WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pacific Telesis Group v. John Lester
Case No. D2001-0905
1. The Parties
The Complainant is Pacific Telesis Group, a corporation of the State of Nevada, United States of America, with a place of business in San Francisco, California, United States of America.
Represented by: Rita M. Irani, Esq., Haynes and Boone, LLP, 1000 Louisiana, Suite 4300, Houston, TX 77002, United States of America.
The Respondent is John Lester, a resident of Cazadero, California, U.S.A., at the following contact addresses, P.O. Box 85, Cazadero, California 95421, United States of America and 20775 Fort Ross Road, Cazadero, California 95421, United States of America.
Represented by: Representing itself.
2. The Domain Names and Registrars
The Domain Names are<pacificbellpark.com>, <pacbellpark.com>.
The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on July 16, 2001, and in hard copy on July 17, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly noticed to Respondent according to Paragraph 2(a) of the Rules. Respondent was informed that the last day for filing its Response was August 21, 2001. No Response has been received. The Center issued to the Respondent a Notification of Respondent Default on August 23, 2001, informing Respondent of the consequences of its default.
The Panel has been properly constituted. The undersigned Sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further submissions were received by the Center or the Panel. Consequently, the date scheduled for the issuance of the Panelís Decision, pursuant to the request of the Sole Panelist, is October 2, 2001.
4. Factual Background
Complainant Pacific Telesis Group is one of the seven (7) Regional Bell Operating Companies ("RBOCs") or "Baby Bells" formed in 1983 resulting from the break-up of Atlantic Telephone & Telegraph Co., Inc. ("AT&T"). Upon the divestiture of AT&T, Complainant became one of the concurrent use owners of all of AT&Tís rights in the "BELL" and "bell design" marks and federal registrations for those marks (collectively "the BELL marks").
Pursuant to the 1983 court order, Complainant has been using the BELL marks with the regional modifier "Pacific". Complainant holds two U.S. trademark registrations for the mark PACIFIC BELL: U.S. Trademark Registration Nos. 1,459,202 and 1,547,451 both relating to telecommunication goods and/or services. Since January 1984, the mark PACIFIC BELL has been extensively used by Complainant in connection with telecommunication goods and/or services and complemented by extensive advertising, promotion, and press coverage. As a result, the mark PACIFIC BELL has become famous.
On June 20, 1997, Complainant applied for trademark registrations for the mark "PACIFIC BELL PARK" for use with the exhibition of baseball games and the sale of baseball goods and services, including ticket sales. Complainant subsequently acquired ownership of the PACIFIC BELL PARK registrations as shown in Annex F, Annex G, and Annex H of the Complaint.
On or about April 4, 1996, Respondent registered domain names <pacbellpark.com> and <pacificbellpark.com>. Both these domain names lead to the Home Page of Respondentís website where Respondent is identified as "PACBELLPARK.COM" as shown in Annex I and Annex J of the Complaint. On this website, Respondent offers, among other things, ticket sales to the baseball games hosted at Pacific Bell Park, e-mail pseudonyms, ticket giveaways, seating charts, transportation information to the Park, links to Yahoo KNBR live broadcasts, and links to Giantsí website pages. On the same website, Respondent further uses PACBELLPARKS.COM as a trade name or service mark.
On December 6, 2000, Complainantís parent company SBC Communications Inc., through its counsel, wrote to Respondent asking him to cease and desist his unlawful use of Complainantís marks. Having received no response, Complainant sent a follow-up letter on January 31, 2001. Respondent never responded to either letter.
5. The Partiesí Contentions
Complainant contends that Respondentís registrations and use of the <pacbellpark.com> and <pacificbellpark.com> domain names violate Complainantís rights in the registered marks PACIFIC BELL PARK.
Complainant claims that domain name <pacificbellpark.com> is identical to Complainantís registered marks PACIFIC BELL PARK for purpose of Paragraph 4a(i) of the Policy. In addition, Complainant claims that domain name <pacbellpark.com> is confusingly similar to Complainantís registered marks PACIFIC BELL PARK.
Complainant also claims that Respondent has no right or legitimate interest in respect of the domain names. Respondent has not used the domain names in connection with a bona fide offering of goods and services. Rather, Respondentís use is deceitful because the use misleads consumers. The fact that Respondent posts small print disclaimer neither eliminates the likelihood of confusion as to sponsorship nor legitimizes Respondentís unlicensed and unauthorized use of Complainantís marks.
Complainant further claims that Respondent has registered and used the domain names in bad faith because (a) Respondent has no intellectual property rights in the BELL marks; (b) Respondent never used PACIFIC BELL PARK or BELL as a trade name or mark before having actual and constructive notice of Complainantís rights; and (c) it was apparent to Respondent that the BELL marks and the PACIFIC BELL PARK marks were and are famous.
Complainant requests that the contested domain names be transferred to Complainant.
The Respondent has submitted no response.
6. Discussion and Findings
Paragraph 4a of the Policy requires that a respondent submit to a mandatory administrative proceeding if a complainant asserts that:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In this case, even though Respondent filed no Response and offered no evidence attacking the Complainantís contentions, the Panel nevertheless reviews the evidence before it to determine whether Complainant has supported each of the above required elements in its contentions within the existing record.
6.1. Identity or Confusing Similarity
In connection with Paragraph 4a(i) of the Policy, the Panel finds that domain name <pacificbellpark.com> is essentially identical to Complainantís registered trademark PACIFIC BELL PARK. Moreover, the Panel finds that domain name <pacificbellpark.com> is confusingly similar to Complainantís registered trademark PACIFIC BELL.
In addition, the Panel finds that Complainantís registered marks PACIFIC BELL have been widely recognized and referred to by the short hand or nickname "PAC BELL". Therefore, the domain name <pacbellpark.com> is confusingly similar to Complainantís registered marks PACIFIC BELL and PACIFIC BELL PARK. Accordingly, the first element of Paragraph 4a of the Policy is met for both domain names at issue.
6.2. Rights or Legitimate Interests
In connection with Paragraph 4a(ii) of the Policy, the Panel finds that Complainant exclusively owns the federal trademark registrations for the marks PACIFIC BELL and PACIFIC BELL PARK. Complainant has never authorized Respondent to use PACIFIC BELL or PAC BELL as a trade or service mark or as the sole content in a domain name. Further, Respondent has never sought Complainantís permission to use its marks. Therefore, the Panel finds that Respondent has no rights or legitimate interests with respect to the domain names at issue.
6.3. Bad Faith
The Panel notes that Paragraph 4a(iii) will be satisfied only if the complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that the respondent is continuing to act in bad faith. See WIPO Arbitration and Mediation Center Administrative Panel Decision Case No. D2000-0003.
In this case, Respondent registered the domain names at issue on or about April 4, 1996. There is no evidence that Respondent was unaware of Complainantís trademark PACIFIC BELL at the time of the domain name registration. Accordingly, the Panel finds that the domain names have been registered in bad faith.
The Panel also finds that Respondentís use of the domain names attract his customers to what appears to be a site sanctioned or endorsed by Pacific Bell. Respondentís posting of a disclaimer is insufficient to eliminate the likelihood of confusion as to the sponsorship of Complainant. In addition, Respondent offers goods and services that directly compete with the offerings of Complainant, namelyóticket sales for baseball games held at Pacific Bell Park. To that extent, Respondentís registration and use of the domain names at issue prevents Complainant, as the owner of the mark, from making legitimate use of the domain names. In light of these facts, the Panel finds that the domain names are being used in bad faith.
Finally, Respondentís failure to present any evidence or to deny complainantís allegations allows an inference that the evidence if presented would not have been favorable to Respondent. See WIPO Arbitration and Mediation Center Administrative Panel Decision Case No. D2000-0004. Therefore, the Panel finds that Respondent has registered and is using the domain names in bad faith.
Based on the above findings, the Panel concludes that (a) the domain names registered by Respondent are either identical or confusingly similar to Complainantís registered marks PACIFIC BELL PARK, (b) Respondent has no rights or legitimate interest in the domain names at issue, and (c) Respondent has registered and is using the domain names in bad faith. Therefore, pursuant to Paragraph 4a of the Policy, the Panel orders that the domain names at issue be transferred to Complainant.
Charles E. Miller
Dated: October 2, 2001