A WIPO panel finds that <yellowbook.com.au> is not confusingly similar to YELLOW PAGES in Telstra Corporation v. Mandino, stating:

The disputed domain names are self-evidently not identical to the Complainant’s mark.

The Panel also finds that the disputed domain names are not confusingly similar to the Complainant’s mark, for the following reasons.

The test of confusing similarity, in the context of the Policy, was set out in GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001; reiterated in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001. In the latter case, the Panel relevantly stated that:

“the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.”

Applying this test, the Panel finds that there is no confusing similarity between the disputed domain names and the Complainant’s mark.

The Complainant’s marks all combine the word “Yellow” with another word: including “Yellow Pages”, “Hello Yellow”, “Find it in Yellow”, and “Electronic Yellow Pages”.

The disputed domain names do not incorporate any of these marks entirely (and the Complainant does not argue that it has rights in the mark “Yellow Book”). The disputed domain names incorporate only a part of the Complainant’s marks: the word “Yellow”. “Yellow” is obviously a highly generic word. The Complainant has no registered mark in relation to that generic word alone. The Complainant says it has applied to register such a mark. However a trademark application does not, by itself, give the Complainant rights for the purpose of the Policy. (See the discussion by this Panel in TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Limited, WIPO Case No. DAU2006-0004.)

The Complainant makes essentially three arguments that the disputed domain names are confusingly similar to its mark.

Firstly, the Complainant notes that a domain name will be treated as confusingly similar to a mark if it incorporates the primary, distinctive element of that mark. The Complainant states that the replacement of the word “pages” with “book” in the disputed domain names does not detract from the dominant part of the Complainant’s “Yellow Pages” mark. However, the Complainant does not explicitly indicate what that dominant part is. It is clearly the distinctive combination of the two words “Yellow Pages”. The Complainant has rights in that combination. That combination is obviously not included in the disputed domain names.

Alternatively, the Complainant might argue that the distinctive element of its mark is instead the word “Yellow”. However, this element, being a highly generic word, is plainly not distinctive taken on its own. Neither has the Complainant provided evidence that the word “Yellow” has acquired distinctiveness in a trademark sense, exclusively associated with the Complainant.

Secondly, the Complainant also notes that the test of confusing similarity may be determined by a visual comparison. It states that the disputed domain names are only different to its mark by the replacement of the word “pages” by “book”. But the replacement of one word, in a two-word combination of generic terms, makes a significant difference to a visual comparison (as well as a phonetic comparison).

Thirdly, the Complainant argues that there is confusing similarity because the idea suggested by the disputed domain names is the same as the idea suggested by the mark. It refers to the test of confusion or deception established at common law (which, in Australia, may be relevant to actions other than only those for trademark infringement). The Complainant refers to a number of cases. Those cases, in essence, applied the principle that, in determining confusion between marks at common law, the imperfect recollection of consumers should be taken into account. For this reason, at common law, a meticulous side-by-side comparison is usually not appropriate in determining confusion.

The Complainant argues that this test is equally applicable to the question of confusing similarity under the Policy. The idea of a mark may clearly be relevant and has been applied in e.g. cases under the UDRP (see e.g. Jordan Grand Prix Limited v. Gerry Sweeney, WIPO Case No. D2000-0233). But it is a test with necessarily less room to operate in disputes under the Policy, because less factors will be relevant to the comparison, as noted above.

In any case, the relevance of the idea of the mark is related to the Complainant’s first argument. And so it would fail for the same reasons. Whether the idea of a mark is suggested by another is related to the question of whether a distinctive element of the first mark is incorporated in the second, on an overall comparison. (See e.g. in one of the cases referred to by the Complainant: de Cordova v Vick Chemical Co (1951) 69 RPC 103, at 105-106: “a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods he uses one or more of its essential features.” (emphasis added))

The Panel has not found that the essential features of the Complainant’s mark are sufficiently incorporated. This is not a case in which there are subtle differences between marks conveying the same impression or idea (like in e.g. Barnes & Noble College Bookstores Inc. v. Language Direct, WIPO Case No. D2003-0142, which applied the same principle). In the Panel’s view, for the reasons set out above, the differences are more than subtle.