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Bellsouth Intellectual Property Corporation v. Henry Chan [2004] GENDND 1213 (16 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bellsouth Intellectual Property Corporation v. Henry Chan

Case No. D2004-0550

1. The Parties

The Complainant is Bellsouth Intellectual Property Corporation of Wilmington, Delaware, United States of America, represented by Kilpatrick Stockton LLP of Atlanta, Georgia, United States of America.

The Respondent is Henry Chan of Nassau, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <bellsouthbenefit.com>, <bellsouthchatroom.com>, <contactbellsouth.com> and <miportalbellsouth.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2004. On July 26, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On July 30, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2004.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 6, 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.

4. Factual Background

The Bellsouth Corporation, an affiliate of the Complainant provides telecommunications and allied services in the southeastern United States and in other countries around the world. The Complainant owns and manages the Intellectual Property assets of the Bellsouth Corporation.

The predecessor of the Complainant, AT&T, which operated twenty-two Bell telephone companies, prior to 1984, assigned all its rights in the BELLSOUTH mark to seven regional Bell operating companies. Bell South Corporation was one of the regional operating companies formed to serve the southern and southeastern regions of the United States which obtained exclusive rights to the famous BELL mark. The Complainant, its predecessor affiliates and licensees have adopted and used marks incorporating the BELL mark since 1880.

The Complainant is the holder of the following Trademarks in the United States and the Bahamas.

	TRADEMARK	REGISTRATION NUMBER	DATE
1.	BELL	1,565,562	November 14, 1989
2.	BELL	2,718,321	May 27, 2003
3.	BELLSOUTH	1,565,559	November 14, 1989
4.	BELLSOUTH	2,244,189	May 11, 1999
5.	BELLSOUTH	2,307,506	January 11, 2000
6.	BELLSOUTH	2,341,098	April 11, 2000
7.	BELLSOUTH.NET	2,112,067	November 11, 1997
8.	BELLSOUTH.NET	2,244,864	May 11, 1999
9.	BELLSOUTHPRODUCTS	1,698,835	July 7, 1992
10.	BELLSOUTH #1	2,234,737	March 23, 1999
11.	1-800- BELLSOUTH	2,354,715	June 6, 2000
12	BELLSOUTH (the Bahamas)	15,079	January 17, 1992

The Respondent has registered the following Domain Names incorporating the BELLSOUTH mark:

<bellsouthbenefit.com>
<contactbellsouth.com>
<miportalbellsouth.com>
<bellsouthchatroom.com>

The Complainant has alleged that Respondent has engaged in a pattern of conduct of registering numerous domain names containing well known trademarks in an attempt to attract Internet users for commercial gain to his websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the BELLSOUTH mark. The mark and its variations are associated with the Complainant by virtue of extensive use by the Complainant, its predecessor, and affiliates and is the leading motif in the Complainant’s family of marks.

Since 1985, the Complainant and its affiliates have served more than 50 million customers in 13 countries. The BELLSOUTH mark has been extensively promoted in print, television, radio advertising and on its websites <bellsouth.com> and <bellsouth.net>. Further the BELLSOUTH mark has been recognized in UDRP proceedings and by courts as a famous mark.

The Complainant states that the Respondent has no rights or legitimate interests in the Domain Names as Complainant’s use of the BELLSOUTH mark predates Respondent’s registration of the Domain Names by almost 15 years. The Complainant’s Bahamas trademark registration was issued many years prior to the registration of the Domain Names by the Respondent.

The Complainant believes that the Domain Names were registered and used in bad faith. The Respondent’s use of the BELLSOUTH mark in the Domain Names is indicative of his prior knowledge of the mark. Search results also would have shown that the BELLSOUTH marks and domain names <bellsouth.com> and <bellsouth.net> are owned by the Complainant.

Three Domain Names resolve to websites that purport to be search engines and which launch numerous pop up advertisement.

The Respondent has been using the websites corresponding to the contested Domain Name to redirect Internet users to various websites, some of which offer commercial services similar or identical to the services offered by Complainant.

The Respondent has engaged in a pattern of fraudulent conduct by registering numerous domain names containing well-known trademarks in an attempt to attract Internet users for commercial gain to his websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Panel finds that the Center, in compliance with paragraphs 2(a) and 4(a) of the Rules, has notified the Respondent of the commencement of proceedings. The Respondent has not been denied the right to be heard in these proceedings.

6. Discussion and Findings

The Complainant has to prove, under Paragraph 4(a) of the Policy, that:

(i) the domain names are 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 such domain names; and

(iii) the domain names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the BELLSOUTH mark. All the Domain Names incorporate the well-known trademark of the Complainant along with a generic word or term. The Panel finds that the mark is the prominent part of each of the Domain Names.

Two of the Domain Names in issue have incorporated the terms “chat room” and “miportal,” which are specific Internet terminology. The other two Domain Names use the generic words ‘benefit’ and ‘contact’ along with the mark. Addition of a generic term does not prevent a domain name from being confusingly similar to the Complainant’s trademark, particularly when the term used is related to the Internet.

Previous Policy decisions have recognized such domain name registrations to be confusingly similar to the trademark which they seek to exploit. The term ‘online’ used in conjunction with the mark was found to have compounded the confusing similarity. See Barclay’s Bank PLC v. Mohammed Hassan WIPO Case No. D2001-0253, <barclaycardonline.com>, <barclaycardonline.net>, <barclaycard-online.com>, <barclaycard-online.net>.

The Administrative Panel finds that the domain names at issue are confusingly similar to the Complainant’s trademark BELLSOUTH.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides the circumstances that may demonstrate the Respondent’s rights or legitimate interests in a domain name. These are: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that Respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

The Panel finds that none of the above circumstances of Paragraph 4(c) apply to the present case. The Panel further finds that Complainant has not granted any license to the Respondent to use its trademarks, nor is there any affiliation between Complainant and Respondent. The Panel finds that Respondent has no corporate or business listing under the said Domain Names, and that he is not otherwise known by the Domain Names.

The Panel, furthermore, finds that Complainant’s trademark BELLSOUTH is distinctive and well known. The Panel finds it unlikely that Respondent would have any rights or legitimate interests in the use of domain names that are confusingly similar to such a distinctive trademark.

For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates a list of illustrative circumstances, which, if found present, shall be evidence of registration and use of the Domain Names in bad faith for the purposes of Paragraph 4(a)(iii).

The Panel believes that by using the disputed Domain Names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the Domain Names in bad faith. The manner in which the Respondent has used the contested Domain Names shows an intention of disrupting the Complainant’s business and/or intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites.

The Panel is of the opinion that the registration not of one, but of four Domain Names which are identical or confusingly similar to the Complainant’s trademarks, supports the inference that the Respondent knew of the Complainant’s trademarks, which is evidence of a pattern of such conduct. The Respondent has intentionally selected the said Domain Names to prevent the Complainant from reflecting its trademarks in corresponding domain names.

The Respondent has been an unsuccessful respondent in several previous proceedings under the Policy, a number of which involved facts similar to the present case: (See  Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Henry Chan, National Arbitration Forum, FA161468; Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031; Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611; Western Financial Bank v. Henry Chan, National Arbitration Forum, FA213458; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584. Accordingly, the Respondent has established a pattern of conduct of registrations and use of domain names in bad faith which also applies to the circumstances of this case.

The mentioned circumstances are clear indications of registration and use in bad faith in relation to paragraph 4(a)(iii) of the UDRP.

The Panel concludes that the Respondent has registered and used the disputed Domain Names in bad faith.

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 Names, <bellsouthbenefit.com>, <contactbellsouth.com>, <miportalbellsouth.com>, <bellsouthchatroom.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist

Dated: September 16, 2004