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and Mediation Center
BellSouth Intellectual Property Corporation v. Serena, Axel
Case No. D2006-0007
1. The Parties
The Complainant is BellSouth Intellectual Property Corporation, Wilmington, Delaware, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Serena, Axel, Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <bellsouthvoip.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2006. On January 5, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On January 6, 2006, Wild West Domains, Inc. 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 January 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2006.
The Center appointed Gabriel F. Leonardos as the Sole Panelist in this matter on February 9, 2006. 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, BellSouth Intellectual Property Corporation (hereinafter: BellSouth), a corporation of the State of Delaware, 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. Prior to its divestiture, American Telephone & Telegraph Company (AT&T) operated the “Bell System”, consisting of twenty-two Bell operating telephone companies that provided local telecommunications exchange services, including the Southern Bell Telephone & Telegraph Company (“Southern Bell”) and the 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.
Since 1984, BellSouth , together with its affiliates, has provided a wide variety of telecommunications related goods and services in connection with the “BELLSOUTH” marks, not only in the southeastern United States but also around the world.
Since 1985, Complainant and its affiliated have offered worldwide cellular and other integrated telecommunications services, as well as Internet services in connection with the BELLSOUTH trademarks. Thus, consumers throughout the world have come to recognize the BELLSOUTH marks as indicating a product or service originating from a BellSouth company.
Complainant is an affiliated BellSouth company that owns and manages BellSouth Corporation’s intellectual property assets, including the trademarks disclosed in the schedule below, which have been assigned to it.
Nov. 14, 1989
May 27, 2003
Nov. 14, 1989
May 11, 1999
U.S. 2, 112,067
Nov. 11, 1997
May 11, 1999
In addition to the cited United States trademarks for the element “BELLSOUTH” the same is also registered in fifty other countries around the world. All such registrations cover goods/services relating to telecommunications.
Complainant and its affiliates have extensively promoted goods and services in connection with the BELLSOUTH marks through print, television and radio advertising and online at its websites “www.bellsouth.com” and www.bellsouth.net”.
The Respondent registered the disputed domain <bellsouthvoip.com> with the Registrar Wild West Domains, Inc., on October 6, 2005.
5. Parties’ Contentions
The Complainant is the owner of several trademark registrations in the United States and internationally, as shown in the table above for trademark “BELL” and “BELLSOUTH”.
In fact, the Complainant stressed that the BELLSOUTH trademarks do and have continued to symbolize high quality communication goods and services, and have become household names across the United States and worldwide.
The disputed domain name is a confusingly similar variation of all Complainant’s registered trademarks “BELL” and “BELLSOUTH”. In effect the disputed domain name <bellsouthvoip.com> contains in its entirety the Complainant’s trademark “BELLSOUTH” with the addition of the suffix “voip”.
Moreover, the disputed domain includes exactly in its entirety Complainant’s registered domain names, namely <bellsouth.com> and <bellsouth.net>. Therefore, the requirement of the Policy, paragraph 4(a)(i) is fully met.
Complainant argues that by the time the Respondent registered the disputed domain name, it was impossible for the Respondent to be unaware of the Complainant’s trademarks. In fact, the Complainant and its predecessors’ used the mark “BELLSOUTH” during a period of almost 100 years before the Respondent started to use the disputed domain name. Besides the Complainant’s trademarks were issued long before Respondent registered the disputed domain name, leading the Complainant to assume that Respondent had constructed knowledge of the Complainant’s trademarks.
The Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, that the Respondent is not commonly known by the disputed domain name or is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the Complainant alleges that the Respondent, by using the disputed domain name, is intentionally usurping the commercial magnetism of the “BELLSOUTH” trademark to deceptively misdirect visitors looking for the Complainant’s website. The Complainant and/or its affiliated are the only entities entitled to use the expressions “BELL” and “BELLSOUTH” in the United States and in other countries, it is clear that the use of the disputed domain by the Respondent is illegitimate.
It is quite obvious that the reputation of the Complainant’s trademarks acquired through a widespread and long-standing advertising and marketing of goods and services under Complainant’s marks online and in the media lured the Respondent’s greed, proving the Respondent’s intention to attract visitors otherwise intending to visit Complainant’ website by creating and exploiting a likelihood of confusion with Complainant’s trademarks. In addition, by means of the disputed domain name the Respondent appears to have the intent to obtain financial gain since the disputed domain name leads to a web portal directory and PPC search engine not related to the Complainant or its affiliates.
Thus, there is no doubt that the Respondent registered the disputed domain name to create confusion as to the source sponsorship, affiliation, and/or endorsement of the domain name with that of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) That the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) That the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is used in bad faith.
A. Identical or Confusingly Similar
The Complainant has many registered trademarks formed by the expressions “BELL” and “BELLSOUTH” in over fifty countries worldwide.
The only difference between the disputed domain name and the Complainant’s “BELLSOUTH” trademarks is the addition of the suffix “voip”, which stands for Voice over Internet Protocol (VoIP), a technology that allows a person to make telephone calls using a broadband Internet connection instead of a regular (or analog) phone line. VoIP can thus be considered a suffix that is devoided of distinctiveness and does not enable the consumers to differentiate between the Complainant and the Respondent. Adding the suffix “voip” does not change the overall impression of the designation, and accordingly the Panel finds that the domain name <bellsouthvoip.com> is confusingly similar to Complainant’s trademarks “BELL” and “BELLSOUTH”.
B. Rights or Legitimate Interests
The Panel understands that under paragraph 4(a)(ii) of the Policy the overall burden of proof is on Complainant. However, once the Complainant presents a prima facie evidence that the Respondent lacks rights or legitimate interest, the burden shifts to the Respondent (see Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121 and Belupo d.d. v. Wachem d.o.o., WIPO Case No. D2004-0110.
The Respondent has not filed any Response to the Complaint and thus has not provided evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)(iii) of the Policy could apply to the present matter.
The Respondent have easily performed a trademark or website search (at no cost) that would have disclosed the existence of the Complainant. Be that as it may, the Panel finds that the Complainant’s contention that its first use of trademarks “BELL” and “BELLSOUTH” pre-dates the Respondent’s registration of the Domain name is accurate. The Panel agrees that, considering the fame of the Complainant, it was indeed unlikely that the Respondent was unaware of the Complainant’s trademarks.
In addition, Respondent does not run any business associated with the disputed domain name. Accordingly, the use of the domain name <bellsouthvoip.com> is not considered legitimate use in connection with bona fide offering of goods and services.
Given the circumstances the Panel finds that Respondent has no right or legitimate interest in respect to the domain name (the Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the policy specifies certain non exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the domain name in bad faith.
The Complainant’s trademarks are indeed distinctive and known by the public in the United States and worldwide. Furthermore, given the widespread and long-standing advertising and marketing of goods and services under “BELLSOUTH” trademarks online and in the media, the Panel considers that the Respondent had knowledge of the trademarks owned by the Complainant when registering the disputed domain name. This awareness of the Complainant’s trademarks is confirmed by the fact that the disputed domain <bellsouthvoip.com> contains in its entirety the Complainant’s trademark “BELLSOUTH” with the addition of the suffix “voip” which is closely related to the services provided by the Complainant.
Furthermore, the Panel understands that, in using the domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. In addition the Panel also comes to the conclusion that the Respondent has registered the domain name at issue in order to prevent the Complainant from reflecting the BELLSOUTH trademark in a corresponding domain name.
Accordingly, the Panel determines that Respondent has acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 <bellsouthvoip.com> be transferred to the Complainant.
Gabriel F. Leonardos
Dated: February 21, 2006