WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BellSouth Intellectual Property Corporation v. Craig Waltzer
Case No. D2000-1581
1. The Parties
The Complainant is BellSouth Intellectual Property Corporation, a corporation organized in the State of Delaware, United States of America (USA), with place of business in Wilmington, Delaware, USA.
The Respondent is Craig Waltzer, with address in Adventura, Florida, USA.
2. The Domain Name and Registrar
The disputed domain name is .
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on November 16, 2000, and by courier mail received by WIPO on November 21, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On November 23, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar�s Response received by WIPO on November 29, 2000).
(b) On November 30, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) Respondent�s response was received by WIPO via e-mail on December 13, 2000, and was received in hard copy on December 19, 2000. Respondent also transmitted the response to Complainant.
(d) On January 5, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 5, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On January 10, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by January 23, 2000. The Panel received a hard copy of the file in this matter by courier mail from WIPO.
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 proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of trademark and service mark registration for the term "BELL" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. No. 1,565,562, dated November 14, 1989, in International Classes 9, 16, 35, 37, 38, 41 and 42, covering a wide range of products and services, including customer premises telecommunications networks and parts therefore, telephones and telephone accessories, modems, computers, printers, voice mail systems, telephone and classified business directories, advertising consulting services, installing and maintaining telecommunications systems and equipment, educational services in telecommunications and designing and engineering telecommunications systems. Complainant�s trademark and service mark registration for the "BELL" mark claims a date of first use of 1900. Complainant�s registration of the "BELL" mark is concurrent with that of other former American Telephone and Telegraph operating companies, resulting from a court-ordered divesture. (Complaint, para. 11 and Exhibit C). Complainant is also the holder of trademark registrations on the Principal Register at the USPTO for "BELLSOUTH", Reg. No. 1,565,559, dated November 14, 1989, in International Class 9; for "BELLSOUTH.NET", Reg. No. 2,112,067, dated November 11, 1997, in International Class 9; for "BELLSOUTH MOBILITY", Reg. No. 1,670,082, dated December 31, 1991, in International Class 9, and; for "BELLSOUTH PRODUCTS", Reg. No. 1,698,835, dated July 7, 1992, in International Class 9 (id.). These registrations are valid and subsisting.
Complainant directly and through its former affiliated entities has used the "BELL" mark in commerce since at least November 14, 1989, based on the earliest of the dates of registration of that mark, and without prejudice to whether Complainant may hold earlier-arising rights in the mark.
Complainant�s "BELL" mark is well known in the United States and other countries as identifying Complainant and other former AT&T affiliates as providers of a broad range of telecommunications services and goods.
Complainant has registered the domain name and maintains an active website at . On its "BellSouth" website, Complainant uses the tradename "BellSouth International" and advertises international telecommunications services. Operating under the trade name "BellSouth International", Complainant renders services to more than 10 million customers in 19 countries. (Id., para. 11 and Exhibits D & E).
According to the registrar�s verification response to WIPO, dated November 29, 2000, "Waltzer, Craig" is the listed registrant of the domain name . According to a Network Solutions� WHOIS database record furnished by Complainant, the record for the disputed domain name was created on April 8, 1999, and was last updated on July 14, 2000 (Complaint, Exhibit A).
According to a Network Solutions� WHOIS database record furnished by Complainant, "Miracle Communications Inc." is the listed registrant of the domain name . Respondent, "Waltzer, Craig", with the same address as Miracle Communications Inc., is listed as the Administrative Contact for Miracle Communications. (Complaint, Exhibit I).
At times prior to the initiation of this proceeding, the disputed domain name was used to direct Internet users to a website with Internet address , which website advertised and offered long distance telephone services (id., para. 11 and Exhibit O).
As of the date of this determination, the Internet address identifies a web page advertising DSL services through "Atlas Internet" (Panel visit of January 23, 2001).
On August 19, 1999, Complainant sent a cease and desist and cancellation demand to Respondent (letter from Jacqueline Gregorski to Craig Waltzer). By telefax dated September 1, 1999, Respondent�s counsel replied to said demand, stating inter alia, "I anticipate our being able to resolve this matter to both parties� satisfaction. We will make the appropriate name change" (telefax from Michael Rosen to Jacqueline Gregorski). On September 23, 1999, Complainant reiterated its cease and desist demand to Respondent�s counsel. By telefax dated October 24, 2000, Respondent (through counsel) indicated its disagreement with Complainant as to whether it was making improper use of Complainant�s mark, and offered to sell the disputed domain name to Complainant for $50,000, asserting this to be Respondent�s investment in the name and costs associated with establishing his business under a new name (telefax from Kym Bennette to Charles Henn, dated October 24, 2000). Complainant does not appear to have responded directly to Respondent�s offer of sale, but on October 25, 1999, and December 19, 1999, Complainant reiterated its cease and desist and (as of the December 29 letter) transfer demand.
Although it has not provided documentary support for this assertion, Respondent claims that he "is president and sole owner of International Bell Network, Inc. (a Florida corporation)" (Response, para. 11). Respondent claims, without documentary support, that "prior to its adoption and use of the domain name [he] was president, director and sole owner of International Bell Network, Inc. (a Florida corporation)" (id.).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states that it is the holder of trademark and service mark registration at the USPTO for the term "BELL" and related "BELL"-formative marks, that such marks have been used extensively in commerce in the United States and other countries and that such marks are well known to consumers of telecommunications goods and services. Complainant indicates that trademark and service mark rights in "BELL" are shared with other former AT&T operating companies in consequence of the U.S. court-ordered divesture of those operating companies. (See Factual Background supra)
Complainant asserts that its use of the "BELL" mark substantially predates Respondent�s registration of the disputed domain name .
Complainant argues that the disputed domain name is virtually identical and confusingly similar to its famous "BELL" mark, particularly in so far as Complainant has used its mark extensively in the fields of telecommunications services and goods.
Complainant indicates that Respondent had constructive notice of rights in its mark by virtue of its registration at the USPTO, and that Respondent has not made noncommercial use of its mark.
Complainant alleges that prior to adoption of the disputed domain name, Respondent, as a person involved in the telecommunications industry, was well aware of Complainant�s rights in its mark, and adopted the mark with actual knowledge and an intent to trade on Complainant�s rights.
Complainant alleges that Respondent acted in bad faith by intentionally using its mark to attract Internet users to his own website for commercial gain, and by offering to sell the name to Respondent for $50,000 (after initially agreeing to change the name). The offer price reflects an intentional registration of the domain name with the purpose of selling it to Complainant for valuable consideration in excess of Respondent�s out of pocket expenses directly related to the name.
Complainant requests that the panel direct the registrar to transfer the disputed domain name to it.
B. Respondent
Respondent asserts that the disputed domain name is dissimilar from Complainant�s mark since (1) "Bell" is synonymous with telecommunications, specifically telephones, and that Respondent�s business is different; (2) that the "Bell" operating companies only provided local telephone service, while the disputed domain name does not "imply local communications"; (3) that no consumer confusion can take place since Respondent does not have any products available outside the United States; that Respondent has assigned the name to International Bell Network, Inc. (of which he is 100% owner) and his business is commonly known by that name; that Respondent has promoted international services at its "" website and that consumers have come to associate Respondent�s services with that name.
Respondent states that he has rights and legitimate interests in the disputed domain name because this has and does reflect the name of Respondent�s business.
Respondent states that his registration and use of the name are not in bad faith since Respondent "was not aware, and is still not aware of any company related to the Complainant named International Bell, or its likeness". He also states that his offer to sell was "in exchange for reasonable costs".
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this proceeding, Respondent has furnished a response to the complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of trademark and service mark registration for the term "BELL" in the United States and is using that mark in commerce (see Factual Background, supra). (Footnote 2) Complainant�s registration of the "BELL" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 3) The Panel determines that Complainant has rights in the trademark and service mark "BELL". Based on the November 14, 1989, date of the earliest registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the "BELL" mark arose prior to Respondent�s registration, on April 8, 1999, of the disputed domain name.
Complainant�s "BELL" mark is well known among consumers and Internet users as a source of telecommunications services and goods.
Respondent has registered the domain name . This domain name (1) incorporates Complainant�s "BELL" mark, (2) adds the generic top-level domain (gTLD) ".com", and (3) adds the prefix "international" to Complainant�s mark.
The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "BELL" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 4)
Respondent does not, by adding the descriptive term "international" before "BELL", create a new or different mark in which he has rights or legitimate interests, nor does he alter the underlying mark held by Complainant. Complainant�s mark is well known among consumers and Internet users and identifies Complainant as a source of telecommunications services and goods. The term "international", commonly used to describe places or activities outside the borders of a single country, is one that users of the Internet would expect to be used by Complainant (as a provider of telecommunications services and goods) in connection with its mark. This term, when combined with Complainant�s mark, creates a domain name that Internet users are likely to assume is associated with Complainant as a source of services and goods on the Internet.
Respondent�s use of the disputed domain name has exclusively been related to the advertisement and sale of telecommunications services, and this is well within Complainant�s channel of commerce.
The disputed domain name is confusingly similar to Complainant�s mark within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is confusingly similar to a trademark and service mark in which Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes 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." (Policy, para. 4(c))
Respondent asserts two bases for establishing rights or legitimate interests in the disputed domain name. First, he asserts that he has been commonly known by the domain name, even though he acquired no trademark or service mark rights. Respondent supports this claim by the mere assertion that he owns and has operated International Bell Network, Inc., a Florida corporation, without indicating when this corporation was organized. This business is in no way identified in Respondent�s domain name registration data, is not reflected on any web page furnished to the Panel in connection with this proceeding, and its existence has not been supported by any documentary evidence. The Panel rejects this claim for lack of evidentiary support.
Although the response is less than crystal clear on this point, Respondent also appears to assert that prior to notice of a dispute he made use of the disputed domain name in connection with a bona fide offer of services. Registration of a trademark or service mark does not conclusively establish notice of a dispute for purposes of paragraph 4(a)(i). However, in a case such as this in which Complainant�s well known mark is adopted by Respondent and used to attract customers to a competing business, it is apparent that Respondent was aware of Complainant�s mark when he registered the domain name. He used the mark in bad faith. Respondent�s offering of services prior to notice of the dispute was not bona fide.
Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are: (1) that the domain name has been registered or acquired by a 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 that complainant, for valuable consideration in excess of [respondent�s] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)); and (2) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating confusion as to Complainant�s sponsorship of or affiliation with his website and services. This is evidenced, inter alia, by the well-known nature of Complainant�s mark, and by the close relationship between the telecommunications services provided by Complainant and those offered by Respondent. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent also offered to sell the disputed domain name to Complainant for $50,000. In light of the well-known character of Complainant�s mark, Respondent should have anticipated that Complainant would approach it to demand that it cease using the disputed domain name. Respondent�s registration and use the disputed domain name was undertaken with an intention to profit from sale of the domain name to Complainant, even though perhaps as an alternative to his misleading use of the name. In light of the non-exclusive character of the list of bad faith factors set out in paragraph 4(b) of the Policy, the Panel finds that Respondent registered and used the domain name in bad faith as evidenced by his offer to sell it to Complainant for a price substantially in excess of his out-of pocket expenses directly connected with the name.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel recognizes that Complainant has concurrent rights in the "BELL" mark with other former AT&T operating companies. A determination that the disputed domain name be transferred to it does not accord equivalent interests in the domain name to those other divested operating companies. The Panel does not, however, have equitable powers to fashion a unique remedy for this situation. A determination merely directing cancellation of Respondent�s registration would not appear to serve such an equitable purpose. Should any other Bell operating company consider itself to have a competing interest in the disputed domain name, this is a matter that will need to be addressed in another forum.
The Panel will therefore request the registrar to transfer the domain name to the Complainant.
7. Decision
Based on its finding that the Respondent, Craig Waltzer, has engaged in abusive registration of the domain name within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "" be transferred to the Complainant, BellSouth Intellectual Property Corporation.
Frederick M. Abbott
Sole Panelist
Dated: January 23, 2001
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. For purposes of rendering its determination in this proceeding, the Panel does not find it necessary to consider Complainant�s "Bell"-formative marks.
3. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
4. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
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