Cincinnati Bell, Inc. v. Henry Chan

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Cincinnati Bell, Inc. v. Henry Chan

Case No. D2003-0954

1. The Parties

The Complainant is Cincinnati Bell, Inc., Cincinnati, Ohio, United States of America,

represented by Frost Brown Todd LLC, United States of America.

The Respondent is Henry Chan, Nassau, Bahamas.

2. The Domain Names and Registrars

The disputed domain names <cincinatibell.com>, <cincinnattibell.com>,

and <cincybell.com> are 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 December 1, 2003. On December 4, 2003, the Center transmitted

by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar

verification in connection with the domain names at issue. On December 4, 2003,

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 of the domain names <cincybell.com>, <cincinatibell.com>

and <cincinnattibel.com>. The Center verified that the Complaint together

with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2003.

In accordance with paragraph 5(a) of the Rules, the due date for Response

was December 29, 2003. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on January 6, 2004.

The Center appointed Martin Michaus-Romero as the Sole Panelist in this matter

on January 19, 2004. 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 paragraph

7 of the Rules.

On February 4, 2004, the Center informed the parties that the panel

ordered the Complainant to file before the Center, copies of the trademark registrations

mentioned in Annex 4 to the Complaint. The submission was due on February 7, 2004.

On February 6, 2004, the Panel received from the Center in electronic

version, copies of the trademark registrations mentioned in Annex 4 of the Complaint,

as well as a copy of the notice of allowance from the United States Patent and

Trademark Office for the mark Cincinnati Bell Directory.

On February 9, 2004, the Panel received from the Center in electronic

version a copy of the registration No. 1546153 BELL.

4. Factual Background

The Complainant has common law rights in the CINCINNATI BELL trademark. Such

company and its related companies own the following trademark registrations

and applications:

MARK

REGISTRATION

No.

FILING

DATE

BELL

1,546,153

May 11, 1988

CINCINNATI

BELL WIRELESS

2,371,972

February 12, 1998

CINCINNATI

BELL LONG DISTANCE

1,773,835

March 5, 1991

CINCINNATI

BELL GOLD PROGRAM

2,378,421

January 5, 1998

CINCINNATI

BELL GOLD PROGRAM

2,371,962

January 5, 1998

CINCINNATI

BELL DIRECTORY

76/173,802

December 1, 2000

APPLICATION No.

CINCINNATI

BELL NETWORK SOLUTIONS

75/539,776

August 8, 1998

The Complainant submitted copies of each of the trademark registrations as

published by the Trademark Gazette and those trademarks are registered among

other for the following goods and services.

Reg. No. 1,546,153

Class 38: Providing telecommunications services to others.

Serial No. 76/173802

Class 35: Promoting the goods and services of others through consulting on

directory advertising programs, designing directory advertisements and listings,

and placing such advertisements and listings in directories and on-line computer

directory services.

Reg. No. 1,773,835

Class 38: Telecommunication services.

Reg. No. 2,371,962

Class 38: Personalized telecommunication services, namely, call waiting, voice

messaging, call forwarding, caller ID, three-way calling, call return, repeat

dial, satellite transmission of television programs.

Reg. No. 2,371,972

Class 38: Wireless telephone communication services.

Reg. No. 2,378,421

Class 38: Personalized telecommunication services, namely, call waiting, voice

messaging, call forwarding, caller ID, three-way calling, call return, repeat

dial, satellite transmission of television programs, providing multiple-user

access to a global computer information net-work, and pre-paid calling card

services, all featuring a customer incentive award program.

Reg. No. 2,622,571

Class 37: Installation, maintenance and repair of telecommunications equipment

and data networking equipment, for others.

The Complainant is registrant, among others, of the following domain names:

<cincinnatibell.com>

<cincinnatibell.net>

<cincinnatibell.biz>

<cincinnatibell.info>

<cincinnatibellwireless.net>

The domain names disputed are:

<cincinatibell.com> registered on/or about December 2, 2002

<cincinnattibell.com> registered on/or about December 29, 2002

<cincybell.com> registered on/or about February 13, 2003

Thee three domain names can be redirected to websites containing links to various

telecommunication companies.

5. Parties’ Contentions

A. Complainant

The Complainant states in his Complaint:

(a) Cincinnati Bell, Inc. is one of the seven regional Bell operating companies,

formed in 1993, resulting from the brake-up of American Telephone and Telegraph Co., Inc.

(AT&T). It became one of the users of all AT&T’s rights in the Bell

and Belt design marks and federal registrations for those marks.

Since 1994 it has used the bell mark with the modifier Cincinnati, resulting

in the mark CINCINNATI BELL.

(b) It has common law rights in the CINCINNATI BELL trademark and together

with its related companies, owns 4 trademark registrations and 2 pending applications

in the United States for trademarks containing the designation Cincinnati Bell.

That this designation has been used in connection with telecommunication goods

and/or services and complemented by extensive advertising, promotion and press

coverage.

(c) The CINCINNATI BELL mark is well-known in the United Stated and identifies

a broad range of telecommunication goods and services, including wireless telecommunication

services.

d) The disputed domain names include the misspelling of the Complainants’ domain

names, Cincinnati Bell or the word Cincy in conjunction with the word Bell.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles

the Panel is to use in determining the dispute: "A Panel shall decide a

complaint on the basis of the statements and documents submitted in accordance

with the Policy, these Rules and any rules and principles of law that it deems

applicable." Considering that the Complainant and Respondent are domiciled

in different jurisdictions, the Panel in order to determine whether the Complainant

has met its burden as stated in paragraph 4(a) of the policy, would essentially

base its decision on the Policy and Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following: "(i) that the domain name registered by the Respondent

is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; and (ii) that the Respondent has no rights or legitimate

interests in respect of the domain name; and (iii) that the domain name has

been registered and used in bad faith."

The Panel finds that the disputed domain names violate the Policy due to the

following:

A. Identical or Confusingly Similar

The disputed domain names violate paragraph 4(a)(i) of the Policy, as

they are confusingly similar to the trademarks indicated in Annex 4 in which

the Complainant has prior right. The disputed domain names: <cincinatibell.com>

and <cincinnattibell.com> are identical to the Cincinnati Bell trademark-service

mark and they are used to offer goods or services closely similar to those distinguished

by the CINCINNATI BELL trademark-service marks.

A similar situation is applicable regarding the domain name <cincybell.com>

in connection with trademark CINCINNATI BELL, noting that the term Cincy, as

is indicated by the Complainant, is a short form of the word Cincinnati, and

therefore the Panel considers the domain name <cincybell.com> confusingly

similar to the CINCINNATI BELL trademark-service marks.

B. Rights or Legitimate Interests

The disputed domain names violate paragraph 4(a)(ii) of the Policy, as the

Respondent has not received permission nor authorization to use the trademark-service

marks Cincinnati Bell. The Respondent did not reply to the Complainant’s contentions,

and therefore has not provided any evidence or arguments to prove anything to

the contrary. In addition, Complainant’s use of the trademark-service mark CINCINNATI BELL

precedes the registration of the domain names. It should be pointed out that

the Respondent is not (as individual, business or corporation) known by the

names "cincinatibell," "cincinnattibell" nor "cincybell."

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy gives examples of circumstances which, in

particular but without limitation, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith. This

Panel considers that circumstances enumerated in sections (iii) and (iv) of

that paragraph are at present in this case. The Panel considers that the Respondent

registered the disputed domain names with the intent to trade on the goodwill

of the Complainant’s trademark (see Cellular One Group v. Paul Brien,

WIPO Case No. D2000-0028), thus disrupting

the business of the Complainant. Furthermore, the Panel finds lack of response

by the Respondent as another element of bad faith. Therefore, the domain names

were registered and used in bad faith.

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 <cincinatibell.com>,

<cincinnattibell.com> and <cincybell.com>, be transferred to the

Complainant.

Martin Michaus-Romero

Sole Panelist

Dated: February 11, 2004

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