WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SBC Communications Inc.
Boolgook Corp., BooL Gook Co. Ltd and Do-Hyun Kang d/b/a M@ilbell Co. Ltd
Case No. D2002-0474
1. The Parties
1.1 The Complainant is SBC Communications Inc. of 175 E. Houston Street, 4th Floor, San Antonio, Texas 78205, United States of America.
The Respondents are (1) Boolgook Corp. of 3275 Stevens Creek Boulevard #319, San Jose, California, 95117, United States of America (2) BooL Gook Co. Ltd of 3275 Stevens Creek Boulevard #319, San Jose, California, 95117, United States of America and (3) Do-Hyun Kang d/b/a M@ilbell Co., Ltd of Ga-dong 221 Parts a store B/D, 952-7, Ho, DabSibLi 4 DongDaeMun-Gu, Seoul, se 130-034, Republic of Korea.
2. The Domain Names and Registrar
2.1 The domain names in issue are <mailbell.com> and <mailbell.net> (the "Domain Names"). The Registrar is Network Solutions, Inc., and < mailbell.com> is registered in the name of Boolgook Corp. and <mailbell.net> is registered in the name of BooL Gook Co. Ltd.
3. Procedural History
3.1 The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by e-mail on May 17, 2002, and in hard copy on May 22, 2002.
3.2 On May 22, 2002, the Center transmitted via e-mail to Network Solutions Inc. a request for Registrar Verification in connection with the Complaint. On May 24, 2002, Network Solutions, Inc. transmitted via e-mail its verification response confirming that Boolgook Corp. is the registrant of <mailbell.com> and that BooL Gook Co. Ltd is the registrant of <mailbell.net>.
3.3 The Complaint was notified to the Respondents on May 28, 2002, in accordance with the rules applicable to the Uniform Policy for Domain Name Dispute Resolution ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). No Response to the Complaint was received by the Center by the due date (June 17, 2002). Notification of Respondent Default was served on June 18, 2002.
3.4 On July 7, 2002, an e-mail message from Do-Hyun Kang was received by the Center. The Panel in its discretion admits this e-mail.
3.5 A Panel was constituted on July 10, 2002, with a single panelist, Nick Gardner. A Statement of Acceptance and Declaration of Impartiality and Independence has been filed by the Panelist.
3.6 The date scheduled for the Panel to render its decision is July 24, 2002.
3.7 The Complainant is represented by Rita M. Irani and B. David Fraser of Haynes and Boone, LLP, 1000 Louisiana, Suite 4300, Houston, Texas, 77002, United States of America. The Respondents are unrepresented.
4. Factual Background
4.1 The facts according to the Complainant (and which have not been challenged by the Respondents) are as set out below.
4.2 The Complainant is one of seven Regional Bell Operating Companies (known as "Baby Bells") which were formed in 1983 as a result of the court-ordered break-up of Atlantic Telephone & Telegraph Co. Inc. ("AT&T").
4.3 The Complainant is one of the concurrent use owners of AT&Tís trademark rights in the "BELL" word and logo trademarks. As such, it is the registered proprietor of trademark number 1,545,200 registered for the word "BELL" in the United States in respect of various telephone and telecommunications-related goods and services in classes 9, 16, 35, 37, 38, 41 and 42 including telephones, answering machines, the provision of telecommunication services, the installation and maintenance of telecommunications systems and equipment and designing and engineering telecommunications systems.
4.4 The Complainant is also the registered proprietor of the mark "SOUTHWESTERN BELL" (registered for goods and services in classes 9, 16, 35, 37, 38 and 41).
4.5 The BELL marks are well-recognized in the telecommunications field as identifying the goods and services offered and endorsed by the Complainant and the other Baby Bells.
4.6 Respondent Do-Hyun is listed as the administrative contact for the Domain Names. This Respondent applied to register the mark M@ILBELL in the United States Patent and Trademark Office on February 2, 2000, but allowed this application to lapse.
4.7 On November 16, 2000, counsel for the Complainant wrote to Respondent Do-Hyunís trademark counsel (Gary Nath) alleging that Respondent Do-Hyun's adoption and use of "M@ilbell" was an infringement of his client's rights in the BELL marks. On January 31, 2001, Harold Novick, an associate of Gary Nath wrote to counsel for the Complainant. In that letter Mr. Novick defended his client's use of the Ma@ilbell mark on the basis that the mark was unlikely to be confused with the Complainant's marks and that his client's goods (an e-mail checker that alerts a user when an e-mail has been received), were different from the Complainant's goods and services. On March 5, 2001, counsel for the Complainant responded to Mr. Novick's letter of January 31, 2001, taking issue with Mr. Novick's arguments.
4.8 On April 5, 2001, Mr. Novick wrote to counsel for the Complainant notifying her and the Complainant that his firm no longer represented the Respondent Do-Hyun. Complainantís counsel subsequently made efforts to contact Respondent Do-Hyun at an address provided by Mr. Novick and at the phone numbers listed on the website at the mailbell.com website.
4.9 Print outs of the website at the <mailbell.com> domain name were provided annexed to the Complaint. These show that the website describes "M@ailBell" as "the leading Internet destination for premium E-mailchecker" (see the "About M@ailBell" section of the website). It continues, "We present an independent editorial selection of the world's best products, combined with in-depth information from sponsoring manufacturers. M@ilBell Shopping purchase e-mailchecker from your nearest retailers or directly online. Our editorial staff is [sic] always looking for new products, manufacturers, and categories to serve your discriminating e-mailchecker".
4.10 The site contains representations of a range of telephones and other electronic products.
4.11 According to the Complaint, all of the telephone numbers provided at the website to order products are disconnected or no longer in service.
4.12 The Complaint also shows that a user accessing the domain name <mailbell.net> finds a hypertext link to www.netis.co.kr, the content of which is almost entirely in Korean, but at which the phrases "Web Business Consulting Service", "Web Creative Service", "Web Hosting Service" and "Total Web Solution Agency" are discernible.
4.13 Further detail as to the contents of the websites is discussed in Section 6 below.
5. Partiesí Contentions
5.1 The Complaintís contentions are as set out below.
5.2 The domain names registered by the Respondents are confusingly similar to trademarks owned by Complainant
5.3 In this respect, the Complainant relies on its rights as a concurrent use owner of the famous BELL word and logo trademarks. The Domain Names appropriate the identical BELL mark that is owned by the Complainant. Based on the Complainantís registered mark and the Respondentsí appropriation of the Complainantís exact BELL mark in the Domain Names, the Domain Names are confusingly similar to the trademarks in which the Complainant has rights.
5.4 The Complainant is Americaís leading provider of high-speed Digital Subscriber Line Internet access service and one of the nationís leading Internet Service Providers. The Complainantís BELL mark is registered for "providing telecommunications services to others" and "installing and maintaining telecommunications systems and equipment for others". The Domain Names include the modifier "mail" which Respondent Do-Hyunís trademark counsel informed Complainantís counsel reflects the Respondentsí intention to use ĎM@ilbellí as an e-mail checker. Based on the Complainantís registered BELL marks and the Respondentsí offering of identical telecommunications products and services as the Complainant, the Domain Names are confusingly similar to trademarks in which the Complainant has rights.
5.5 Respondents have no rights or legitimate interests with respect to the Domain Names
5.6 The Complainant has never consented to or given the Respondents permission to use its BELL marks. The Respondents have never sought this permission.
5.7 The Respondentsí use of the Domain Names is likely to cause confusion or mistake or deceive consumers as to the Respondentsí affiliation, connection, or association with, or sponsorship by, the Complainant or the other Baby Bells. Users viewing the Respondentsí websites at the Domain Names are likely to believe that they are visiting website associated with, endorsed or sponsored by the Complainant or the other Baby Bells, which would cause substantial confusion in the marketplace.
5.8 The Respondents are using the Domain Names to unlawfully benefit by trading on the Complainantís goodwill to initially attract consumers to what appears to be a site associated with, sanctioned or endorsed by the Complainant. For example, the Complainantís registration for the BELL mark covers the telecommunications-related services being offered by the Respondents on the Korean website for which a hypertext link is provided to the Internet user who accesses the website at <mailbell.net>. The Respondents have no right or legitimate interests in using BELL in a domain name to draw customers to a site providing web hosting and ISP services.
5.9 The Complainantís BELL trademark registration covers "telephones, answering machines and computer programs dealing with telecommunications". The Respondents offer at lest three different telephones on the website at <mailbell.com>. This unlawful use of the <mailbell.com> domain name infringes the Complainantís trademark rights in the BELL mark.
5.10 The Complainantís BELL trademark registration covers "Providing telecommunications services to others" and "installing and maintaining telecommunications systems and equipment for others". The Complainant is Americaís leading provider of high-speed DSL Internet access service and is one of the nationís leading ISPs. The Respondents classify themselves as an "Internet" company that strives for "Being a New leader for Future E-mail Market" and a "Leading ISP for E-mailchecker service". This unlawful use of the <mailbell.com> domain name to market and sell Internet access and ISP services infringes the Complainantís trademark rights in the BELL mark.
5.11 Respondents registered and are using the Domain Names in bad faith
5.12 The Policy and the United States Anti Cybersquatting Consumer Protection Act set out non-exclusive lists of factors to consider in determining a registrantís bad faith. At least six of those factors are present demonstrating the bad faith registration and use of the Domain Names.
(a) Respondents have no trademark or other intellectual property rights in the BELL marks
(b) Respondents have not made any bona fide, noncommercial, or fair use of the BELL marks
(c) Respondents intended to divert customers from legitimate BELL sites for commercial gain
By incorporating the Complainantís registered BELL mark in the Domain Names, the Respondents intended to divert customers away for legitimate BELL sites and lure them to website seemingly sanctioned or endorsed by the Complainant that marketed and sold competing goods and services. The Respondents appropriated the famous BELL mark to benefit from higher volumes of Internet traffic and exposure. The increased exposure amplifies the number of unsuspecting users who find themselves at website that offer telecommunications-related goods and services that compete with those offered by the Complainant.
The Respondentsí registration of the Domain Names harms the goodwill represented by the BELL marks and creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Names.
(d) The Respondents failed to maintain accurate contact information with Network Solutions.
The Respondents intentionally failed to update their contact information with Network Solutions. Since at least as early as April 2001, Respondents have not maintained a residence, an office, or a place of business at 3275 Stevens Creek Blvd #319, San Jose, California 95117, the contact address listed in the Network Solutions WHOIS database for the Domain Names.
The Respondents also list inaccurate contact information on the website at <mailbell.com>.
(e) The Respondents registered the Domain Names knowing that they were confusingly similar to the Complainantís distinctive and famous BELL marks
The BELL mark has become famous. At the time the Respondents registered the Domain Names, they knew that the BELL marks have been recognized for over a century as trademarks of AT@T and later, the Baby Bells.
At the time they registered the Domain Names, the Respondents knew that they would benefit greatly be incorporating BELL into the Domain Names because they would take advantage of the tremendous goodwill and name/brand recognition associated with and represented by the famous BELL mark.
The Respondents have attempted to capitalize on the fame of the Complainantís mark by attracting Internet users to website that contain the identical BELL mark and that offer competing telecommunications product and service offerings as those offered by the Complainant. This attempt to trade on the fame of the Complainantís marks clearly evidences bad faith.
(f) The Respondentís use dilutes and tarnishes the fame and reputation of the BELL mark
The Respondentsí registration and use of the Domain Names dilutes the Complainantís BELL mark by tarnishment or by weakening the distinctive significance of the BELL mark for telecommunications-related goods and services. By offering non-existent or unavailable telephones at a site identified by the BELL mark, the Respondents are tarnishing the image of the mark.
5.13 The e-mail from Respondent Do-Hyun states that the failure to respond in time was due to a business trip. In the e-mail Do-Hyun goes on to say "I am wondering who and why someone has submitted a complaint on my domain. My company name is Mailbell. My companyís domain name was registered through BoolGook Company. I am also the owner of BoolGook. Please advise on the process to resolve this complaint." No other information is provided in the e-mail.
5.14 In these circumstances the Panel also notes the views expressed by trade mark attorneys acting for the Respondent in the letter of January 31, 2001, which stated:
(a) the marks "M@ILBELL" and "BELL" are vastly different in appearance, sound and commercial impression. Such differences preclude any confusion in the minds of consumers as to the source of the respective goods and services" and
(b) "further our Clientís mark "M@ILBELL " is intended to be used as an e-mail checker that alerts a user when an e-mail has been received. Our Client believes such goods are very different from you Clients telecommunications goods and servicesÖ"
(c) "for these reasons it is M@ilbellís position that consumers are not likely to be confused as to the source of the respective goods and services. If you disagree with our conclusion, we would be willing to consider any evidence or arguments you have to the contrary, and we would be willing to re-evaluate our position."
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and documents annexed to the Complaint and in the light of this material finds as follows.
6.2 The Panel finds this case considerably more difficult than most cases which typically arise for decision under the Policy. There is ample evidence to support the Complainantís submissions that its mark "Bell" is a strong and very well known trademark. The evidence with regards to the Respondentís activities and, in particular, the critical question (see below) of whether the Respondents are acting in bad faith is far less clear. The Panel has in mind the following factors which it regards as important:-
A. The Domain Names in question were registered in July and November 1999.
B. There is no evidence and it is not suggested that (prior to the threat of legal proceedings) any of the Respondents approached the Complainant in any way.
C. There is no evidence of any actual confusion of any sort.
D. It is not clear (and the Complaint does not reveal) how the Complainant became aware of the Respondentsí registration of the Domain Names. So far as can be determined from the papers before the Panel, Complaint was first made by the Complainant in its letter of November 16, 2000, addressed to the firm of Nath & Associates. It would appear that the letter was addressed to this firm as it appeared as Attorney of Record on the trademark application (in respect of M@ILBELL) which was filed on the February 2, 2000. It may be that it was the filing of this trademark which alerted the Complainant to the existence of the Respondents and hence caused it to identify the existence of the Domain Names.
E. The Complaint makes much of the correspondence that then took place between the Complainantís lawyers and the Respondentsí law firm. The Panel does not find this correspondence of assistance in resolving the dispute. The contents of the Respondentsí lawyer's letter of January 31, 2001, are set out above, and in substance dispute the Complainantís allegations.
F. The Panel notes that in response to the invitation contained in the letter of January 31, 2001, to provide further evidence or argument the Complainantís lawyers relied in particular on a case in the US District Court for the Northern District of Georgia between Bell South Corporation and B.E.L.-Tronics Limited. The judgment in that case indicates that substantial evidence of actual confusion was before the Court and the Panel finds it of little assistance to the present facts.
G. The material filed with the Complaint includes a printout of the Respondentsí website. That runs to approximately 50 pages of hard copy. The Complaint also includes a copy of the Korean web pages which are linked to via one of the Respondentsí web pages. The printout of that material runs to a further 100 or so pages. So far as the <mailbell.com> web pages are concerned they contain details of a range of products, including items described as a M@ilBell wired telephone, a M@ilBell desk telephone, a M@ilBell cordless telephone, a M@ilBell MP3 player, a M@ilBell Doll, a M@ilBell toy, a M@ilBell pen, a M@ilBell mouse and a M@ilBell keyboard. Extensive contact details are given, privacy statements appear, there is a map with details of business premises in San Jose, California, there are a series of pages that appear to be instructions for how to install M@ilBell software onto a computer running a Windows operating systems and so on. Pages "about M@ilBell" appear which describe it as having been established in Korea in 1999 and giving its history thereafter. A page of details about Do-Hyan Kang appear which include details of his career working for a number of well known organizations including Samsung Electronics, DEC Korea, Sun Microsystems Korea and so on.
H. Overall the web pages bear the appearance of pages which have either been translated from a foreign language (presumably Korean) or alternatively written by somebody whose first language is not English. The Panelís strong impression reviewing these pages was that they looked like the pages of a Far-East electronics manufacturer, set up to promote itself and its products (and not the pages of a retail organisation) and had been rather imperfectly translated into English.
6.3 In order to succeed in this Complaint the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:-
(i) that Domain Names are identical to or confusingly similar to the "BELL" trademark;
(ii) that the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
6.4 The Panel has severe reservations that the Complainant has on the evidence before the Panel established items (i) and (ii). However, the Panel does not find it necessary to determine conclusively the answers to those questions as it is the Panelís view that the Complainant has not established item (iii) i.e. has not established that the Domain Names were registered and are being used in bad faith.
6.5 The Panel has looked closely at the Complainantís submissions in this regard as set out in the Complaint. Paragraph 4(b) of the Policy lists a non-exhaustive list of factors which would be evidence of registration and use of a domain name in bad faith. Taking each of these in turn:-
1. There is no evidence that the Domain Names were registered for the purpose of transferring them to the Complainant.
2. There is no evidence that the Domain Names were registered to prevent the Complainant from reflecting the mark in a corresponding domain name.
3. There is no evidence that the Domain Names were registered primarily for the purpose of disrupting the business of the Complainant.
4. The question therefore arises as to whether the Respondentsí use of the Domain Names is intentionally attempting to attract, for commercial gain, internet uses to the website by creating a likelihood of confusion with the Complainantís mark. The Panel considers that that is the critical question to be determined here. In this regard, the Complaint alleges that "by incorporating Complainantís federally registered BELL mark in its offending Domain Names, Respondents intended to divert internet customers away from legitimate BELL sites and to lure them to websites that market and sold competing telecommunications goods and services Ė websites that would seem to be sanctioned or endorsed by Complainant." The Panel does not accept that submission. Even assuming, in the Complainantís favour, that an internet user would be attracted by the "mailbell" Domain Names to visit these sites in the belief that they may be sites that are those of, or endorsed by, the Complainant, it does not seem likely to the Panel that anybody viewing the web pages found at these Domain Names would be remotely likely to think they were anything to do with any of the BELL operating companies. The entire content of the pages, as described above, seems to this Panel inconsistent with such a finding. In the absence of any evidence of actual confusion of this nature the Panel is not able to infer that this is the case.
6.6 The Complaint also relies upon the fact that the telephone numbers associated with the Respondentsí website are unanswered and contact details have not been updated with Network Solutions, Inc. In circumstances where the website itself contains a map giving location of the Respondentsí business address in San Jose in the United States of America, the Panel does not find these arguments persuasive.
7.1 In the light of the above findings, the Panel's decision is set out below.
7.2 The Panel has reservations as to whether paragraphs 4(a)(i) and (ii) of the Policy are satisfied. In view of the Panelís decision below as to paragraph 4(a)(iii) of the Policy, it is not however necessary to decide this point.
7.3 So far as paragraph 4(a)(iii) of the Policy is concerned, the Panel finds that the Complainant has failed to demonstrate bad faith registration of the Domain Names. Nor has the Complainant shown that the Domain Names have been used in bad faith.
7.4 The Panel therefore declines to find that the Domain Names should be transferred or cancelled.
7.5 No further action is required to implement the Panel's decision.
Dated: July 24, 2002