WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BellSouth Intellectual Property Corporation v. Polanski
Case No. D2002-0170
1. The Parties
1.1 The Complainant in this administrative proceeding is BellSouth Intellectual Property Corporation, ("Complainant"), a corporation organized under the laws of the State of Delaware with its principal place of business located at 824 Market Street, Suite 510, Wilmington, Delaware 19801, United States of America.
1.2 The Respondent is Polanski. All contact information for the Respondent known to the Panel is Polanski, Ul. Dietla 13/2, Krakow, PL 31031, Poland.
2. The Domain Name and Registrar
The domain name that is the subject of this Complaint is <belsouth.com>.
The registrar with which the domain name <belsouth.com> is registered is BulkRegister.com, located at 10 E. Baltimore Street, Baltimore, Maryland, 21202-1630 United States of America.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Name and Numbers ("ICANN") on October 24, 1999, (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on February 19, 2002 and in hardcopy on February 25, 2002. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules have been sent to the Respondent and that a copy of the Complaint has been sent to the Registrar of the domain name in dispute.
3.3 On March 1, 2002, the Center sent to the Complainantís representative an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to BulkRegister.com on March 1, 2002, by email BulkRegister.com responded to the Centerís request on March 5, 2002, stating:
(a) that BulkRegister.com was the registrar for the domain name in dispute;
(b) that the Respondent was the current registrant of the domain name in dispute;
(c) the Respondentís contact details;
(d) that the Policy was applicable and
(e) that a copy of the Complaint was sent to BulkRegister.com as required by the WIPO Supplemental Rules.
3.5 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on March 7, 2002, to the Respondent by post/courier (with enclosures), and by email (without attachments), and to the Complainantís representative by email (without attachments). The Center advised the Respondent that the Response was due no later than March 27, 2002.
3.6 No Response was filed by the Respondent within the time specified in the Notification of Complaint.
3.7 On March 28, 2002, the Center notified the Respondent and the Complainantís representative that the Respondent failed to comply with the deadline indicated in the Notification of Complaint and that it would proceed to appoint an Administrative Panel. The Center further notified the Respondent that it would be in the discretion of the Panelist to decide whether to consider the Response if submitted later.
3.8 On April 14, 2002, the Panel invited Dr. Torsten Bettinger to serve as a Panelist in this Administrative Proceeding. Having received the Panelistís Declaration of Impartiality and Independence, the Center issued a Notification of Appointment of Administrative Panel and set a decision date, with the Panelistís deadline for issuing a decision of May 6, 2002.
3.9 On April 22, 2002, the Center sent a Notification of Appointment of Administrative Panel to the Complainantís Representative and to the Respondent by email.
3.10 The Center sent a Transmission of Case File to Administrative Panel by e-mail on April 22, 2002.
4. Factual Background
4.1 Activities of the Complainant
The Complainant is an affiliated BellSouth company that owns and manages the intellectual property assets of the Bellsouth Corporation, a corporation that provides a wide variety of telecommunication services around the world.
4.2 The Complainantís trademarks
The Complainant is the proprietor of the following trademarks:
Federal Registration No. 1,565562
Issued November 14, 1989
Federal Registration No. 1,565,559
Issued November 14, 1989
Federal Registration No. 2,112,067
Issued November 11, 1997
Federal Registration No. 1,670,082
Issued December 31, 1991
Federal Registration No. 1,698,835
Issued July 7, 1992
Federal Registration No. 2,234,737
Issued March 23, 1999
Federal Registration No. 2,354,715
Issued June 6, 2000
Complainant states that it has adopted and used the trademarks listed above as follows:
(a) The Complainant and its predecessors, affiliates, and licensees have adopted and used a number of marks incorporating the term "BELL" since the 1880ís, including SOUTHERN BELL, and SOUTH CENTRAL BELL, among others. Prior to its divestiture, American Telephone & Telegraph Company ("AT&T") operated the "Bell System," consisting of twenty-two (22) "Bell" operating telephone companies that provided local telecommunications exchange services, including Southern Bell Telephone & Telegraph Company ("Southern Bell") and South Central Bell Telephone Company ("South Central Bell"). Each Bell operating company used the BELL mark in connection with the sale and provision of various telephone and communications goods and services.
(b) On January 1, 1984, AT&T was divested of the Bell operating companies pursuant to the orders of the United States District Court for the District of Columbia, ("D.C. Court") in United States v. Western Electric Co., Inc., Civil Action No. 82-0192. AT&T then assigned all of its right, title and interest within the United States in the BELL marks to seven regional holding companies established in connection with divestiture. Complainantís affiliate, BellSouth Corporation, was one of these holding companies formed to serve Southern Bell and South Central Bellís regions. BellSouth Corporation thus obtained exclusive rights to the famous BELL mark in its geographical territory, i.e., the Southern part of the United States, subject only to the concurrent user rights of the other companies that shared in the AT&T heritage in other regions of the country.
(c) Since 1984, BellSouth Corporation, together with its affiliates, has provided a wide variety of telecommunications services and related goods in connection with the BELL mark, not only in the Southeastern United States, but also around the world.
(d) Complainant is an affiliated BellSouth company that owns and manages BellSouth intellectual property assets, including the trademarks at issue here, which have been assigned to it.
(e) Complainantís predecessor obtained U.S. Trademark Registration No. 1,565,562 for the mark BELL each with a date of first use of 1900.
(f) Complainantís affiliate, Bell IP Holdings, which is owned jointly by the regional Bell operating companies, obtained Poland Registration No. 7042 for the BELL mark, granting Complainant and each of the other BELL operating companies ownership and concurrent rights to use the famous BELL mark in Poland.
(g) Complainantís predecessor has also obtained multiple Trademark Registrations for BELLSOUTH marks, including the following:
(i) U.S. Trademark Registration No. 1,565,559, issued November 14, 1989, for the mark BELLSOUTH each with a date of first use of June 1, 1984. Complainant also owns other registrations for the mark BELLSOUTH, including the following:
(1) U.S. Trademark Registration No. 2,244,189, issued May 11, 1999 for BELLSOUTH;
(2) U.S. Trademark Registration No. 2,307,506, issued January 11, 2000, for the mark BELLSOUTH.; and
(3) U.S. Trademark Registration No. 2,341,098 issued April 11, 2000, for the mark BELLSOUTH."
(ii) U.S. Trademark Registration No. 2,112,067, issued November 11, 1997, for the mark BELLSOUTH.NET with a date of first use of August 16, 1996.
(iii) U.S. Trademark Registration No. 1,670,082, issued December 31, 1991, for the mark BELLSOUTH MOBILITY with a date of first use of June 1, 1984.
(iv) U.S. Trademark Registration No. 1,698,835, issued July 7, 1992, for the mark BELLSOUTH PRODUCTS with a date of first use of June 6, 1984.
(v) U.S. Trademark Registration No. 2,234,737 for the mark BELLSOUTH #1 with a date of first use of April 30, 1998.
(vi) U.S. Trademark Registration No. 2,354,715 for the mark 1-800-BELLSOUTH with a date of first use of October 15, 1997.
The Complainant states that the BELLSOUTH mark is also registered in fifty other countries around the world and that it has extensively promoted goods and services in connection with the BELL and BELLSOUTH marks through print, television, and radio advertising and online at its sites <bellsouth.com>, <bellsouth.net>, and <bellsouth.org>.
The Complainant states that the BELL and BELLSOUTH marks have been recognized by U.S. Courts and in a UDRP proceeding as famous marks.
The Complainant states that the it and its affiliates have offered cellular, other integrated telecommunications services, and internet access services in connection with the BELLSOUTH mark around the world and that it serve more than 19 million customers in 16 countries worldwide.
4.3 Activities of the Respondent
The Panel has found no evidence that Respondent has ever used (other than Respondentís domain name usage) the trade name "belsouth.com" or been known as "belsouth.com".
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain name <belsouth.com> is virtually identical and confusingly similar to Complainantís famous BELL, and BELLSOUTH marks in that the domain name consists entirely of the distinctive term "bellsouth," with the deletion of one "l," which is a predictable mistyping of "bellsouth."
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant states that it (and its predecessorsí) first use of the BELL mark predates by almost 100 years any use Respondent may have made of "belsouth.com" as a trade name, domain name, or mark and that, Complainantís first use of the BELLSOUTH mark predates Respondentís domain name registration by more than 15 years. It also states that, because Complainantís BELLSOUTH trademark registrations were issued long before Respondent registered the <belsouth.com> domain name, Respondent must be charged with constructive knowledge of them.
5.4 In reference to the element in paragraph 4(a)(iii) of the Policy, the Complaint recites paragraph 4(b) of the Policy and sets out the circumstances, which shall be evidence of the registration and use of a domain name in bad faith under this paragraph. The Complaint goes on to state that evidence of bad faith registration and use of the domain name in dispute in this case is established by the following circumstances:
(1) The Respondent, prior to its adoption and use of the domain name <belsouth.com> was aware that Complainant was the owner of the BELL and BELLSOUTH marks because of the widespread and long-standing advertising and marketing of goods and services under the BELL and BELLSOUTH names and marks around the world, including on-line and in newspapers distributed in Poland, where Respondent resides. For example, since 1990, the BELLSOUTH mark has been prominently featured in advertisements placed by Complainant in two newspapers distributed in Poland: The Financial Times-World Edition and The International Herald Tribune.
(2) When Respondent was registering the <belsouth.com> domain name, Complainantís <bellsouth.com> registration would have appeared in a domain name search.
(3) Respondent was using the site to offer goods and services similar and related to Complainantís goods and services. When Complainant first became aware of Respondentís use of <belsouth.com>, Respondent was using it to re-direct traffic to a site located at <bestofonline.com>, where digital subscriber line ("DSL") service, or fast internet access service, was offered.
(4) After Complainant sent a letter to the operator of the <bestofonline.com> site, Respondentís link to the site was disconnected. Shortly thereafter Respondent then linked its site to a site located at <gito.com>. That site offers computer products and related software items that could be confused with services offered by Complainant.
(5) Complainant sent a letter to the registrant of <gito.com> explaining the infringement and that site, too, disconnected the Respondentís link.
(6) Complainant has attempted to send correspondence to the Respondent to inform it of Complainantís rights and to request a transfer of the domain name, but the correspondence has been returned as undeliverable.
6. The Respondent did not file a Response to the Complaint.
7. Discussion and Findings
7.1 Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present if the Complaint is to prevail:
(i) The Respondentís domain name 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.
7.2 Domain Name identical or confusingly similar to Complainantís trademark
The domain name in dispute is <belsouth.com>. The Complainant has numerous trademark applications and registrations in the United States and various other countries of the world of the words "Bellsouth".
The domain name <belsouth.com> is identical to Complainantís trademark BELLSOUTH, except that: (1) the domain name adds the generic top-level-domain ".com" and (2) the elimination of the letter "l".
The Panel finds that the addition of the generic top-level-domain (gTLD) .com is without legal significance in determining similarity and that the elimination of the letter "l" between "Bellsouth" and "belsouth" does not significantly affect the visual impression made by the domain name as compared with the mark, and does not affect the pronunciation of the domain name as compared with the mark.
The Panel therefore concludes that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has prior exclusive rights.
The Panel thus finds that the Complainant has proven paragraph 4(a)(i) of the Policy.
7.3 The Respondent has no rights or legitimate interests in the Domain Name
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name <belsouth.com>. The Respondent has not presented before the Panel any evidence of its use of or preparation to use the disputed domain name which would support a finding that the Respondent has a legitimate interest or rights in the domain name and admits that he has no rights or legitimate interest in the domain name <belsouth.com>.
Accordingly the Panel finds that the Respondent does not have any rights or legitimate interests in the domain name <belsouth.com>.
7.4 Domain Name has been registered and is being used in bad faith
The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Administrative Panel finds there is no exceptional circumstances for the failure of the Respondent to submit a Response.
This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.
Nevertheless, this Administrative Panel still has the responsibility of determining which of the Complainantís assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see. WIPO Case No. D2000-0438, Inter-IKEA Systems B.V. v. Hoon Huh).
The Complainant provided evidence of the widespread and long-standing advertising and marketing of goods and services under the BELL and BELLSOUTH names and marks around the world, including on-line and in newspapers distributed in Poland, where Respondent resides. In the absence of evidence or even an assertion by the Respondent these fact establish that the Respondent registered the domain name knowing that they were identical or confusingly similar to the trade marks of the Complainant.
Furthermore, the Complainant provided evidence that the Respondent used the <belsouth.com> domain name to re-direct traffic to a site located at <bestofonline.com>, and to link to a site that offers computer products and related software items that could be confused with services offered by Complainant. These facts are strongly suggestive that the Respondent used the <belsouth.com> domain name in order to trade upon the public's recognition of Complainant's BELL and BELLSOUTH marks and the goodwill associated with them.
The diversion through creation of confusion is an express indicia of bad faith under paragraph 4(b)(iv) of the Policy that provides that bad faith can be asserted, if by using the domain name, "the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location."
The Panel therefore concludes that Respondent registered and is using the domain name <belsouth.com> in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.
The Panel thus decides that:
1) the domain name <belsouth.com> is confusingly similar to the trademark "BELLSOUTH";"
2) The Respondent has no rights or legitimate interests in respect of the domain name <belsouth.com>;
3) the domain name <belsouth.com> has been registered and used in bad faith by the Respondent.
Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, BulkRegister.com, transfers the domain name <belsouth.com> to the Complainant.
Dr. Torsten Bettinger
Dated: May 6, 2002