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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.

 

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Foteini Papiri
Sole Panelist

Date: August 1, 2003

 

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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", Companнa de Radiocomunicaciones Mуviles 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.