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BellSouth Intellectual Property Corporation v. Herrington Hart, NIRT [2005] GENDND 1649 (5 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BellSouth Intellectual Property Corporation v. Herrington Hart, NIRT

Case No. D2005-0672

1. The Parties

The Complainant is BellSouth Intellectual Property Corporation, Delaware, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Herrington Hart, NIRT, San Francisco, United States of America.

2. The Domain Name and Registrar

The disputed domain name <consumer-bellsouth.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2005. On June 27, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 30, 2005, eNom 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. 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 July 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2005.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on August 22, 2005. 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 following facts are derived from the Complaint and its annexed documents. The Respondent has not contested any of these facts.

Complainant is the owner of several U.S. Federal Trademark Registrations for the marks BELL, BELLSOUTH, BELLSOUTH.NET, BELLSOUTH PRODUCTS and 1—800-BELLSOUTH for use in connection with, among other things, telecommunications networks, systems and services, telephones and telephone accessories, modems, computers, computer software to enable electronic commerce, services relating to managing telecommunications systems and installing and maintaining such systems and equipment. Copies of Complainant’s U.S. Trademark Registrations were attached to the Complaint. In addition to these registrations in the United States of America, Complainant contends that the BELLSOUTH mark is also registered in fifty other countries around the world. All of these registrations cover goods and/or services relating to telecommunications.

Complainant and its predecessors, affiliates and licensees, have used various marks incorporating the term “BELL” since the 1880’s, including SOUTHERN BELL and SOUTH CENTRAL BELL, among others. Prior to its divestiture, American Telephone & Telegraph Company (“AT&T”) operated the “Bell System,” consisting of twenty-two (22) Bell operating telephone companies that provided local telecommunications exchange services, including Southern Bell Telephone & Telegraph Company (“Southern Bell”) and South Central Bell Telephone Company (“South Central Bell”). Each Bell operating company used the BELL mark in connection with the sale and provision of various telephone and communications goods and services.

On January 1, 1984, AT&T was divested of the Bell operating companies pursuant to the orders of the U.S. District Court for the District of Columbia in United States v. Western Electric Co., Inc., Civil Action No. 82-0192. AT&T then assigned all of its right, title and interest within the United States in the BELL mark to Regional Bell Operating Companies established in connection with divestiture. Complainant’s affiliate, BellSouth Corporation, was one of these Regional Bell Operating Companies. BellSouth Corporation thus obtained exclusive rights to the famous BELL mark, subject only to the concurrent use rights of the other Regional Bell Operating Companies that shared in the AT&T heritage. BellSouth Corporation and its affiliates built upon the fame and strength of the BELL mark by adopting and using the mark BELLSOUTH.

Since  1984, BellSouth Corporation, together with its affiliates, has provided a wide variety of telecommunications-related goods and services in connection with the BELLSOUTH marks, not only in the southeastern United States, but around the world. Complainant is an affiliated BellSouth company that owns and manages BellSouth Corporation’s intellectual property assets, including the trademarks asserted in this case, which have been assigned to it. Globally, Complainant and its affiliates have extensively promoted goods and services in connection with the BELLSOUTH marks through print, television, and radio advertising and online at its sites located at the domain names <bellsouth.com> and <bellsouth.net>.

According to the “WhoIs” Report attached to the Complaint, the Domain Name was registered on January 14, 2005. On June 7, 2005, Complainant sent a cease and desist letter to Respondent via email and Registered Mail demanding, inter alia, that Respondent immediately discontinue use of the Domain Name and assign the Domain Name to Complainant. The hardcopy of the letter was returned to Complainant as unclaimed as there was no such P.O. Box. The email was relayed but no response was received.

5. Parties’ Contentions

A. Complainant

Complainant contends that

a) The Domain Name is confusingly similar to Complainant’s marks because:

i) The Domain Name is virtually identical and confusingly similar to Complainant’s BELLSOUTH mark;

ii) The Complainant, its predecessors and affiliates, have used the marks BELL and BELLSOUTH in connection with a wide variety of communication-related goods and services, including cellular, telecommunications, and the Internet. As a result, the BELLSOUTH mark has become the central motif in Complainant’s family of BELLSOUTH marks and the public has come to perceive goods and services offered under one of the BELLSOUTH marks, or slight variations thereof, as emanating from or being endorsed by or affiliated with Complainant.

iii) WIPO UDRP Panel decisions have held that the use of an exact trademark with the addition of other terms in a domain name still results in confusing similarity. See BellSouth Intellectual Property Corporation v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013, at paragraph 6 (holding that “the addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark”); see also BellSouth Intellectual Property Corporation v. AA-Hosting.com, WIPO Case No. D2003-0732), at paragraph 6A (holding that “the word ‘hosting” added as a kind of suffix, does not change the overall impression of the designation as it is a descriptive term with a connotation apt to give the impression that the domain name is connected to the Complainant. There is reason to believe that the public, when reading or hearing the domain name <bellsouth-hosting.com> will believe that the domain name is owned by, or related to, the Complainant ...”); and see BellSouth Intellectual Property Corporation v. Alvaro Collazo, WIPO Case No. D2004-0572, at paragraph 6(b)(4) (holding that “...the addition of country names to the BELLSOUTH mark does not distinguish the resulting domain names from the BELLSOUTH mark or render the resulting domain names no longer confusingly similar to the BELLSOUTH mark.”).

iv) The domain name <consumer-bellsouth.com> incorporates the mark BELLSOUTH in its entirety.

Complainant contends further that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it has prior rights in the marks BELL and BELLSOUTH for use in connection with communication-related goods and services, including cellular, telecommunications, and the Internet.

Previous WIPO UDRP panels have held the BELL and BELLSOUTH marks to be well-known with a national and international reputation. See Compania de Radiocomunicaciones Moviles S.A. and BellSouth Corp. v. Juan Bolinhas, WIPO Case No. D2000-0915, at paragraph 7.0(b) (finding that Complainant had a reasonable claim that the BELLSOUTH mark was famous or at least well known in the United States of America and other countries); BIPCO v. Waltzer, WIPO Case No. D2000-1582, at paragraph 6 (finding that “Complainant’s ‘BELL’ mark is well known among consumers and Internet users as a source of telecommunications services and goods.”); BIPCO v. Carrington, Party Night Inc., WIPO Case No. D2003-0308, at paragraph 6C (finding that “The registration and use of multiple variations of a famous mark such as Complainant’s BELLSOUTH mark can only be deliberate”); BIPCO v. Andrey Michailov, WIPO Case No. D2003-0300 at paragraph 6B (finding that “Complainant’s trademark ‘bellsouth’ is in the opinion of the Panel distinctive and well known.”); BIPCO v. Phayze, Inc., WIPO Case No. D2003-0336 at paragraph 4 (finding that “The Panel finds it [Complainant] established that the BELL Marks are much recognized trademarks among customers and that the trademarks are both distinctive and famous”); BIPCO v. Muder, Inc., WIPO Case No. D2003-0431 paragraph 4 (finding that “Consumers throughout the U.S., and indeed the world, have come to recognize the BELL and BELLSOUTH marks as indicating a product or service originating with a BellSouth company”); BIPCO v. AA-Hosting, WIPO Case No. D2003-0732, paragraph 6A (“... the mark BELLSOUTH which is a distinctive and well-known mark”). This Panel has no hesitation in finding that Complainant’s BELLSOUTH mark is well-known and famous.

Complainant has also established that Respondent has used the Domain Name in order to trade upon the public’s recognition of Complainant’s BELLSOUTH Marks, and the goodwill associated with them. The only difference between the Domain Name and the BELLSOUTH trademarks is the addition of the word “consumer.” This adds nothing distinctive, and the emphasis remains on the mark BELLSOUTH to attract the attention of Internet users. Indeed, Respondent’s Domain Name diverts Internet traffic to one of Complainant’s own web pages, namely a frequently asked questions web page regarding Complainant’s services. Consumers viewing Respondent’s site will have no way of knowing that it is not affiliated with Complainant, and are likely to believe the Domain Name is used by Complainant to provide information to consumers of Complainant’s services. Thus, the addition of the word “consumer” does not avoid the suggestion of a false sense of origin or sponsorship with the Complainant.

B. Rights or Legitimate Interests

Complainant has established that Respondent lacks any rights or legitimate interest in the Domain Name. The Domain Name is not in use as the name of an active website operated by Respondent. There is no indication that Respondent is known by the Domain Name, and the Domain Name is not being used for a non-commercial purpose. Since Respondent has presented no evidence to the contrary, and there is none in the record, the Panel concludes that Respondent lacks any right or legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

Complainant has also established Respondent’s bad faith registration and use. Complainant’s numerous U.S. Trademark Registrations for the marks BELL and BELLSOUTH provide constructive notice of Complainant’s trademark rights. In addition, it is highly likely that Respondent, prior to its adoption and use of the Domain Name, had actual notice that Complainant was the owner of the BELLSOUTH marks because of the widespread and long-standing advertising and marketing of goods and services under the BELLSOUTH marks online and in the media. In addition, when Respondent was registering the Domain Name, Complainant’s <bellsouth.com> and <bellsouth.net> registrations, among others, would have appeared in a domain name search. Indeed, Respondent’s Domain Name diverts Internet traffic to one of Complainant’s own web pages, namely a frequently asked questions web page regarding Complainant’s services. This evidences Respondent’s actual awareness of Complainant’s BELLSOUTH mark.

Respondent also has a prior history of cybersquatting. In Bloomberg L.P. v. Herrington Hart, NIRT c/o Michael Herrington, Claim No. FA 0504000464790 (Nat. Arb. Forum June 1, 2005) where the domain name <news-bloomberg.com> was registered by Registrant, the Panel found that “Respondent registered the <news-bloomberg.com> domain name with actual or constructive knowledge of Complainant’s rights in the BLOOMBERG and BLOOMBERG NEWS marks due to Complainant’s registration of the mark with the USPTO.

The Panel finds that Complainant has met the burden of proving bad faith under both paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.

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 <consumer-bellsouth.com> be transferred to the Complainant.

Lynda J. Zadra-Symes
Sole Panelist

Date: September 5, 2005