Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is BellSouth Intellectual Property Corporation, a State of Delaware corporation with principal place of business at 824 Market Street, Wilmington, Delaware, U.S.A. The Complainant is represented by Judith A. Powell, Esq., Kilpatrick Stockton LLP, Atlanta, Georgia, U.S.A.

The Respondent in this proceeding is Jaclyn aka Jaclyn Thoms, Eagle River, Alaska U.S.A.

The domain name in dispute is <theberrycompany.com>.

The registrar for the disputed domain name is Register.com, located at 575 8^th Avenue, 11^th Floor, New York, New York, and U.S.A.

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on December 3, 2001, in hard copy and on January 28, 2002, by e-mail. On December 5, 2001, the Center requested that the registrar Register.com check and report back on the registrant for the disputed domain name, <theberrycompany.com>. On the same day (December 5, 2001), Register.com replied that the registrant was the Respondent, Jaclyn aka Jaclyn Thoms and that the Policy was in effect.

On December 12, 2001, the Center forwarded a copy of the Complaint to the Respondent by registered mail/courier and by e-mail and this proceeding officially began. The Respondent did not file a response within the 20 day time-frame prescribed by Rule 5 and on January 3, 2002, was declared to be in default. The Respondent then sent the Center two messages (January 8, 2002, and January 13, 2002) claiming not to have been able to read the e-mail version of the Complaint and not to know about the hard copy sent by registered mail/courier. However, when on January 15, 2002, the Center informed the Respondent that the hard copy had been sent to the address currently on the Respondent's registration with Register.com, the Respondent fell silent. The Panel is satisfied the Respondent was notified of the Complaint and had ample opportunity to respond. Thus, in accordance with Rule 5(e), the Panel will proceed to a Decision based on the Complaint.

The Administrative Panel submitted a Declaration of Impartiality and Independence on January 21, 2002, and the Center proceeded to appoint the Panel on January 29, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

The Complainant BellSouth Intellectual Property Corporation, an affiliate of BellSouth, owns and manages BellSouth intellectual property assets, including the Yellow Pages service The Berry Company. Since 1910 the Complainant and its predecessors have been publishing Yellow Pages, and the Complainant now publishes and sells Yellow Pages advertising in 530 markets throughout the U.S. With offices in 15 states, including Anchorage, Alaska, where the Respondent is located, The Berry Company is the largest Yellow Pages advertising sales agency in the U.S.

The Respondent registered the disputed domain name on June 14, 2000. On October 1, 2001, the Complainant wrote to Respondent by mail and fax and asserted its rights regarding the disputed domain name, and requested that Respondent transfer the domain name to the Complainant in exchange for $250(Complaint Exhibit G). The Respondent did not reply, and the Complainant now seeks transfer of the disputed domain name, <theberrycompany.com>, in this proceeding.

- The mark The Berry Company was first used by Complainant's affiliate in interstate commerce on July 7, 1989. Since then, Complainant and its affiliates have continuously used the mark in connection with telephone directory services, including preparation and placement of advertisements in classified directories.

- The Berry marks are prominently featured at the Berry Company's online sites located at <berrydirect.com>, <lmberry.com>, and <berrynetwork.com> (Complaint Exhibit D).

- The disputed domain name is confusingly similar to Complainant's mark because the domain name is identical to and incorporates in its entirety Complainant's mark, adding only the <.com> top level domain designation, which the U.S. Patent & Trademark Office has determined has no trademark significance.

- The Respondent has no rights or legitimate interests with respect to the <theberrycompany> domain name because the Respondent had knowledge of the Complainant's mark rights when she registered the disputed domain name and thus was not in bona fide.

- Complainant's first use of the Berry Company mark predates by almost ten years any use Respondent may have made of "theberrycompany" as a domain name or mark.

- Further, at the time that Respondent registered the domain name <theberrycompany>, companies that she and/or her husband owned were customers of The Berry Company, having purchased advertising for The Yellow Pages section of the Anchorage telephone directory from it.

- Therefore, for purposes of Para (4)(c) of the Policy, any use Respondent might claim to have made was not bona fide because it would have been made with knowledge of Complainant's prior rights in The Berry Company mark.

- Respondent has never been commonly known as or done business as "theberrycompany" or any variation thereof. Respondent has never registered any business remotely similar to The Berry Company nor any business that is related to berries.

- Complainant has not authorized Respondent to use its the Berry Company mark.

- The Respondent's use of the <theberrycompany> domain name is not in connection with a bona fide attempt to offer goods and services to the public. Further, even if Respondent had offered services under the name, her constructive notice of BellSouth's federal trademark registration for its the Berry Company mark would render Respondent's use not bona fide.

- Respondent has held the domain name for over a year but has yet to offer goods or services under the name. As of the filing of this complaint, the Respondent's domain name is parked on the Great Domains site (Complaint Exhibit E).

- Respondent's use of the <theberrycompany> domain name is not legitimate noncommercial speech, because no attempt to communicate via the domain name has been made.

- The domain name was registered and is being used in bad faith.

- Complainant reasonably believes that Respondent, prior to her adoption and use of the domain name <theberrycompany>, was aware that Complainant was the owner of The Berry Company mark because of the years of marketing, and provision of directory services under the mark.

- Moreover, companies owned or operated by Respondent and/or her husband, including Alaska Snow Plowing and Alaska Carpet Cleaning, Inc. have contracted with The Berry Company for Yellow Pages directory advertising services for them for almost ten years.

- Indeed, prior to registration of the domain name, Respondent's husband had met with Complainant at its office, where signs prominently displaying The Berry Company name were and are posted.

- The only reasonable explanations for Respondent's decision to register the <theberrycompany> domain name are either that Respondent: (a) intends to sell or "barter" the name for a profit; or (b) intends otherwise to trade upon Complainant's goodwill.

- The Respondent's husband telephoned the Complainant to propose bartering the disputed domain name in exchange for free advertising for his snow plowing and/or carpet cleaning businesses. Since Respondent's businesses have paid Complainant in excess of $1,000 per year for such advertising for several years, Respondent's husband and representative knew that the advertising was worth substantially in excess of Respondent's out of pocket costs directly associated with the domain name.

- The offer to barter the domain name indicates that Respondent intended from the initial registration to transfer the domain name in exchange for consideration in excess of her out of pocket costs.

- The fact that the Respondent has not used the domain name to provide any services but instead has parked it on a site that invites users to make an offer to purchase the name also supports the conclusion that the name was adopted with the primary purpose of selling it at a profit. Indeed, the site states that the minimum amount that may be offered is $300 (Complainant Exhibit E), an amount that exceeds Respondent's out-of-pocket costs directly related to the domain name.

- Panelists have held that failure to make use of a domain name that incorporates another's mark, while not conclusive, supports the inference of bad faith.

- The circumstances discussed above indicate that the Respondent registered the domain name with the primary purpose of selling the domain name for a profit. Such conduct is specifically identified as bad faith in Paragraph (4)(b)(i) of the Policy.

Respondent's Contentions:

The Respondent is in default in this proceeding and thus did not file any contentions.

In order for Complainant to prevail and have the disputed domain name, <theberrycompany.com>, transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

The Complainant has exhibited a copy of the United States principal register registration for the service mark The Berry Company, registration no. 1,605,880 dated July 10, 1990, in international classes 35 and 41 for telephone directory services and advertisements (Complaint Exhibit C). The Respondent's disputed domain name, <theberrycompany.com>, is identical to the Complainant's service mark. The top level indicator "com" has no effect on domain name/mark identicality or confusing similarity (for corroboration of this point, see Viacom Inc. v. Erik Peterson, ICANN/WIPO Case No. D2000-0346, June 3, 2001; and Grupo Financiero BBVA Bancomer and Banco Bilbao Vizcaya Argentaria, S.A. v. MIC, ICANN/NAF Case No. FA0101000096454, February 28, 2001).

The Panel finds the Complainant has carried its initial burden of proof.

The Complainant states that it has not authorized the Respondent to use its Berry Company service mark. The Respondent, being in default, has not attempted to show the Panel it is making a fair use or a bona fide commercial use within the meaning of the Policy at 4 (c). And from the Panel's examination of the files of this proceeding, no fair use or bona fide commercial use on the part of the Respondent is apparent.

The Complainant has produced evidence showing the Respondent and her husband are customers of the Complainant in Anchorage, Alaska. Specifically, the Respondent and her husband have used the Complainant's Yellow Pages advertising services to advertise their snowplow and carpet cleaning business. The Respondent and her husband attempted to barter the disputed domain name for the Complainant's advertising, an approximately U.S.$1,000 value in recent years (Complaint Exhibit G).

The Respondent also has attempted to auction the disputed domain name for a minimum of $300 (Complaint Exhibit E).

As the price for registering domain names is around $100 or less, the Respondent clearly is in violation of the Policy at 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";

The Panel is convinced that the Respondent's familiarity with the Complainant and its services compel the conclusion the Respondent was in bad faith from the very beginning.

The Panel finds the Complainant registered and is using the disputed domain in bad faith.

The Panel finds the Respondent's domain name, <theberrycompany.com>, is identical to the Complainant's service mark, The Berry Company. The Panel further finds the Respondent has shown no legitimate rights or interests in the domain name. And lastly, the Panel finds the Respondent registered and is using the domain in bad faith: from the beginning the Respondent intended to barter the domain name back to the Complainant in return for approximately U.S.$1,000 worth of advertising in the Complainant's Yellow Pages, or to auction the domain name in the alternative.

Therefore, as provided in the Policy at para 4(i) and Rule 15, the Panel orders that the disputed domain name, <theberrycompany.com>, be transferred from the Respondent, Jaclyn aka Jaclyn Thoms, to the Complainant, BellSouth Intellectual Property Corporation.

Dennis A. Foster
Sole Panelist

Dated: February 12, 2002