WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BellSouth Intellectual Property Corporation v. Nick West and American Consumers First, Inc.
Case No. D2003-0290
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 Wilmington, Delaware, United States of America. The Complainant is represented by Kilpatrick Stockton, LLP of Atlanta, Georgia, United States of America.
The Respondents are Nick West and American Consumers First, Inc., Salt Lake City, Utah, United States of America ("Respondents or Registrants").
2. The Domain Names and Registrars
The disputed domain names are as follows: <bellssouth.net>, <bellsiuth.com>, <bellsputh.net>, <bellsiuth.net>, and <bellsourh.net> (all of which are hereinafter collectively referred to as the "Domain Names").
The Domain Names are registered with Go Daddy Software, Inc. godaddy.com, located at Scottsdale, Arizona, United States of America ("Registrar").
3. Procedural History
On April 11, 2003, the Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center").
On April 14, 2003, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the Domain Names. On the same day, April 14, 2003, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the current registrant of the Domain Names and providing the contact details for the administrative, billing, and technical contacts. Further, the Registrar confirmed that the Domain Names will remain locked during the pending administrative proceeding.
The Center verified that the Complaint satisfied 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").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2003. In accordance with the Rules, Paragraph 5(a), the due date for a Response was May 6, 2003.
The Respondent did not submit any Response.
Accordingly, the Center notified the Respondent’s default on May 12, 2003.
The Center appointed James H. Grossman as the sole panelist in this matter on June 11, 2003, (the "Panel"). The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background; Parties' 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 Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the Domain Names were 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 Domain Names are common misspellings and identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
b. Factual and Legal Grounds for Complaint
The following facts taken from the Complaint are accepted by the Panel, in the absence of a Response from Respondent:
The following trademarks and service marks are owned by Complainant:
U.S. Federal Registration No. 1,565,562
Issued November 14, 1989
U.S. Federal Registration No. 1,565,559
Issued November 14, 1989
U.S. Federal Registration No. 2,244,189
Issued December May 11, 1999
U.S. Federal Registration No. 2,307,506
Issued January 11, 2000
U.S. Federal Registration No. 2,341,098
Issued April 11, 2000
U.S. Federal Registration No. 2,112,067
Issued November 11, 1997
U.S. Federal Registration No. 2,244,864
Issued May 11, 1999
Federal Registration No. 1,698,835
Issued July 7, 1992
Complainant states that it 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 1880's, 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, ("'DC 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. Complainant's affiliate, BellSouth Corporation, was one of these holding companies formed to serve Southern Bell and South Central Bell's 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 of America, 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.
Complainant's 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 Complainant's and its affiliates' 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.
Complainant's predecessor has also obtained multiple Trademark Registrations for BELLSOUTH marks, including the following:
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 ...," each with a date of first use of June 1, 1984;
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....;"
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;"
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 N. 2,244,864, issued May 11, 1999, for the BELLSOUTH.NET mark for "advertising services, namely, for promoting the goods and services of others via placement of advertisements in non-interactive and inter-active on-line multimedia programs and publications accessed through computer, television, and telecommunications networks; billing services and data processing services…financial information provided by electronic means…telecommunications services, namely, electronic transmission of data, sound, text, image messages, video and documents via computer, television and telecommunications networks; telecommunications gateway services; providing telecommunications connections to a global computer network; electronic mail services; electronic store-and-forward messaging services; network conferencing services…providing multiple-user access to a global computer information [sic] for the transfer and dissemination of a wide range of information," with a date of first use of August 16, 1996; and
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 ...," each with a date of first use of June 6, 1984.
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 been recognized by U.S. Courts and in a UDRP proceeding as famous marks. See BellSouth Corp. v. B.E.L.-Tronic's Limited, Civil Action No. 1-93-CV-1714-CC (N.D.Ga.), (finding that BELL "has been and continues to be a famous trademark."); Compania de Radiocommunicaciones Moviles 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).
c. Response from Respondent
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 Panel's attention. Accordingly, the panel makes the findings below on the basis of the material contained in the Complaint.
5. Discussion and Findings
A. Identical or Confusingly Similar
According to the Complainant, 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, Internet, and directories. Accordingly, Complainant states that 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 Panel takes notice that each of the Domain Names consists essentially of the distinctive term "bellsouth" with the addition of an "s" in one case and the substitution of an incorrect letter in the other cases so as to create a predictable mistyping of "bellsouth." This registration of a domain name that is based on a predictable mistyping of another's mark has become recognized as a particular type of cybersquatting known as typosquatting. Complainant argues that each of the Domain Names is virtually identical and confusingly similar to Complainant's famous BELL, and BELLSOUTH marks.
The United States Court of Appeals for the Third Circuit held that typosquatting violated the Anticybersquatting 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 - <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 Jezi.r v. Taveriost Voyeurism Inc, WIPO Case No. D2002-0439 (ordering transfer of <fdjeu.com> and <fdjeu.net> because confusingly similar to <fdjeux.com>); Pfizer Inc. v. Phizer's 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).
In the UDRP proceeding BIPCO v. Texas Internet, WIPO D2002-0559 (August 14, 2002), the Panel found that where the Respondent has intentionally misspelled the domain name to read as <bellouth.net> in order to capitalize on the well known BELLSOUTH name, such misspelled word is virtually identical and confusingly similar to Complainant’s famous BELL and BELLSOUTH marks. This Panel is of the opinion that similar facts in this case lead to the same result: the Domain Names are virtually identical and confusingly similar to Complainant’s marks.
B. Rights or Legitimate Interests
Complainant argues that the Respondent has no rights or legitimate interests with respect to any of the Domain Names. Complainant's first use of the BELLSOUTH mark predates Respondent's Domain Name registrations by more than 15 years. Because Complainant's BELLSOUTH trademark registrations were issued long before Respondent registered the Domain Names, Claimant alleges that Respondent must be 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 Complainant's prior rights in the BELLSOUTH mark.
According to Claimant, Respondent has no corporate, partnership or fictitious business name or business listing registration under any of the Domain Names.
The Panel has no evidence to the contrary and, therefore, agrees with Claimant on this issue.
C. Registered and Used in Bad Faith
Claimant alleges that the Domain Names were registered and have been used in bad faith, based on the following facts:
(i) Respondent, prior to its adoption and use of the Domain Names, was certainly 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.
(ii) When Respondent registered the Domain Names, the <bellsouth> registration would have appeared in a domain name search.
(iii) When Complainant first became aware of the Domain Names, Respondents were using the Domain Names to re-direct traffic to a site located at "www.picklerelish.com", which is a directory/search engine registered to Respondent American Consumer First, Inc. The Panel has noted that as of the date of this opinion the <picklerelish.com> site still exists.
(iv) On December 6, 2002, Complainant sent a cease and desist letter to the administrative contact listed with the Registrar demanding that Respondents discontinue their use of the Domain Names and assign them to Complainant. Complainant received notification that the e-mail was successfully delivered. However, Complainant received no response. On January 7, 2003, Complainant re-sent its December 6, 2002, letter and although the letter to the administrative contact this time was returned as un-deliverable, another e-mail sent to another listed contact address was successfully delivered. According to Complainant, shortly after January 7, 2003, the link to "www.picklerelish.com" was disconnected and redirected to "www.whitehouse.gov", a website for the President of the United States.
(v) Complainant believes that Respondents derived revenue from their links to the "www.picklerelish.com" site although, as of the date of this opinion, the Panel was unable to find any link from any of the Domain Names to any other site.
(vi) Complainant states that Respondent has thus used, and may in the future use the Domain Names 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, according to Complainant, Respondents have intentionally attempted to attract, for commercial gain, Internet users to their sites by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's sites. Complainant states that this diversion of Internet users through creation of confusion is an "express indicium of bad faith under the Policy."
As described above, the Panel takes notice of the fact that Complainant has sent and attempted to send correspondence to the Respondents at the addresses Respondents have provided to the Registrar as listed in the WHOIS database, but the Respondents have failed to respond or the correspondence has been returned as undeliverable. Accordingly, it is clear that Respondents have no intention of responding to the Complaint as is appropriate in this case or have provided false or incomplete contact information to the Registrar. The failure to respond and/or the provision of false or incomplete contact information indicates to the Panel Respondents’ intent to hide its true identity and location from the owner of the BELLSOUTH mark, and is further evidence of Respondents’ bad faith.
The Panel cannot find any redeeming issues which might be set out in favor of Respondents, which is only exacerbated by the failure of Respondents to make any response to the Complaint. Respondents are playing a game with Claimant’s very significant property rights and this Panel cannot condone such action.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to the Complainant.
James H. Grossman
Date: July 1, 2003