Please, help: WhitePages & YellowPages

[DomainEmpire.com]

WhitePages & YellowPages are generic terms internationally reknown, correct ?

Well, I own both of them in Italian: PagineBianche.com/net/org & PagineGialle.net ... Seat (The Italian company with both registered trademarks and rights to use them for the official Italian phonebook "Pagine Bianche" and the official Italian companies directory "Pagine Gialle) wants to sue us for trademark violation !

But note, we're not use these names in relation of their meaning in order to avoid any possible trademark confusion, we don't want to lose them in the limits of possible ... Who's right in your opinion, are we seriously risking to lose them ?

PagineGialle e PagineBianche are litterally translated from English and are generic terms ...
Any feedback/help/suggestions would be highly appreciated, thanks in advance for your time.

 

[fischermx]

WhitePages & YellowPages are generic terms internationally reknown, correct ?

I'm not a lawyer, but ..

Both whitepages and yellowpages ARE trademarks, yet generic terms.

Once, the Mexican telephone company Telmex tried to get the spanish equivalent of YellowPages, eventhough, it was not only not the exact translation (paginas amarillas), but they registered "Seccion Amarilla", which is the exact term Telmex uses for its directory.
Well, the Mexican company could not get the domain from them.
I think that was bad ruled, imho.

 

[Dave_Z]

http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0799.html

 

[fischermx]

..... and that link is very about similar Yellow Pages cases ???

 

[Dave_Z]

..... and that link is very about similar Yellow Pages cases ???

No offense, but you did read it thoroughly, right?

 

[DomainEmpire.com]

Many thanks for helping and for the useful suggestions, I'm ready to fight hardly to keep my domains

 

[fischermx]

No offense, but you did read it thoroughly, right?

No offended either, but yes, I read it thoroughly.

You know what, I realize, what i didn't read thoroughly was the poster message.
He says hes not using the name in connection with a telephone directory.
I think my mind read that and didn't believe and by passed it

I wonder what other meaning for Pagine Bianche could be.
Anyway his domains are parked pages. How he will defend for "legitim interests" ? How he will proof "bona fide" ?

I know a song "pagina blanca" , btw.

 

[DomainEmpire.com]

I remember that in December 98 I read a book (I wasn't using Internet yet) called "Le 100 cose da sapere per usare Internet" which means "100 things you must know to use Internet".
Well, this book gave a definition for the 100 most used words related to Internet: browser, irc, chat, etc .... It said that "Pagine Bianche" indicated an email directory ... I'll check if the Italian dictionary gives the same definition, not really important if it should not be true, the important is to demonstrate a good reason for whom I registered it.

 

[fischermx]

These are similar to your case, even involve the same "trademark", all lost by complainant :

http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0489.html

http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0490.html

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0973.html

It seems you're rather safe.

 

[DomainEmpire.com]

Thanks fischermx, you helped a lot, I'll sleep better now and if I'll hear back from their lawyers, I'll let them know about these cases so probably they'll think twice before sueing me