BellSouth Intellectual Property Corporation v. Polanski

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BellSouth Intellectual Property Corporation v. Polanski

Case No. D2002-0170

1. The Parties

1.1 The Complainant in this administrative proceeding is BellSouth

Intellectual Property Corporation, ("Complainant"), a corporation

organized under the laws of the State of Delaware with its principal place

of business located at 824 Market Street, Suite 510, Wilmington,

Delaware 19801, United States of America.

1.2 The Respondent is Polanski. All contact information

for the Respondent known to the Panel is Polanski, Ul. Dietla 13/2, Krakow,

PL 31031, Poland.

2. The Domain Name and Registrar

The domain name that is the subject of this Complaint is <belsouth.com>.

The registrar with which the domain name <belsouth.com> is registered

is BulkRegister.com, located at 10 E. Baltimore Street, Baltimore,

Maryland, 21202-1630 United States of America.

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute

Resolution Policy approved by the Internet Corporation for Assigned Name

and Numbers ("ICANN") on October 24, 1999, (the "Policy"),

in accordance with the Rules for Uniform Domain Name Dispute Resolution

Policy, also approved by ICANN on October 24, 1999, (the "Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy in effect as of December 1, 1999 (the "Supplemental

Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation

Center (the "Center") by email on February 19, 2002

and in hardcopy on February 25, 2002. The fees prescribed under

the Supplemental Rules have been paid by the Complainant. The Complaint

states that a copy of the Complaint together with the cover sheet as prescribed

by the Supplemental Rules have been sent to the Respondent and that a

copy of the Complaint has been sent to the Registrar of the domain name

in dispute.

3.3 On March 1, 2002, the Center sent to the Complainant’s representative

an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to BulkRegister.com

on March 1, 2002, by email BulkRegister.com responded to the

Center’s request on March 5, 2002, stating:

(a) that BulkRegister.com was the registrar for the domain name

in dispute;

(b) that the Respondent was the current registrant of the domain

name in dispute;

(c) the Respondent’s contact details;

(d) that the Policy was applicable and

(e) that a copy of the Complaint was sent to BulkRegister.com

as required by the WIPO Supplemental Rules.

3.5 The Center sent the Notification of Complaint and Commencement

of Administrative Proceeding on March 7, 2002, to the Respondent

by post/courier (with enclosures), and by email (without attachments),

and to the Complainant’s representative by email (without attachments).

The Center advised the Respondent that the Response was due no later than

March 27, 2002.

3.6 No Response was filed by the Respondent within the time specified

in the Notification of Complaint.

3.7 On March 28, 2002, the Center notified the Respondent and the

Complainant’s representative that the Respondent failed to comply with

the deadline indicated in the Notification of Complaint and that it would

proceed to appoint an Administrative Panel. The Center further notified

the Respondent that it would be in the discretion of the Panelist to decide

whether to consider the Response if submitted later.

3.8 On April 14, 2002, the Panel invited Dr. Torsten Bettinger to

serve as a Panelist in this Administrative Proceeding. Having received

the Panelist’s Declaration of Impartiality and Independence, the Center

issued a Notification of Appointment of Administrative Panel and set a

decision date, with the Panelist’s deadline for issuing a decision of

May 6, 2002.

3.9 On April 22, 2002, the Center sent a Notification of Appointment

of Administrative Panel to the Complainant’s Representative and to the

Respondent by email.

3.10 The Center sent a Transmission of Case File to Administrative

Panel by e-mail on April 22, 2002.

4. Factual Background

4.1 Activities of the Complainant

The Complainant is an affiliated BellSouth company that owns and manages

the intellectual property assets of the Bellsouth Corporation, a corporation

that provides a wide variety of telecommunication services around the world.

4.2 The Complainant’s trademarks

The Complainant is the proprietor of the following trademarks:

BELL

Federal Registration No. 1,565562

Issued November 14, 1989

BELLSOUTH

Federal Registration No. 1,565,559

Issued November 14, 1989

BELLSOUTH.NET

Federal Registration No. 2,112,067

Issued November 11, 1997

BELLSOUTH MOBILITY

Federal Registration No. 1,670,082

Issued December 31, 1991

BELLSOUTH PRODUCTS

Federal Registration No. 1,698,835

Issued July 7, 1992

BELLSOUTH #1

Federal Registration No. 2,234,737

Issued March 23, 1999

1-800-BELLSOUTH

Federal Registration No. 2,354,715

Issued June 6, 2000

Complainant states that it has adopted and used the trademarks listed above

as follows:

(a) The Complainant and its predecessors, affiliates, and licensees

have adopted and used a number of 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.

(b) On January 1, 1984, AT&T was divested of the Bell

operating companies pursuant to the orders of the United States District

Court for the District of Columbia, ("D.C. Court") 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 marks to seven regional holding companies established

in connection with divestiture. Complainant’s affiliate, BellSouth

Corporation, was one of these holding companies formed to serve Southern

Bell and South Central Bell’s regions. BellSouth Corporation thus

obtained exclusive rights to the famous BELL mark in its geographical

territory, i.e., the Southern part of the United States, subject only

to the concurrent user rights of the other companies that shared in

the AT&T heritage in other regions of the country.

(c) Since 1984, BellSouth Corporation, together with its affiliates,

has provided a wide variety of telecommunications services and related

goods in connection with the BELL mark, not only in the Southeastern

United States, but also around the world.

(d) Complainant is an affiliated BellSouth company that owns and

manages BellSouth intellectual property assets, including the trademarks

at issue here, which have been assigned to it.

(e) Complainant’s predecessor obtained U.S. Trademark Registration

No. 1,565,562 for the mark BELL each with a date of first use

of 1900.

(f) Complainant’s affiliate, Bell IP Holdings, which is owned

jointly by the regional Bell operating companies, obtained Poland

Registration No. 7042 for the BELL mark, granting Complainant and

each of the other BELL operating companies ownership and concurrent

rights to use the famous BELL mark in Poland.

(g) Complainant’s predecessor has also obtained multiple Trademark

Registrations for BELLSOUTH marks, including the following:

(i) U.S. Trademark Registration No. 1,565,559, issued November 14, 1989,

for the mark BELLSOUTH each with a date of first use of June 1,

1984. Complainant also owns other registrations for the mark BELLSOUTH,

including the following:

(1) U.S. Trademark Registration No. 2,244,189, issued

May 11, 1999 for BELLSOUTH;

(2) U.S. Trademark Registration No. 2,307,506, issued

January 11, 2000, for the mark BELLSOUTH.; and

(3) U.S. Trademark Registration No. 2,341,098 issued

April 11, 2000, for the mark BELLSOUTH."

(ii) U.S. Trademark Registration No. 2,112,067, issued

November 11, 1997, for the mark BELLSOUTH.NET with a date

of first use of August 16, 1996.

(iii) U.S. Trademark Registration No. 1,670,082, issued December 31, 1991,

for the mark BELLSOUTH MOBILITY with a date of first use of June 1, 1984.

(iv) U.S. Trademark Registration No. 1,698,835, issued July 7, 1992,

for the mark BELLSOUTH PRODUCTS with a date of first use of June 6,

1984.

(v) U.S. Trademark Registration No. 2,234,737 for the mark

BELLSOUTH #1 with a date of first use of April 30, 1998.

(vi) U.S. Trademark Registration No. 2,354,715 for the

mark 1-800-BELLSOUTH with a date of first use of October 15, 1997.

The Complainant states that the BELLSOUTH mark is also registered in fifty

other countries around the world and that it has extensively promoted goods

and services in connection with the BELL and BELLSOUTH marks through print,

television, and radio advertising and online at its sites <bellsouth.com>,

<bellsouth.net>, and <bellsouth.org>.

The Complainant states that the BELL and BELLSOUTH marks have been recognized

by U.S. Courts and in a UDRP proceeding as famous marks.

The Complainant states that the it and its affiliates have offered cellular,

other integrated telecommunications services, and internet access services

in connection with the BELLSOUTH mark around the world and that it serve

more than 19 million customers in 16 countries worldwide.

4.3 Activities of the Respondent

The Panel has found no evidence that Respondent has ever used (other than

Respondent’s domain name usage) the trade name "belsouth.com"

or been known as "belsouth.com".

5. The Complainant’s contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph

4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy,

the Complaint asserts that the domain name <belsouth.com> is virtually

identical and confusingly similar to Complainant’s famous BELL, and BELLSOUTH

marks in that the domain name consists entirely of the distinctive term

"bellsouth," with the deletion of one "l," which is

a predictable mistyping of "bellsouth."

5.3 In reference to the element in paragraph 4(a)(ii) of the Policy,

the Complainant states that it (and its predecessors’) first use of the

BELL mark predates by almost 100 years any use Respondent may have made

of "belsouth.com" as a trade name, domain name, or mark and

that, Complainant’s first use of the BELLSOUTH mark predates Respondent’s

domain name registration by more than 15 years. It also states that, because

Complainant’s BELLSOUTH trademark registrations were issued long before

Respondent registered the <belsouth.com> domain name, Respondent

must be charged with constructive knowledge of them.

5.4 In reference to the element in paragraph 4(a)(iii) of the Policy,

the Complaint recites paragraph 4(b) of the Policy and sets out the circumstances,

which shall be evidence of the registration and use of a domain name in

bad faith under this paragraph. The Complaint goes on to state that evidence

of bad faith registration and use of the domain name in dispute in this

case is established by the following circumstances:

(1) The Respondent, prior to its adoption and use of the domain

name <belsouth.com> was aware that Complainant was the owner

of the BELL and BELLSOUTH marks because of the widespread and long-standing

advertising and marketing of goods and services under the BELL and

BELLSOUTH names and marks around the world, including on-line and

in newspapers distributed in Poland, where Respondent resides. For

example, since 1990, the BELLSOUTH mark has been prominently featured

in advertisements placed by Complainant in two newspapers distributed

in Poland: The Financial Times-World Edition and The International

Herald Tribune.

(2) When Respondent was registering the <belsouth.com>

domain name, Complainant’s <bellsouth.com> registration would

have appeared in a domain name search.

(3) Respondent was using the site to offer goods and services

similar and related to Complainant’s goods and services. When Complainant

first became aware of Respondent’s use of <belsouth.com>, Respondent

was using it to re-direct traffic to a site located at <bestofonline.com>,

where digital subscriber line ("DSL") service, or fast internet

access service, was offered.

(4) After Complainant sent a letter to the operator of the <bestofonline.com>

site, Respondent’s link to the site was disconnected. Shortly thereafter

Respondent then linked its site to a site located at <gito.com>.

That site offers computer products and related software items that

could be confused with services offered by Complainant.

(5) Complainant sent a letter to the registrant of <gito.com>

explaining the infringement and that site, too, disconnected the Respondent’s

link.

(6) Complainant has attempted to send correspondence to the Respondent

to inform it of Complainant’s rights and to request a transfer of

the domain name, but the correspondence has been returned as undeliverable.

6. The Respondent did not file a Response to the Complaint.

7. Discussion and Findings

7.1 Pursuant to paragraph 4(a) of the Policy, the Complainant must

prove that each of the following three elements are present if the Complaint

is to prevail:

(i) The Respondent’s domain name is 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 the domain name; and

(iii) The domain name has been registered and is being used in

bad faith.

7.2 Domain Name identical or confusingly similar to Complainant’s trademark

The domain name in dispute is <belsouth.com>. The Complainant has

numerous trademark applications and registrations in the United States and

various other countries of the world of the words "Bellsouth".

The domain name <belsouth.com> is identical to Complainant’s trademark

BELLSOUTH, except that: (1) the domain name adds the generic top-level-domain

".com" and (2) the elimination of the letter "l".

The Panel finds that the addition of the generic top-level-domain (gTLD)

.com is without legal significance in determining similarity and that the

elimination of the letter "l" between "Bellsouth" and

"belsouth" does not significantly affect the visual impression

made by the domain name as compared with the mark, and does not affect the

pronunciation of the domain name as compared with the mark.

The Panel therefore concludes that the domain name is identical or confusingly

similar to a trademark or service mark in which the Complainant has prior

exclusive rights.

The Panel thus finds that the Complainant has proven paragraph 4(a)(i)

of the Policy.

7.3 The Respondent has no rights or legitimate interests in the Domain

Name

The Complainant asserts that the Respondent has no rights or legitimate

interests in the domain name <belsouth.com>. The Respondent has not

presented before the Panel any evidence of its use of or preparation to

use the disputed domain name which would support a finding that the Respondent

has a legitimate interest or rights in the domain name and admits that he

has no rights or legitimate interest in the domain name <belsouth.com>.

Accordingly the Panel finds that the Respondent does not have any rights

or legitimate interests in the domain name <belsouth.com>.

7.4 Domain Name has been registered and is being used in bad faith

The fact that the Respondent has chosen not to submit a Response is particularly

relevant to the issue of whether the Respondent has registered and is using

the domain name in bad faith. Paragraph 14(b) of the Rules provides that,

in the absence of exceptional circumstances, a Panel shall draw such inferences

as it considers appropriate from the failure of a party to comply with a

provision or requirement of the Rules. This Administrative Panel finds there

is no exceptional circumstances for the failure of the Respondent to submit

a Response.

This Administrative Panel draws from this failure the following two inferences:

(i) the Respondent does not deny the facts which the Complainant asserts,

and (ii) the Respondent does not deny the conclusions which the Complainant

asserts can be drawn from these facts.

Nevertheless, this Administrative Panel still has the responsibility of determining

which of the Complainant’s assertions are established as facts, and whether

the conclusions asserted by the Complainant can be drawn from the established

facts (see. WIPO Case No. D2000-0438,

Inter-IKEA Systems B.V. v. Hoon Huh).

The Complainant provided evidence of the widespread and long-standing advertising

and marketing of goods and services under the BELL and BELLSOUTH names and

marks around the world, including on-line and in newspapers distributed

in Poland, where Respondent resides. In the absence of evidence or even

an assertion by the Respondent these fact establish that the Respondent

registered the domain name knowing that they were identical or confusingly

similar to the trade marks of the Complainant.

Furthermore, the Complainant provided evidence that the Respondent used

the <belsouth.com> domain name to re-direct traffic to a site located

at <bestofonline.com>, and to link to a site that offers computer

products and related software items that could be confused with services

offered by Complainant. These facts are strongly suggestive that the Respondent

used the <belsouth.com> domain name in order to trade upon the public's

recognition of Complainant's BELL and BELLSOUTH marks and the goodwill associated

with them.

The diversion through creation of confusion is an express indicia of bad

faith under paragraph 4(b)(iv) of the Policy that provides that bad faith

can be asserted, if by using the domain name, "the domain name holder

has intentionally attempted to attract, for commercial gain, Internet users

to its website or other online location, by creating a likelihood of confusion

with the complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of its website or location or of a product or service on

its website or location."

The Panel therefore concludes that Respondent registered and is using the

domain name <belsouth.com> in bad faith and that the requirement of

paragraph 4(a)(iii) of the Policy is satisfied.

8. Decision

The Panel thus decides that:

1) the domain name <belsouth.com> is confusingly similar to

the trademark "BELLSOUTH";"

2) The Respondent has no rights or legitimate interests in respect

of the domain name <belsouth.com>;

3) the domain name <belsouth.com> has been registered and used

in bad faith by the Respondent.

Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of

the Rules, the Panel requires that the Registrar, BulkRegister.com, transfers

the domain name <belsouth.com> to the Complainant.

Dr. Torsten Bettinger

Sole Panelist

Dated: May 6, 2002

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