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BellSouth Intellectual Property Corporation v. Barbara Kayne [2005] GENDND 1770 (21 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BellSouth Intellectual Property Corporation v. Barbara Kayne

Case No. D2005-0875

1. The Parties

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

The Respondent is Barbara Kayne, Bridgeport, Connecticut, United States of America.

2. The Domain Names and Registrar

The disputed domain names <bellsouthbiz.com>, <bellsouthdia.com>, <bellsouthdsc.com>, <onebellsouth.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2005. On August 17, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 17, 2005, Go Daddy Software 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 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 proceeding commenced on August 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2005.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on October 6, 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.

The Complainant is the owner of several U.S. Federal Trademark Registrations for the marks BELL, BELLSOUTH and BELLSOUTH.NET for use in connection with, among other things, telecommunications networks, systems and services, telephones and telephone accessories, modems and computers. Copies of the Complainant’s U.S. Trademark Registrations were attached to the Complaint.

The 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 Bell operating 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 company used the BELL mark in connection with the sale and provision of various telephone and communication 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 rights, title and interests in the BELL mark within the United States to Regional Bell Operating Companies established in connection with divestiture. The 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 to 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 mark, not only in the southeastern United States, but around the world. The Complainant is an affiliated BellSouth company that owns and manages BellSouth Corporation’s intellectual property assets, including the trademarks at issue here, which have been assigned to it. Globally, the Complainant and its affiliates have extensively promoted goods and services in connection with the BELLSOUTH -mark through print, television, and radio advertising and online at its websites “www.bellsouth.com” and “www.bellsouth.net.” The website, “www.bellsouth.net” directs Internet users to the Complainant’s Internet services site.

According to the WhoIs reports attached to the Complaint, the disputed Domain Names were registered on March 9, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

The Domain Names are confusingly similar to the Complainant’s marks because:

(1) the Domain Names are virtually identical and confusingly similar to the Complainant’s BELLSOUTH mark. The Respondent has taken the BELLSOUTH mark and added the prefix “one” and three suffixes “dsc”, “dia” and “biz” to comprise the Domain Names at issue;

(2) 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 cellullar, telecommunications and the Internet. As a result, the BELLSOUTH mark has become the central motif in the 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.

(3) UDRP 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; BellSouth Intellectual Property Corporation v. AA-Hosting.com, WIPO Case No. D2003-0732; and BellSouth Intellectual Property Corporation v. Alvaro Collazo, WIPO Case No. D2004-0572.

(4) the Domain Names incorporate the mark BELLSOUTH in its entirety.

The Complainant contends further that the Respondent has no rights or legitimate interests with respect to the Domain Names and the Domain Names were registered and is being used in bad faith. Searches performed on the Google and Yahoo databases did not reveal any business entity associated with the name “Barbara Kayne” that also used the terms in the Domain Names at issue.

The Respondent’s use of the Domain Names indicates its knowledge of the Complainant, its marks and services. The Respondent uses the <Onebellsouth.com>, <Bellsouthdsc.com>, <Bellsouthdia.com> and <Bellsouthbiz.com> to divert Internet traffic to its web portal directory and a Pay-Per-Click (“PPC”) search engine. The Respondent’s use of the Domain Names improperly creates the false impression that the Complainant has sponsored, authorized, approved or is in some way connected with those web portals. Further, when a web user clicks on the link “BellSouth Fast Access DSL” from the <onebellsouth.com> website, the web user may compare BellSouth products and prices to that of BellSouth’s competitors. This evidence indicates that the Respondent is aware of the Complainant’s BELLSOUTH mark.

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 the domain names should be cancelled or transferred:

(1) the domain names registered by the Respondent are 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 names;

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

A. Identical or Confusingly Similar

The 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 UDRP decisions have held the BELL and BELLSOUTH marks to be well-known with a national and international reputation. See, for example, Compania de Radiocommunicaciones Moviles S.A. and BellSouth Corp. v. Juan Bolinhas, WIPO Case No. D2000-0915; BIPCO v. Waltzer, WIPO Case No. D2000-1582; BIPCO v. Carrington Party Night Inc., WIPO Case No. D2003-0308; BIPCO v. Andrey Michailov, WIPO Case No. D2003-0300; BIPCO v. Phayze, Inc., WIPO Case No. D2003-0336; BIPCO v. Muder, Inc., WIPO Case No. D2003-0431 and BIPCO v. AA-Hosting, WIPO Case No. D2003-0732.

The Complainant has also established that the Respondent has used the Domain Names in order to trade upon the public’s recognition of the Complainant’s BELLSOUTH mark, and the goodwill associated with it. The only difference between the Domain Names and the BELLSOUTH trademark is the addition of the prefix “one” or the suffixes “dsc,” “dia,” and “biz.” These prefix and suffixes add nothing distinctive, and the emphasis remains on the mark BELLSOUTH to attract the attention of Internet users.

B. Rights or Legitimate Interests

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

C. Registered and Used in Bad Faith

The Complainant has also established the Respondent’s bad faith registration and use. The Complainant’s numerous U.S. Trademark Registrations for the marks BELL and BELLSOUTH provide constructive notice of the Complainant’s trademark rights. In addition, it is highly likely that the Respondent, prior to its adoption and use of the Domain Names, had actual notice that the 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 mark through the Internet and mass media. In addition, when the Respondent was registering the Domain Names, the Complainant’s <bellsouth.com> and <bellsouth.net> registrations, among others, would have appeared in a domain name search. Further, the Respondent’s Domain Names divert Internet traffic toward the Complainant’s competitors.

On May 6, 2005, the Complainant sent a cease and desist letter via Federal Express to the Respondent and via email to the Respondent’s Administrative contact demanding the Respondent to immediately discontinue use of the Domain Names, assign the Domain Names to the Complainant and refrain from further infringement of the Complainant’s trademarks. The Complainant received no response to the letter even though its delivery was confirmed.

The Respondent appears to derive revenue from its links to the Domain Names. At least one of the Domain Names leads to a web portal directory and a PPC search engine, thereby generating revenue for the owner of the Domain Names. The Respondent is therefore using the Domain Names in order to trade upon the public’s recognition of the Complainant’s BELLSOUTH marks and the goodwill associated with them. By using the Domain Names in this manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site.

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 <onebellsouth.com>, <bellsouthdsc.com>, <bellsouthdia.com> and <bellsouthbiz.com> be transferred to the Complainant.

Lynda J. Zadra-Symes
Sole Panelist

Date: October 20, 2005