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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compañнa de Radiocomunicaciones Mуviles S.A. and BellSouth Corporation v. Argentina Web Design
Case No. D2000-0914
1. The Parties
The Complainants are Compañнa de Radiocomunicaciones Mуviles S.A., hereinafter "CRM", an Argentine corporation with a principal place of business at Ing. Enrique Butti 240, 20th floor, C1001AFB Buenos Aires, Argentina, and BellSouth Corporation, a United States corporation of the State of Georgia, with a principal place of business at 1155 Peachtree Street, N.E., Atlanta, Georgia 30309-3610, U.S.A. (the "Complainants"), both represented in this proceeding by Mr. Alberto Berton-Moreno Jr., Esq., of Sena & Berton Moreno, Buenos Aires, Argentina.
The Respondent is Argentina Web Design, an entity of an unknown nature, doing business at Beiro 4265, Buenos Aires 1419, Argentina (the "Respondent").
2. Domain Name and Registrar
The domain name at issue is <movicombellsouth.com> registered with Network Solutions Inc., of Herndon, VA 20170, USA.
3. Procedural History
On August 1, 2000 a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). On August 4, 2000 the Complaint was received in hardcopy.
On August 7, 2000 the Center sent an Acknowledgement of Complaint to the Parties. The communication was made to the Respondent by courier (with enclosures) and by E-mail (without enclosures).
At the Centerґs request for verification, on August 14, 2000 NSI informed the Center inter alia that the Respondent is the current registrant of the domain name at issue, and that the domain name is in "active" status.
On August 15, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by courier. The courier package was delivered and received at its address under 1 above. A fax was transmitted and received on August 15, 2000. On the same day emails were also transmitted to email@example.com, firstname.lastname@example.org and email@example.com. The Center set September 3, 2000 as deadline for the submission of a Response.
Having the Respondent failed to submit a Response, on September 5, 2000 the Center sent to the Respondent a Notification of Respondent Default by E-mail to firstname.lastname@example.org.
The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
After having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, on September 21, 2000 the Center appointed him as a sole panelist. The scheduled decision date was October 5, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel, sharing the assessment of the Center of August 15, 2000, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. The Panel finds that the Center has discharged its responsibilities at reasonably trying to notify the Complaint to the Respondent pursuant to Rules, Paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no other submissions of the Parties, nor were extensions granted or orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. The 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 Complainantsґ allegations and documents enclosed with the Complaint have not been contested, the Panel finds following facts as having been sufficiently established:
CRM started the era of cellular mobile communications in Argentina when it won the international tender to that effect. On April 22, 1988 CRM was set up as a corporation. The first mobile communication in Argentina was made on November 1, 1989, even before the date set by the National Communications Secretariat of Argentina. CRM made substantial investments in the cellular business. To date CRM services operate at full capacity, with approximately 1,500,000 users. CRM has over 2,500 employees on its payroll. CRM is undertaking new projects in countries such as Uruguay and Panama. In June 1999 MOVICOM was awarded a license for the Personal Communication Service - PCS in Buenos Aires and its suburban areas for an amount of US$ 162.75 million and an investment of over US$ 100 million. Since November 1999 CRM provides domestic and long distance services through its 91 % owned Compañнa de Telйfonos del Plata S.A.
CRM is the owner of following trademark registrations in Argentina:
May 31, 1990
November 30, 1992
September 30, 1992
November 30, 1992
November 30, 1993
October 29, 1998
October 29, 1998
On August 12, 1999 CRM submitted applications in Argentina for the mark MOVICOM under numbers 2234385 (Class 9), 2234387 (Class 38), 2234388 (Class 9), 2234390 (Class 38), 2234391 (Class 9), 2234393 (Class 38), 2234394 (Class 9) and 2234396 (Class 9).
Two Federal courts in Argentina have found that the trademark MOVICOM is famous.
BellSouth obtained on November 14, 1989 U.S. Trademark Registration No. 1,565,559 for the mark BELLSOUTH for various goods, including telephones and telephone accessories. On July 7, 1992 BellSouth obtained U.S. Trademark Registration No. 1,698,8535 for the mark BELLSOUTH PRODUCTS covering various telephone-related goods, including telephones, cordless telephones, telephone accessories and telephone answering machines. BellSouth has used the mark BELLSOUTH to promote the telephone goods and services of its affiliates. BellSouth advertised telephone and telephone-related products, including cordless telephones, telephone answering machines and caller identification units in print media, including trade publications, brochures, flyers, etc., at trade shows and by direct contact.
In the U.S. case BellSouth Corporation v. B.E.L.-Tronics Limited (Canada) and B.E.L.-Tronics Limited (Kansas) (Civil Action No. 1-93-CV-1714-CC), it was held that BellSouth is the lawful owner of the mark BELL for a wide variety of telephone-related goods and services and that the mark BELL "has been and continues to be a famous trademark".
In 1988 a consortium led by BellSouth International, a company created by BellSouth in 1985 to manage its activities outside the U.S., won a bid to build an Argentine cellular network, the first private cellular system in South America. At present BellSouth International renders services to more than 10 million clients in 19 countries in Latin America, Europe, the Middle East and Asia. In particular, the company operates in Argentina, Brazil, Chile, Denmark, Ecuador, Germany, Guatemala, India, Israel, Nicaragua, Panama, Peru, Uruguay and Venezuela. By 1995 BellSouth’s revenues exceeded US$ 17 billion. By 1999 BellSouth added a new customer somewhere in the world every 10 seconds.
BellSouth has registered its trademarks in many countries. It owns following registrations in Argentina:
January 4, 2000
(renewal of 1,341,338 granted on April 12, 1989)
January 4, 2000
(renewal of 1,341,339 granted on April 12, 1989)
January 4, 2000
(renewal of 1,341,340 granted on April 12, 1989)
April 30, 1993
On April 26, 1999 CRM and BellSouth entered a Trademark License Agreement, pursuant to which BellSouth authorized CRM the use of its trademark BELLSOUTH, including co-branding with CRM’s mark MOVICOM.
According with the WHOIS domain name records, the record of the domain name at issue was created on March 23, 2000. The Respondent is the current registrant.
On January 28, 2000 CRM detected that <movicombellsouth.com> had been registered in the name of Peart & Asociados, of Buenos Aires, Argentina. The registrant had no authorization to use Complainantsґmarks. On January 26, 2000 Complainants detected that <movicom-bellsouth.com>, <movicom-bellsouth.net> and <movicombellsouth.net> had been registered by an unauthorized third party, Argentina Web Design. Its administrative contact was Mr. Carlos A. Castelao 1. On March 21, 2000 BellSouth sent a cease-and-desist letter to the Respondent requesting cease of use and transfer of these three domain names.
On March 23, 2000 - probably at the time when BellSouthґs cease-and-desist letter was received - Respondent acquired the registration of the domain name at issue.
During the first week of April 2000 Mr. Gache-Pirбn, in-house counsel to CRM, contacted by telephone Mr. Castelao. Mr. Gache-Pirбn asked Mr. Castelao to transfer the <movicom-bellsouth.com>, <movicombellsouth.net> and <movicom-bellsouth.net> domain names for re-inbursement of registration costs. Mr. Castelao demanded a "serious and higher" sum for the transfer. No agreement was then reached.
On April 24, 2000 Mr. Alberto Berton Moreno Jr., Esq., counsel for CRM, sent a cease-and-desist letter to Respondent, requesting the cease of use and transfer or cancellation of the domain name at issue. Some 10 days later Mr. Castelao contacted by phone Mr. Berton-Moreno Jr. to answer the cease-and-desist letter. He repeated the arguments told to Mr. Gache-Pirбn of CRM concerning the requested transfer of the three domain names. Mr. Castelao told Mr. Berton-Moreno that he was aware of the various courses of action that Complainants had available. He added that he was conscious of his own speculative purposes. No agreement followed.
The applicable registration agreement (service agreement) between the Registrar and the registrant is version 5.0, which was in effect at the time of the registration of the domain name at issue, and continues to be in effect at present. The policy now in effect is the ICANN Policy, under which these proceedings have been installed. Respondent has not challenged this Panelґs jurisdiction.
5. Parties’ Contentions
A. The Complainant contends that (1) the domain name <movicombellsouth.com> is identical to the combined use of the marks MOVICOM and BELLSOUTH in which the Complainants have rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.
B. The Respondent has not submitted a response. It is therefore in default and has not made any submissions whatsoever.
6. Discussion and Findings
Effects of Respondent Default
The specific allegations and contentions of the Complainants against the domain name registration bound the Respondent to respond specifically. According with Rules, Paragraph 5(b)(i) "(t)he response shall (...) (r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)".
The Panel further notes that the Notification of Default by the Center clearly advised the Respondent about the consequences of its failing to submit a response. See 3 above.
In case of a default, under Rules, Paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under Rules, Paragraph 14(b), the Panel "shall draw such inferences therefrom as it considers appropriate".
The Respondent’s default would indicate that the Complainantsґ assertions by themselves are sufficient ground for the Panel to proceed to a default decision in their favor. However the Policy does not allow to automatically draw such a conclusion, because "the complainant must prove that each of these three elements are present". Policy, Paragraph 4(a), in fine. Panelґs emphasis.
Independent Connection with the Respondent’s Web Site
Under Rules, Paragraph 10(a), the Panel is allowed to independently visit the Internet in order to obtain additional light in this default proceeding.
On September 23, 2000 the Panel attempted to visit Respondentґs <www.movicombellsouth.com> web site, which resulted in a DNS error message stating that the Internet site cannot be accessed and that a connection with the server could not be established. This means that the site corresponding to the domain name at issue is inactive for all practical purposes.
Identity or Confusing Similarity
Beyond any doubt the Complainant CRM has rights in the mark MOVICOM. The same applies to Complainant BellSouth Corporation in relation to the mark BELLSOUTH. By virtue of the agreement referred to at 4 above the use and co-branding of MOVICOM and BELLSOUTH was authorized to the licensee CRM by the licensor BellSouth Corporation. The Panel accepts Complainantsґallegation that the combined use of the trademarks MOVICOM BELLSOUTH has been largely publicized in Argentina since both Complainants entered into the Trademark License Agreement, and that Complainants identify themselves jointly as MOVICOM BELLSOUTH.
The first meaningful portion of the domain name is certainly identical letter-by-letter to the MOVICOM mark, and the second meaningful portion is also identical to BELLSOUTH. The domain name <movicombellsouth.com>, while not identical, is at least confusingly similar to Complainantsґ marks MOVICOM and BELLSOUTH, respectively. The addition of both marks reinforces the impression that the resulting compound refers to each of the individual, compounding marks. This is one of the natural effects of co-branding 2.
The fact that MOVICOMBELLSOUTH has apparently not been registered as a mark by either of the Complainants is irrelevant. No other company or person excepting CRM and/or SouthBell - or someone with rights derived from them - could in fact be entitled to apply for such registration in Argentina and probably in the USA as well. Respondent would be no exception, and it has apparently not submitted an application for the trademark registration of MOVICOMBELLSOUTH in either Argentina or USA.
The Panel finds that Complainants made out their case under Policy, Paragraph 4(a)(i).
Rights or Legitimate Interests
By its default, Respondent has not contested the allegation of the Complainants that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there were no other motives for Respondentґs having registered <movicombellsouth.com> but its actual or most likely knowledge of the famous or well known marks MOVICOM and BELL SOUTH, the fact that Complainants had entered a co-operation agreement, and the publicly known combined use of MOVICOM and BELLSOUTH by CRM.
Additionally 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 name. The fact that the web site is inactive prevents any finding of bona fide offering or fair use of the domain name. No other circumstance has been evidenced by Respondent that could reasonably support an inference in its favor under Policy, Paragraph 4(c).
The Panel thus finds that the Respondent has no rights or legitimate interests to the domain name at issue.
Registration in Bad Faith
By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain name in bad faith.
Complainants have furnished convincing evidence that Respondent has registered several other domain names which slavishly copy trademarks and service marks belonging to well known companies in Argentina, as follows:
SCOTIABANK and QUILMES
The Bank of Nova Scotia (Canada) and Banco Quilmes (Argentina)
QUILMES (class 32, beers)
Cerveceria y Malteria Quilmes S.A.
LA MORENITA (class 30, coffee)
J.G. Padilla S.A.
LUIGI BOSCA (class 33. wine)
Bodegas Luigi Bosca e Hijos S.A.
Failing any submission of contrary evidence by the Respondent, the Panel has to conclude that Respondent is not authorized by such companies operating in Argentina to register in its own name the seven domains names corresponding to their well known marks. In doing so Respondent has engaged in a "pattern of conduct" within the meaning of Policy, Paragraph 4(b)(ii):
"you have 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 you have engaged in a pattern of such conduct".
Paragraph 4(b)(ii) requires an action (registration of the domain name), a purpose (preventing the trademark owner from reflecting its mark in the domain name) and a pattern of conduct (registration of a number of domain names which correspond to marks belonging to trademark owners other than the Complainant). All three elements are present in this case.
Were this sole circumstance evidenced, as it has been by Complainants, that would be sufficient for the Panel to find that the domain name was registered in bad faith.
However as seen under 4 above, and in conjunction with the above Panelґs finding under Policy, Paragraph 4(b)(ii), the Panel also finds that Respondent registered the domain name for the purpose of unfairly selling it at a profit to Complainants. Respondent thus met the circumstance described in Policy, Paragraph 4(b)(i):
"circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name".
Absent any statement by the Respondent about its real purpose at registering the domain name, the Panel is authorized to draw reasonable inferences about that purpose from any available circumstance or fact, inter alia any allegation by Respondent. However Respondent is in default. Any effective use of the website by the Respondent could also have been an element for a Panel to deduce which has really been the purpose of the registration, but there is no effective use of the corresponding web site.
As Respondent has no real Internet presence, the Panel concludes that the registration has most likely been made with no other purpose but to prevent the Complainant from reflecting its mark in a corresponding domain name, with the aim to force the Complainants into transfer-for-price negotiations. In fact such negotiations did occur. Complainants offered plain reimbursement of registration costs for the assignment of the domain name. A serious sum "higher" than mere registration costs was demanded by Respondent. Thus, no settlement was reached.
The registration of a domain name identical or confusingly similar to the marks of two well known companies doing business in Argentina by a registrant that has no rights or legitimate interests in the domain name, and who prefers not to submit any allegation in this proceeding, points to bad faith registration under Policy, Paragraph 4(a)(iii).
The Panel finds therefore that the domain name at issue has been registered in bad faith.
Use in Bad Faith
After the decision in WIPO Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows by the distinguished panelist Mr. Andrew F. Christie, February 18, 2000, many WIPO panels have extensively used his reasoning to establish bad faith use when there is no positive action of the Respondent in relation to the domain name. In Telstra Mr. Christie said:
"7.8 Has the Complainant proved the additional requirement that the domain name "is being used in bad faith" by the Respondent? The domain name <telstra.org> does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name."
"7.9 This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
Unlike the Telstra case, in the present case there has been a communication to sell the domain name for a sum higher than registration costs. In Telstra the Panel considered a number of circumstances that jointly led to a finding that there had been bad faith use. In this case, the Panel considers the following:
(a) In registering the domain name Respondent slavishly copied the Complainantsґ marks MOVICOM and BELLSOUTH.
(b) Apart from the fact of their trademark registrations, both Complainants have a reasonable claim that their marks and tradenames are famous or at least well known as corresponding to telecommunication businesses, both in Argentina and in many foreign countries.
(c) This proceeding was binding for the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center.
(d) The effect of a subsisting registration of the domain name by the Respondent equals to deprive Complainants from legitimately reflecting their marks in the domain name at issue.
(e) The inactivity of the website under the domain name at issue causes the public to believe inter alia that Complainants do not have a website.
(f) The offer for sale of the domain name by the Respondentґs contact person - see 4 above - cannot be said to be a good faith use of the domain name.
The Panel considers such circumstances as jointly revealing a bad faith use of the domain name at issue.
In the instant case one of the Complainants is a company with principal place of business in Argentina, while the Respondent is seemingly doing business also in Argentina. The Panel accepts in general the reasoning in Case D 99-0001 - World Wrestling Federation - accepted in many other decisions - that in cases were both Parties are residents of the same country a Panel may look to decisions of the Courts of such country. However this is not strictly necessary in the instant case, where the Policy in itself provides a sound basis for reaching a decision 3.
For all the above reasons, the Panel finds that Complainants have made out their case under Policy, Paragraph 4(a)(iii), that the domain name at issue is being used in bad faith.
The Panel has found that the domain name <movicombellsouth.com> is at least confusingly similar to the marks of the Complainants, that the Respondent has no rights or legitimate interests to the domain name, and that the domain name has been registered and is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4 (i), and Rules, Paragraph 15, the Administrative Panel requires that the domain name registration <movicombellsouth.com> be transferred to the Complainant, Compañнa de Radiocomunicaciones Mуviles S.A.
Roberto A. Bianchi
October 5, 2000
1 These three domain name registrations are being challenged in a separate ICANN proceeding conducted by this same panelist (WIPO Case D2000-0915, decision).
2 "Marrying one brand to another for marketing purposes is one of the hottest marketing gimmicks of the 90s, so it's not surprising that franchise companies have taken two-tone marketing to the ultimate level through a system known as dual- or co-branding. In franchising, the concept of co-branding simply involves two or more "brands" sharing real estate. Each maintains identity, but there is free flow of customers between them." Panelґs emphasis. The Panel has taken this citation from the article "Co-Branding Sinergyzes Franchise Sales" by Nancy Rathbun Scott at http://www.bitmark.com/nancyscott/franchising%20articles%20html/co-branding.html visited on September 24, 2000.
3 Federal Courts in Argentina have decided several cases where trademark owners and even tradename holders were granted preliminary injunctions prohibiting the registrant registrant to use a domain name identical to the trademark under the ccTLD ".ar" managed by NIC ARGENTINA, and even ordering the registrar to provisionally transfer the domain name registration to the plaintiff (the trademark owner). See Cases "Heladerнas Freddo s/ medidas cautelares", Buenos Aires, November 26, 1997, Juzgado de 1ra. Instancia en lo Civil y Comercial Federal Nє 7, Secretarнa Nє 13, and "Pugliese", Cбmara Nacional de Apelaciones en lo Civil y Comercial Federal, Sala II, Buenos Aires, December 30, 1999. Courts in Argentina are likely to order a provisional transfer of the domain name to the trademark owner when fumus boni juris and periculum in mora have been evidenced. The trademark owner is sometimes required to deposit a real warranty deemed sufficient by the court. Other times a personal warranty has sufficed. The legal basis for injunctions in these cases has been Article 232 of the Civil and Commercial Procedural Code and Article 50.2 of TRIPS. In order to provisionally determine that a domain name be transferred, a Court in Argentina does not need to examine if bad faith use of the mark has effectively taken place. This Panel believes that were the domain name at issue in the instant case registered under the ".ar" ccTLD and had the facts and evidence of the instant case been the subject of a proceeding under Argentinaґs substantive and procedural rules, a federal Court in Argentina would have most likely issued a provisional injunction for transfer of the domain name in Complainantsґ favor. Under new rules recently issued, NIC-ARGENTINA is to draft a new ADR system for domain name registrations under the ".ar" ccTLD. The ADR system should preserve court proceedings.