DECISION

R.H. Donnelly Publishing and Advertising, Inc. v.

Gateway Capital Resources and Troy Jeffries

File Number: FA0311000212636

PARTIES

Complainant is R.H. Donnelly Publishing and Advertising, Inc. (“Complainant”) 5454 West 110th Street, 10th Floor, Overland Park, KS 66211, represented by Wade Kerrigan, of Blackwell Sanders Peper Martin LLP, 2300 Main Street Suite 100, Kansas City, MO 64108.  Respondents are Gateway Capital Resources and Troy Jeffries  (“Respondents”), 1275 Bennett Drive, Suite 129, Longwood, FL 32750.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is  <thebestredyellowpages.com> (the “Domain Name”), registered through Wild West Domains, Inc. (the “Registrar”).

PANEL

The undersigned Panelists certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Michael A. Albert, Panel Chair.

Hon. Carolyn Marks Johnson (Ret.), Panelist.

Dennis A. Foster, Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) on November 19, 2003.  The original Complaint was rejected for failure to name the proper registrant due to the registration having changed hands in the interim.  A new Complaint was submitted on December 23, 2003.  The Domain Name had again changed owners, so that the Complaint was again rejected as naming the incorrect registrant.  A Complaint naming the current registrants was submitted on January 5, 2004.

On December 29, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <thebestredyellowpages.com> is registered with Wild West Domains, Inc. and that the Respondents are the current registrants of the Domain Name.  The Registrar has verified that Respondents are bound by the Wild West Domains, Inc. registration agreement and have 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 November 13, 2003, Complaint Notification Instructions, setting a deadline of January 26, 2004 by which Respondents could file a Response to the Complaint, was transmitted to Respondents.

A timely Response was received and determined to be complete on January 24, 2004.  Complainant submitted additional materials dated February 2, 2004.  These additional materials were timely received.  Respondents responded to Complainant’s Additional Submission in a reply dated February 9, 2004.  This response was also timely received. 

A final submission was received from Complainant on February 13, 2004.  This submission was received outside the deadline for consideration.  In its discretion, however, the Panel has reviewed these materials as well but they did not alter the outcome of the Panel’s determination.

Pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert, the  Honorable Carolyn M. Johnson (Ret.), and

Dennis A. Foster as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondents to Complainant.

PARTIES’ CONTENTIONS

A.    Complainant asserts as follows:

· Complainant owns common law trademark rights in the mark THE BEST RED YELLOW PAGES (“the Mark”) through its use in commerce in connection with telephone directories since 1997.  Complainant owns a federal registration in the Mark, Registration No. 2,763,715, registered on September 16, 2003.

· The Mark is not generic.

· Complainant operates telephone directory services on the Internet at <bestredyellowpages.com> and <bestredyp.com>.

· The Domain Name is identical to the Mark.

· Respondents have no rights or legitimate interests in the Domain Name.  Respondents have not used the Domain Name in connection with any bona fide offering of goods or services.

· Respondents use the Domain Name to link to a competitor of Complainant’s directory services, InfoSpace.

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

· Respondents are cybersquatting and have offered to sell the Domain Name to Complainant for $100,000.

· Respondents registered the Domain Name to prevent Complainant from owning it. 

· Respondents registered the Domain Name primarily for the purposes of disrupting Complainant’s business and to intentionally attract Internet users and Complainant’s customers through confusion.

· Respondents have similarly registered other domain names, which are identical to trademarks not owned by Respondents.

· The Domain Name was deliberately transferred from one owner to another owner to delay these proceedings.

· Respondents’ use of the color red at the Domain Name and the phrase “The Best Red Internet Yellow Pages” is evidence of bad faith.

B.             Respondents assert as follows:

· The Domain Name is not identical to a trademark in which Complainant has rights. 

· The Domain Name was registered prior to Complainant’s registration of the Mark, and prior to Complainant’s operation of its own websites.

· The term “yellow pages” is generic and not protectable.

· Respondents have rights and legitimate interests in the Domain Name.  Respondents have been making preparations to use the Domain Name in connection with a bona fide offering of services.

· Respondents only offered to sell the Domain Name for $100,000 after an initial offer from Complainant to purchase the Domain Name for $1,000.

· The Domain Name was not registered in bad faith, nor is it being used in bad faith.

· The Domain Name was acquired by Respondents for the purpose of establishing an Internet presence for a bona fide business.

FINDINGS

The Panel finds as follows:

Complainant’s predecessor in interest, Sprint Publishing & Advertising, Inc. Corporation began using the color red on telephone directories as a source-identifier as early as April 10, 1992.  (See Exhibit I to Complaint).  As early as January 1997 Complainant began using the Mark THE BEST RED YELLOW PAGES as a source-identifier for telephone directories.  The Mark was registered by the United States Patent and Trademark Office on September 16, 2003 as Reg. No. 2,763,715. 

Complainant operates telephone directory services on the Internet at <bestredyellowpages.com> and <bestredyp.com>.

Respondents registered the Domain Name after Complainant began using the Mark but prior to its registration.  Respondents have made use of the Domain Name to resolve to a site with a “Web Directory” and to link to a “Yellow Pages & White Pages” service operated by InfoSpace.  At the time of the drafting of this decision, the website associated with the Domain Name featured the text “The Best Red Internet Yellow Pages” and “We are not affiliated with Sprint or R.H. Donnelley.”

Complainant offered to purchase the Domain Name from Respondents for $1,000.  Respondents counter-offered to sell the Domain Name for $100,000.

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 the 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 the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondents have 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.

Domain Name Identical to Complainant’s Trademark

At the time Respondents registered the Domain Name in 2000, Complainant was using the Mark THE BEST RED YELLOW PAGES in commerce.   The Mark was eventually federally registered with a date of first use in commerce of April 10, 1997.  Even if Respondents were correct (which we do not here decide) that the words “yellow pages” may be generic, “yellow pages” is not the Mark in question.  The Mark in question is THE BEST RED YELLOW PAGES.  A combination of generic terms may, taken together, be a source-identifying mark.  In registering the Mark, the United States Patent and Trademark Office has determined that it is not generic.  The Panel concludes that Complainant has rights in the Mark THE BEST RED YELLOW PAGES.

The Domain Name is <thebestredyellowpages.com>.  The Domain Name is identical to the Mark with the exception of the top level domain (TLD) “.com” appearing after the Mark.  Because web users typically add a TLD such as “.com” or “.net” to a mark when attempting to locate the mark’s owner on the Internet, and because the TLD is a functional necessity rather than an arbitrary trademark choice, the TLD is properly ignored when considering similarity.  See College Summit, Inc. v. Yarmouth Educ. Consultants, Inc., D2000-1575 (WIPO, Jan. 17, 2001).  Without the TLD, the Domain Name is identical to the Mark.

The Panel therefore concludes that Complainant has shown that the Domain Name is identical to Complainant’s trademark.

Respondents’ Interests in Respect of the Domain Name

Respondents currently use the Domain Name to advertise telephone directory services.  In addition, Respondents have argued that they have invested significant time and effort into forming a telephone directory service.  This may very well be true, but it does not answer the question of whether Respondents had any legitimate interest in the Domain Name at the time of registration, or have developed one since then. 

Respondents are offering a competing service to that of Complainant at a Domain Name identical to the Mark of Complainant.  Even if the service itself is legitimate, this is not a bona fide use of the Domain Name.  See C & E Fein GmbH & Co. v. Mierendorff, FA 183729 (Nat. Arb. Forum Oct. 1, 2003) (“Relevant law states that no legitimate or bona fide use or interest in the domain name can be found when a respondent, who is selling competing goods or services, is diverting consumers to its own website by using a complainant’s trademark in its domain name.”).  Indeed, other than this improper competing use, Respondents have not offered any evidence to show that their use of the Domain Name is legitimate. 

The Panel concludes that Complainant has shown that Respondents have no rights or legitimate interests in respect of the Domain Name.

Registration and Use in Bad Faith

Complainant’s predecessor in interest, Sprint Publishing & Advertising, Inc. Corporation, began using the color red on “yellow pages” or telephone directories as a source-identifier as early as April 10, 1992.  This use was registered in 1994.  (See Exhibit I to Complaint).  The trademark THE BEST RED YELLOW PAGES was used by the same entity at least as early as 1997.  By the time Respondent had registered the Domain Name, Complainant had already established rights in “red yellow pages” and the trademark THE BEST RED YELLOW PAGES.

At the very least, Respondents were on constructive notice of the use of the color “red” with telephone directories by virtue of the 1994 registration.  Furthermore, the Panel finds it highly unlikely that Respondents were not aware of Complainant’s use of the Mark prior to registration of the Domain Name as the Domain Name is identical to the Mark and used by Respondents to offer the identical class of goods and services.  The

Panel finds that Respondents have demonstrated bad faith by registering the Domain Name with the intent to attract Internet users by creating a likelihood of confusion with Complainant’s Mark as to the source of the domain name at issue.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s marks, thus creating a likelihood of confusion strictly for commercial gain).

Further evidence of bad faith is found in Respondents’ use of the Domain Name. Once Complainant had registered the Mark it sent a cease and desist letter to Respondents, which went unanswered.  In a follow-up communication Complainant offered to purchase the Domain Name from Respondents for $1,000.  Respondents declined, instead offering to sell the Domain Name for $100,000.  While Respondents did not initiate the contact with Complainant, the sum of $100,000 was still offered to Complainant for the sale of the Domain Name, which on the facts and circumstances of this case is strongly suggestive of an intent to obtain such consideration as of the time of registration.  Respondent has made no effort to show that its out-of-pocket costs reached such a princely sum; indeed such an argument would be highly suspect.  The offer to sell a domain name for consideration beyond the registrant’s out-of-pocket costs may be evidence of bad faith.  See e.g. World Wrestling Fed’n Entm’t, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).  The Panel therefore finds this offer of sale to be evidence of Respondents’ bad faith. 

Further evidence of bad faith is the transfer of the Domain Name.  Domain name registrants are normally free to transfer domain names as they see fit.  The ownership shuffle here, however, began only after Complainant had sent its second cease and desist letter to Respondents. (See Exhibit G to Complaint).  Twice, Complainant’s attempts to initiate these proceedings were frustrated by the Domain Name’s change of ownership.  At any other time Respondents’ actions may have been considered innocuous, however viewed in the context of the above instances of bad faith and Complainant’s attempts to commence action against Respondent, the Panel views the transfers as further evidence of bad faith.

In view of the overall circumstances described above, the Panel finds that the Complainant has shown that Respondent has registered and used the Domain Name in bad faith.

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that the requested relief shall be GRANTED.

Accordingly, it is ORDERED that the domain name <thebestredyellowpages.com> be transferred from Respondents to Complainant.

Michael A. Albert, Panel Chair

Hon. Carolyn Marks Johnson (Ret.), Panelist

Dennis A. Foster, Panelist

Dated: February 20, 2004

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