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Southern Communications Services, Inc. d/b/a Southern Linc v. J Lee [2005] GENDND 308 (18 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Southern Communications Services, Inc. d/b/a Southern Linc v. J Lee

Case No. D2005-0212

1. The Parties

The Complainant is Southern Communications Services, Inc. d/b/a Southern Linc, Atlanta, Georgia, United States of America, represented by Troutman Sanders, LLP, United States of America.

The Respondent is J Lee, Kowloon, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <southernlincwireless.com> is 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 February 24, 2005. On February 24, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On February 25, 2005, 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 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 March 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2005.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on April 5, 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 Complainant is in the business of providing wireless communications services in the southeastern United States. The Complainant is a wholly-owned subsidiary of Southern Company, the parent company of five electric utilities in the Southeast United States. The Complainant maintains an Internet web site located at “www.southernlinc.com”.

The Complainant is the owner of the United States registered service mark and trademark SOUTHERN LINC, for use in the provision of full-service digital wireless communications, namely, dispatch, telephone, paging and data; and for telecommunication equipment, namely, cellular telephones, two way radios, pagers, and wireless modems.

On January 15, 2005, over seven years after the Complainant commenced use of its SOUTHERN LINC mark, the Respondent registered the domain name. The Respondent’s web site provides links to and information about competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is virtually identical to the Complainant’s SOUTHERN LINC mark and confusingly similar with such mark inter alia because the Respondent has added on the generic term for the category of the services offered by Complainant, namely “wireless”.

The Respondent has no rights or legitimate interests in the domain name. Respondent has wrongfully incorporated into the domain name a mark uniquely associated with the Complainant. The Respondent is not known or identified by the name “Southern Linc,” nor is he affiliated or connected in any way with the Complainant’s wireless communications business. The Respondent does not operate a business or other organization commonly known as “Southern Linc” The Respondent is not making a legitimate noncommercial or fair use of the domain name. The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the Complainant’s marks.

The domain name has been registered and is being used in bad faith. The Respondent does not conduct any legitimate commercial or noncommercial business under the Complainant’s mark. The Respondent has registered the domain name in order to prevent Complainant, as the owner of the SOUTHERN LINC mark, from reflecting its mark in the corresponding domain name. The Respondent has registered and used the domain name with full knowledge of the rights of the Complainant in and to the SOUTHERN LINC mark. By registering the domain name, the Respondent is diverting consumers away from the Complainant’s web site and making it difficult for customers of the Complainant’s and the general public to locate any future web site established by the Complainant, thereby disrupting Complainant’s business. Finally, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with Complainant’s SOUTHERN LINC mark. The Respondent has registered over 4,000 other domain names, in many cases similar or identical to protected marks, in an attempt to divert and mislead Internet users.

B. Respondent

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

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant has used the mark SOUTHERN LINC for seven years prior to the registration of the domain name, and that the Complainant succeeded in obtaining several registrations of said mark. The Panel finds that the Complainant has rights in the mark SOUTHERN LINC.

As to the second question, the Panel finds that the domain name is confusingly similar to these marks. As a rule, when a domain name wholly incorporates a complainant’s mark and only adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. Confusion is heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark. (see, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002); Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001); and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001)).

6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name?

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the SOUTHERN LINC mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(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 trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

There are no elements showing that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the uncontradicted evidence submitted by the Complainant points to a pattern of cybersquatting by the Respondent.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

6.3 Was the domain name Registered And Used In Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product.

There is evidence of the situation described in Paragraph 4(b)(iv) and some evidence of a pattern as contemplated in Paragraph 4(b)(ii). The relevant facts are mentioned above.

The Respondent registered the domain name in bad faith. Apart from the well-known nature of the Complainant’s marks, the domain name is composed of the Complainant’s mark to which is added the generic term “wireless,” which evokes precisely the services offered by the Complainant and associated with its marks. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would have gone through the trouble of registering the domain name. The use of the “linc” spelling (with a “c” instead of a “k”) reinforces this conclusion. It is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under US trademark law.

As to Paragraph 4(b)(ii), the Complainant has tried to demonstrate a pattern of cybersquatting by the Respondent. In light of the above, it is unnecessary to decide whether the evidence on this point would warrant a finding of bad faith.

The Panel finds for the Complainant on this third element of the test.

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

Daniel J. Gervais
Sole Panelist

Dated: April 18, 2005