Court battle over use of Yellow Book name commences

New Zealand

In June 2006 Telstra Corporation Limited in Australia filed a complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre against Mandino Pty Ltd disputing Mandino's registered domain names '' and ''. Now, New Zealand's Yellow Pages Group appears to be following suit, having recently sought an injunction against Mandino attempting to prevent it from trading under the name Yellow Book and using the domain name ''.

In the Australian domain name dispute (Case DAU2006-0006), Telstra challenged the disputed domain names on the basis of Paragraph 4(a)(i) to (iii) of the '.au' Dispute Resolution Policy. Telstra argued that:

  • the disputed domain names were identical or confusingly similar to its registered YELLOW PAGES trademark (Paragraph 4(a)(i));

  • Mandino had no rights or legitimate interests in respect of the disputed domain names (Paragraph 4(a)(ii)); and

  • Mandino registered or subsequently used the disputed domain names in bad faith (Paragraph 4(a)(iii)).

In its decision, the WIPO panel recognized Telstra's YELLOW PAGES mark as well known in Australia. Nevertheless, the panel did not find the domain names identical or confusingly similar to Telstra's YELLOW PAGES mark. As such, the panel did not consider the other elements of the policy, 4(a)(ii) and (iii), as the three grounds set out in Paragraph 4(a) are cumulative.

Having prevailed in the alternative dispute resolution proceedings in Australia, Mandino is now facing a court battle in New Zealand in relation to its registration of the domain name ''.

YPG IP Limited, the owner of the trademark YELLOW PAGES in New Zealand, applied to register YELLOW as a trademark in December 2006, signalling Yellow Pages Group's intent to capture certain monopoly rights over the word. This trademark is currently under examination.

Mandino registered the disputed domain name in March 2006. The fight over the rights in the word 'yellow' in New Zealand heated up further in March this year when Yellow Pages began trading as Yellow.

The Dispute Resolution Service Policy (DRSP) governs disputes over '.nz' country-code top-level domains. Yellow Pages Group, however, may be reluctant to dispute the domain name under this policy given the lack of success in the Australian jurisdiction. Indeed, the DRSP and the aforementioned '.au Dispute Resolution Policy' are similar in that they are both based on the Uniform Domain Name Dispute Resolution Policy to some extent.

The DRSP, however, is broader than the '.au' Dispute Resolution Policy in respect of what constitutes evidence of registration or use in bad faith (covered in Paragraph 4(b) of the .au policy). That is, the equivalent provision to 4(b) in the DRSP is Paragraph 5, which in contrast to 4(b) provides a non-exhaustive list of factors which may constitute evidence of unfair registration. Included in this list is the likelihood of a domain name causing confusion and misleading or deceiving people or businesses. On the other hand, Paragraph 6 of the DRSP sets out a non-exclusive list of factors which may provide evidence that the domain name is not an unfair registration. Paragraph 6.1.2 states that if a domain name is generic or descriptive and a respondent is making fair use of it consistently with its generic or descriptive character, this may constitute evidence that the domain name is not an unfair registration.

However, at this stage, it appears that Yellow Pages Group intends to dispute the use of Yellow Book through the New Zealand courts rather than under the DRSP, it is unclear how the courts will approach the issues raised. This dispute clearly illustrates the growing contentiousness over colour trademarks and its spill-over into the realm of domain names.

Chrystal Dare, Corrs Chambers Westgarth, Melbourne

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