DRS Decision 1116

.nz Dispute Resolution Service

DRS Reference: 1116

 

yellow.nz Dispute Resolution Service

DRS Reference: 1116

Yellow Holdings Limited v Eurobelt Limited

 

 

Key words -

Domain name
yellow.net.nz

Identical or similar trade mark or name
Registered trade marks - unregistered mark - generic - trade mark not included within domain name - not identical or similar

Rights
Rights not infringed.

1. Parties

Complainant:

Yellow Holdings Limited
Level 2, 604 Great South Road
Ellerslie
Auckland
New Zealand

Represented by: David Marriott

Respondent:

Eurobelt Limited
PO Box 409
Kumeu
Auckland
New Zealand

2. Domain Name/s

yellow.net.nz

3. Procedural history

3.1 The Complaint was lodged on 03 August 2015 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 6 August 2015. The domain/s were locked on 05 August 2015, preventing any changes to the record until the conclusion of these proceedings.

3.2 No Response was received.

3.3 The Complainant paid Domain Name Commission Limited the appropriate fee on 22 September 2015 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").

3.4 Barry Paterson, the undersigned, ("the Expert") confirmed to the DNC on that s/he knew of no reason why s/he could not properly accept the invitation to act as expert in this case and that s/he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his/her independence and/or impartiality.

4. Factual background

4.1. Yellow Holdings Limited (the Complainant) is the current owner and operator of the business directory business previously operated by Telecom (now Spark).

4.2. The business commenced when the national telephone network was owned by the New Zealand Post Office, and subsequently has been owned by Telecom and one other independent operator before being acquired by the Complainant. For more than 50 years the business has published the Yellow Pages business directories which have been extensively distributed and used throughout New Zealand.

4.3. In recent years the business has been expanded to include the provision of online services including directories, web hosting and digital marketing. The Complainant says these additional business activities are analogous and ancillary products to its business directories business.

4.4. When the Complainant acquired the business, it also acquired a portfolio of trade marks which are referred to below. These trade marks are held by NZ Directories IP Limited, which is a wholly owned subsidiary of the complainant. It is accepted that the Complainant has been authorised to use these trade marks and is entitled in part to base its claim to Rights on them.

4.5. As the Respondent has not responded to the Complaint, the information available relating to the Respondent has been provided by the Complainant. Much of it however is based on documentary evidence which establishes its authenticity.

4.6. The Respondent is the holder of the Domain Name which it registered in May 1998. Its shareholders and directors are and always have been Henk Maria Klos and Johanna Klos. The Respondent was incorporated in 1991.

4.7. In 1999, there were Court proceedings between companies in the Telecom Group as plaintiff and Yellow Web Limited and Mr Klos as defendants. In a High Court judgment given in April 1999 it was noted that the Telecom plaintiffs sought interim injunctions "to restrain the defendants from using the description 'Yellow Pages' or 'Yellow Web Pages' and/or 'the colour yellow' in relation to any business directory including any business directory on the Internet". The interim injunction was granted.

4.8. The High Court judgment gave some background. It referred to Telecom and its predecessors having for many years published Yellows Pages directories which were well known to New Zealand consumers. Since 1997 Telecom had also directed energies not only to the publication of the traditional yellow pages directory but to providing the service on the Internet. It had the domain name "yellowpages.co.nz". In 1998 it discovered another website "yellowhomepages.co.nz". Telecom complained and the holders of that domain name withdrew the site from the Internet for a period but then reactivated the domain name which led to the proceedings.

4.9. Final judgment was given in the case in June 1999 when a permanent injunction issued. The sealed judgment states that the judgment was given by consent. There were declarations that registered trade mark numbers 168211 and 261018 had been infringed by the defendants and the permanent injunctions restrained the defendants from publishing business directories or promoting them with reference to the words YELLOW WEB PAGES or YELLOW PAGES.

4.10. The recent history is sourced from an email exchange between an employee of the Yellow Pages Group and Mr Klos in June this year. Apparently the exchange arose because the Complainant wished to register the domain name "yellow.nz" but could not do so because of the existence of the Domain Name. After alleging that Mr Klos could not run a business from "yellow.nz" without infringing either the Complainant's trade marks or the Fair Trading Act, it offered to pay Mr Klos $5,000 for the transfer of the Domain Name subject to certain conditions.

4.11. Mr Klos' reply, which was not altogether in friendly terms, included:

 

  • "If and when I decide to hand over the yellow.nz domain, it will not be for the amount - or conditions - you offered me, despite your threats.

    The disputes and resulting Court cases with the Yellow Pages 15 odd years ago have cost me about $65,000. Money I didn't have and had to borrow in order not to be bankrupted courtesy of the Yellow Pages. Money which I am - after 15 years - still paying off.

    The $65,000 has cost me $190,106.49 in interest over the last 15 years at an average rate of 9.15%.

    My counter-offer to you is therefore $190,106.49 plus $65,000 which equals $255,106.49."

4.12. The registered trade marks on which the Complainant relies are numerous and include the two trade marks referred to in paragraph 4.9 above. It is unnecessary to give full details of all the trade marks and the following summary gives details of some of the more relevant trade marks on which the Complainant relies:

 

  • (a) The words YELLOW PAGES are registered in Classes 16, 35, 38, 9 and 42.

    (b) Trade mark registered number 261018 is of the colour yellow as depicted below is registered in Class 16.

    (c) The insignia depicted below, with and without a yellow background, is registered in Classes 16 and 35.

    (d) The words YELLOW PAGES BUSINESS is registered in Classes 16 and 41.

There are other related trade marks which in part use the insignia shown above and another insignia and in some cases are in Chinese or have Chinese references. However, it is not deemed necessary to describe them.

4.13. For the purposes of this decision the relevant classes are:

 

  • (a) Class 16: printed matter in the form of telephone and business directories and material relating to telephone and business directories and associated advertising material.

    (b) Class 35: advertising and business services relating to business directories and associated advertising materials: information services for businesses including investigation services, commercial and industrial management assistance, direct marketing services; inquiry services; advertising services, information provided online from computer databases or from computer networks; all being services in this class.

    (c) Class 38: communication services in this class relating to business directories and associated advertising material: communication services.

    (d) Class 9: communication apparatus and other apparatus for recording, processing, transmitting and reproducing sounds or images including electronic directories and reference works; calculating machines, data processing equipment and computers, survey and signalling apparatus, and instruments and parts and fittings for all the aforesaid goods including computer software; all being included in this class.

    (e) Class 41: information services for entertainment, educational or recreational purposes.

5. Parties' contentions

(a) Complainant

5.1. The Complainant's position in respect of its "rights" is:

 

  • (a) It now trades as Yellow® through the extensive use, promotion and development of the "yellow" brand. The Complainant, its subsidiaries and its predecessors in business (including Telecom and NZ Post) have created a broad monopoly in relation to the use of YELLOW in relation to business directories and since 1996 in relation to the provision of online services including directories and digital marketing.

    (b) YELLOW and YELLOW PAGES form part of the most well-known family of trade marks historically and currently in use in New Zealand, and, in the online context both marks are synonymous solely with the Complainant and its products and services. The YELLOW PAGES business directories have been extensively published, distributed and used throughout New Zealand since 1960. The business has enjoyed a total monopoly in relation to the use of YELLOW in relation to business directory services throughout its history. From 1996 the YELLOW business directory listings have been published online by the Complainant (and its predecessors in business) initially through the domain names "yellow.co.nz" and "yellowpages.co.nz". The online YELLOW business has expanded to incorporate a large number of analogous and ancillary products and services to its directory business including web hosting and digital marketing services.

    (c) Almost all of its trade mark registrations include the word YELLOW and/or the colour yellow. The trade marks are registered in relation to a wide range of goods and services including in many cases Class 38 products and services.

    (d) Class 38 relates to a wide range of telecommunication services and internet and digital services.

    (e) A family of trade marks together creates a clearly identifiable monopoly in the form of registered trade mark rights in respect of the use of YELLOW, whether in isolation or in conjunction with other words, in relation to any internet-related service.

    (f) The Complainant has existing domain names including yellow, namely "yellow.co.nz", "yellow.org.nz", "yellowpages.nz", "yellowpages.co.nz", "yellowpages.kiwi.nz" and "yellowpages.net.nz". The Complainant's website (which is linked to the "yellow.co.nz" and "yellowpages.co.nz" domain names) prominently features both the colour yellow and the YELLOW trade mark (including sub-variances), multiple times on each and every page.

    (g) In summary, the Complainant's position is that its ownership of the trade marks and the use of the word yellow give it the exclusive right to use YELLOW as a trade mark for any product or service related to the internet.

5.2. The Complainant's position is that the registration is an Unfair Registration because:

 

  • (a) the names are confusingly similar to the Complainant's famous and registered family of YELLOW marks;

    (b) the Respondent is not and has never been authorised by the Complainant to use the YELLOW trade mark or to register the Domain Name. It does not have any rights or legitimate pre-existing interest in the Domain Name;

    (c) The Domain Name is not being used;

    (d) The use of the Domain Name by the Respondent is also likely to mislead, deceive and/or confuse members of the public;

    (e) The Domain Name can only be used in a manner that would unfairly disrupt the business of the Complainant, including by making unauthorised, misleading and false representations as to the existence of some form of connection between the Respondent and the Complainant;

    (f) The Respondent has no legitimate intention for the use of the Domain Name;

    (g) The Domain Name is registered, acquired and/or is likely to be used in a manner that takes advantage of or is unfairly detrimental to the Complainant's Rights.

5.3. The provisions of the Policy relied upon by the Complainant are:

 

  • 5.1.1 Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

    (a) for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.

    (b) as a blocking registration against a name or mark in which the Complainant has Rights; or

    (c) for the purpose of unfairly disrupting the business of the Complainant; or

    5.1.2 Circumstances demonstrating that the Respondent is using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

5.4. The exchange of emails referred to in paragraphs 4.10 and 4.11 above are said to be evidence that the registration of the Domain Name was primarily for the purpose of selling to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs associated with acquiring the Domain Name. It is also a blocking registration against a name or mark in which the Complainant has Rights and it is said that it is being retained for the purposes of unfairly disrupting the business of the Complainant.

5.5. In respect of paragraph 5.1.2 of the Policy, the Complainant's position is that the use of the Domain Name by the Respondent would be likely to confuse, mislead or deceive persons or businesses into believing that "yellow.net.nz" is registered to, operated or authorised by, or otherwise connected with the Complainant. It was submitted that the use by the Complainant and its predecessors is such that any person seeing the word YELLOW used as a prominent part of a domain name will undoubtedly make a connection with the Complainant. Thus the Respondent cannot use the Domain Name for any valid purpose without passing the associated website off as being in some way connected with or authorised by the Complainant and/or without making a misleading representation to that effect. The allegation is that no other traders are using of have used YELLOW in isolation as a domain name in New Zealand and the public is well used to expecting any use of yellow will lead to the Complainant's website.

(b) Respondent

5.6. No submissions were received from the Respondent.

6. Discussion and findings

6.1. Under paragraph 4.1 of the Policy the Complainant is required to establish:

 

  • 4.1.1 The Complainant has Rights in respect of the name or mark which is identical or similar to the Domain Name; and

    4.1.2 The Domain Name, in the hands of the respondent, is an Unfair Registration.

6.2. There are two elements in paragraph 4.1.1, firstly, the existence of Rights in a name or mark, and secondly, the name or mark must be identical or similar to the domain name. The Complainant relies on a variety of registered marks and the relevant ones include those described in paragraph 4.12 above. In particular, the Rights are in the words YELLOW PAGES and YELLOW PAGES BUSINESS, in the colour yellow trade mark as depicted in Trade Mark No. 261018 and in the insignia which sometimes has a yellow background. It is necessary for the Complainant to establish that those marks are identical or similar to the Domain Name.

6.3. What is more problematic is its claim to an unregistered mark and in particular its claim to the Rights in the word YELLOW. I accept that it has a common law right based on goodwill and reputation in the words YELLOW PAGES. However, it claims wider rights in respect of the word YELLOW. Its position is that it has used that word in relation to the business directories and online businesses in such a manner as to give it a monopoly on the word to the exclusion of other users. In the email exchange referred to above, it stated it owned the "YELLOW" trade mark in New Zealand and that YELLOW was one of its core trade marks. It is correct that most of its trade marks do include the word YELLOW and/or the colour yellow.

6.4. When a complainant relies on an unregistered mark, it is necessary to establish on the balance of probabilities that the mark has in fact achieved a reputation. In this case the Complainant is required to provide evidence to support its claim that it has used the word YELLOW on its own as a mark for a significant period to a significant degree and that the word alone is recognised by the public as applying to the goods or services of the Complainant.

6.5. The Complainant has the word YELLOW prominently displayed on its web pages and has a suite of domain names which include the word YELLOW, two of which are "yellow.co.nz" and "yellow.org.nz". Its website is linked to "yellow.co.nz" and "yellowpages.co.nz".

6.6. In the email exchange referred to above, the Complainant alleged that it owned the "YELLOW" trade mark in New Zealand. It does not have a registered trade mark in that name alone and it is necessary to consider whether the evidence provided establishes an unregistered mark in that name alone. A mere claim to such a right is not sufficient. The Complainant refers in the Complaint to an "extensive portfolio of registered trade marks and the Complainant's common law rights and the reputation and goodwill accrued in the YELLOW trade marks (both registered and unregistered)". It says "the business is now operated by the Complainant as the operating and trading company, trading as Yellow ®.

6.7. Just as it is not easy to obtain a trade mark for a colour and when granted the colour trade mark is associated with a particular product, it is in my view not easy to establish a common law right in a generic name of a colour. Trade Mark 261018 is associated with "printed matter in the form of telephone and business directories and materials relating to telephones and business directories and associated advertising material". It is not a trade mark which gives the Complainant exclusive rights to the word YELLOW for all purposes. While a trade mark in a particular colour is important in brand recognition when attached to a particular product, or service, it does not give rights to the use of the generic word.

6.8. In my view, despite the various allegations and assertions in the Complaint, the Complainant has not established that it has used the word YELLOW on its own as a mark for a significant period to a significant degree that gives it the right to claim common law reputation in the word YELLOW.

6.9. There was no evidence produced as to when it started using YELLOW as a trade name rather than YELLOW PAGES. There is no evidence of the word obtaining a "secondary meaning" which gives the Complainant a monopoly in the word YELLOW, of the length and amount of the sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Such evidence is even more important when the word in respect of which a common law mark is claimed is a descriptive word such as YELLOW.

6.10. In the circumstances, it is my view that the Complainant cannot rely upon an unregistered mark to establish that it has Rights in a mark "identical or similar to the Domain Name".

6.11. While the test for similarity is not high, the usual position is that the trade mark appears within the Domain Name. The test normally involves a comparison between the trade mark and the domain name itself to determine the likelihood of user confusion. The trade mark is usually recognisable as such within the domain name. In this case the reverse applies. The generic Domain Name appears in the trade marks. In my view the words YELLOW PAGES and YELLOW PAGES BUSINESS are not similar to the name of a colour which could apply to many products. The Complainant cannot claim to have monopoly rights in the word YELLOW for products with which it is not associated and does not produce such as yellow bags and yellow cabs. The word YELLOW does not lead to connotations of business directories or pages.

6.12. I have already determined that the trade mark of the colour itself is not a mark identical or similar to the word YELLOW. In the circumstances I have come to the view that the Complainant does not have Rights in a name or mark identical or similar to the Domain Name.

6.13. Having determined that the provision of paragraph 4.1.1 of the Policy have not been met, it is unnecessary to consider the Unfair Registration issue. However, for the sake of completeness, I do so.

6.14. There are two provisions of the Policy which are relevant. First, the failure on the Respondent's part to use the Domain Name for the purposes of emails or a website is not in itself evidence that the Domain Name is an Unfair Registration (paragraph 5.2 of the Policy).

6.15. Secondly, under paragraph 5.4 of the Policy an expert "shall not take into account any evidence of acts or omissions amounting to Unfair Registration or Use which occurred more than 3 years before the date of the Complaint".

6.16. It follows that the non-use of the Domain Name by the Respondent at the present time is not in itself sufficient to satisfy the Unfair Registration test. Further the facts surrounding the litigation in 1999, while being background facts, cannot influence the decision. The fact however that there is a permanent injunction currently in place may be a relevant factor.

6.17. The dispute has arisen because of the Complainant's desire to register at the second level. There may be a sense of unfairness when a domain name registered 17 years ago and not having been used since is preventing a legitimate application by the Complainant to register at the second level. Presumably the Complainant has not known of the registration of the Domain Name until recently.

6.18. The Domain Name was registered in 1998. The evidence suggests it has not been used since and is not active. While the Domain Name is not registered in the name of Mr Klos, the permanent injunction which restrains him from infringing trade marks 168211 and 261018 would presumably hinder any attempt by the respondent to use the Domain Name for publishing, promoting, making available on the Internet, or otherwise dealing in or with a business directory including an electronic business directory from using the words YELLOW WEB PAGES or YELLOW PAGES in respect thereof or issuing the directories in the colour yellow.

6.19. On the face of it, paragraph 5.1.1 of the Policy cannot apply because the Respondent did not acquire the Domain Name for the purposes of selling, renting or otherwise transferring it to the Complainant. Nor is there evidence that it was registered as a blocking registration and in any case the circumstances of registration are irrelevant in view of the prohibition on considering matters more than three years before the date of the Complaint. The same considerations apply in respect of any allegation of unfairly disrupting the business of the Complainant.

6.20. Paragraph 5.1.2 can have no application in circumstances where the Complainant has more than 15 years not knowing of the Domain Name and it has not been used. It is not being used in a way which is likely to confuse, mislead or deceive people or business into believing that the Domain Name is registered or operated or authorised by or otherwise connected with the Complainant. If the Respondent started to use the trade name, then the Complainant may have rights.

6.21. If I had determined that the Complainant had Rights in the Domain Name, it would have been necessary to go beyond the provisions of paragraphs 5.1.1 and 5.1.2 to determine that the Domain Name was an Unfair Registration. The contents of Mr Klos' email referred to in paragraph 4.11 above suggests that the Respondent does not have a genuine intention to use the trade mark and his intent is to endeavour to recover money which the Complainant's predecessor caused him to spend on the previous litigation. If his email is a genuine statement of his intent, the Respondent is attempting to extract from the Complainant a completely unrealistic price for the Domain Name which the Respondent does not itself intend to use. However, there is no point in considering this issue further in view of my finding that the Complainant does not have Rights in a name or mark which is identical or similar to the Domain Name.

7. Decision

7.1. The Complaint is dismissed.

Place of decision Auckland

Date 12 October 2015

Expert Name Barry Paterson QC

Signature