WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BellSouth Intellectual Property Corporation v. Texas Internet
Case No. D2002-0559
1. The Parties
The Complainant 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.
According to the WHOIS database of Tucows, the Respondent is Texas Internet, 8730 International Parkway #410, Dallas, TX 75081, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is: <bellouth.net>.
The registrar with which the domain name <bellouth.net> is registered is Tucows, Inc., www.tucows.net, dba Domain Direct, located at 96 Mowat Avenue, Toronto, ON M6K 3M1, Canada.
3. Procedural History
On June 18, 2002, Complainant filed a complaint with the WIPO Arbitration and Mediation Center, (the "Center").
On June 24, 2002, the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, informing Respondent that a response was due by July 14, 2002. That Notification also informed Respondent that Respondent would be in default if a response was not received by that date.
Respondent did not respond.
On July 17, 2002, the Center sent Respondent a Notification of Respondent Default.
Respondent has not responded.
This sole panelist was appointed on July 31, 2002.
On August 5, 2002, the Sole Panelist queried the Center as to whether any communication had been received from the Respondent. The Center informed the Sole Panelist that no communication had been received from Respondent.
4.Factual Background; Partiesí Contentions
a. Jurisdictional Basis
This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy.
The Respondent is required to submit to a mandatory administrative proceeding in accordance with Paragraph 4(a) of the Policy, because the Complainant asserts, in compliance with the Rules of Procedure, that:
(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.
b. Factual and Legal Grounds for Complaint
The following facts taken from the Complaint are accepted, in the absence of a response:
The following trademarks and service marks are owned by Complainant:
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
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 has adopted and used the trademarks listed above as follows:
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. As a result of exclusive and extensive use by the Bell operating companies, including Southern Bell and South Central Bell, the BELL mark acquired significant goodwill and became a famous trademark.
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.
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.
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.
Complainantís predecessor obtained U.S. Trademark Registration No. 1,565,562 for the mark BELL for: inter alia, "telephone and telephone accessories"; "installing and maintaining telecommunications systems and equipment for others"; and "providing telecommunication services to others," each with a date of first use of 1900. This registration issued on November 14, 1989, and is valid, subsisting and unrevoked. This registration is prima facie evidence of Complainantís and its affiliatesí exclusive right to use the mark BELL in commerce in connection with the goods and services specified in the registration, subject only to the concurrent user rights of the other companies that share in the AT&T heritage.
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 for "customer premises telecommunications networks and parts therefor; telephones and telephone accessories; modems; computers; printers; facsimile machines; multiplexors; computer terminal; telephone answering machines; voice mail systems comprising telephone and computer interface, computer programs and controls for delivering and receiving messages over telephone lines; and computer programs dealing with telecommunications and business management Ö," each with a date of first use of June 1, 1984. Complainant also owns other registrations for the mark BELLSOUTH, including the following:
U.S. Trademark Registration No. 2,244,189, issued May 11, 1999, for BELLSOUTH for "computer software which facilitates searching for and transferring information across global computer communications networks, and for the execution of business transactions using global communications networks; remote control units for television.Ö;"
U.S. Trademark Registration No. 2,307,506, issued January 11, 2000, for the mark BELLSOUTH for "insurance services, namely underwriting loss protection and protection programs for pagers;" and
U.S. Trademark Registration No. 2,341,098 issued April 11, 2000, for the mark BELLSOUTH for "pagers."
U.S. Trademark Registration No. 2,112,067, issued November 11, 1997, for the mark BELLSOUTH.NET for "computer software which facilitates searching for and transferring information across global computer communications networks and for the execution of business transactions using global computer communications networks," with a date of first use of August 16, 1996.
U.S. Trademark Registration No. 1,670,082, issued December 31, 1991, for the mark BELLSOUTH MOBILITY for "cellular telephones," with a date of first use of June 1, 1984.
U.S. Trademark Registration No. 1,698,835, issued July 7, 1992, for the mark BELLSOUTH PRODUCTS for "customer premises telecommunications networks and parts therefor; telephones and telephone accessories; modems; computers; printers; facsimile machines; multiplexors; computer terminals; telephone answering machines; voice mail systems comprising telephone and computer interface, computer programs and controls for delivering and receiving messages over telephone lines; and computer programs dealing with telecommunications and business management Ö," each with a date of first use of June 6, 1984.
U.S. Trademark Registration No. 2,234,737 for the mark BELLSOUTH #1 for "telephone communication services, namely providing long distance services," with a date of first use of April 30, 1998.
U.S. Trademark Registration No. 2,354,715 for the mark 1-800-BELLSOUTH for "credit cards and telephone calling cards with magnetic strips, providing credit card and telephone calling card services, and long distance telephone transmission services," each with a date of first use of October 15, 1997.
The BELLSOUTH mark is also registered in fifty other countries around the world.
Complainant and its affiliates have 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 BELL and BELLSOUTH marks have continued to symbolize communications services, and have become a household name across the United States. The BELL and BELLSOUTH marks have been recognized by U.S. Courts and in a UDRP proceeding as famous marks. See BellSouth Corp. v. B.E.L.-Tronicís Limited, Civil Action No. 93-01714-1-CV-CC (N.D.Ga.), (finding that BELL "has been and continues to be a famous trademark."), affíd mem.. 107 F.3d 25 (11th Cir1997); Companía de Radiocomunicaciones Móviles S.A. and BellSouth Corp. v. Juan Bolinhas, WIPO Case No. D2000-0915, at paragraph 7.9(b) (October 5, 2000) (finding that Complainant had a reasonable claim that the BELLSOUTH mark was famous or at least well known in the U.S. and other countries).
Since 1985, Complainant and its affiliates have offered cellular, other integrated telecommunications services, and internet access services in connection with the BELLSOUTH mark around the world.
Consumers throughout the U.S., and indeed the world, have come to recognize the BELL and BELLSOUTH marks as indicating a product or service originating with a BellSouth company.
The Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to "draw such inferences therefrom as it considers appropriate". No exceptional circumstances have been brought to the Panelís attention. Accordingly, the panel makes the findings below on the basis of the material contained in the Complaint.
5. Discussion and Findings
The Complaint is well founded.
The domain name at issue is confusingly similar to Complainantís marks. The domain name <bellouth.net> 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 the "s" which is a predictable mistyping of "bellsouth." This registration of a domain name that is based on a predictable mistyping of anotherís mark has become recognized as a particular type of cybersquatting known as typosquatting.
The United States Court of Appeals for the Third Circuit held that typosquatting violated the Anticybersquaqtting Consumer Protection Act. See Shields v. Zuccarini, 254 F.3d 476, 483-84 (3d Cir. 2001) (intentionally misspelled variants -- <joescartoon.com>, <joecarton.com>, <joescartons.com>, <joescartoons.com> and <cartoonjoe.com> -- of famous name Ė <joecartoon.com> -- were "confusingly similar" under ACPA, affirming summary judgment for plaintiff). Several WIPO panels have concluded that typesquatting violates the UDRP. See La Française des Jeux v. Tavenost Voyeurism Inc, WIPO Case No. D2002-0439 (ordering transfer of <fdjeu.com> and <fdjeu.net> because confusingly similar to <fdjeux.com>); Pfizer Inc. v. Phizerís Antiques, Case No. D2002-0410 (ordering transfer of <phizer.com> because confusingly similar to Pfizer); OfficeMax, Inc. v. Zuccarini, WIPO Case No. D2002-0354 (ordering transfer of <officmax.com> because confusingly similar to OFFICEMAX); Time Warner Entertainment Co. v. Zuccarini, WIPO Case No. D2001-0184 (ordering transfer of <harypotter.com>, <looneytoones.com>, <scobydoo.com> because confusingly similar to Harry Potter, Looney Tunes, and Scooby-Doo).
Because the Complainant, its predecessors, and its affiliates have used the mark BELLSOUTH in connection with a very wide variety of goods and services related to communications, including cellular, telecommunications, and internet, the BELLSOUTH mark has become the central theme in Complainantís family of marks. Accordingly, the public has come to perceive goods and services that are offered under a BELLSOUTH name or mark or a slight variation of same as emanating from or being endorsed by or affiliated with Complainant.
The Respondent has no rights or legitimate interests with respect to the <bellouth.net> domain name. Complainantís first use of the BELLSOUTH mark predates Respondentís domain name registration by more than 15 years. Because Complainantís BELLSOUTH trademark registrations were issued long before Respondent registered the <bellouth.net> domain name, Respondent is charged with constructive knowledge of them. Therefore, for purposes of Paragraph (4)(c) of the Policy, any use Respondent may claim to have made was not "bona fide" because it was made with knowledge of Complainantís prior rights in the BELLSOUTH mark.
Respondent has no corporate, partnership or fictitious business name or business listing registration under the name "bellouth" or "bellouth.net." The panelist has found no evidence that Respondent has ever used (other than Respondentís domain name usage) the trade names "bellouth" or "bellouth.net" or been known as "bellouth.net".
The domain name was registered and has been used in bad faith, based on the following facts:
i)Respondent, prior to its adoption and use of the domain name <bellouth.net> 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.
ii)Respondent is not making and has not made a legitimate use of the domain name to offer goods or services under the name but rather has used it to point to portal or click-through sites.
iii)Complainant sent a cease and desist letter to Internet Services. BellSouth received no response, but the domain name was not used in connection with an actual site.
iv)On August 1, 2002, the sole panelist clicked on the URL "www.bellouth.com" and was directed to the site: " http://hanky-panky-collage.com".
v)The registrant of the domain name <bellouth.net>, as of November, 2001, was Dallas Internet, as shown in the WHOIS database print-out for the domain name.
vi)Complainant sent a cease and desist letter to Dallas Internet. Initially, Complainant sent it to the address in the WHOIS database, but learned that that address did not exist. Complainant then ascertained the true address for Dallas Internet and had the cease and desist letter delivered to that address. Although Complainant received no response to this letter, shortly thereafter the registrant name for <bellouth.net> changed to the Respondent.
vii)The Respondent lists the same contact person and address information as the previous registrant, Dallas Internet, and the same technical contact information as the first registrant, Internet Services. According to the WHOIS database, Respondentís e-mail address "email@example.com" consists of the name of previous registrant, Dallas Internet. Respondent is the same entity as, or an affiliate of, the two previous registrants of the domain name, to whom Complainant had previously delivered cease and desist letters.
viii)Respondent has changed the site to which the domain name is pointed, pointing it to a site located at <engine54.com> as of June 11, 2002, when the complaint was developed, to "http://hanky-panky-collage.com/", when the sole panelist referred to the URL.
ix)It is reasonable to infer that Respondent and its affiliates derived revenue from the link to the clickfinders site, and Respondent has derived and continues to derive revenues from its link to the engine54 site, and the " http://hanky-panky-collage.com/" site, either through commissions for click-throughs, revenues from ads, or through commissions arising out of searches conducted by internet users directed to the clickfinders and engine54 sites from <bellouth.net>.
x)Respondent has thus used, and intends further to use the <bellouth.net> domain name in order to trade upon the public's recognition of Complainant's BELL and BELLSOUTH marks and the goodwill associated with them. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its click-through sites by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís site. While users who reach the click-through sites would perhaps determine that they had not reached BellSouthís site, they could be confused and mistakenly conclude that BellSouth was operating a portal site. Respondent would have already profited from usersí mistakes since it appears to receive payment simply for directing traffic to the engine54 or the hankypanky site regardless of whether someone exits the site immediately. This diversion of internet users through creation of confusion is an express indicium of bad faith under the Policy.
Complainant has attempted to send correspondence to the Respondent at the addresses Respondent and its predecessors have provided to the Registrar as listed in the WHOIS database, but the correspondence has been returned as undeliverable. Accordingly, it is clear that Respondent and its predecessor affiliates have provided false or incomplete contact information to the registrar. Respondent has listed a clearly false telephone number in its WHOIS contact information, listing its number as 999-999-9999. The provision of false or incomplete contact information indicates Respondentís intent to hide its true identity and location from the owner of the BELLSOUTH mark, and is further evidence of Respondentís bad faith. When Complainant has been able to ascertain Registrantís true address and has delivered cease and desist letters to those addresses, Respondent and its affiliated predecessors have "flipped" the registration information by quickly changing the Registrant name from Internet Services to Dallas Internet to Texas Internet, further evidencing Respondentís intent to hide its true identity and prevent Complainant, the rightful owner, from obtaining the registration for the domain name.
In accordance with Paragraph 4(i) of the Policy, the Administrative Panel decides that the <bellouth.net> domain name be transferred to Complainant.
Henry H. Perritt, Jr.
Date: August 14, 2002