it has not licensed or authorized the Respondent to use its GELBE SEITEN mark in any fashion and that there is no connection between the Respondent and the Complainant. The domain name <gelbeseiten.online> is used only to direct Internet users to a website offering the domain name for sale, and <gelbeseiten.xyz> does not render any content at all, and is correctly characterized as “passive holding”. While passive holding by itself may be a legitimate activity, doing so does not confer any rights or legitimate interests in the domain name. Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not provided any evidence of its rights or legitimate interests in the disputed domain names, or otherwise replied to the Complainant’s contentions. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith The Complainant has maintained registered rights in GELBE SEITEN mark at least as early as 1991 and has made use of the mark of as early as 1968. The disputed domain names differ from the Complainant’s trademark only in the selection of the top-level extension, indicating that the Respondent was likely aware of the potential for Internet user confusion. In addition, the Complainant’s mark was registered with the Trademark Clearinghouse and presumably the Respondent received notice of the Complainant’s rights before registering the disputed domain names. Therefore, in the Panel’s view, it is very likely that the Respondent was aware of the Complainant at the time he selected the disputed domain names for registration. This is sufficient to infer bad faith. As noted above, the disputed domain name <gelbeseiten.online> resolves to a website offering the domain name for sale, and <gelbeseiten.xyz> does not lead anywhere. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. Accordingly, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <gelbeseiten.online> and <gelbeseiten.xyz> be transferred to the Complainant. Torsten Bettinger Sole Panelist Date: April 22, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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