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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pacific Telesis Group v. E Smith d/b/a The Ripe One
Case No. D2001-1053
1. The Parties
The Complainant is indicated in the Complaint as Pacific Telesis Group ("Complainant"), a company incorporated in Nevada, United States of America, whose principal place of business is located in San Francisco, California, United States of America.
The Respondent is identified in the Complaint and in the "Whois" report submitted with the Complaint as E Smith, doing business as The Ripe One, whose address is 123 South Main Street, Los Angeles, California 90012, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <pacificbelldsl.com> ("the Domain Name"). The Registrar is Global Knowledge Group <gkg.net> ("Global"). In an e-mail dated September 21, 2001, to the WIPO Arbitration and Mediation Center ("the Center"), Global confirmed that the ICANN Uniform Domain Name Dispute Policy ("the Policy") applies to the Domain Name registered by Respondent with the Registrar on December 30, 2000.
3. Procedural History
On August 21, 2001, the Complaint, which is in the format required by the Policy, was filed electronically with the Center. The Complainant certifies that the Respondent was duly served with the Complaint. On August 23, 2001, a hardcopy of the Complaint was received by the Center. On September 24, 2001, having duly sought and obtained verification from the Registrar, the Center completed a formal compliance checklist.
On September 25, 2001, the Center duly served a Notification of Complaint to the Respondent both electronically and by courier. On October 16, 2001, having received no response to the Complaint from Respondent within the specified time in the Notification of Complaint, the Center notified the Respondent that it was in default.
On November 2, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date of November 16, 2001. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Lynda J. Zadra-Symes of Newport Beach, California, who was appointed by the Center after an invitation had been issued and an acceptance and Declaration of Independence and Impartiality had been duly returned.
4. Factual Background
A. Complainant's Business and Trademark Rights
The Complainant is one of seven Regional Bell Operating Companies ("RBOCSs") or "Baby Bells" that were formed in 1983 as a result of the break-up of Atlantic Telephone & Telegraph Co., Inc. ("AT&T). Pursuant to the 1983 divestiture of AT&T, Complainant became one of the concurrent use owners of all of AT&T’s rights in the "BELL" and "bell design" marks and federal registrations for those marks (collectively "the BELL marks"). Pursuant to the 1983 court order, the RBOCS were required to use the BELL mark with a regional modifier. Since at least as early as 1984, Complainant has used the BELL mark with the modifier "Pacific," resulting in the mark "PACIFIC BELL."
As a result of extensive sales of goods and services bearing the PACIFIC BELL marks, complemented by extensive advertising, promotion and press coverage, the name, symbol and mark "PACIFIC BELL" has become well-recognized in the telecommunications field by telecommunications providers, consumers of communications-related goods and services, and the consuming public generally, as identifying goods and services offered and endorsed by Complainant. Complainant's telecommunications services include providing digital subscriber link ("DSL") services.
Complainant owns the following United States Trademark and Service mark registrations for "PACIFIC BELL" for, among other things, providing telecommunications services to others, telephone and business directories and educational books and pamphlets in telecommunications skills and the use of telecommunications equipment and services, designing and engineering telecommunications systems and equipment for others and relating consulting services:
a. United States Registration No. 1,459,202 for the mark PACIFIC BELL, filed September 29, 1986, issued September 29, 1987, covering goods and services in International Classes 16, 35, 37,38,41 and 42.
b. United States Registration No. 1,574,451 for the mark Pacific Bell and Design, filed March 29, 1988, issued January 2, 1990, covering goods and services in International Classes 9, 16, 35, 37, 38, 41 and 42.
Complainant attached certified copies of the above-referenced Registrations as Annex C and D to the Complaint.
B. Respondent's Activities
According to the "Whois" report attached to the Complaint, Respondent registered the Domain Name on December 30, 2000. Shortly thereafter, Complainant discovered Respondent's registration and use of the Domain Name and, on January 9, 2001, Complainant's parent company, SBC Communications, Inc., through its counsel, sent Respondent a letter asking him to cease and desist his unauthorized use of Complainant's marks. See Annex F to Complaint.
Complainant's parent company sent that letter by U.S. Mail to the Los Angeles address listed in the "Whois" report and by e-mail to the e-mail address provided by the "Whois" report, <firstname.lastname@example.org>." Respondent failed to respond to either the letter or the e-mail. In addition, the letter was returned to Complainant as undeliverable because of "insufficient address." Additionally, Complainant's counsel attempted on several occasions to reach Respondent at the telephone number listed on the "Whois" report, but a recorded message stated the call could not be completed as entered.
Annex E to the Complaint indicates that, on July 19, 2001, the Respondent’s website, at the Domain Name <pacificbelldsl.com>, displayed advertising and promotion of telecommunications products and services provided by <BlastSurf.com>, which purported to be an authorized agent for Telocity, a direct competitor of Complainant in the market for Internet-related telecommunications services. The web pages in Annex E indicate that Respondent's website at the Domain Name <pacificbelldsl.com> included a home page which advertised <BlastSurf.com> and Telocity's DSL, cable and satellite products and services, and also provided a link to a website located at <www.blastsurf.com>, from which DSL and other telecommunications products could be ordered online.
5. The Parties' Contentions
The Complainant made the following allegations, which Respondent did not contest:
The Domain Name <pacificbelldsl.com> misappropriates Complainant's registered and unregistered trademark rights in its PACIFIC BELL mark, and that the Domain Name is confusingly similar to this mark. The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the Domain Name, and has not used it in connection with a bona fide offering of goods and services. Rather, Respondent is using the Domain Name to unlawfully benefit by trading on Complainant's goodwill to initially attract customers to a website that appears to be a sanctioned or endorsed by Pacific Bell, but in fact offers a competitor's goods and services.
Complainant further contends that the Respondent has adopted and used the Domain Name in bad faith as evidenced by the fact that Respondent has no trademark rights in the marks PACIFIC BELL, PACIFIC BELL DSL or BELL, nor any legitimate reason to use "Pacific Bell" as a trade name or as the content of a url. Respondent has never been authorized to use "Pacific Bell" or "Bell" as a trade or service mark or url during any period of time in which Respondent has registered the Domain Name. Nor did Respondent ever seek Complainant's permission to use its mark. The Complainant points to the fame of its PACIFIC BELL mark, and the BELL marks, as evidence that Respondent must have been aware of Complainant's trademark rights at the time of registering the Domain Name.
The Complaint further alleges that, in registering the Domain Name with the registrar, Global Knowledge Group (<gkg.net>), Respondent provided fictitious registration information. By fabricating registration information that would be listed on the world wide web and relied upon by registrars, applicants, prospective registrants and administrative boards, Respondent acted in bad faith.
Respondent did not respond to the Complaint, and has made no submissions to controvert the Complainant's contentions.
6. Discussions and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
The Panel, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inferences as it deems appropriate on the basis of Respondent's Response and give such weight as it considers appropriate to the Complainant's undisputed representations.
The Respondent did not submit any response and made no attempt to rebut Complainant's prima facie showing. Thus, the Complainant's representations are undisputed.
As to the first requirement under paragraph 4 of the Policy, it is clear that the Complainant has registered and unregistered rights in the mark PACIFIC BELL. The Panel finds that the Domain Name is confusingly similar to the Complainant's mark, particularly given that the Complainant is a well-known provider of DSL services. Thus, Respondent's combination of Complainant's mark with the suffix "dsl" in the Domain Name does not avoid a finding of confusingly similarity.
As to the second requirement, the Panel considers that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has provided no evidence of any bona fide use or demonstrable preparations to lawfully use the Domain Name. Complainant's contentions that it never authorized Respondent to use its mark are not contested by Respondent.
As to the third requirement, paragraph 4b. of the Policy provides that the following circumstances, 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:
(i) circumstances indicating that Respondent has registered or 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 Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Panel notes that the Domain Name was registered by a California resident who must have been aware of the Complainant's well-known PACIFIC BELL trademark. In addition, the evidence of Respondent's use, submitted in Annex E to the Complaint, indicates that Respondent has used the Domain Name deliberately to attract Internet users to a website which offers products and services that compete directly with Complainant's products and services offered under its PACIFIC BELL mark. Complainant never authorized Respondent to use Complainant's PACIFIC BELL mark in this competitive manner, or, indeed, in any other manner. Further, the evidence in Annex E indicates that Respondent was still using the Domain Name for a website offering competitive goods and services 6 months after Complainant had notified Respondent via email and letter of Complainant's trademark rights and the unlawful nature of Respondent's unauthorized use of those trademarks in the Domain Name.
In addition, the evidence indicates that Respondent gave false contact information to Global, the domain registrar of <pacificbelldsl.com>. Complainant sent a cease and desist letter to Respondent at the address listed on the Whois lookup, which was returned by the United States Post Service because of "insufficient address." Counsel for Complainant attempted on several occasions to contact Respondent at the phone number provided on the Whois registration lookup. Each time, counsel for Complainant received a recorded error message, which informs callers that the phone call could not be completed as entered.
The Panel concludes that the Domain Name was registered primarily for the purpose of disrupting the business of Complainant, and that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's PACIFIC BELL mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website and the competing goods and services offered at that website. Accordingly, the Panel concludes that the Domain Name was registered and is being used in bad faith.
The Panel decides that the Domain Name <pacificbelldsl.com> should be transferred to Complainant.
Dated: November 16, 2001