WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cincinnati Bell Inc. v. Cincinnati Bell Telephone Company / CINCNNATIBELL.COM c/o Whois Identity Shield
Case No. D2006-1406
1. The Parties
The Complainant is Cincinnati Bell Inc., Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondents are Cincinnati Bell Telephone Company / CINCNNATIBELL.COM c/o Whois Identity Shield, Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <cincnnatibell.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2006. On November 7, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On November 7, 2006, Nameview 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. In response to an inquiry by the Center, the Complainant confirmed that it had no control over the domain name on November 27, 2006, notwithstanding its name on the registration document as registrant. 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 November 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2006.
The Center appointed Kristiina Harenko as the sole panelist in this matter on January 5, 2007. 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
According to the extracts from the United States Patent and Trademark database the Complainant has the following trademark registrations in the United States of America for trademarks containing the designation CINCINNATI BELL:
- CINCINNATI BELL WIRELESS (and design) – Registration No. 2,371,972, registered on August 1, 2000 for wireless telephone communication services;
- CINCINNATI BELL GOLD PROGRAM (and design) – Registration No. 2,378,421, registered on August 22, 2000, for personalized telecommunication services, namely, call waiting, voice messaging, call forwarding, caller ID, three-way calling, call return, repeat dial, satellite transmission of television programs, providing multi-user access to a global computer information network, and pre-paid calling card services, all featuring a customer incentive award program;
- CINCINNATI BELL DIRECTORY – Registration No. 2,891,520, registered on October 5, 2004, for CD-ROMs featuring telephone directory information; and telephone and business directories;
- CINCINNATI BELL NETWORK SOLUTIONS – Registration No. 2,622,571, registered on September 24, 2002, for procurement, namely, purchasing data networking equipment for others; installation, maintenance and repair or telecommunications equipment and data networking equipment, for others; and monitoring and design of telecommunications equipment and data networking equipment for others.
The disputed domain name <cincnnatibell.com> was registered on August 29, 2005.
5. Parties’ Contentions
According to the Complaint the Complainant is one of the United States of America most respected and best performing local exchange and wireless providers. Originally incorporated on July 5, 1873, as the City and Suburban Telegraph Company, the Complainant changed its name in 1903 to Cincinnati and Suburban Bell Telephone. In 1971 the Complainant changed its name to Cincinnati Bell, Inc. Over the past 133 years the focus of Cincinnati Bell has remained unchanged and it provides different kinds of telecommunications services and products.
The Complainant contends that it is one of the seven (7) “Regional Bell Operating Companies” or “Baby Bells” formed in 1983 resulting from the break-up of American Telephone & Telegraph Co., Inc. (“AT&T). As a result of the break up, the Complainant became one of the concurrent users of all of AT&T’s rights in the BELL and BELL DESIGN marks and federal registrations for those marks (collectively “the Bell Marks”). Pursuant to the 1983 court order, the Baby Bell companies had to use the Bell Marks mark with a regional modifier. Since at least as early as 1984, the Complainant has used the Bell Marks with the modifier “Cincinnati”, resulting in the mark CINCINNATI BELL. In addition to the concurrent registration for BELL and its longstanding common law rights in the CINCINNATI BELL trademarks, the Complainant and its related companies own numerous trademark registrations in the United States for trademarks containing the designation CINCINNATI BELL.
The Complainant contends that it has extensively used the CINCINNATI BELLL marks in connection with telecommunications goods and/or services and the marks have been actively advertised and promoted. As a result, the CINCINNATI BELL marks are well known in the United States of America as identifying Cincinnati Bell as the provider of a broad range of telecommunications goods and services. The CINCINNATI BELL trademarks have become famous. The registered trademarks are valid and subsisting, and the Complainant owns record title to the CINCINNATI BELL registered marks. The valid CINCINNATI BELL trademarks evidence Complainant’s exclusive right to use those trademarks in connection with the goods and services specified in the certificates of registration. The Complainant has used the CINCINNATI BELL marks continuously and exclusively in connection with its telecommunications products and services since 1982.
The Complainant contends that its telecommunications products and services are offered to the public only through itself, its authorized agents and the registered representatives.
The Complainant contends that since August 1997, it has owned and used the domain name <cincinnatibell.com>.
The Complainant contends that in July of 2006, it became aware that the Respondent had registered <cincnnatibel.com>, which is identical to CINCINNATI BELL mark, only omitting the second “i” in Cincinnati to take advantage of those committing a typographical error when searching for Cincinnati Bell.
The Complainant contends that the Respondent registered and used the <cincnnatibell.com> in bad faith to capitalize on the recognition of the CINCINNATI BELL mark by those seeking telecommunications products and services and to capitalize from the misdirected traffic resulting from the typographical errors of those seeking to go to “www.cincinnatibell.com”, which is the Complainant’s official website. “Cincnnati” is not a word and it makes no sense to register a domain devoted to telecommunications products and services with this typographical error unless the intention is to benefit from misdirected traffic.
The Complainant contends that if a domain name incorporates a mark in its entirety, it is confusingly similar to that mark despite the addition of other words. See Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512, Wall-Mart Stores, Inc. v. macLcod d/b/a/ For Sale, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant’s mark). The domain name <cincnnatibell.com> incorporates the CINCINNATI BELL mark in its entirety, only varying the mark through the use of a purposeful misspelling. The Complainant also refers to Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding 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). See also Victoria’s Secret v. Zuccarini, NAF Case No. 95762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s mark).
The Complainant further contends that it is apparent from the website “www.cincnnatibell.com” that Respondent set up the website to make money, using the CINCINNATI BELL trademarks. Included in the “Related Searches” link on “cincnnatibell.com” are “Cellular Phone”, “Internet Access”, “Fuse” and “Cincinnati Bell Wireless” – all links that refer to or relate to the Complainant or its lines of business. The “Related Searches” also include links named after competitors of the Complainant. Respondent’s entire business according to the Complainant appears to draw customers in with the CINCINNATI BELL marks and then divert them to competitive products and services. The “Cellular Phone” link leads viewers to a page with many links to competitors of the Complainant and the “Internet Access” link leads viewers to a page containing only links to the Complainant’s competitors. Even the link marked “Cincinnati Bell Wireless” merely directs the user to several sponsored links that do not include Complainant.
The Complainant contends that when visiting the “www.cincnnatibell.com” website, viewers are inundated with pop-up windows. A portion of these windows relate to the Complainant’s competitors. The user cannot close the browser when viewing the “www.cincnnatibell.com” website or many of the related pop-up windows without more pop-up windows relating to telecommunications and other sites and services appearing. This practice is known as “mouse-trapping”. Mouse trapping has been held to be evidence of bad faith registration and use (Worldwinner.com, Inc. v. Zuccarini, FA 175289, Nat. Arb. Forum, and Kidman v. Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415).
The Complainant contends that each of the pages reached on <cincnnatibell.com> by following a “Related Searches” link contains “sponsored links”. The Respondent makes money every time a lost Internet user follows one of those links. None of those links are directed to Cincinnati Bell, the entity being sought by those lost browsers. After following any of the “Related Searches” links, the viewer arrives at a page with “Sponsored Results”. The Sponsored Result all relate to telecommunications and following any of those links lead to another page with links to Cincinnati Bell’s competitors. The Respondent’s business model is to profit from diverting those seeking Complainant’s services to Complainant’s competitors.
The Complainant contends that the Respondent’s home page at “www.cincnnatibell.com” is generated, in part, by an automated program that modifies the links and content of the site, custom tailoring it to what people have been searching for on that site. Obviously, browsers at “www.cincnnatibell.com” have been looking for the Complainant and information on its telecommunications services and products. Instead of reaching the desired website, those users are misdirected by the Respondent to Complainant’s competitors and other who are willing to pay Respondent for the additional traffic. This business model is the epitome of bad faith registration and use.
The Complainant contends that the Respondent has registered and is using the <cincnnatibell.com> domain in bad faith to benefit from misdirected traffic in search of information on Complainant’s products and services. The Respondent has tailored the entire site to contain links to products and services in competition with the Complainant. Respondent’s use of the <cincnnatibell.com> domain name containing CINCINNATI BELL mark merely to capture customers of the Complainant who are seeking Complainant’s products and services is neither a legitimate, nor good faith use of the domain. The Respondent directly profits from the traffic it intentionally misdirects. Using a domain name to intentionally attract, for commercial gain, internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, Paragraph 4(b)(iv), see also Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.
The Complainant contends that “typosquatting” is the bad faith act of using “misspellings or variations of legitimate domain names in order to trick individuals into viewing unrelated advertisements or websites. Typosquatting is profitable because a website with a domain name consisting of a common misspelling of a famous trademark generates Internet traffic and, therefore, advertising revenue”. See American Girl, LLC v. Nameview, Inc., 381 F. Supp. 2d 876, 879 n. 1 and Shields v. Zuccarini, 254 F.3d 476, 483-84 (3rd Cir. 2001). Respondent clearly registered <cincnnatibell.com> to typosquat upon the CINCINNATI BELL Trademarks.
The Complainant contends that the Respondent has no legitimate interest in the <cincnnattibell.com> domain name. Respondent is not a licensee of, or otherwise currently associated with, the Complainant. Respondent has no rights or legitimate interests in respect to its use of <cincnnatibell.com>. Respondent is not using the domain name in connection with a bona fide offering of goods or services. The domain name was registered and is being used in bad faith, with a clear intent to profit from confusion. See Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 (when a domain name is obviously connected with a Complainant and its products its very use by a Registrant with no connection to the Complainant suggests “opportunistic bad faith”). Respondent registered <cincnnatibell.com> long after CINCINNATI BELL trademarks had become famous trademarks of the Complainant, and long after Respondent knew of the Complainant’s superior and prior rights. That Respondent tailored the content on the domain name to relate to Complainant’s business and directed all browsers to competitors of Complainant demonstrates Respondent’s awareness of the Complainant’s prior rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove the following elements:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights, and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) that the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
The Complainant has evidenced by extracts from the United Stated Patent and Trademark database that the Complainant is the owner of numerous trademark registration in the United States of America for trademarks containing the designation CINCINNATI BELL as the dominant part of the trademarks.
The Respondent’s domain name is nearly identical to the dominant part of the Complainant’s trademarks CINCINNATI BELL, only omitting the second “i” in Cincinnati. The omission, addition, inversion or substitution of a letter is commonly known as typosquatting and does not negate the confusingly similar aspects of the domain name from the Complainant’s marks pursuant to paragraph 4(a)(i) of the Policy.
The Panel concludes that the Complainant, as registered proprietor of CINCINNATI BELL trademarks, has established trademark rights, sufficient for the purposes of paragraph 4(a) of the Policy. There is no doubt that there is confusing similarity between the Complainant’s CINCINNATI BELL trademarks and the disputed domain name.
Based on the foregoing, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In this respect the Complainant has, according to paragraph 4 (a)(ii) of the Policy, to prove that the Respondent has no rights or legitimate interests in the domain name at issue.
The Complainant has contended that the Respondent is not a licensee of, or otherwise affiliated with the Complainant. Neither is there use nor are there preparations showing the use of the domain name with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name. The Respondent is not making a noncommercial use of the domain name.
To support its contentions in this respect, the Complainant has invoked a number of circumstances, supported by documentary evidence. Despite the opportunity given, the Respondent has not contested or commented on the contentions by the Complainant.
On the basis of these circumstances the Panel is satisfied that the evidence submitted by the Complainant sufficiently supports its contention that the Respondent has no rights or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
For the purposes of determining if the bad faith element is present, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The circumstances of paragraph 4(b) of the Policy include: (i) selling, renting or otherwise transferring the domain name for valuable consideration, (ii) preventing the trademark owner from having its trademark as a domain name provided there is a pattern of such conduct, (iii) disrupting the business of a competitor or (iv) attracting Internet users to a website for commercial gain by creating confusion with the complainant’s trademark.
In this case the last of the above bad faith examples is apparent, that is, attracting Internet users to a website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
The Panel notes that the use of misspellings in domain names also indicates bad faith registration. Using misspellings of domain names in order to trick individuals into viewing unrelated advertisement or websites is evidence of bad faith use of a domain name. Typosquatting is profitable because a website with a domain name consisting of a common misspelling of a famous trademark generates Internet traffic and, therefore, possible advertising revenue.
Based on the evidence, the Panel finds that the Respondent was probably aware of Complainant’s prior rights when it registered the disputed domain name. “Cincnnati” is not a word and it makes no sense to register a domain name devoted to telecommunications products and services with this typographical error unless the intention is to benefit from misdirected traffic. The Respondent’s probable awareness of the Complainant’s trademarks and business is also demonstrated by the fact that the Respondent tailored the entire site to contain links to products and services in competition with the Complainant. The Respondent probably profits from the traffic it intentionally misdirects. Based on the foregoing, the Panel finds bad faith registration and use of the disputed domain name.
Finally, the lack of a response to this Complaint infers that the Respondent in all likelihood could not demonstrate any good faith use of the domain name.
In view of the evidence provided, the Panel finds that the Respondent registered and is using the disputed domain name 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 <cincnnatibell.com> be transferred to the Complainant.
Dated: January 18, 2007