WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis *
Case No. D2000-1807
1. The Parties
Complainant is Bellsouth Intellectual Property Corporation, located at 824 Market Street, Suite 510, Wilmington, Delaware 19801 USA. Complainant is represented by Judith A. Powell, Esq., of the firm Kilpatrick Stockton LLP, Suite 2800, 1100 Peachtree Street, Atlanta, Georgia 30309-4530 USA.
Respondent in this matter is Freeworld and/or Luis*, located in Miami, Florida USA. No street address has been provided. Respondent is not represented by counsel.
2. The Domain Name(s) and Registrar(s)
The domain name in dispute is "bellsouthpages.com." The registrar is Register.com, located at 578 8th Avenue, 11th Floor, New York, NY 10018 USA.
3. Procedural History
Complainant submitted its complaint in this action to WIPO by e-mail on December 22, 2000, and in hard copy on December 27, 2000. The complaint requests that WIPO apply the Uniform Domain Name Dispute Resolution policy (the "Policy"). The complaint was filed in accordance with the requirements of both WIPOís supplemental rules as well as the rules governing the Policy. In addition, the Complainant has met all other requirements for the complaint to be adjudicated, including payment of proper fees.
A verification request was sent to Register.com, Inc., on December 29, 2000, asking that Register.com confirm receipt of the complaint, confirm that " bellsouthpages.com" is registered with Register.com, and confirm that the Respondent is the current registrant of the domain name. Register.com provided the requested verification on January 5, 2001. Thereafter, by notice dated January 8, 2001, WIPO advised the Respondent that this administrative proceeding had been commenced. The notification further advised Respondent than an answer to the complaint was to be filed no later than January 27, 2001. The notification was sent to the Respondent by post, facsimile and e-mail, using the contact details that had been provided. Respondent did not file a response within the time required, nor did Respondent seek any extensions of time to file a response. As such, Respondent was declared in default, and a notice advising of this fact was sent on February 6, 2001.
The Center appointed an administrative panel to decide the case on February 28, 2001 and requested that a decision be forwarded by March 14, 2001.
4. Factual Background
Complainant, as the result of an assignment from Bellsouth Corporation, is the owner of all right, title and interest in and to various trademarks, including the marks BELL, BELLSOUTH, BELLSOUTH PRODUCTS, BELLSOUTH.NET and BELLSOUTH MOBILITY. It is noted that many of these registrations are concurrent registrations and that other entities, namely those companies that were former members of the Bell System, have independent rights to use the term BELL but not the term BELLSOUTH. Complainant, or its predecessors in interest, have been making continuous use of the BELLSOUTH mark since a date long prior to any date on which the Respondent can rely. While Complainant appears to simply own and manage certain intellectual property assets, its related company Bellsouth Corporation has been providing telecommunications services and related goods in the Southeastern United States, including in Miami where Respondent is located.
On April 4, 2000, Respondent registered the domain name " bellsouthpages.com." Respondent was sent a demand letter by Complainant on October 19, 2000, objecting to the registration of the domain name and advising that the domain name violated Complainantís rights. In response to that demand letter, Respondent advised by e-mail dated October 30, 2000, that he wanted the domain name for personal use, although the specific nature of that personal use has never been described. Currently, there is no website available at the domain name " bellsouthpages.com" and it does not appear as though there ever has been a website.
5. Partiesí Contentions
Complainant argues that it has rights in the marks BELL and BELLSOUTH; that the domain name is confusingly similar to its BELL and BELLSOUTH marks; that Respondent has no right to or legitimate interests in the domain name noting that its rights in the BELLSOUTH mark predate the registration of the domain name; that Respondent has not been commonly known as or done business as Bellsouthpages; that Respondent is not authorized by Complainant to use the BELLSOUTH mark; and that there has been no use of the domain name in connection with the bona fide offering of goods or services or for noncommercial purposes. Finally, Complainant contends that the domain name was registered and is being used in bad faith based on the reputation of the BELLSOUTH mark and the registrations therefor, evidence that Respondent knew about the BELLSOUTH mark before taking the domain name, and that by virtue of recognition of the BELLSOUTH mark, Respondentís decision to register the domain name "bellsouthpages.com" is for purposes of selling the name for profit or otherwise trading upon Complainantís goodwill.
Respondent has not responded to the complaint and, as such, has not contested any of the facts and allegations made by the Complainant.
6. Discussion and Findings
In order for Complainant to prevail in this matter and to obtain the requested relief of a transfer of the domain name "bellsouthpages.com" Complainant must prove:
· That Complainant has rights in the mark Bellsouth;
· That the domain name is identical or confusingly similar to Complainantís trademark or service mark;
· That the Respondent has no rights or legitimate interests in the domain name; and
· That the domain name was registered and is being used in bad faith. See Policy ∂ 4(a).
Rights in the Mark
In light of the registrations submitted with the Complaint together with the assignment document which transfers ownership in the trademarks set forth in the registrations to Complainant, it is evident that the Complainant has met the first requirement of the Policy that it has rights in the BELLSOUTH mark.
Identical or Confusing Similarity
The domain name at issue here takes in whole the mark BELLSOUTH adding to it the generic word "pages." The addition of such a term to Complainantís trademark is likely to actually create confusion as opposed to alleviate confusion. Consumers who see the domain name "bellsouthpages.com" are likely to believe that this is a telephone directory or telephone directory service sponsored by Complainant or one of its affiliates. As such, the domain name is deemed to be if not identical then at least confusingly similar to the BELLSOUTH marks in which the Complainant has established rights.
Legitimate Rights or Interests
Since the Respondent has defaulted in this proceeding, Respondent did not attempt to prove a legitimate right or interest under the Policy (paragraph 4(c)(i-iii)). In addition, the administrative panel has noted that the domain name "bellsouthpages.com" is not being used in connection with an active website, is not being used to provide bona fide goods and services, and is otherwise not being used fairly or for non-commercial purposes. These facts, together with Complainantís factual representation that it has never authorized or otherwise licensed the Respondent to use the trademark BELLSOUTH in or as part of a domain name and its factual showing that Respondent does not do business under the domain name, leads to a finding that Respondent has no legitimate rights or interest in the disputed domain name.
Registered and Used in Bad Faith
This element of the Policy, embodied in paragraph 4(b), has created a dispute among panelists and litigants as to whether there must be actual use of a domain name in order to meet the requirements of the Policy. While most cases do suggest that passive holding of a domain name may be sufficient use to satisfy the Policy, the panel is aware of some decisions that have required actual use. It is this panelistís belief that instead of looking at the type of use or non-use at issue, it is more appropriate to consider whether, under the facts presented, the registration of the domain name represents the type of abusive activity that the Policy was designed to prevent.
The Policy sets forth certain evidence that can lead to a finding of bad faith use and registration. In this case, none of the factors set forth in paragraph 4(b) of the Policy are found. However, the Policy notes that the factors set forth therein are not dispositive. Given the fact that both parties to this proceeding are located in the United States and thus are bound by the laws thereof, it is appropriate to consider not only the factors of bad faith set forth in the Policy but also the factors of bad faith that are included in the Anticybersquatting Consumer Protection Act, 15 U.S.C. ß 1125(d). Looking at those factors, it is clear that there is evidence of bad faith here.
As established by Complainant, the Respondent does not appear to have any trademark or other intellectual property rights in the domain name, the domain name does not consist of the Respondentís legal name or a name that is commonly used to identify the Respondent, the Respondent has made no prior use of the domain name in connection with the bona fide offering of goods or services, and the Respondent has not made any noncommercial or fair use of the mark. All of these factors show bad faith. In addition, Respondent did not provide full contact information, a factor under the ACPA that is evidence of bad faith. Finally, what may be most dispositive is the fact that the Respondent clearly was familiar with Complainant and the BELLSOUTH mark. Indeed, in his e-mail to Complainant dated October 30 (attached as Exhibit H to the Complaint), Respondent gives as an e-mail address " email@example.com". As a customer of Bellsouth, Respondent had actual knowledge of the BELLSOUTH mark and of the exclusive rights that Complainant has to the BELLSOUTH mark. Respondent was given the opportunity to advise as to his reasons for choosing the domain name "bellsouthpages.com" and to make a case for the fact that the domain name was not registered and used in bad faith. Respondent chose not to do so.
Given the registrations owned by Complainant, the extensive use of the BELLSOUTH mark by Complainant, and the fact that Respondent is a customer of Bellsouth and therefore had to have known about the BELLSOUTH mark, registration of the domain name is clearly in bad faith. As to use, given the specific circumstances here, in light of the fact that Respondent is doing nothing more than hoarding or warehousing the "bellsouthpages.com" domain name without any legitimate interest in the mark, bad faith use is also established (see, Georgia Gulf Corporation v. The Ross Group, WIPO case no. D2000-0218).
Based on the materials submitted in this matter, the panel, pursuant to Rule 15 of the Rules for Uniform Domain Name Dispute Resolution Policy, finds that the domain name at issue is confusingly similar to the BELLSOUTH mark in which Complainant has rights, the Respondent has shown no legitimate rights or interest in the disputed domain names, and that on the facts shown here, the domain name was registered and used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the panel orders that the registrar, Register.com, transfer the domain name "bellsouthpages.com" from Respondent Freeworld to the Complainant Bellsouth Intellectual Property Corporation.
Barbara A. Solomon, Esq.
Dated: March 14, 2001