WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BellSouth Intellectual Property Corporation v. AA-HOSTING.COM
Case No. D2003-0732
1. The Parties
The Complainant is BellSouth Intellectual Property Corporation of Wilmington, Delaware, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is AA-HOSTING.COM, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bellsouth-hosting.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2003. On September 16, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On September 17, 2003, Wild West Domains, Inc. 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 September 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 9, 2003.
The Center appointed Jette Robsahm as the Sole Panelist in this matter on October 16, 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.
The language of the proceeding is English.
4. Factual Background
The following non-contested facts are derived from the Complaint with supporting evidence submitted.
Complainant in these proceedings is BellSouth Intellectual Property Corporation, hereafter called BellSouth.
BellSouth and its predecessors, affiliates, and licensees have adopted and used a number of marks incorporating the term "BELL" since the 1880s, 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 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.
Since 1984, BellSouth Corporation, together with its affiliates, has provided a wide variety of telecommunications-related goods and services in connection with the BELLSOUTH Marks, not only in the southeastern United States, but also around the world.
Complainant is an affiliate of BellSouth Corporation that owns and manages BellSouth Corporationís intellectual property assets, including the trademarks at issue here, which were assigned to it.
Complainant bases its complaint on many trademarks and service marks, e.g. four registrations for BELLSOUTH, Nos 1,565,559, 2,244,189, 2,207,506 and 2,341,098 and two registrations for BELLSOUTH.NET, Nos. 2,112, 067 and 2,244,864, covering relevant goods and services in the classes 9, 38 and 42.
According to the Complainant the BELLSOUTH mark is also registered in fifty other countries around the world.
The disputed domain name <bellsouth-hosting.com> was registered by Respondent on May 27, 2003, and was used in connection with a web page entitled "AA-Hosting.com" where the Respondent offers web hosting services.
The Complainant faxed a cease and desist letter to the Respondent on June 25, 2003, demanding Respondent to immediately stop using the domain name and website. No response was received by Complainant.
5. Partiesí Contentions
The Complainant states, inter alia, as follows:
1. The Domain name is confusingly similar to Complainantís trademarks.
Because the Complainant, its predecessors and its affiliates have used the mark BELLSOUTH in connection with a wide variety of communications-related goods and services, including cellular, telecommunications and internet, the BELLSOUTH mark has become the central motif in Complainantís family of marks. Accordingly, the public has come to perceive goods and services that are offered under one of the BELLSOUTH marks or a slight variation of the same as emanating from or being endorsed by or affiliated with Complainant.
Respondent has incorporated the exact BELLSOUTH mark into the Domain Name.
2. Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has no registered trademark rights or any other rights corresponding to the domain name. Complainantís first use of the BELLSOUTH mark predates Respondentís registration of the Domain Name by more than 15 years. Moreover, because Complainantís trademark registrations were issued long before Respondent registered the 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 Marks.
Further Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the name "bellsouth-hosting," or the foregoing combined with the suffix ".com."
3. The Domain name was registered and has been used in bad faith.
Complainant reasonably believes that Respondent, prior to its adoption and use of the Domain Name was aware that Complainant was the owner of the BELLSOUTH Marks because of the widespread and long-standing advertising and marketing of goods and services under the BELLSOUTH Marks around the world, including online and in newspapers distributed in the United States and abroad. For example, since 1990, the BELLSOUTH mark has been prominently featured in advertisements placed by Complainant in two newspapers distributed in the Caribbean, where upon information and belief, the Respondent is located: The Financial Times-World Edition and The International Herald Tribune.
Further, Respondentís use of the Domain Name indicates its knowledge of Complainant, its marks and its goods and services. Respondent uses the <bellsouth-hosting.com> domain name in connection with a web page entitled "AA-Hosting.com," but which is located at the <bellsouth-hosting.com> domain name. Respondent offers web hosting services at the site. The page to which the <bellsouth-hosting.com> domain name directed users was active as of August 20, 2003. The website also contains links to "www.multiplenames.com," a site which offers domain names for sale, and "www.herbalifemarket.com," a site which offers nutritional products and supplements for sale.
On June 25, 2003, Complainant faxed a cease and desist letter to the administrative contact listed on the Domain Name registration, demanding Respondent immediately discontinue use of the Domain Name and website, destroy all tangible materials on which the Domain Name appeared, assign the Domain Name to Complainant, and refrain from further infringement of Complainantís trademarks. The letter was transmitted via facsimile because Complainant could discern that the mailing address provided by the Respondent was false. However, the attempt to transmit the letter by facsimile to Respondentís "fax number" failed as the number resolved to a telephone rather than a fax machine.
On June 25, 2003, Complainant sent an additional copy of the cease and desist letter via email to the administrative contact on the Domain Name registration. Complainant received electronic verification that this message was successfully delivered. A printout of the email and the verification of the successful delivery of the email are attached as Exhibit L. However, no response to the email was received.
On information and belief, Respondent derived revenues from its use of the <bellsouth-hosting.com> domain name. Further, on information and belief, Respondent derived revenues from its links to the "www.multiplenames.com" and "www.herbalifemarket.com" sites, either through revenues from advertisements or through a commission on sales made to Internet users directed to those sites from Respondentís "www.bellsouth-hosting.com" site.
Respondent thus has used, and on information and belief intends further to use, the <bellsouth-hosting.com> domain name in order to trade upon the publicís recognition of Complainantís 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 site by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís site. This diversion through creation of confusion is express indicia of bad faith under the Policy.
Complainant has attempted to send correspondence to Respondent to inform him of Complainantís rights and to request a transfer of the Domain Name, but the Respondent failed to provide a complete mailing address, and correspondence sent via facsimile was unable to be delivered. Accordingly, it is clear that Respondent has provided false or incomplete contact information to the registrar. The provision of false or incomplete contact information indicates Respondentís intent to hide its true identity and location from the owner of the BELLSOUTH Marks, further indicia of Respondentís bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), paragraph 4(a), the Complainant must prove that
(i) The domain name in question 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 domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
The Complainant has provided sufficient evidence of his rights to the trademarks BELL, BELLSOUTH and BELLSOUTH.NET.
A. Identical or Confusingly Similar
The domain name in question is not identical to the trademarks BELLSOUTH and BELLSOUTH.NET owned by the Complainant, but must be considered confusingly similar when compared. The domain name created a likelihood of confusion with the trademarks BELLSOUTH.
The domain name incorporates the mark BELLSOUTH which is a distinctive and well-known mark. The word "hosting" added as a kind of suffix, does not change the overall impression of the designation as it is a descriptive term with a connotation apt to give the impression that the domain name is connected to the Complainant. Most consumers will have a good knowledge about the BELLSOUTH mark and that it is used for and in connection with telecommunication services and Internet services. The BellSouth Corporation is well known. There is reason to believe that the public, when reading or hearing the domain name <bellsouth-hosting.com>, will believe that the domain name is owned by, or related to, the Complainant and points towards a website where one can read about or being offered hosting services. The result may therefore be that the disputed domain name would be associated in the minds of the consumers with the Complainantís trademarks so that a risk of confusion is likely.
With regard to the trademark BELLSOUTH.NET, the only difference to the disputed domain name is the suffix ".NET." The word NET in this connection is as descriptive as ".COM," and must be given little weight when assessing whether the mark and the domain name can be confused.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 (March 22, 2002) and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802 (September 9, 2000). The same view is also common trademark theory.
On this background it is the view of the Administrative Panel that the domain name <bellsouth-hosting.com> is confusingly similar to the trademarks BELLSOUTH and BELLSOUTH.NET.
B. Rights or Legitimate Interests
The Respondent has obviously no connection whatsoever to the Complainant. He has no registered rights in any trademark identical or similar to the domain name <bellsouth-hosting.com>.
The Respondent registered and began use of the domain name <bellsouth-hosting.com> long after the first use of the marks BELLSOUTH and BELLSOUTH.NET.
Because of the fact that the Complainantís marks are well-known and the Complainant is known for telecommunication and Internet services, there is reason to believe that the Respondent knew of both the marks and the services. It is not proven, but for obvious reasons one can be brought to believe that his use of the domain name for a hosting service was made to take advantage of the known trademarks.
On this background the Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
C. Registered and Used in Bad Faith
It is obvious that the Respondent knew of the Complainant and the trademark BELLSOUTH prior to registering the domain name. The trademark and company name BELLSOUTH is well known. It has been used worldwide for many years and is, as demonstrated above, a well known trademark for telecommunication services. To choose a domain name incorporating a well-known trademark, indicates (1) that the Respondent knew the trademark in question and (2) a wish to divert the public to an own homepage taking advantage of the reputation of the trademark. The last point is demonstrated with the fact that the domain name points to a website offering hosting services, services which could be believed to come from the Complainant.
Failing an answer from the Respondent, the Administrative Panel can see no other reason to choose the domain name in question than a wish to attract consumers to a website for commercial gain.
Paragraphs 4(b)(i) and (iv) of the Policy provides that sufficient evidence of bad faith may exist where:
"(i) Circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name"; or
"(iv) By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Administrative Panel therefore concludes that the Complainant has provided sufficient evidence that Respondentís registration and use of the domain name <bellsouth-hosting.com> is in bad faith.
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 name, <bellsouth-hosting.com> be transferred to the Complainant.
Dated: October 21, 2003