Pagesjaunes.com is not a cybersquatting case

26.10.2000

On August 21, 2000, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center brought in a decision concerning the registration of the pagesjaunes.com and pagesjaunes.net domain names



On August 21, 2000, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center brought in a decision concerning the registration of the pagesjaunes.com and pagesjaunes.net domain names, which were not registered by the French Company France Telecom but by a US Company.France Telecom is titular of several French marks "Pages Jaunes" used to designate phone directories.The US Company "Les Pages Jaunes Francophones" registered the pagesjaunes.com and pagesjaunes.net domain names in 1996 and 1997, respectively, without using them for a web site.France Telecom complained to the WIPO Arbitration and Mediation Center in order to obtain the transfer of the two litigious domain names because they infringe the French registered trademarks.The Arbitration Center, without judging the validity of the French trademark PAGES JAUNES, indicated that it is descriptive to designate phone directories. This denomination is widely used in the world, even in other languages (Yellow Pages, Amarillas Pàginas...) and it cannot be exclusively claimed by France Telecom.Further, France Telecom directly or indirectly controls a vast array of web sites (including pagesjaunes.fr) and is therefore not imperiled by the coexistence with the US Company.The registration of pagesjaunes.com and pagesjaunes.net is therefore not a case of cybersquatting, the titular was in good faith when he registered a descriptive domain name.The plaint of France Telecom is neither a "Reverse domain name hijacking" case (case where a Company abuses of the notoriety of its trademark in order to prevent the registration of a domain name by a titular who had nevertheless legitimate rights or interests).The Administrative Panel of the Arbitration Center indicates also that a decision brought by a French Court could have been favourable to France Telecom and quotes the similar Atlantel case. However, we would not have compared these two cases, because in the Atlantel case, the validity of the mark was not contested (it does not appear as being descriptive nor widely used).Decision 489 of August 21, 2000 of WIPO Arbitration and Mediation Center.