WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SBC Communications Inc. v. Fred Bell aka Bell Internet
Case No. D2001-0602
1. The Parties
The Complainant is SBC Communications Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in San Antonio, Texas, USA.
The Respondent is Fred Bell, also known as Bell Internet, with address in Clinton Township, Michigan, USA.
2. The Domain Names and Registrar
The disputed domain names are and .
The registrar of the disputed domain names 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 courier mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on April 26, 2001, and by e-mail received by WIPO on April 30, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On May 1, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar�s Response received by WIPO on May 2, 2001).
(b) On May 1, 2001, WIPO notified the Complainant of a formal filing deficiency in regard to the identity of the Respondent as advised by the Registrar. On May 7, 2001, WIPO received an amendment to the Complaint via e-mail, and on May 10, 2001, WIPO received an amendment to the Complaint via courier mail.
(c) On May 11, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.
(d) On June 15, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.
(e) On June 17, 2001, Respondent transmitted an e-mail to WIPO stating reasons for his failure to respond. On June 18, 2001, WIPO advised Respondent via e-mail that his message would be forwarded to the administrative panel in due course.
(f) June 22, 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 22, 2001, the undersigned hand delivered the executed Statement and Declaration to WIPO.
(g) June 25, 2001, 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 July 8, 2001. The Panel received a hard copy of the file in this matter by courier 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. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of valid and subsisting trademark and service mark registrations for the term "BELL" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. Nos. 1,545,200 and 1,545,198, dated June 27, 1989, in International Classes 9, 16, 35, 37, 38, 41 and 42, covering a wide range of products and services, including telephones, answering machines and computer programs dealing with telecommunications, telephone and business directories, promoting the goods and services of others through consulting on directory advertising programs, installing and maintaining telecommunications systems and equipment for others, providing telecommunications services to others, providing educational services in telecommunications skills, and designing and engineering telecommunications systems and equipment for others. 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, paras. 13-14 & Annex D)
Complainant directly and through its former affiliated entities has used the "BELL" mark in commerce since at least June 27, 1989, based on the date of registration of that mark furnished in this proceeding, 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 goods and services.
According to the registrar�s verification response to WIPO, dated May 2, 2001, "Bell Internet" is the listed registrant of the domain name . The Administrative Contact, at the same address, is "Bell, Fred". According to a Network Solutions� WHOIS database record furnished by Complainant, the record for the disputed domain name was created on March 27, 1998, and was last updated on January 30, 2001 (Complaint, Exhibit A). According to the same registrar�s verification response to WIPO, "Fred Bell" is the listed registrant of the domain name . The Administrative Contact, at the same address, is "Bell, Fred". According to a Network Solutions� WHOIS database record furnished by Complainant, the record for the disputed domain name was created on May 4, 1998, and was last updated on January 30, 2001 (Complaint, Exhibit B).
On March 18, 1999, Complainant through its counsel sent a letter to Respondent informing him of Complainant�s mark and seeking information concerning his intended use of the name. Respondent did not reply. On April 9, 1999, Complainant sent a follow up letter to which Respondent did not reply.
Prior to April 9, 1999, the disputed domain names were not used in connection with active Internet websites (id., para. 17).
As of May 5, 1999, the domain name was used to direct Internet users to an active commercial website headed "Work at Home Opportunities" that mirrored content posted on a website identified by the Internet address (URL) . After May 1999, the same domain name redirected Internet users to the address. The commercial content on the Work at Home Opportunities web site consisted of links to various Internet marketing enterprises. (Id., paras. 18-19 & Annexes E-G)
On September 2, 1999, Complainant through counsel sent a cease and desist and transfer demand to Respondent regarding the disputed domain names. Respondent temporarily discontinued use of the name. (Id., paras. 19-20 & Annexes H-I)
Prior to November 7, 2000, both disputed domain names were used to post web pages with a "Coming Soon!" announcement, and referring to the "Pick Net" web hosting enterprise (id., para. 21 & Annexes J-K).
As and after February 6, 2001, both disputed domain names were used to post content that mirrored Respondent�s website (headed "Work@H") (Footnote 1). This commercial website solicited persons interested in exploiting e-commerce opportunities, inter alia, offering to enable them to provide broadband Internet access and services. Respondent�s websites at this stage initiated a link with a "Bell Technologies" web page. The "Bell Technologies" web page is a subpage of Respondent�s home page, and offers for sale a variety of telecommunications and computer equipment, including cellular/PCS telephones, web hosting services, and Internet telephony and telephone calling cards, from a variety of business enterprises unaffiliated with Complainant. (Id, para 22-23 & Annexes N-P)
Respondent�s personal name is "Fred Bell". Respondent acknowledges registration of the disputed domain names. (Respondent�s e-mail to WIPO of June 17, 2001)
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 and use (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states that it is the holder of trademark and service mark registrations for the "BELL" mark, that it uses this mark in commerce and that this mark is well known (See Factual Background, supra).
Complainant alleges that the disputed domain names contain the term "bell" that is identical to its mark, and that the combination of its mark with the terms "net" and "internet" are likely to confuse consumers by suggesting that websites associated with the disputed domain names are owned, operated or sponsored by the owners of the "BELL" mark. Complainant also alleges that the addition of terms to its mark "dilutes the distinctiveness of the BELL marks".
Complainant indicates that Respondent has no rights or legitimate interests in the disputed domain names. Complainant states that Respondent is not making a bona fide offer of goods or services since he is deceiving consumers into believing that the competing goods and services offered on his website are being offered by Complainant.
Complainant alleges that Respondent has registered and used the disputed domain names in bad faith. Evidence of this bad faith is said to reside in the facts that: (1) Respondent has not been authorized to use Complainant�s mark; (2) Respondent used the disputed domain names only after Complainant objected to his registration of its mark; (3) Respondent has used the disputed names to divert customers to a website unrelated to Complainant, and; (4) Complainant�s mark is well known.
Complainant argues that Respondent�s use of his family name in the disputed domain name is not "fair use". First, Complainant states that Respondent was not commonly known as "Bell Technologies", "Bell Internet or "Bell-Net" prior to registration of the names. Second, Complainant alleges that under U.S. trademark law, use of a family name can infringe the rights of a trademark holder for the same term if use of the family name causes consumer confusion or constitutes unfair competition. Complainant indicates that in the present circumstances Respondent has used his family name to lead consumers to believe that his website is associated with Complainant.
Complainant requests that the Panel direct the registrar to transfer the disputed domain names to it.
B. Respondent
Respondent did not file a response within the time limits established by the Rules. However, following notification from WIPO of default in responding, Respondent stated by e-mail to WIPO:
"The reason that I have not replied is because have been ill and I�m 73 years old. I have no money and my only income is Social Security.
I do not have the money to fight for the my [sic] use of my God given name.
My name is Fred Bell and I registered & .
No one had the names registered.
I was never told that I could not use those names.
The Bell name is a common name just open up the Phone Book and look at all the companies.
What about:
I was the first to register those names and it is My name.
I�m not in completion [sic] with Ma Bell.
Why did Network Solutions take my money?
Sincerely,
Fred Bell"
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. 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).
Although Respondent did not file a formal response in this proceeding, he did send an e-mail message to WIPO indicating that he was aware of the initiation of the proceeding and that he had been given an opportunity to respond. The Panel will consider his late-filed e-mail to constitute his response to the complaint. The Panel determines that Respondent had adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
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). 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 2). The Panel determines that Complainant has rights in the trademark and service mark "BELL". Based on the June 27, 1989, date of 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 March 27, 1998 and May 4, 1998, of the disputed domain names.
Complainant�s "BELL" mark is well known among consumers and Internet users as a source of telecommunications goods and services.
Respondent has registered the domain names and . These domain names each (1) incorporate Complainant�s "BELL" mark and (2) add the generic top-level domain (gTLD) ".com".
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 3).
Respondent does not, by adding the terms "internet" and "net" following "BELL", create new or different marks 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. It identifies Complainant as a source of telecommunications goods and services. The terms "internet" and "net" are common descriptive terms that refer to the Internet. These terms are commonly used in connection with trademarks and other terms to refer to the location of available goods, services or businesses on the Internet. When these terms are used with Complainant�s "BELL" mark in a domain name and Internet address, consumers and Internet users are likely to assume Complainant is associated with a website and/or goods or services identified on that website. Respondent used the disputed domain names to advertise telecommunications equipment and services, and this is within Complainant�s channel of commerce.
The disputed domain names and are 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 domain names that are 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 and use.
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)).
The evidence on the record of this proceeding indicates that Respondent did not make use of the disputed domain names prior to notice from Complainant of its rights in its mark and its expression of concern about potential infringing uses of its mark. There is no evidence that Respondent made preparations for a bona fide offering of goods or services prior to notice of dispute.
Respondent has asserted rights in the disputed domain names based on the fact that his family name is "Bell". This claim may fall either under paragraph 4(c)(ii) of the Policy that provides for rights in a domain name if a respondent has "been commonly known by the domain name, even if you have acquired no trademark or service mark rights", or under paragraph 4(c)(iii) of the Policy that provides for fair use of a domain name without intent for commercial gain to misleadingly divert consumers.
The express text of paragraph 4(c)(ii) of the Policy indicates that to establish rights a respondent should have been commonly known by the "domain name". Respondent in this proceeding has not been commonly known by or . This might suffice to deny Respondent rights under paragraph 4(c)(ii) of the Policy.
In addition, in the present proceeding Respondent used his family name in the disputed domain names for the sole purpose of directing Internet users to websites that in the first instance bore no relation to his family name and, in subsequent instances, were designed to cause Internet user confusion regarding an association between Respondent and Complainant. While Respondent may have been commonly known among his family and friends as "Bell", he has not been known under that name as a purveyor of telecommunications equipment and services. Under U.S. trademark law, the fact that a person holds a particular family name does not create an entitlement for that person to use the name to compete in a line of commerce with a registered trademark holder for the same term (Footnote 4). At the least, the person asserting the right to use a family name in competition with a well known mark generally will be required to modify or distinguish his name, or otherwise take adequate steps to avoid consumer confusion (Footnote 5).
The Panel determines that Respondent has not established rights in the disputed domain names based on use of his family name "Bell" because (1) the disputed domain names contain terms in addition to his family name (2) his family name was not, prior to registration of the disputed domain names, associated with the business of providing telecommunications equipment or services and (3) he has used the disputed domain names solely in connection with directing Internet users to websites that either (a) bore no association with his family name or (b) competed directly with Complainant and its line of business.
Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration and use.
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 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 in this proceeding has used the disputed domain names in two different ways. He first used the names to direct Internet users to a "Work at Home Opportunities" website that offered links to commercial marketing enterprises. This website made no mention of Respondent or his family name. Following repeated notice from Complainant about misleading use of its marks, he then used the disputed domain names to direct Internet users to a "Work@H" website. This website included a link to Respondent�s "Bell Technologies e-store" that advertises a variety of telephone equipment and services furnished by suppliers unaffiliated with Complainant�s well known telecommunications equipment and services business. Respondent is intentionally using Complainant�s well known mark in the disputed domain names 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. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
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 and domain names 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 registrations 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 names, this is a matter that will need to be addressed in another forum.
The Panel will therefore request the registrar to transfer the domain names and to the Complainant.
7. Decision
Based on its finding that the Respondent, Fred Bell, has engaged in abusive registration and use of the domain names and within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names and be transferred to the Complainant, SBC Communications Inc.
Frederick M. Abbott
Sole Panelist
Dated: July 8, 2001
Footnotes:
1. A Network Solutions� WHOIS database search indicates that lists the same contact address as Respondent (Panel search of July 8, 2001). (back to text)
2. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). (back to text)
3. 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). (back to text)
4. See J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 13:8 and cases cited (4th ed. 1996 and updated), stating: "Historically, the courts have progressed from the early view that one's use of his name would never be interfered with to a modern view placing personal name marks on almost the same footing with any other type of mark.". (back to text)5. Id., � 13:9. (back to text)
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