WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BellSouth Intellectual Property Corp. v. Custom Computer Source, Inc.

Case No. D 2000-1841

 

1. The Parties

Complainant is BellSouth Intellectual Property Corp. ("BellSouth"), a Delaware corporation, with its principal place of business at 824 Market Street, Suite 510, Wilmington, Delaware 19801, U.S.A.. Respondent is Custom Computer Source, Inc. of P.O. Box 590026, Fort Lauderdale, Florida 33359, U.S.A..

 

2. The Domain Names and Registrar

The domain names at issue are <therealwebpages.com> and <therealwebpages.net> (collectively "the real web pages domain names"). The registrar of these domain names is Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of BellSouth on December 29, 2000 by email and on January 4, 2001 in hard copy. The Complainant made the required fee payments. On January 9, 2001, the Center acknowledged receipt of the Complaint to the Complainantís authorized representative and assigned this matter Case No. D2000-1841.

On January 10, the Center requested Network Solutions to verify the registration data. By email on January 12, 2,001, Network Solutions confirmed that it is the Registrar of the domain name registrations and, inter alia, that Custom Computer Source, Inc. is the current registrant.

Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Disputes Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on January 15, 2001, sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint. These documents were sent by courier, by facsimile and by email to Registrant, as well as to the Administrative Contact and Technical Contact which Respondent had previously designated.

On February. 5, 2001 the Center notified Respondent it was in default for failing to file a response. This notice of default was sent by email to the Respondent, as well as to the Administrative Contact and Technical Contact.

 

4. Factual Background

This dispute concerns a series of BellSouthís marks. It has rights to trademarks for "THE REAL YELLOW PAGES", "THE REAL WHITE PAGES" and several other "REAL" trademarks which constitute a family of marks all containing the term "REAL". This family of marks include THE REAL WHITE PAGES ONLINE, THE REAL YELLOW PAGES ONLINE, REALPAGES, REAL TALK and REAL CONSUMER TIPS.

In 1997, BellSouth launched "THE REAL YELLOW PAGES ONLINE", which is the present manifestation of its online directory service, and which is found at the domain name <realpages.com>.

Respondent registered the domain name "therealwebpages.com" on December 25, 1998 and the domain name "therealwebpages.net" several months later. Respondentís registration information with Network Solutions listed the Registrant of these domain names as Custom Computer Source, Inc. of P.O. Box 590026, Fort Lauderdale Florida 33359, U.S.A.

 

5. Partiesí Contentions

Complainant has requested that the real web pages domain names be transferred to Complainant because:

(1) these domain names are identical or confusingly similar to marks in which Complainant has rights;

(2) Respondent has no rights or legitimate interests with respect to the domain names; and

(3) Respondentís domain names were registered and used in bad faith.

Respondent has not filed any response.

 

6. Discussion and Findings

The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of these three elements must be proved by a Complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.

I Jurisdiction and Procedure

In addition to jurisdiction over the subject matter of the dispute, it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

Here, the Registrar identified Custom Computer Source, Inc., as the registrant. WIPO served the Complaint on the corporation at the address it provided to the Registrar. It also served the Administrative and Technical Contacts, as named by Respondent to the Registrar. Multiple means of service were utilized. Upon not receiving a response, the Center notified the Respondent it was in default and specified the consequences of not responding.

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint, of initiation of these proceedings, and allowed sufficient opportunity to respond.

Therefore, this Administrative Panel has competence to decide this dispute as presented.

II. The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark

Here, "A family of marks is a group of marks having a recognizable common characteristic . . . ." J & J Snack Foods Corp. v. McDonaldís Corp., 932 F.2d 1460, 1462, 18 USPq2D 1889, 1891 Fed. Cir. 1991). A family of marks only arises if the purchasing public recognizes "that the common characteristic is indicative of a common origin of the goods." Id.

Complainantís trademarks comprise a family of marks all containing the term "REAL". Respondentís real web pages domain names are confusingly similar to these marks, for at least the reasons set forth below.

Complainantís trademark are such that when the term REAL is used in a phrase with the term pages, be the phrase Yellow Pages, White pages, Yellow pages online or Web pages, one would conclude (and be confused) that Complainant was somehow involved.

The United States Patent & Trademark Office recognized this when it rejected Respondentís attempt to register The Real Webpages.com in script. As one of the grounds for refusing to register this trademark, the examiner relied on at least one of the complainantís "REAL" family of marks (The Real Yellow Pages and design), which had not yet issued, by saying that it had an earlier filing date than Respondentís and that if it matured into a registration, then the examiner might refuse resignation based on such trademark registration.

III. Respondent Has No Rights or Legitimate Interests in the Domain Names.

Paragraph 4(c) of the Policy enumerates how a Respondent may establish rights to and legitimate interests in a domain name. These include the following circumstances: (i) before any notice to Respondent of the dispute, Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these circumstances are present here.

The mark THE REAL YELLOW PAGES was first used in interstate commerce on Aug. 28, 1984. It has been widely used since in virtually every conceivable advertising media including print, radio, television and electronic yellow pages directories. Studies have shown that in 1986 more than 50 percent of the relevant public recalled the mark THE REAL YELLOW PAGES and that by 1988 more than 90 percent of the relevant public identified BellSouth as the source of the directory bearing the mark. An electronic version of the yellow pages directory began in October, 1992. Due to the success of THE REAL YELLOW PAGES mark, BellSouth began to use and build a family of REAL marks. In 1995, the first edition of THE REAL YELLOW PAGES was distributed in CD-ROM format, in 1996 Complainantís first interactive Yellow Pages Web site was launched and in 1997 Complainant launched THE REAL YELLOW PAGES Online, which is the present manifestation of Complainantís online directory service.

All of this was well before any activity by Respondent. Respondent registered the first of its real web pages domain names in December, 1998. Respondents had constructive and likely actual notice of BellSouthís use of its REAL trademarks at that time. Therefore, any use or preparation to use the real web pages domain names was not in connection with a bona fide offering of goods and services (subparagraph (i)).

For example, the email address of Respondentís Administrative Contact was yaady@bellsouth.net (the Administrative Contact has the same mailing address as Respondent). He, at least, was therefore a customer of BellSouth. Both his mailing address and that of Complainant is in the region served by BellSouth. Complainantís home office was also in that region. Since most of the general public was familiar with the BellSouth marks, it is likely that Complainant also knew of the these marks and services provided by Complainant.

As further evidence that Respondent has not used the domain names in connection with a bona fide offer of goods and services to the public, it is noted that Respondent has held the domain name for two years but has not offered goods or services under these names.

Nor does Respondent come within subparagraph (ii) as someone who is commonly known by the domain names. Respondent did register The Real Webpages.com, Inc. on

February. 3, 1999 with the Florida Secretary of State. However, on December 25, 1998, less than two months earlier, respondent had applied for its first domain name registration under the name Custom Computer Source, Inc.. Additionally, in the months following the registration with the Florida Secretary of State, Respondent continued to use the name Custom Computer Source Inc. in registering the second domain name on March 4, 1999 and used an individualís name to register the unrealwebpages.com and the unrealwebpages.net on February. 9, 2000. Thus, although Respondent did register the corporate name The Real Webpages.com, Inc. with the Secretary of State, its conduct indicates that it does not actually do business under the domain names at issue.

Nor does respondent come within subparagraph (iii). No attempt to communicate via the domain names has been made. As of the date of filing the Complaint, Respondentís Web site displayed only a graphic advertising that the site is coming soon. There also is nothing else in the record that would indicate any type of attempted noncommercial or fair use of the real web pages domain names.

IV. Bad Faith

The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."

The Policy provides in Paragraph 4(b):

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The following facts indicate that Respondent registered and has used the domain names in bad faith:

1. The fact that Respondent has not used the domain names in providing any services supports the conclusion that the names were adopted with the primary purpose of selling them for profit. Panelists considering similar situations have held the failure to make use of a domain name which incorporates a well-known mark, while not conclusive, supports the inference of bad faith. See Mondich V. Brown, D2000-0004 (WIPO, February. 16, 2000) ("it is possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use"); Sanrio Co., Ltd. And Sanrio, Inc. v. DLI, D2000-0159 (WIPO, April 20, 2000) ("[w]ith respect to the issue of bad faithí, it has been held that inactivity or non-use of the domain name by a Respondent amounts to the domain name being used in "bad faith"").

2. Complainantís widespread use of THE REAL YELLOW PAGES mark and the family of REAL marks included Fort Lauderdale, where Respondent is located. At least Respondentís Administrative Contact (who has the same mailing address as Complainant) is a customer of complainant. Therefore, Respondent is very likely familiar with Complainantís services.

3. Respondentís display of "The Real Web pages.com" on the construction page of its Web site features the same script writing as used by Complainant in its the REAL YELLOW PAGES logo. Furthermore, it displays the entire phrase titled on an angle, in precisely the same manner that Complainant displays its the Real Yellow Pages logo and mark. Finally, Respondent highlights the word REAL by coloring it red on the construction page. Respondent was aware of Complainantís marks and crafted his page to make the phrase <the real web pages.com> confusingly similar to Complainantís marks.

4. Respondent indicated on his abandoned federal trademark application that he planned to use the domain name in connection with an Internet Web site directory and in advertising. Complainant has engaged in this same type of business and would be a competitor of Respondent if Respondent actually engaged in such goods and services. A competitor may be assumed to be aware of the business dealings of his competitors, especially when a competitor is one as prominent as Complainant. Thus, it is highly unlikely that Respondent registered the domain names without knowledge of Complainantís prior rights.

5. The construction page of Respondentís Web site features the phrase "The Real Web pages.com" followed by the letter "R" in a circle, which is the symbol that indicates to the public that a particular logo is a registered trademark. However, Respondentís trademark application for the real web pages.com was refused by the U.S. Patent & Trademark Office. Respondent was aware that it did not hold the federal trademark registration as represented. Respondent falsely representing that the domain name was a registered mark would confuse the public.

6. Due to Respondentís replication of Complainantís THE REAL YELLOW PAGES, a visitor to Respondentís Web site would mistakenly believe that it is accessing a BellSouth service. Therefore, Respondent has intentionally attempted to attract Internet users by creating a likelihood of confusion as prohibited by subparagraph (iv).

Considering all of the evidence, I find that Complainant has met the requirements of paragraph 4 (a) (iii) of the Policy.

 

7. Decision

Complainant has proved the necessary elements of the Policy to obtain the relief requested, i.e., that the domain names are identical or confusingly similar to its trademarks and service marks; that Respondent has no rights or legitimate interests in the domain names; and that Respondent registered the domain names in bad faith and is using them in bad faith. Therefore, the real web pages domain names at issue here are hereby ordered to be transferred to Complainant.

 


 

Thomas L. Creel
Sole Panelist

Dated: March 14, 2001