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CIRA Disallows Complaint Over yellowpage.ca
In a dispute over the domain name yellowpage.ca, a panel appointed under the Canadian Internet Registration Authority’s Domain Name Dispute Resolution Policy dismissed the complaint of Yellow Pages Group Co. (“Yellow Pages”), a Canadian-based directory publisher, against Coolfred Co. (“Coolfred”), an Ontario-based sole proprietorship. In making its decision, the panel accepted that Yellow Pages has been the owner of the YELLOW PAGES and YELLOWPAGES.CA trade-marks since 1980 and 2003, respectively.
Pursuant to the Domain Name Dispute Resolution Policy, Yellow Pages proved that the disputed domain name is confusingly similar to a mark in which it had rights prior to the date of registration of the domain name, and to which such rights still exist. Specifically, the panel found yellowpage.ca to be confusingly similar to Yellow Pages’ trade-mark since “the average Internet user, based on first impression and imperfect recollection,” is likely to mistake YELLOWPAGE for YELLOW PAGES. Second, there was evidence Coolfred had no legitimate interest in the domain name. Although Coolfred had a business plan involving the domain name, no related commercial activity was carried out and therefore ‘use’ constituting a legitimate interest was not found. The domain name was also not a legal name of Coolfred or a geographical name. Notwithstanding the foregoing, Coolfred was found not to have registered the domain name in bad faith. Even though it planned to offer domain names for sale, this was not adequate evidence of an offer to specifically sell yellowpage.ca. Also, registering yellowpage.ca did not prevent Yellow Pages from registering its trade-marks. Since bad faith was not shown, the panel declined to transfer the domain name to Yellow Pages.
On a related point, Coolfred sought compensation of $5,000.00 from Yellow Pages, which can be awarded by the panel if the complaint was commenced “for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of the disputed domain name”. However, since Yellow Pages established rights in its trade-marks and yellowpage.ca was confusingly similar to such marks, the request for compensation was dismissed.
For a copy of the decision, visit: