Coming to their Sensis: of Aussies, scams and the Yellow Peril

Scams of one sort or another have been frequent visitors to the IPKat's weblog recently.  Here's one all the way from Australia.  The IPKat thanks David Lancaster (Rouse Legal) for this note.  David acted for Sensis and Telstra.

Sensis Pty Ltd., Telstra Corporation Limited v Yellow Page Marketing B.V, WIPO Case No. D2011-0057 (here)

In Australia, the ‘Yellow Pages’ business directory is marketed and sold by Sensis Pty Ltd. Sensis is the exclusive licensee of numerous Australian trade mark registrations relating to Yellow Pages and the Walking Fingers Device, all of which are owned by Telstra Corporation Limited, Sensis being a wholly owned subsidiary of Telstra.

In May of last year, Sensis became aware of a scam operated by two companies -- Yellow Publishing Limited (an English company) and Yellow Page Marketing BV (‘YPM’), a Dutch company. These companies sent infringing faxes to Australian businesses, deceiving them into paying for registration with their ‘Yellow Page’ directory. YPM had also registered a number of domain names of the form ‘yellowpage-[location].com’, where the location was an Australian city or state (for example yellowpage-melbourne.com). 

Sensis I
Shortly after becoming aware of the scam, Telstra/Sensis (the complainants) filed a UDRP complaint in relation to ten domain names owned by YPM. A decision of a sole Panelist was given on 14 July 2010 as Sensis Pty Ltd, Telstra Corporation Limited v Yellow Page Marketing B.V, WIPO Case No. D2010-0817 (‘Sensis I’) (here). 

In Sensis I, the original Panel declined to order transfer of the domain names to the complainants. Why? Because they considered that, while the domain names were confusingly similar to the complainants’ YELLOW PAGES trade marks, the respondent had shown sufficient legitimate ‘fair’ use of the domain names to rebut the complainants’ allegations of lack of rights or legitimate interests. This was because the business directory services provided by the respondent were not restricted to Australia and could be accessed from countries outside Australia where YELLOW PAGES is either not registered or subject to fair descriptive use.

Given this finding, the original Panel in Sensis I did not consider the issue of bad faith registration and use. 

Sensis II
Following the outcome in Sensis I, the complainants refiled the complaint. The decision in the refiled case was given on 15 March 2011 and published as Sensis Pty Ltd, Telstra Corporation Limited v Yellow Page Marketing B.V, WIPO Case No. D2011-0057 (‘Sensis II’).

In Sensis II, a 3-member Panel decided that the case could be reheard because: 

·         Following the established principles in Grove Broadcasting Co. Ltd v Telesystems Communications Limited, WIPO Case No. D2000-0703 (here) and Creo Products Inc. v Website in Development, WIPO Case No. D2000-1490 (here), the case could be reheard on the basis that new evidence had come to light regarding the respondent’s conduct since the original complaint was filed in Sensis I.

·         The complainants did not have an opportunity to comment on the original Panel’s own online investigations in Sensis I. The Panel in Sensis II emphasised the importance of procedural fairness in WIPO administrative proceedings. Parties should be allowed to comment on investigations conducted by a Panel of its own initiative that concern ‘new or unanticipated factual or legal material…where that material could be dispositive and where it is reasonably subject to challenge or interpretation’. The parties were not given the opportunity to comment on the original Panel’s own Google and United States Patent and Trademark Office searches in Sensis I. The original Panel in Sensis I relied on these US-focused search results to demonstrate the generic nature of YELLOW PAGES without performing country-specific (i.e. Australia) Google searches, which would have given very different results.

Upon rehearing the case, the Panel in Sensis II ordered transfer of the domain names to the complainants, deciding that: 

·         They agreed with the original Panel in Sensis I regarding confusing similarity.

·         Contrary to the finding in Sensis I, the respondent did not have rights or legitimate interests in the domain names. The Panel in Sensis II did not accept that the respondent was making fair use of the complainants’ YELLOW PAGES mark. Although the respondent’s services could be accessed from outside Australia, new evidence suggested the respondent was operating, and targeting businesses, in Australia. Further, in contrast to the approach of the original Panel in Sensis I, whether YELLOW PAGES was generic in the United States was not relevant to the issue of ‘fair use’ in this case since the disputed domain names were Australia-centric and contained listings and advertisements paid for by local businesses in Australia.

·         The evidence, much of which only came to light after Sensis I, established that the respondent registered and used the domain names in bad faith, seeking to mislead internet users for commercial gain by causing confusion with the complainants’ YELLOW PAGES mark".

Once again, says the IPKat, we seem to find a situation in which the complained-of activity is clearly objectionable and deceptive, but the culprits are incredibly difficult to shift. He keeps wondering whether the checks and balances between (i) the need to protect trade marks and trade names, (ii) the need to protect bona fide registration and use of domain names and (iii) the need to safeguard the interests of consumers are in need of radical readjustment to meet the needs of the day.  Merpel adds, does anyone know much money the respondents have been making, and how much of it has been channelled back into the pockets of their victims?