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and Mediation Center
Bellsouth Intellectual Property Corporation v. Netsolutions
Case No. D2005–0169
1. The Parties
Complainant is BellSouth Intellectual Property Corporation, Wilmington, Delaware, United States of America.
Complainant is represented by Christopher M. Hanes, Kilpatrick Stockton, LLP, Atlanta, Georgia, United States of America.
Respondent is Netsolutions Proxy Services, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The Domain Name at issue is <bellsouthmastercard.com>.
The Registrar is Fabulous.com Pty Ltd.
3. Procedural History
The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) by e-mail on February 11, 2005, and in hardcopy on February 14, 2005. On February 11, 2005, the Center transmitted a request for Registrar verification in connection with the Domain Name at issue and on February 14, 2005, received Registrar’s verification. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center sent to Respondent formal notice of the commencement of this proceeding on February 22, 2005. Seeing that the Respondent did not submit in due time any response, the Center notified the Respondent’s default on March 23, 2005.
The Center appointed Ladislav Jakl as the Sole Panelist in this matter on March 30, 2005.
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 is a corporation organized under the laws of the State of Delaware with its principal place of business, located in Wilmington, Delaware.
The Complaint is particularly based on the trademarks and service marks owned by Complainant as follows:
- BELL, U.S. Federal Registration No. 1,565,562, issued November 14, 1989;
- BELL, U.S. Federal Registration No. 2,718,321, issued May 27, 2003;
- BELLSOUTH, U.S. Federal Registration No. 1,565,559, issued November 14, 1989;
- BELLSOUTH, U.S. Federal Registration No. 2,244,189, issued May 11, 1999;
- BELLSOUTH, U.S. Federal Registration No. 2,307,506, issued January 11, 2000;
- BELLSOUTH, U.S. Federal Registration No. 2,341,098, issued April 11, 2000;
- BELLSOUTH.NET, U.S. Federal Registration No. 2,112,067, issued November 11, 1997;
- BELLSOUTH.NET, U.S. Federal Registration No. 2,244,864, issued May 11, 1999;
- BELLSOUTH PRODUCTS, U.S. Federal Registration No. 1,698,835, issued July 7, 1992;
- BELLSOUTH # 1, U.S. Federal Registration No. 2,234,737, issued March 23, 1999;
- 1-800-BELLSOUTH, U.S. Federal Registration No. 2,354,715, issued June 6, 2000;
- BELLSOUTH, U.S. Federal Registration No. 2,407,074, issued November 21, 2000.
These registrations cover particularly goods and services relating to the telecommunications. Documents evidencing the above listed applications and U.S. trademark registrations together with Trademark Assignment were attached to the Complaint as Exhibit C.
The Complainant has provided together with its affiliates a wide variety of telecommunications-related goods and services in connection with BELLSOUTH Marks around the world.
In accordance with paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy (“the Policy”) the Complainant requests that the Administrative Panel issue a decision that the Domain Name at issue be transferred to Complainant. The Complainant elects to have the dispute decided by a single-member Panel. In accordance with paragraph 3(b)(xiii) of the Rules, Complainant will submit, only with respect to any challenge by the Respondent to the decision in this administrative proceeding canceling or transferring the Domain Name, to the jurisdiction of the Courts of Queensland, Australia, where the Registrar is located.
The Respondent registered the disputed Domain Name with the Registrar Fabulous.com
5. Parties' Contentions
Complainant essentially contends that the Domain Name <bellsouthmastercard.com> of the Respondent is confusingly similar to Complainant's registered BELLSOUTH Marks, adding only a generic word “mastercard” that is descriptive of the service that Complainant and Respondent provide. Adding such a word does not change the overall impression of the designation. The Complainant, its predecessors and its affiliates, have used the marks BELL and BELLSOUTH in connection with a wide variety of communication-related goods and services, including cellular, telecommunications, and the Internet. In addition, Complainant states, that the services Respondent offers through its website, are identical or nearly identical to those offered by Complainant, and that Respondent uses the same distribution channel as Complainant. Further, the Complainant contends that the Domain Name at issue incorporates the mark BELLSOUTH and is identical to Complainant’s BellSouth®Mastercard® credit card product and that information can be found at “www.bellsouth.com/mastercard“ and attaches a copy of it.
Complainant contends that Respondent lacks rights and legitimate interests with respect to the Domain Name at issue. As the Complainant’s BELLSOUTH Trademark registrations were issued long before the Respondent registered the Domain Name, Respondent was charged with constructive knowledge of them and therefore was not bona fide. Complainant reasonably believes that Respondent, prior to its adoption and use of the Domain Name, 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 online and in the media.
The Respondent did not file a response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark 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 Domain Name has been registered and is being used in bad faith.
1. Confusing similarity of Domain Name and Trademarks
The Complainant has filed list of its Trademarks and copies of decisions of U.S. Federal Registration. Panel finds that most of them consist of the word BELLSOUTH and that they are registered for goods and services relating to telecommunications. For instance the Panel finds that the Trademark “BELLSOUTH”, U.S. Reg. No. 2,407,074, has been registered on November 21, 2000, in class 9: for credit cards, debit cards, and telephone calling cards with magnetic coding; subscriber identity module (SIM) cards containing computer chips with subscriber-specific billing data which the user inserts into digital mobile telephone, in class 16: for calling cards without magnetic coding and in class 36: for providing credit card, debit card and telephone calling card services.
The Respondent has registered Domain Name <bellsouthmastercard.com>.
As to confusing similarity, the only difference, apart from the “.com”, which does not form part of the similarity equation, between the Domain Name and the Complaint’s BELLSOUTH Marks is in the addition of the word “mastercard”. There is no doubt that Respondent’s Domain Name is confusingly similar adding only a generic word “mastercard” that is descriptive of the service that Complainant and Respondent provide. Moreover, adding such a word does not change the overall impression of the designation.
Therefore, the Panel finds that requirement of the paragraph 4(a)(i) of the Policy is satisfied.
2. Legitimate rights or interests in respect of the domain name
Paragraph 4(c) of the Policy sets out a number of circumstances, in particular but without limitation, which may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests, in the Domain Name at issue, for purpose of paragraph 4(a)(ii):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
“(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
“(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
According to paragraph 15(a) of the Rules a Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and any rules and principles of law that it deems applicable.
According to paragraph 5(e) of the Rules, if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
Having received no response from the Respondent within the fixed period of time from the Notification of Complaint, the Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstance giving rise to a right to or legitimate interests in the Domain Name.
Based on the record, the Panel concludes that the Respondent has no rights to or legitimate interests in the Domain Name <bellsouthmastercard.com>.
3. Registration and use in bad faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that domain name has been registered or acquired by Respondent 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 the Complainant, for valuable consideration in excess of the Respondent documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) the Respondent by using the domain name has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as the source, sponsorship, affiliation, or endorsement of Respondent's website or location of a product or service on its website or location.
Complainant argues that Respondent, prior to its adoption and use of the Domain Name, was aware that Complainant was the owner of the BELLSOUTH Marks because of its widespread and long-standing advertising and marketing of goods and services under BELLSOUTH Marks online and in the media. In view of Complainant’s BELLSOUTH®MASTERCARD®CREDITCARD, found at “www.bellsouth.com/mastercard“, Respondent uses the confusingly similar <bellsouthmastercard.com> site improperly to divert Internet traffic to Respondent’s web portal directory and Pay-Per-Click search engine. The Respondent is utilizing the BELLSOUTH Marks and the name of a BellSouth product to divert web users to the credit card services of companies other than Complainant’s.
The Panel, on the basis of the above mentioned arguments, comes to the conclusion that the Respondent has registered the Domain Name at issue in order to prevent the Complainant from reflecting the BELLSOUTH Marks in a corresponding domain name. Moreover, by using the Domain Name, the Respondent has intentionally diverted, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Marks.
Therefore the Panel determines that the Respondent has acted in bad faith within
the meaning of paragraph 4(b) 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 <bellsouthmastercard.com> be transferred to the Complainant.
Dated: April 18, 2005