BellSouth Intellectual Property Corporation v. Muder, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BellSouth Intellectual Property Corporation v. Muder, Inc.

Case No. D2003-0431

1. The Parties

The Complainant is BellSouth Intellectual Property Corporation, a corporation

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

business located in, Wilmington, Delaware, United States of America (the "Complainant"),

represented by Mr. Jeffrey A. Brown, Esq., of Kilpatrick Stockton LLP, Atlanta,

Georgia, United States of America.

The Respondent is Muder, Inc., an entity of an unknown nature, with an address

at 1234 Fifth Street, Lino, TA 14588, TW (the "Respondent"), according to Register.com’s

WHOIS database showing the Registrant (Complaint, Exhibit A).

2. The Domain Names and Registrar

The disputed domain names < bellsouthsecurity.com>

and < bellsouthsecuritysystems.com>

(collectively referred to as "domain names") are registered with Register.com.

3. Procedural History

The Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center")

on June 4, 2003, in accordance with the Uniform Domain Name Dispute

Resolution Policy (the "Policy"), approved by the Internet Corporation for Assigned

Names and Numbers (ICANN) on October 24, 1999, 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").

On June 6, 2003, the Complaint was received in hardcopy.

On June 5, 2003, the Center sent an Acknowledgement of Receipt of Complaint

to the Parties. The communication was made to the Respondent by e-mail.

At the Center’s request for registrar verification in connection with the domain

names at issue, Register.com transmitted its verification response to the Center

by e-mail on June 5, 2003, confirming inter alia that the Respondent

is listed as the Registrant of the domain names at issue, and that the domain

names are in "active" status. Register.com further provided the contact details

for the administrative, technical and zone contact. The Center verified that

the Complaint satisfied the formal requirements of the Policy, the Rules and

the WIPO Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center sent a formal

Notification of Complaint and Commencement of Administrative Proceeding to the

Respondent, as well as the Complaint on June 10, 2003, by courier

and e-mail. The courier package was sent to, but apparently was not delivered

and/or received at Respondent’s address under 1 above, due to the fact that

the address provided by the Respondent was incorrect. The e-mails transmitted

were also returned. In accordance with the Rules, paragraph 5(a), the due date

for Response was June 30, 2003. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on July 2, 2003.

Although the Center’s courier package with the Complaint was not deliverable

at the Respondent’s address, the Panel finds that the Center has discharged

its responsibilities to make reasonable efforts to try to notify the Complaint

to the Respondent pursuant to the Rules, paragraph 2(a), and that the Notification

of Respondent Default was also properly notified.

The Center appointed Ms. Foteini Papiri as the Sole Panelist in this matter

on July 21, 2003. The Panelist 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. Thus, the Panel finds that

it was properly constituted. The Respondent has not challenged the Panel’s jurisdiction.

The Panel, sharing the assessment of the Center, independently finds that the

Complaint was filed in accordance with the requirements of the Policy, the Rules

and the Supplemental Rules, and that payment of the fees was properly made.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties (taking

note of Respondent’s default in responding to the Complaint). The registration

agreement for the domain name at issue has been done and executed in English

by Respondent-Registrant and Registrar. Complainant has submitted its Complaint

in English. In the absence of any special circumstance for the Panel to determine

otherwise, as provided in Rules, paragraph 11, the language of this proceeding

is English.

4. Factual Background

Because the Complaint is formally in compliance with the Policy, the Rules

and the Supplemental Rules, and because Complainant’s allegations and documents

enclosed with the Complaint have not been contested, the Panel finds the following

facts as having been sufficiently established:

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 communication goods and

services. As a result of exclusive and extensive use by the Bell operating companies,

including Southern Bell and South Central Bell, the BELL mark acquired significant

goodwill and became a famous trademark. The BELL mark over the years came to

represent high quality, excellence, and integrity in a full range of telecommunication

goods and services.

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

Bell Operating Companies established in connection with divestiture. Complainant’s

affiliate, BellSouth Corporation, was one of these Regional Bell Operating 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 Southeastern part of the United States, subject only to the concurrent

use rights of the other Regional Bell Operating Companies that shared in the

AT&T heritage in other regions of the country.

Since 1984, BellSouth Corporation, together with its affiliates, has provided

a wide variety of telecommunication services and related goods and services

in connection with the BELLSOUTH mark, not only in the Southeastern United States,

but also around the world.

BellSouth Corporation, in partnership with Protection One, Inc., also provides

a wide array of security-related goods and services. These services include

residential security systems, installation of security systems, security monitoring

services and security consultation services (Complaint, Exhibit D).

Complainant is an affiliated BellSouth company that owns and manages BellSouth

Corporation’s intellectual property assets, including the trademarks and service

marks at issue here, which have been assigned to it.

Complainant owns multiple trademark and service mark registrations for the

BELLSOUTH mark, by virtue of either first registrations or trademark assignment

agreements with its predecessors, including the following (Complaint, Exhibit

C):

i) U.S. Trademark Registration No. 2,404,065, issued November 14, 2000,

for the mark BELLSOUTH for: "security systems for residential use comprising

anti-intrusion alarms, burglar alarms, personal security alarms and fire alarms";

"installation, maintenance and repair of security systems"; and "security system

consultation services", each with a date of first use of February 1, 1999.

ii) U.S. Trademark Registration No. 2,376,105, issued August 8, 2000,

for the mark BELLSOUTH for: "security alarm monitoring services", with a date

of first use of February 1, 1999.

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

for the mark BELLSOUTH for: "customer premises telecommunications networks and

parts therefor; telephones and telephone accessories; modems; computers; printers;

facsimile machines; multiplexors; computer terminal; telephone answering machines;

voice mail systems comprising telephone and computer interface, computer programs

and controls for delivering and receiving messages over telephone lines; and

computer programs dealing with telecommunications and business management …,"

each with a date of first use of June 1, 1984.

iv) U.S. Trademark Registration No. 2,244,189, issued May 11, 1999,

for BELLSOUTH for: "computer software which facilitates searching for and transferring

information across global computer communications networks, and for the execution

of business transactions using global computer communications networks; remote

control units for television…", each with a date of first use of August 16, 1996.

v) U.S. Trademark Registration No. 2,307,506, issued January 11, 2000,

for the mark BELLSOUTH for: "insurance services, namely underwriting loss protection

and protection programs for pagers", with a date of first use of September 1, 1998.

vi) U.S. Trademark Registration No. 2,341,098 issued April 11, 2000,

for the mark BELLSOUTH for: "pagers", with a date of first use of March 18, 1998.

vii) U.S. Trademark Registration No. 2,112,067, issued November 11, 1997,

for the mark BELLSOUTH.NET for: "computer software which facilitates searching

for and transferring information across global computer communications networks

and for the execution of business transactions using global computer communications

networks", with a date of first use of August 16, 1996.

viii) U.S. Trademark Registration No. 2,244,864, issued May 11, 1999,

for the mark BELLSOUTH.NET for: "advertising services, namely, for promoting

the goods and services of others via placement of advertisements in non-interactive

and interactive on-line multimedia programs and publications accessed through

computer, television and telecommunications networks; billing services and data

processing services… financial information provided by electronic means… telecommunication

services, namely, electronic transmission of data, sound, text, image messages,

video and documents via computer, television and telecommunication networks;

telecommunications gateway services; providing telecommunications connections

to a global computer network; electronic mail services; electronic store-and-forward

messaging services; network conferencing services… providing multiple-user access

to a global computer information [sic] for the transfer and dissemination of

a wide range of information", with a date of first use of August 16, 1996,

and

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

for the mark BELLSOUTH PRODUCTS for: "customer premises telecommunications networks

and parts therefor; telephones, cordless telephones, and telephone accessories;

modems; computers; printers; facsimile machines; multiplexors; computer terminals;

telephone answering machines; voice mail systems comprising telephone and computer

interface, computer programs and controls for delivering and receiving messages

over telephone lines; and computer programs dealing with telecommunications

and business management", each with a date of first use of June 6, 1984.

The BELLSOUTH mark is also registered in fifty other countries around the world.

Complainant and its affiliates have extensively promoted goods and services

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

radio advertising and on-line at its sites <bellsouth.com>, <bellsouth.net>,

and <bellsouth.org>.

The BELL and BELLSOUTH marks have continued to symbolize communications services,

and have become a household name across the United States. The BELL and BELLSOUTH

marks have been recognized by U.S. Courts and in UDRP proceedings as famous

marks[1].

Since 1985, Complainant and its affiliates have offered cellular, other integrated

telecommunications services, on-line directory and Internet access services

in connection with the BELLSOUTH mark around the world. Today, Complainant and

its affiliates serve more than 19 million customers in 16 countries worldwide.

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.

According to Register.com’s WHOIS database records furnished by Complainant,

the record for the disputed domain name < bellsouthsecurity.com>

was created on June 28, 2001, and was last updated on March 17, 2003,

and the record for the disputed domain name <

bellsouthsecuritysystems.com> was created on

July 18, 2001, and was last updated on March 17, 2003, (Complaint,

Exhibit A).

5. Parties’ Contentions

A. Complainant

The Complainant contends that: (1) the domain names <bellsouthsecurity.com>

and <bellsouthsecuritysystems.com> are confusingly similar to the marks

in which the Complainant has rights; and (2) the Respondent has no rights or

legitimate interests in respect of the domain names; and (3) the domain names

were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and has not made

submissions whatsoever. Under paragraph 5(e) of the Rules, it is provided that

if a Respondent does not submit a response, in the absence of exceptional circumstances,

the Panel shall decide the dispute based on the Complaint. Under paragraph 14(b)

of the Rules, when a party defaults in complying with any of the requirements

of the Rules, in the absence of exceptional circumstances, the Panel is entitled

to "draw such inferences therefrom as it considers appropriate". No exceptional

circumstances have been brought to the Panel’s attention. Accordingly, the Panel

makes the findings below on the basis of the material contained in the Complaint.

6. Discussion and Findings

This dispute is properly within the scope of the Uniform Domain Name Dispute

Resolution Policy, and the Administrative Panel has jurisdiction to decide the

dispute. The registration agreement, pursuant to which the domain name that

is the subject of this Complaint was registered, incorporates the Policy.

The Respondent is required to submit to a mandatory administrative proceeding

in accordance with paragraph 4(a) of the Policy, because the Complainant asserts,

in compliance with the Rules of Procedure, that:

(i) the disputed 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 disputed domain name has been registered and is being used in bad

faith.

Under Rules, paragraph 10(a), the Panel is allowed inter alia to independently

visit the Internet in order to obtain additional light in this default proceeding.

On July 31, 2003, the Panel attempted to visit Respondent’s websites at the

URLs "www.bellsouthsecurity.com" and "www.bellsouthsecuritysystems.com",

using the Internet Explorer browser. The <bellsouthsecurity.com> domain

name opened to a page stating "Welcome to the website of "www.protection1.com"".

The domain name <bellsouthsecuritysystems.com> opened to a "Coming soon"

page.

The Complaint is well founded. The specific requirements of paragraph 4(a)

under the Policy, which need to be proven cumulatively, are examined below.

A. Identical or Confusingly Similar

Beyond any doubt the Complainant BellSouth Intellectual Property Corporation

has rights in the mark BELLSOUTH registered for multiple goods and services.

Both domain names at issue incorporate the mark BELLSOUTH, which constitutes

their first meaningful portion. The second meaningful portion of the domain

names is "security" and "securitysystems" respectively. The Complainant, its

predecessors, and its affiliates have used the mark BELLSOUTH in connection

with a very wide variety of goods and services, including security-related goods

and services, cellular, telecommunications and Internet directories. As a consequence,

the BELLSOUTH mark has become the central motif in the Complainant’s family

of marks. It is evident that the public has come to perceive goods and services

that are offered under a BELLSOUTH mark or a slight variation of the same as

emanating from or being endorsed by or affiliated with Complainant. The terms

"security" and "securitysystems" respectively are both terms that the average

consumer would expect the Complainant or its affiliates to use in connection

with the mark BELLSOUTH to identify their goods or services.

The Panel finds that the domain names are confusingly similar to the BELLSOUTH

mark, in which the Complainant has proven to have rights, pursuant to paragraph

4(a)(i) of the Policy.

B. Rights or Legitimate Interests

By its default, Respondent has not contested the allegation of the Complainant

that the Respondent lacks any rights or legitimate interests in the domain names.

Complainant’s and its predecessors’ first use of the BELLSOUTH mark predates

the Respondent’s domain name registrations by more than 15 years. Moreover,

because Complainant’s BELLSOUTH trademark and service mark registrations were

issued long before Respondent registered the domain names and acquired widespread

recognition and goodwill, the Panel finds that the Complainant has prior trademark

and service mark rights and Respondent had actual or most likely knowledge of

the famous or at least well known mark BELLSOUTH.

Respondent appears to have no corporate, partnership or fictitious business

name or business listing registration under the domain names. The domain name

<bellsouthsecurity.com> resolves to a website stating "Welcome to the

website of "www.protection1.com"". The domain name <bellsouthsecuritysystems.com>

opened to a "Coming soon" page.

In any case, the result of the test independently conducted by the Panel did

not show any evidence as to the rights or legitimate interests of the Respondent

in the domain names pursuant to paragraph 4(c) under the Policy, nor could the

Panel find any indication of "bona fide" offering of goods or services. Furthermore,

there is no evidentiary support that the Respondent, as an individual, business,

or other organization, has been commonly known by the domain names or that it

is making a legitimate non-commercial or fair use of the domain name.

Therefore, the Panel finds that the Respondent has no rights or legitimate

interests to the domain names at issue, pursuant to paragraph 4(a)(ii) and 4(c)

of the Policy.

C. Registered and Used in Bad Faith

It is reasonable to believe that the Respondent, prior to its registration

and use of the domain names, was aware 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.

In January 2002, Complainant was alerted that the domain names were registered

by Red Alert located in Florida, United states of America. A search of the Florida

Secretary of State’s records revealed that the WHOIS information was fictitious

and Registrant’s correct information was Red Alert Security & Alarms, Inc.

located at a different Florida address (Complaint, Exhibit G).

In October 2002, the sites for the domain names were activated and the domain

name <bellsouthsecurity.com> resolved to a website stating "Welcome to

the website of "www.protection1.com"", while the domain name <bellsouthsecuritysystems.com>

opened to a "Coming soon" page.

The Respondent’s use of the <www.protection1.com> domain name in the

website connected to the <bellsouthsecurity.com> domain name also demonstrates

Respondent’s bad faith and intent to deceive the consuming public because BellSouth

and Protection One, Inc. have entered into a business relationship to promote

and sell security-related goods and services in the same geographic location

as the Respondent. Respondent is not affiliated with BellSouth or Protection

One. Indeed, Respondent’s intentional attempts to attract consumers to his website

for commercial gain, 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 is evidence

of registration and use in bad faith according to the Policy, paragraph 4(b)(iv).

Complainant attempted several times to reach an amicable solution of the dispute.

Three cease and desist letters were sent via Federal Express and e-mail to the

Respondent, dated January 31, 2002, November 26, 2002, and

February 19, 2003, (Complaint, Exhibits H, I and K respectively),

but the Respondent has not shown any intention of reaching an agreement with

the Complainant.

A response to the first cease and desist letter was sent via e-mail address

to Complainant by a certain Michael Calderone, stating that he did not open

attachments. However, the website at the URL "www.bellsouthsecurity.com"

was taken down.

The e-mail response to the second letter was that Complainant should inform

Respondent, should it be interested in purchasing a domain name. Shortly after

the second letter was sent, the website at the URL "www.bellsouthsecurity.com"

was again activated stating "Welcome to the website of "www.protection1.com"".

When Complainant’s counsel sent the final cease and desist letter, an e-mail

was sent from an e-mail address which listed Michael Calderone as the sender

stating that "no such person [Michael Calderone] at this address". Apart from

that, the contact information listed in the WHOIS database for the domain names

was changed in order to mislead the Complainant that the domain names were transferred

and frustrate its efforts to prevent infringement of the BELLSOUTH mark. However,

the contact e-mail address and the domain name server information remained identical.

Moreover, the passive holding of the <bellsouthsecuritysystems.com> domain

name for such a long time indicates that Respondent’s clear intention was to

disrupt the Complainant’s business pursuant to paragraph 4(b)(iii) under the

Policy.

The Respondent’s pattern of conduct leaves no doubt as to the domain name registration

and use in bad faith. The Panel finds that the Complainant has proven paragraph

4(a)(iii) under the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain

names are fulfilled, according to the remedies available under paragraph 4 (i)

of the Policy.

The Complainant has requested transfer of the domain names.

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 registrations <

bellsouthsecurity.com> and <

bellsouthsecuritysystems.com> be transferred

to the Complainant.

Foteini Papiri

Sole Panelist

Date: August 1, 2003

1. See BellSouth Corporation v. B.E.L.-Tronics

Limited, Civil Action No. 1-93-CV-1714-CC, finding that BELL "has been and continues

to be a famous trademark", Companía de Radiocomunicaciones Móviles S.A. and

BellSouth Corporation v. Juan Bolinhas d/b/a "Movicom BellSouth", WIPO

Case No. D2000-0915, October 5, 2000, at paragraph 6(b) finding that Complainant

had a reasonable claim that the BELLSOUTH mark was famous or at least well known

in the U.S. and other countries, BellSouth Intellectual Property Corporation

v. Craig Waltzer, WIPO Case No. D2000-1581,

January 23, 2001, 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" and BellSouth Intellectual Property Corporation v. Texas Internet,

WIPO Case No. D2002-0559, August 14, 2002,

at paragraph 5 finding that the domain name is virtually identical

and confusingly similar to Complainant's famous BELL and BELLSOUTH marks.

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