WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bellsouth Intellectual Property Corporation v. Simo Elbaz
Case No. D2003-0530
1. The Parties
The Complainant is Bellsouth Intellectual Property Corporation, Wilmington, Delaware, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Simo Elbaz, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wwwbellsouth.net> was registered with DomainPeople at the time the Complaint was filed. Registration was then transferred to Spot Domain LLC d/b/a DomainSite.com, before being returned to the original registrar, DomainPeople.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. On July 4, 2003, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the disputed domain name. On July 9, 2003, DomainPeople transmitted by email to the Center its verification response confirming that the Respondent was 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 July 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2003. The Respondent did not submit a response. Accordingly, the Center notified the Respondentís default on August 1, 2003.
The Center appointed Miriam Sapiro as the Sole Panelist in this matter on August 25, 2003. The Panel finds that it was properly constituted. The Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel informed the Center that the registrar (and registered name holder) of the disputed domain name had been changed. At the request of the Center, the error was corrected and the new registrar, DomainSite.com, returned the name to the original registrar, DomainPeople.
4. Factual Background
Complainant ("BellSouth") is an affiliated BellSouth company that owns and manages the BellSouth Corporationís intellectual property assets. BellSouth Corp., formed following the breakup of AT&T in the 1980ís, provides an array of telecommunications and related goods and services in the southeastern part of the United States of America and around the world.
Complainant owns numerous trade and service marks bearing the BellSouth name. These include marks for BELLSOUTH and for BELLSOUTH.NET. Consumers have come to recognize the BELLSOUTH marks as signifying a product or service affiliated with a BellSouth company.
Simo Elbaz registered the disputed domain name <wwwbellsouth.net> on March 16, 2003, with DomainPeople, Inc, with an expiration date of March 16, 2004. The domain nameís Whois record had indicated that it was updated on August 6, 2003, after the Complaint was filed with the Center and these proceedings began. The new registrar of record was DomainSite.com, Inc, and the registered name holder was different than the Respondent. At the time the registrar and name holder were changed, the domain nameís expiration date was extended to March 16, 2005. At the request of the Center, the transfer error was corrected and the domain name was returned to its original registrar and registrant. The expiration date of the registration was also extended to March 16, 2006.
Both prior to and following the initial transfer, the disputed domain name <wwwbellsouth.net> was resolving to a website called "Credit Card Applications Center," advertising the sale of low-cost credit cards that have no connection with BellSouth.
5. Partiesí Contentions
Complainant contends that the domain name is confusingly similar to its marks because the prefix "www," without being followed by a period, represents a common misspelling that makes the disputed domain name virtually identical to its BELLSOUTH marks. It argues that people around the world have come to associate goods and services offered under one of the BELLSOUTH marks as connected with the company and being of high quality.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name because its predecessorsí first use predates Respondentís use of the mark by nearly 100 years.
Complainant further contends that the domain name is being used in bad faith because Respondent was aware of its prior rights. It cites as an example that BellSouth has run more than 200 advertisements since June 2002 in the Miami area alone, where Respondent resides. Complainant maintains that it was this widespread recognition that led Respondent to initially link <wwwbellsouth.net> to <viagrawholesale.com> and, previously, to <adultfriendfinder.com>. Complainant asserts that Respondentís ownership of other domain names indicates a pattern of trying to attract Internet users to Respondentís websites, for commercial gain, through the use of confusingly similar names, see Complaint, Exhibit Q ("wwwcnnfn.com"); TMP Worldwide Inc. v. Register411.com, NAF Case No. FA0301000142321 (February 26, 2003) (transferring "monstremoving" from Register411.com, a/k/a Simo Elbaz to company holding trademark rights to MONSTER MOVING).
The Respondent did not reply to the Complaint.
6. Discussion and Findings
The Panel finds that it was properly constituted.
This case is unusual in that Respondent transferred the domain name to another registrar after the Complaint was filed and the administrative proceedings began, and also purported to change the name of the registered holder. It is not known whether the temporary holder was indeed distinct from the Respondent, as the contact information was incomplete. Moreover, the domain name continued to resolve to the same website that was verified by the Center, namely "Credit Card Applications Center." That website continued to contain the statement "Copyright 2003 homedepotstore.com." The domain name <homedepotstore.com> is registered to Respondent, with the identical contact information that had been provided for the disputed domain name <wwwbellsouth.net>.
In any case, under the Registration Agreement that Respondent and DomainPeople had concluded, both transferring a domain name to a new holder and changing registrars is prohibited once an administrative proceeding has begun. See Section 8 of Uniform Domain Name Dispute Resolution Policy appended to the DomainPeople, Inc. Registration Agreement, at Complaint, Exhibit B; see also Section 8 of the Policy adopted by ICANN and all accredited domain name registrars for names ending in, inter alia, ".net." Substantively the same provisions appear in the Registration Agreement concluded between the new registrar, DomainSite.com, and the registered holder.
The transfer of the disputed domain name to a new registrar and to a purportedly new holder was therefore null and void. See Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO Case No. D2000-1631 (March 30, 2001), in which the panel stated "[s]ince Respondents transferred the domain name <nfospace.com> after Infospace filed the Complaint, the [panel] hereby cancels the transfer." Any other conclusion would have the effect of enabling respondents to evade the requirements of the Policy and UDRP proceedings by simply transferring a disputed domain name to a new registrar or holder.
Proceeding to the merits, under paragraph 4(a) of the Policy the Complainant must prove that each of the following three elements is present in order to prevail:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Because the Respondent failed to reply to the Complaint, in accordance with paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the Complaint and draw such inferences from Respondentís failure to reply as it considers appropriate. See, e.g., Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939 (December 20, 2002).
A. Identical or Confusingly Similar
It is undisputed that Complainant is the holder of trademark and service mark registrations for the terms "BELLSOUTH" and "BELLSOUTH.NET" in the United States and is using those marks in commerce. See, e.g., BellSouth Intellectual Property Corporation v. Texas Internet, WIPO Case No. D2002-0559 (August 14, 2002). It is clear that these rights arose before Respondent registered <wwwbellsouth.net> on March 16, 2003.
Respondentís registration of <wwwbellsouth.net> (1) incorporates Complainantís "BELLSOUTH.NET" mark; and (2) inserts the letters "www" before it. The "www" is an acronym for "world wide web" and the most commonly used prefix in URLs used to navigate the Internet. As a result, most Internet users would consider the domain names <wwwbellsouth.net> and <bellsouth.net> to signify the same company, goods and services. Moreover, it would not be uncommon to mistakenly type in "wwwbellsouth.net," without a period between "www" and "bellsouth," with the expectation that the browser would resolve to a bona fide BellSouth website. Indeed, in a recent case involving nearly the same registration string, with only a different generic top-level domain (gTLD), a WIPO panel concluded that <wwwbellsouth.com> constituted typo-piracy and was confusingly similar to complainantís marks. See Bellsouth Intellectual Property Corporation v. Andrey Michailov, WIPO Case No. D2003-0300 (June 13, 2003); see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (July 13, 2000) (finding <wwwreuters.com> confusingly similar to REUTERS mark because of visual similarity and potential for typo-piracy). This Panel reaches the same conclusion, finding that <wwwbellsouth.net> is confusingly similar to the Complainantís mark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in the disputed domain name. They are:
(i) before any notice of the dispute, [Respondentís] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has failed to present evidence suggesting that it was ever using, or preparing to use, <wwwbellsouth.net> in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. It has also failed to present evidence that it has been commonly known by "bellsouth" or "bellsouth.net," or that it is making legitimate noncommercial, or fair use, of the domain name. While these three elements are not intended to be exhaustive - the Policy states that they are "in particular but without limitation" - the Panel is unable to infer any evidence that would support an argument that Simo Elbaz has rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," shall constitute evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of [the Complainant]; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on [the] website or location.
The Panel finds sufficient grounds upon which to conclude that the element of bad faith is present. The domain name <wwwbellsouth.net> is being used to attract Internet users to Respondentís website, the "Credit Card Applications Center," by creating a likelihood of confusion with <bellsouth.net> as to the source, sponsorship, affiliation and endorsement of the website and of the product offered. The implication is that BellSouth is offering the credit card product, but this is not the case. It is reasonable to infer that Respondent is profiting from credit card applications made through the website it controls, as well as the accompanying pop-up advertisements. As noted above, the "Credit Card Applications Center" website includes the statement "Copyright 2003 homedepotstore.com," and the domain name <homedepotstore.com> is also registered to Respondent. The criterion set forth in paragraph 4(b)(iv) of the Policy is therefore satisfied.
Paragraph 4(b) of the Policy makes clear that the three criteria mentioned are illustrative of bad faith, rather than exhaustive. A finding of bad faith in this case is also supported by Respondentís pattern of registering domain names that correspond closely to marks that are owned by others. In a recent UDRP decision involving "typo-piracy," the panel ruled that the domain name <monstremoving.com> registered by "Register411.com, a/k/a Simo Elbaz" be transferred to the company holding trademark registration for MONSTER MOVING, See TMP Worldwide Inc. v. Register411.com, NAF Case No. FA0301000142321 (February 26, 2003). Register411.com is also the registrant of <wwwcnnfn.com>, although there does not appear to be a connection between Simo Elbaz and CNNfn, the CNN Financial Network. The domain name <wwwcnnfn.com>, without a period between "www" and "cnnfn," resolves to <homedepotstore.com> and the same website as in the instant case, the "Credit Card Applications Center."
Accordingly, the Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy is satisfied.
For all the foregoing reasons, in accordance with sections 4(i) and 8 of the Policy, and 15 of the Rules, the Panel orders that the domain name <wwwbellsouth.net> be transferred to the Complainant.
Dated: September 8, 2003