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BellSouth Intellectual Property Corporation v. Michele Dinoia [2004] GENDND 1099 (27 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

BellSouth Intellectual Property Corporation v. Michele Dinoia

Case No. D2004-0486

1. The Parties

The Complainant is BellSouth Intellectual Property Corporation, Wilmington, Delaware, United States of America.

The Respondent is Michele Dinoia, SZK.com, Pineto, Italy.

2. The Domain Name and Registrar

The disputed domain name at issue (hereinafter the Domain Name) is <wwwfastaccess.com>.

The registrar of the Domain Name is OnlineNIC Inc. d/b/a China-Channel.com, San Francisco, California, United States of America.

3. Procedural History

On June 30, 2004, the Complainant filed a complaint (hereinafter the “Complaint”) with the WIPO Arbitration and Mediation Center (hereinafter the “Center”). The Complaint was received by e-mail on June 30, 2004. The hardcopy of the Complaint was received on July 2, 2004.

On July 1, 2004, the Center transmitted by e-mail the Acknowledgement of Receipt of the Complainant. On the same day, the Center also transmitted to OnlineNIC, Inc. d/b/a China-Channel.com the Request for Registrar Verification, in connection with the Domain Name at issue. On July 2, 2004, OnlineNIC, Inc. d/b/a China-Channel.com transmitted by e-mail 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 a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 12, 2004. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter 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 13, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2004.

The Center appointed Hugues G. Richard as the Sole Panelist in this matter on August 17, 2004. 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 Panel has received no further submissions from either of the Parties.

The Panel is obliged to issue a decision on or prior to August 31, 2004, in the English language, and is unaware of any other proceedings which may have been undertaken by the parties in the present matter.

4. Factual Background

The following non-contradicted and unchallenged facts appear from the Complaint and the documents submitted in support thereof.

The Complainant, BellSouth Intellectual Property Corporation, is a company organized under the laws of the State of Delaware, where it has its principal office. It is an affiliated BellSouth company that owns and manages BellSouth Corporation’s intellectual property assets. It operates a website, “www.fastaccess.com,” in relation with Internet products and services offered by BellSouth.

According to the Whois database of OnlineNIC, the Respondent is Michele Dinoia, SZK.com, domiciled in Pineto, Italy. He registered the Domain Name in dispute, <wwwfastaccess.com>, on June 10, 2003. He operates a website directory, providing access to database resources on the Internet.

The Complainant is the owner of the U.S. trademark FASTACCESS, registration number 2,341,694, based on a filing date of July 31, 1997, and a registration date of April 11, 2000. The Complainant obtained this mark for telecommunication services, namely ISDN voice and data transmission services.

5. Parties’ Contentions

A. Complainant

Identical or confusingly Similar

The Domain Name is confusingly similar to the Complainant’s trademark. It fully incorporates Complainant’s FASTACCESS trademark. The addition of the prefix “www” by the Respondent does nothing to alleviate the confusing similarity between the domain name and the Complainant’s trademark.

Furthermore, the use of the mark FASTACCESS by the Complainant in relation with a variety of telecommunication services has lead to a public perception that services that are offered under the FASTACCESS mark emanate from or are endorsed by the Complainant.

Complainant’s right in the mark

The Complainant claims that it has adopted and used the trademark FASTACCESS since July 14, 1997. Through print, television, radio and Internet, it has promoted its services in connection with this trademark. This registration is prima facie evidence of Complainant’s exclusive right to use the mark FASTACCESS in commerce in connection with ISDN voice and data transmission services.

Respondent’s rights or legitimate interests in the mark

According to the Complainant, the Respondent has no rights or legitimate interests with respect of the Domain Name. The Complainant’s first use of the mark predates the Respondent’s registration of the Domain Name by more than five years. Because the Complainant’s trademark registration was issued before the Respondent registered the Domain Name, Respondent is charged with a constructive knowledge of Complainant’s Registration. Consequently, any use that the Respondent may claim to have made was not bona fide given his knowledge of Complainant’s prior rights.

Finally, searches performed on the Internet search engines did not reveal any business entity using the “fast access” and “SZK” or “Dinoia” terms together. Thus, the Complainant could not find any evidence of any rights in the mark related to the Respondent.

Registration and use in bad faith

The Domain Name was registered and has been used by the Respondent in bad faith according to the following contentions:

• Because of the widespread advertising and marketing of services made by the Complainant under the FASTACCESS mark, the Respondent must have known of Complainant’s rights in the trademark.

• In addition, at the time of the registration of the Domain Name, it was possible for the Respondent to find Complainant’s <fastaccess.com> registration by doing a domain name search.

• Respondent uses his website to divert Internet traffic to his web portal directory and Pay-Per-Click search engine. Any web user can access the website of the Complainant from the Respondent’s website. Diverting Complainant’s customers for commercial gain in this way is an indication of bad faith pursuant to Paragraph 4(b)(iv) of the Policy.

• By his letter dated November 17, 2003, the Respondent sought consideration in excess of his documented out-of-pocket costs. This act represents another indication of bad faith, according to Paragraph 4(b)(i) of the Policy.

• Adding the prefix “www” to FASTACCESS is typo-squatting by the Respondent, who attempts to deceive the public and divert consumers away from the Complainant’s website.

• The Respondent’s pattern of registering domain names similar to trademarks owned by others has to be construed as an indication of bad faith under Paragraph 4(b)(ii) of the Policy.

• The Domain Name remains active despite the request of the Complainant to cease activities related to the mark FASTACCESS.

• Respondent derives advertiser revenues from his “www.wwwfastaccess.com” site every time a web searcher clicks on the listing on his website.

• Respondent, by using the Domain Name in dispute, has attempted to attract, for commercial gain, Internet users to his site.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Paragraph 4(a), the Complainant has to convince the Panel of three elements for Domain Name to be transferred. It is incumbent upon the Complainant to cumulatively show:

A. that the Domain Name is identical or confusingly similar to the trademark in which it holds rights; and

B. that the Respondent has no rights or legitimate interests in the Domain Name; and

C. that the Domain Name is registered and used in bad faith.

Prior to any interpretation that the Panel may infer from the facts and the evidence related to the present matter, it has to mention the effect of the Respondent’s default. As it has been well summarized in The Vanguard Group, Inc. v. Lorna Kang case, WIPO Case No. D2002-1064 (January 20, 2003):

“In accordance with the Rules, Paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.”

A. Identical or Confusingly Similar

From a comparison made between the content of the Respondent’s website “www.wwwfastaccess.com” as reflected by the Exhibit F of the Complaint, and the advertisement made by the Complainant on its website “www.fastaccess.com” (Exhibit D), it is clear that both parties offer products and services in connection with telecommunication, more specifically Internet telecommunication. Despite the fact that the Respondent’s website does not only focus on this business market, the importance accorded to this market on “www.wwwfastaccess.com,” creates a risk of confusion with the Complainant’s FASTACCESS trademark.

The evidence submitted by the Complainant and similar prior WIPO decisions have convinced the Panel that the Domain Name is indubitably confusingly similar to the Complainant’s FASTACCESS trademark. According to General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377 (July 15, 2000), American Media Operations, Inc. v. Erik Simons, NAF Case No. AF-0134 (June 12, 2000) and Info Space.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (April 3, 2000), the addition of “www” before a mark, as it is the fact in the present case, does not alter the existance of confusing similarity between the trademark and the domain name. Although there is no identity between them, the similarity remains obvious.

For these reasons, the Panel concurs with the Complainant’ that the Domain Name and the FASTACCESS mark are confusingly similar.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, Paragraph 4(a)(ii). As established in Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000), once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent. Policy, Paragraph 4(c), lists three non-exclusive criteria to show that Respondent has rights or legitimate interests in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (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; or

(iii) you [Respondent] are making a legitimate non-commercial 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.

According to the Complainant, the Respondent is charged with constructive knowledge of his FASTACCESS trademark registration. As Respondent knows about the registration and the rights of the Complainant related to the FASTACCESS mark, it is impossible for the Respondent to claim any bona fide use of the Domain Name. Facing the evidence of the renown of Complainant’s mark presented in this case, it is clear to the Panel that the Respondent effectively knew about the rights of the Complainant before registering the Domain Name in dispute. Exhibit F demonstrates that the Respondent more than probably has known of the existence of the Complainant. On June 28, 2004, the website of the Respondent referred to the BellSouth FASTACCESS website as one of its “popular searches.” Facing the Respondent’s default, the Panel took upon itself to visit Respondent’s website on August 25, 2004, and noticed that the “www.wwwfastaccess.com” website had been modified and that information relating to BellSouth and its affiliates was no longer available. It would be difficult to presume that the Respondent did not know about the Complainant’s rights when he provided a direct link to the Complainant’s website on his own website. The Panel’ finds that this fact is sufficient in itself to show that the Respondent, even if he has used the Domain Name, has not done it in connection with a bona fide offering of goods or services.

Furthermore, as it has been suggested by the Complainant, searches carried out by the Complainant have not revealed any business entity using the term “fast access” with the terms “SZK” or “Dinoia.” This element supports the theory that the Respondent has not been commonly known by the Domain Name <wwwfastaccess.com>.

The Complainant has adequately shown that the Respondent lacks rights to or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s allegations, nor does the case file contain evidence that the use of the Domain Name would meet the elements of the non-exclusive criteria provided for in the Policy, Paragraph 4(c). Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name.

C. Registered and Used in Bad Faith

One factor found to support a finding of bad faith is that Respondent knew about the Complainant’s mark when he registered the Domain Name. See, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith). ’Supporting a finding of bad faith is the fact that the Respondent provided a direct link from his website to the Complainant’s website.

According to Paragraph 4(b)(i) of the Policy, a second factor to support a finding of bad faith resides when the registration is made:

“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 cost directly related to the domain name.”

It is difficult to establish with certainty the motivation of any domain name registrant in this type of proceeding. In most cases, a respondent’s intention must be inferred from the respondent’s conduct. The correspondence exchanged by the Complainant and the Respondent, as shown in the Exhibits G to I, reveals that the intention of the Respondent is to benefit from the Domain Name by trying to sell it to the Complainant. On November 17, 2003, the Complainant demanded the Respondent to discontinue all use of the Domain Name and to transfer registration to the Complainant. In response, in a letter dated December 4, 2003, the Respondent offered to sell the Domain Name to the Complainant for the to-be-determined “costs of registration and hosting of the domain name and website, to avoid suffer expenses caused by the registration.” Due to the fact that the Complainant’ refused to deal with the Respondent, the Respondent did not send an offer to the Complainant and continued to use the Domain Name. Although the price of the Domain Name was not fixed, the circumstances show that the Respondent acted in bad faith. Knowing that he would not be able to obtain a “valuable amount” of the Domain Name, he decided to stop corresponding with the Complainant. This fact, combined with the general behavior and the knowledge of the Respondent, lead the Panel to infer bad faith from his part. See Educational Testing Service v. Netkorea Co., WIPO Case No. D2000-0087 (April 4, 2000), for similar analysis of out-of-pocket costs.

A third factor of bad faith is found in the Respondent’s pattern of registering domain names similar to trademarks owned by others. The situation in the present matter does not seem to be different from the ones relating to the numerous proceedings to which the Respondent has participated in where his domain names were cancelled or transferred to complainants. As the Panel said in Société Air France v. SZK.COM, WIPO Case No. D2003-0518, (August 22, 2003): “the activities of the Respondent in registering these other well-known trademarks as domain names without any apparent authority or trademark rights are strong evidence of bad faith.”

All these factors, together with the typo-squatting conduct of the Respondent, demonstrate that the Respondent has registered and is using the Domain Name <wwwfastaccess.com> in bad faith. The Respondent uses the Domain Name to divert Internet traffic to his web portal directory and Pay-Per-click search engine, and has thus attempted to attract, for commercial gain, Internet users to his website.

Consequently, the Panel concludes that the Complainant has successfully established all three elements required to be entitled to the appropriate relief.

7. Decision

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, <wwwfastaccess.com>, be transferred to the Complainant.

Hugues G. Richard
Sole Panelist

Dated: August 27, 2004