Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainants are Compañía de Radiocomunicaciones Móviles S.A., hereinafter "CRM", an Argentine corporation with a principal place of business at Ing. Enrique Butti 240, 20^th floor, C1001AFB Buenos Aires, Argentina, and BellSouth Corporation, a United States corporation of the State of Georgia, with a principal place of business at 1155 Peachtree Street, N.E., Atlanta, Georgia 30309-3610, U.S.A. (the "Complainants"), both represented in this proceeding by Mr. Alberto Berton-Moreno Jr., Esq., of Sena & Berton Moreno, Buenos Aires, Argentina.

The Respondent is Juan Bolinhas d/b/a "MOVICOM BELLSOUTH". "MOVICOM BELLSOUTH" is an entity of an unknown nature, with an address at Berutti 3752 9 Ct, 1425 Buenos Aires, Argentina (the "Respondent"). The Panel has in mind that according with the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules"), Paragraph 1, under which "Party means a Complainant or a Respondent", and "Respondent means the holder of a domain-name registration against which a complaint is initiated". Complainants have sent the Complaint to WIPO, the Respondent and the Registrar naming Mr. Juan Bolinhas as the Respondent because this person was thought to be "doing business as MOVICOM BELLSOUTH". According to the registrar´s information, Mr. Bolinhas is the Administrative and Billing contact for the registrant. The matter has no practical consequence since there is no evidence about the real existence of a person called Juan Bolinhas or of an entity called "MOVICOM BELLSOUTH". Respondent´s default does not allow the Panel to find otherwise. Complainants have complied with Rules, Paragraph 2(b).

The domain names at issue are < movicom-bellsouth.com >, <movicombellsouth.net> and <movicom-bellsouth.net>, all three registered with Network Solutions Inc., of Herndon, VA 20170, USA.

On August 1, 2000 a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). On August 4, 2000 the Complaint was received in hardcopy.

On August 7, 2000 the Center sent an Acknowledgement of Complaint to the Parties. The communication was made to the Respondent by courier and by E-mail.

At the Center´s request for verification of August 7, 2000, on August 14, 2000 NSI informed the Center inter alia that MOVICOM BELLSOUTH is the current registrant of the domain names at issue, and that the domain names are in "active" status.

On August 15, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent and to the Respondent´s administrative and technical contact by TNT courier, facsimile and E-Mail. The courier package was sent to, but apparently was not delivered and/or received at Respondent´s and administrative contact´s address under 1 above. The tracking record of TNT reports for two different delivery dates that delivery address is incorrect and that receiver is on holiday. However on August 15, 2000 the Center transmitted a 25-pages fax to the technical and zone contact Domain Valet.com fax number 1 425 643 1477, which fax was successfully received as shown on WIPO’s records. On the same day emails were also transmitted to juanbolinhas@hotmail.com, postmaster@movicom-bellsouth.com, postmaster@movicombellsouth.net and postmaster@movicomsouth.net. The Center set September 3, 2000 as deadline for the submission of a Response.

The Respondent having failed to submit a Response, on September 5, 2000 the Center sent to the Respondent a Notification of Respondent Default by E-mail to juanbolinhas@hotmail.com.

Although the Center´s courier package with the Complaint was not deliverable at the Respondent´s and administrative contact´s address, the Panel finds that the Center has discharged its responsibilities to make reasonable efforts to try to notify the Complaint to the Respondent pursuant to Rules, Paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

The Notification of Complaint included following paragraph:

"6. Default. If your Response is not sent by the above date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."

After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, on September 21, 2000 the Center appointed him as a sole panelist. The scheduled decision date was October 5, 2000. Thus, the Administrative Panel finds that it has been properly constituted.

The Panel, sharing the assessment of the Center of August 14, 2000, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made.

There were no other submissions of the Parties, nor were extensions granted or orders issued.

The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. Complainants have submitted their Complaint in English. In the absence of any special circumstance for the Panel to determine otherwise, as provided in Rules, Paragraph 11, the language of this proceeding is English.

Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and because Complainants´ allegations and documents enclosed with the Complaint have not been contested, the Panel finds following facts as having been sufficiently established:

CRM started the era of cellular mobile communications in Argentina when it won the international tender to that effect. On April 22, 1988 CRM was set up as a corporation. The first mobile communication in Argentina was made on November 1, 1989, even before the date set by the National Communications Secretariat of Argentina. CRM made substantial investments in the cellular business. To date CRM services operate at full capacity, with approximately 1,500,000 users. CRM has over 2,500 employees on its payroll. CRM is undertaking new projects in countries such as Uruguay and Panama. In June 1999 MOVICOM was awarded a license for the Personal Communication Service - PCS in Buenos Aires and its suburban areas for an amount of US$ 162.75 million and an investment of over US$ 100 million. Since November 1999 CRM provides domestic and long distance services through its 91 % owned Compañía de Teléfonos del Plata S.A.

CRM is the owner of following trademark registrations in Argentina:

Mark	Reg. No.	Reg. Date	CLASS
MOVICOM	1,382,032	May 31, 1990	38
MOVICOM	1,408,568	November 30, 1992	09
MOVICOM	1,404,477	September 30, 1992	38
M MOVICOM	1,408,570	November 30, 1992	09
MOVICOM	1,488,693	November 30, 1993	09
MOVICOM	1,698,424	October 29, 1998	38
MOVICOM	1,698,427	October 29, 1998	09

On August 12, 1999 CRM submitted applications in Argentina for the mark MOVICOM under numbers 2234385 (Class 9), 2234387 (Class 38), 2234388 (Class 9), 2234390 (Class 38), 2234391 (Class 9), 2234393 (Class 38), 2234394 (Class 9) and 2234396 (Class 9).

Two Federal courts in Argentina have found that the trademark MOVICOM is famous.

BellSouth obtained on November 14, 1989 U.S. Trademark Registration No. 1,565,559 for the mark BELLSOUTH for various goods, including telephones and telephone accessories. On July 7, 1992 BellSouth obtained U.S. Trademark Registration No. 1,698,8535 for the mark BELLSOUTH PRODUCTS covering various telephone-related goods, including telephones, cordless telephones, telephone accessories and telephone answering machines. BellSouth has used the mark BELLSOUTH to promote the telephone goods and services of its affiliates. BellSouth advertised telephone and telephone-related products, including cordless telephones, telephone answering machines and caller identification units in print media, including trade publications, brochures, flyers, etc., at trade shows and by direct contact.

In the U.S. case BellSouth Corporation v. B.E.L.-Tronics Limited (Canada) and B.E.L.-Tronics Limited (Kansas) (Civil Action No. 1-93-CV-1714-CC), it was held that BellSouth is the lawful owner of the mark BELL for a wide variety of telephone-related goods and services and that the mark BELL "has been and continues to be a famous trademark".

In 1988 a consortium led by BellSouth International, a company created by BellSouth in 1985 to manage its activities outside the U.S., won a bid to build an Argentine cellular network, the first private cellular system in South America. At present BellSouth International renders services to more than 10 million clients in 19 countries in Latin America, Europe, the Middle East and Asia. In particular, the company operates in Argentina, Brazil, Chile, Denmark, Ecuador, Germany, Guatemala, India, Israel, Nicaragua, Panama, Peru, Uruguay and Venezuela. By 1995 BellSouth’s revenues exceeded US$ 17 billion. By 1999 BellSouth added a new customer somewhere in the world every 10 seconds.

BellSouth has registered its trademarks in many countries. It owns following registrations in Argentina:

Mark	Reg. No.	Reg. Date	Class
BELLSOUTH	1,736,098	January 4, 2000 (renewal of 1,341,338 granted on April 12, 1989)	9
BELLSOUTH	1,736,099	January 4, 2000 (renewal of 1,341,339 granted on April 12, 1989)	16
BELLSOUTH	1,736,100	January 4, 2000 (renewal of 1,341,340 granted on April 12, 1989)	38
BELLSOUTH	1,433,325	April 30, 1993	42

On April 26, 1999 CRM and BellSouth entered a Trademark License Agreement, pursuant to which BellSouth authorized CRM the use of its trademark BELLSOUTH, including co-branding with CRM’s mark MOVICOM.

According with the WHOIS domain name records, the record of the domain name at issue was created on March 23, 2000. The Respondent is the current registrant.

On January 26, 2000 Complainants detected that <movicom-bellsouth.com>, <movicom-bellsouth.net> and <movicombellsouth.net> had been registered by an unauthorized third party, Argentina Web Design 1 On March 21, 2000 BellSouth sent a cease-and-desist letter to Argentina Web Design requesting the cease of use and transfer of these three domain names.

On March 23, 2000 - probably at the time when Argentina Web Design received the cease-and-desist letter from BellSouth - Respondent acquired the registration of the domain names at issue.

During the first week of April 2000 Mr. Gache-Pirán, in-house counsel to CRM, contacted by telephone Mr. Castelao who has been alleged by Complainants to be the contact person for said domain names (Complaint, page 13). Mr. Gache-Pirán asked Mr. Castelao to transfer the <movicom-bellsouth.com>, <movicombellsouth.net> and <movicom-bellsouth.net> domain names for plain payment of registration costs. Mr. Castelao demanded a "serious and higher" sum for the transfer. No agreement was then reached.

On April 24, 2000 Mr. Alberto Berton Moreno Jr., Esq., counsel for CRM, sent a cease-and-desist letter to Argentina Web Design, requesting the cease of use and transfer or cancellation of the domain name. Some 10 days later Mr. Castelao contacted by phone Mr. Berton-Moreno Jr. to answer the cease-and-desist letter. He repeated the arguments told to Mr. Gache-Pirán of CRM concerning the requested transfer of the three domain names. Mr. Castelao told Mr. Berton-Moreno that he was aware of the various courses of action that Complainants had available. He added that he was conscious of his own speculative purposes. No agreement followed.

On May 17, 2000 the three domain names at issue were acquired in the name of MOVICOM BELLSOUTH, which registrant bears no relationship with Complainants.

The applicable registration agreement (service agreement) between the Registrar and the registrant is version 5.0, which was in effect at the time of the registration of the domain name at issue, and continues to be in effect at present. The policy now in effect is the ICANN Policy, under which these proceedings have been installed. Respondent has not challenged this Panel´s jurisdiction.

A. The Complainant contends that (1) the domain names <movicom-bellsouth.com>, <movicombellsouth.net> and <movicom-bellsout.net> are identical to the combined use of the marks MOVICOM and BELLSOUTH in which the Complainants have rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain names; and (3) the domain names were registered and are being used in bad faith.

B. The Respondent has not submitted a response. It is therefore in default and has not made any submissions whatsoever.

Effects of Respondent Default

The specific allegations and contentions of the Complainants against the domain name registrations bound the Respondent to respond specifically. According with Rules, Paragraph 5(b)(i) "(t)he response shall (...) (r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)".

The Panel further notes that the Notification of Default by the Center clearly advised the Respondent about the consequences of its failing to submit a response. See 3 above.

In case of a default, under Rules, Paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under Rules, Paragraph 14(b), the Panel "shall draw such inferences therefrom as it considers appropriate".

The Respondent’s default would thereunder suggest that the Complainants´ assertions by themselves are sufficient ground for the Panel to proceed to a default decision in their favor. However the Policy does not allow to automatically draw such a conclusion, because "the complainant must prove that each of these three elements are present". Policy, Paragraph 4(a), in fine. Panel´s emphasis.

Independent Connection with the Respondent’s Web Site

Under Rules, Paragraph 10(a), the Panel is allowed inter alia to independently visit the Internet in order to obtain additional light in this default proceeding.

On September 30, 2000 the Panel attempted to visit Respondent´s <www.movicom-bellsouth.com>, < www.movicom-bellsouth.net> and <www.movicombellsouth.net> web sites, using the Internet Explorer browser. All three attempts resulted in DNS error messages stating that the Internet sites cannot be accessed and that a connection with the server could not be established. This means that the web sites corresponding to the domain names at issue are inactive for all practical purposes.

Beyond any doubt the Complainant CRM has rights in the mark MOVICOM. The same applies to Complainant BellSouth Corporation in relation to the mark BELLSOUTH. By virtue of the agreement referred to at 4 above the use and co-branding of MOVICOM and BELLSOUTH was authorized to the licensee CRM by the licensor Bell South Corporation. The Panel accepts Complainants´ allegation that the combined use of the trademarks MOVICOM BELLSOUTH has been largely publicized in Argentina since both Complainants entered into the Trademark License Agreement, and that Complainants identify themselves jointly as MOVICOM BELLSOUTH.

The first meaningful portion of the domain names is certainly identical letter-by-letter to the MOVICOM mark, and their second meaningful portion is also identical to BELLSOUTH. The three domain names are, while not identical, at least confusingly similar to Complainants´ marks MOVICOM and BELLSOUTH, respectively. The fact that in two of the domain names at issue a hyphen is used is irrelevant. The hyphen does not by itself represent any meaningful element to distinguish such domain names from the marks of the Complainants.

The addition of both marks reinforces the impression that the resulting compound refers also to each of the individual, compounding marks. This is one of the natural effects of co-branding 2.

The fact that MOVICOMBELLSOUTH or MOVICOM-BELLSOUTH have apparently not been registered as a mark by either of the Complainants is irrelevant. No other company or person excepting CRM and/or SouthBell - or someone with rights derived from them - could in fact be entitled to apply for such registration in Argentina and probably in the USA as well. Respondent would be no exception, and it has apparently not submitted an application for the trademark registration of MOVICOMBELLSOUTH in either Argentina or USA, nor there is any evidence that it has rights to use the words "MOVICOM" and "BELLSOUTH" to identify itself.

The Panel finds that Complainants made out their case under Policy, Paragraph 4(a)(i).

By its default, Respondent has not contested the allegation of the Complainants that the Respondent lacks any rights or legitimate interests in the domain names. The Panel thus assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent´s actual or most likely knowledge of the famous or well known marks MOVICOM and BELL SOUTH, and of the facts that Complainants had entered a co-operation agreement, and the also publicly known combined use of MOVICOM and BELLSOUTH by CRM.

Additionally the result of the test independently conducted by the Panel did not show any evidence as to the rights or legitimate interests of the Respondent in the domain names. The fact that the three web sites are inactive prevents any finding of bona fide offering or fair use of the domain name.

The registrant according to the Registrar is "MOVICOM BELLSOUTH", but Respondent has not evidenced that it is an entity of some kind currently known by such name, not that it has any right or legitimate interest to use such words to identify itself. Nor has Respondent evidenced that its predecessor in the domain name registration had any rights or interests therein. This issue cannot be ignored when Complainants clearly allege that Respondent lacks rights or legitimate interests in the domain names. Otherwise, to evidence rights or legitimate interests, it would be sufficient that the registrant, at the moment of the domain name registration, submits, as its own name, a name equal or similar to the domain name. That is certainly not a valid means to evidence rights or legitimate interests to the domain name. The example given by Policy, Paragraph 4(c)(ii) provides that

"you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights" (Panel´ s emphasis).

In order to adequately construe Paragraph 4(c)(ii), to be "commonly known" cannot but mean that the person or entity in whose name the domain name is registered was effectively known by third parties by the domain name before the moment of registration.

No other circumstance has been evidenced by Respondent that could reasonably support an inference in its favor under Policy, Paragraph 4(c). Therefore the Panel finds that the Respondent has no rights or legitimate interests to the domain names at issue.

By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain names in bad faith.

As seen under 4 above, it is evident that the original registrant Argentina Web Design registered the domain names for the purpose of unfairly selling it at a profit. Argentina Web Design thus met the circumstance described in Policy, Paragraph 4(b)(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".

Absent any statement by the Respondent about the purpose of its own registrations of the domain names at issue, the Panel is authorized to draw reasonable inferences about that purpose from any available circumstance or fact, inter alia any allegation by Respondent. However Respondent is in default.

Any effective use of the website by the Respondent could also have been an element for a Panel to deduce the real purpose of the registration, but there is no effective use of the corresponding web site.

As Respondent has no real Internet presence, the Panel concludes that the registration has most likely been made with no other purpose but to prevent the Complainant from reflecting its mark in the corresponding domain names, with the aim to force the Complainants into transfer-for-price negotiations. In fact such negotiations did occur between Complainants and Argentina Web Design. Complainants offered plain payment of registration costs for the assignment of the domain names. A serious sum "higher" than mere registration costs was demanded by the contact person of the original registrant. Thus, no settlement was reached.

The registration of domain names identical or confusingly similar to the marks of two well known companies doing business in Argentina by a registrant that has no rights or legitimate interests in the domain names, and who prefers not to submit any allegation in this proceeding, points by itself to bad faith registration. Additionally, the Panel considers that at the moment of the registration the Respondent used the words "MOVICOM BELLSOUTH" to identify itself, and gave an address where TNT courier could not deliver any package, which is equivalent to providing incorrect contact details.

All such circumstances together lead the Panel to find under Policy, Paragraph 4(a)(iii) generally considered that the domain names at issue have been registered in bad faith.

After the decision in WIPO Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows by the distinguished panelist Mr. Andrew F. Christie, February 18, 2000, many WIPO panels have extensively used his reasoning to establish bad faith use when there is no positive action of the Respondent in relation to the domain name. In Telstra Mr. Christie said:

"7.8 Has the Complainant proved the additional requirement that the domain name "is being used in bad faith" by the Respondent? The domain name <telstra.org> does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name."

"7.9 This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."

Unlike the Telstra case, in the present case there has been a communication to sell the domain names for a sum higher than registration costs. In Telstra the Panel considered a number of circumstances that jointly led to a finding that there had been bad faith use. In this case the Panel considers the following:

(a) In registering the domain name the original registrant slavishly copied the Complainants´ marks MOVICOM and BELLSOUTH. The use of a false identifier for the current registrant and Respondent that reflects almost identically the domain names it is registering and the well known marks of the Complainants goes well beyond the act of registration and suggests an intent to use the domain names in bad faith.

(b) Apart from the fact of their trademark registrations, each of the Complainants has a reasonable claim that their marks and tradenames are famous or at least well known as corresponding to telecommunication businesses in Argentina, USA and in several other countries.

(c) This proceeding was binding for the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center. In particular Respondent has not denied that it is using the domain names in bad faith.

(d) The subsisting registration of the domain names by the Respondent equals to depriving the Complainants from legitimately reflecting their marks in the domain name at issue.

(e) The inactivity of the websites under the domain names at issue causes the public to believe inter alia that Complainants do not have a website.

(f) The offer for sale of the domain name by the original registrant´s contact person - see 4 above - cannot be said to be good faith use of the domain name, but instead points to bad faith use.

(g) There is no evidence in the record of a formal connection between the original registrant and the present registrant of the domain names. However the transfer of the domain names by the original registrant in bad faith to a person or entity under a name that merely corresponds to the domain names at issue strongly suggests an action in concert of bad faith both by the original registrant and the assignee or new registrant

The Panel considers such circumstances together as revealing a bad faith use of the domain name at issue.

In the instant case one of the Complainants is a company with principal place of business in Argentina, while the Respondent is apparently doing business also in Argentina. The Panel accepts in general the reasoning in Case D 99-0001 - World Wrestling Federation - accepted in many other decisions - that in cases were both Parties are residents of the same country a Panel may look to decisions of the Courts of such country. This is not strictly necessary in the instant case, where the Policy in itself provides a sound basis for reaching a decision 3.

The Panel finds that the domain names at issue are being used in bad faith.

For the above mentioned reasons and pursuant to Policy, Paragraph 4 (i), and Rules, Paragraph 15, the Administrative Panel requires that the domain name registrations <movicom-bellsouth.com>, <movicombellsouth.net> and <movicom-bellsouth.net> be transferred to the Complainant, Compañía de Radiocomunicaciones Móviles S.A.

Roberto A. Bianchi
Presiding Panelist

October 5, 2000

Footnotes:

1 Argentina Web Design is the Respondent in a separate ICANN proceeding conducted by this same panelist (WIPO Case D2000-0914, decision).

2 "Marrying one brand to another for marketing purposes is one of the hottest marketing gimmicks of the 90s, so it's not surprising that franchise companies have taken two-tone marketing to the ultimate level through a system known as dual- or co-branding. In franchising, the concept of co-branding simply involves two or more "brands" sharing real estate. Each maintains identity, but there is free flow of customers between them." Panel´s emphasis. The Panel has taken this citation from the article "Co-Branding Sinergyzes Franchise Sales" by Nancy Rathbun Scott at http://www.bitmark.com/nancyscott/franchising%20articles%20html/co-branding.html visited on September 24, 2000.