In a decision released last week, the domain name yellowpage.ca walked away from a challenge mounted by the Yellow Pages Group Co.

In Yellow Pages Group Co. v. Coolfred Co.  (March 13, 2007), the three-member panel reviewed a complaint by the owners of the famous YELLOW PAGES family of trade-marks.  In its complaint, the trade-mark owner alleged that an Ontario registrant registered the domain name yellowpage.ca in violation of the dispute resolution policy.  To succeed, the complainant had to establish three things:

• that the domain name is identical or confusingly similar to the complainant’s trade-mark;
• that the registrant has no legitimate interest in the disputed domain name; and
• that the domain name was registered in “bad faith”.

The trade-mark owner was able to meet the first two tests but failed on the third. Despite creative arguments to paint the registrant as a career cybersquatter, the complainant failed to convince the panel that the domain name was registered in bad faith.  The complaint was dismissed and the registrant held on to the domain name. 

One other point is worth noting: Under paragraph 4.6 of the CDRP, a $5,000 penalty may be imposed on unsuccessful complainants who are engaged in reverse hijacking of domain names.  In this case, the registrant countered with its own claim that Yellow Pages Group should be obliged to pay out the $5,000 to defray the registrant’s costs.  Such a counter-claim can only succeed where the complainant mounted its challenge “unfairly and without colour of right”.  The panel correctly denied this relief, but it serves as a useful reminder of the potential costs of failed complaints.

Calgary – 12:35 MST