WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BellSouth Intellectual Property Corporation v. Peter Carrington, Party Night Inc.
Case No. D2003-0308
1. The Parties
The Complainant is BellSouth Intellectual Property Corporation, C/O Jacqueline A. Gregorski, Wilmington, Delaware, United States of America, represented by Kilpatrick Stockton, LLP of United States of America.
The Respondent is Peter Carrington, Party Night Inc., Amsterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names:
<bellouth.com> <bellsoouth.com> <bellsoouth.net> <bellsouh.com> <bellsouh.net> <bellsuth.com> <bellsuth.net> (hereafter "the Domain Names") are registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2003. On April 23, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the Domain Names.
On April 28, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2003.
The Center appointed Pierre Olivier Kobel as the sole panelist in this matter on May 26, 2003. 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
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.
BellSouth Corporation is a corporation of the State of Georgia, with its principal place of business at BellSouth Corporation, 1155 Peachtree Street, N.E., Suite 16E02, Atlanta, Georgia, 30309-3610. It was created as a result of AT&T's divestiture of the local Bell Operating Companies (hereafter the "BOCs"), in 1984. As a result, AT&T assigned all of its rights, title and interest within the United States in the BELL marks to seven regional BOCs, including BellSouth Corporation. Accordingly, the BOCs shared the nationwide registered BELL mark with exclusive rights to their respective territories only.
Complainant is an affiliated BellSouth company which owns and manages BellSouth Corporation's intellectual property assets. According to a Trademark Assignment Agreement dated September 1st, 1998, BELLSOUTH Corporation assigned to the Complainant all its rights, title and interests in a large number of marks, including the marks BELL, BELLSOUTH, BELLSOUTH#1, BELLSOUTH.NET, BELLSOUTH PRODUCTS.
As a result of the above and the evidence provided by the Complainant, the Complainant appears as the legitimate owner of the following trademarks:
US Trademark Registration N. 1,565, 562
Issued on November 14, 1989
Benelux Registration N. 475058
As from December 11, 1989
Swiss Registration N.338447
As from January 24, 1985
US Trademark Registration N. 1,565,559
Issued on November 14, 1989
US Trademark Registration N.2,244,189
Issued on May 11, 1999
US Trademark Registration N. 2,307,506
Issued on January 11, 2000
US Trademark Registration N. 2,341,098
Issued on April 11, 2000
Swiss Registration N. 367327
As from October 17, 1988
Swiss Registration N. 405374
As from April 1st, 1993
Benelux Registration N. 713561
As from June 28, 2001
US Trademark Registration N. 2,112,067
Issued on November 11, 1997
US Trademark Registration N 2,244,864
Issued on May 11, 1999
US Trademark Registration N. 1,698,835
Issued on July 7, 1992
US Trademark Registration N. 2,234,737
Issued on March 23, 1998
US Trademark Registration N. 2,354,715
Issued on June 6, 2000
5. Parties’ Contentions
The Complainant contends that it has extensively promoted goods and services in connection with the above BELL marks, through print, television, radio and online advertising as evidenced by the website printouts filed with the Complaint.
The BELL Marks symbolize high quality communications goods and services and have become a household name across the US. The BELL Marks have been recognized by US courts and in UDRP proceedings as famous marks.
BellSouth and its affiliates now serve more than 19 million customers in 16 countries worldwide. Since 1985, they offer cellular services, integrated telecommunications services, internet access services around the world in connection with the BELLSOUTH trademark.
The Complainant believes that the Domain Names at stake are confusingly similar to its marks because they are common misspellings of BELLSOUTH and virtually identical and confusingly similar to such mark. As a result of the wide range of services offered under the BELLSOUTH mark, the public has come to perceive goods and services that are offered under a BELLSOUTH mark or a slight variation of the same as emanating from or being endorsed by or affiliated with Complainant.
The Complainant's first use of the BELL mark predates by almost 100 years any use Respondents may have made of the Domain Names. The Complainant's first use of the BELLSOUTH mark predates by more than 15 years, Respondent's registration of the Domain Names.
As a result, the Respondent had constructive knowledge of the Complainant's marks and therefore any use made by the Respondent was not "bona fide" in the meaning of Paragraph 4(c) of the Policy. The Respondent has no legitimate interest in the Complainant's marks as they have no corporate, partnership or other fictitious business name under any of the names composing the Domain Names.
Respondent was in bad faith when registering and using the Domain Names. As a result of the long-standing advertising and marketing activities of the Complainant, the Respondent could only be aware that the Complainant was the owner of the famous BELL marks. A domain name search at the time of registration of the Domain Names would have revealed the Complainant's domain names <bellsouth.com> and <bellsouth.net>. Further, all Domain Names were used to re-direct traffic to porn sites. Initially to <amaturevideos.nl> or <hanky-panky-college.com> and, as of March 13, 2003, to <hanky-panky-college.com> only. Despite the sending of a cease and desist letter by mail on May 15, 2002, which was returned as undeliverable - and by e-mail, re-direction of the Domain Names to the said porn site was maintained. On information and belief, Respondents derive revenues from its links to <amaturevideos.nl> and <hanky-panky-college.com> sites, either through revenues from advertisements or through a commission on sales made to internet users directed to those sites from Respondents' sites.
According to Complainant, by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, internet users to its site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's site. Finally, the fact that the Complainant's correspondence was returned undelivered is a clear indication that Respondent has provided false or incomplete information to the registrar, which indicates the Respondent's intent to hide their true identity and location from the owner of the BELLSOUTH mark.
For all above reasons, the Complainant is seeking the transfer of the Domain Names to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a response to the Complaint is not due to any omission by the Center.
Where there is default, "the Panel shall proceed to a decision on the complaint", and "shall draw such inferences as it considers appropriate" (paragraphs 14(a) 14(b) of the Rules). Paragraph 15(a) of the Rules provides that a "Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate".
A. Identical or Confusingly Similar
The Panel finds that the Complainant's rights on the marks BELL and BELLSOUTH are established. The Panel also finds that both trademarks are distinctive and relatively famous. As a result of its continuous use over the past 15 years, the mark BELLSOUTH has acquired a distinctiveness of its own.
One may sometime hesitate whether certain typo-squatting activities are creating a confusion or not. The conclusion reached may be different if one considers the phonetic or the visual aspects of the domain names and marks at stake. Both aspects are relevant.
In, Reuters Limited v. Global Net 2000 Inc. and Global Net 2000 INC, a/k/a Reutersnews.com, WIPO Case No. D2000-0441, an Administrative Panel found that orally, <reters>, <ruters> or <reuers> might not be confusingly similar to the trademark REUTERS. However, visually, these second level domain names were confusingly similar to the trademark at stake. The Administrative Panel held that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.
In, VeriSign Inc. v. Onlinemalls, WIPO Case No. D2000-1446, an Administrative Panel found that visually, <verasign.com> and <veresign.com> were confusingly similar to VERISIGN. More recently, administrative panels found that <frelotto> was confusingly similar to FREE LOTTO (WIPO Case No. D2002-1101, PlasmaNet Inc. v. John Zuccarini) and that <nasdasq.com> was confusingly similar to NASDAQ (WIPO Case No. D2003-0103, The Nasdaq Stock Market Inc. v. Act One Internet Solutions).
The facts of the present case are strikingly similar to those of the WIPO Case No. D2002-0559, BellSouth IntellectualProperty Corporation v. Texas Internet, quoted by Complainant. In that case, the Administrative Panel found that the domain name <bellouth.net> was virtually identical and confusingly similar to the BELL and BELLSOUTH marks of the Complainant. Like the present case, the domain name at stake pointed to a web site displaying pornographic materials, that time under the URL "http://hanky-panky-collage.com/". That decision also referred to other WIPO cases which all found in favour of a likelihood of confusion where a domain name was only containing a minor departure from a trademark. For instance, in WIPO Case No. D2001-0184, Time Warner Entertainment Co. v. Zuccarini, the panel found that in registering the disputed domain names <harypotter.com>, <looneytoones.com>, and <scobydoo.com>, the Respondents had deliberately misspelled the marks, but only slightly: the original mark remains almost intact, both visually, phonetically and orthographically.
Phonetically, the Domain Name <bellouth.com> is probably less similar to the mark BELLSOUTH than the other Domain Names. Nevertheless, it is visually very similar to that mark.. The other Domain Names are a series of domain names which are phonetically and visually very similar to the BELLSOUTH mark. The Panel therefore finds that the Domain Names <bellsoouth.com>, <bellsoouth.net>, <bellsouh.com>, <bellsouh.net>, <bellsuth.com>, <bellsuth.net> and <bellouth.com> are confusingly similar to the BELLSOUTH marks of the Complainant in the meaning of paragraph 4 (a) (i) of the Policy.
B. Rights or Legitimate Interests
As asserted by Complainant, use of the BELLSOUTH mark predates Respondent's registration of the Domain Names by more than 15 years. There is no evidence of any kind that the Respondent has any legitimate interest in the trademark BELLSOUTH held by the Complainant. Complainant does not allege to have licensed or otherwise transferred any right as to the mark to the Respondent. The Respondent does not appear to have any corporate, partnership or business name under any of the <bellsoouth>, <bellsouh>, <bellsuth> or <bellouth> names.
As a result the Panel finds that the Respondent does not have any right or legitimate interest in the Domain Names in the meaning of paragraph 4 (a) (ii) of the Policy.
C. Registered and Used in Bad Faith
Since the Respondent has no association whatsoever with the Complainant, there is little doubt that under the present circumstances, the registration and use of the Domain Names is in bad faith.
The queries initially aimed at the Complainant's web sites, only reach the Respondent's sites as a result of typos in the <bellsouth.com> or <bellsouth.net> domain names. In other words, it is the creation of a "likelihood of confusion with the Complainant's mark" which generates a traffic to the Respondent's web sites.
The registration and use of multiple variations of a famous mark such as Complainant's BELLSOUTH mark can only be deliberate. Such multiplication is aimed at increasing the potential number of queries to the web sites pointed by the Domain Names.
It is likely that such diversion of queries, to the <amaturevideos.nl> and <hanky-panky-college.com> sites, generates revenues for the Respondent, either through advertising or through commissions. Given the contents of the ultimate web sites, it is unlikely that the re-direction was motivated by any purpose other than "commercial" in the meaning of paragraph 4 (b) (iv) of the Policy.
The Panel notes the striking similarities between the facts of the present case and those of WIPO Case No. D2002-0559 BellSouth Intellectual Property Corporation v. Texas Internet, referred above under A. Although the URL is slightly different, the ultimate pornographic web site to which the traffic is re-directed seems presently identical. The domain name in dispute was <bellouth.net>, whilst the present case includes <bellouth.com> as part of other litigious domain names. In both cases, the Respondent defaulted. Since Respondent is hiding its real identity and location, it cannot be determined, but it is likely, that both cases are related and belong to a pattern of activities consisting in creating systematic confusion with famous marks such as BELLSOUTH to generate revenues.
The Panel therefore finds that the Respondent registered and used the Domain Names in bad faith in the meaning of paragraph 4 (b) (iv) of the Policy.
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 <bellsoouth.com>, <bellsoouth.net>, <bellsouh.com>, <bellsouh.net>, <bellsuth.com>, <bellsuth.net> and <bellouth.com> be transferred to the Complainant.
Pierre Olivier Kobel
Date: June 3, 2003