The Complainant is Cincinnati Bell Inc. of Cincinnati, Ohio, United States of America, represented by the law firm Frost Brown Todd LLC, United States of America.
The Respondent is Bubble Bubble of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2014. On June 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2014.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 10, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 provider of local exchange (wireline) and wireless communications in Ohio, Kentucky, and Indiana, three states in the Midwestern United States. The Complainant claims to have operated under the name “Cincinnati Bell” since its formation following the breakup of the AT&T monopoly in the early 1980s. The Complainant holds a trademark for CINCINNATI BELL, duly registered in the United States Patent and Trademark Office (USPTO) in 2011 claiming a first use in commerce of 1984. The Complainant also owns a USPTO-registered trademark for FIOPTICS, registered with the USPTO in 2013 with a claimed first use in commerce of 2008. The Complainant actively does business using both these marks.
The Respondent registered the disputed domain name in 2010. An Internet user who enters the disputed domain name reaches a one-page website framed by pictures of a tropical island, with the text “ADULT FANTASIES!” and “Contact Information”, followed by a hyperlinked email address. 5. Parties’ Contentions A. Complainant
The Panel summarizes the Complainant’s contentions as follows.
1. The Complainant has rights in its CINCINNATI BELL and FIOPTICS marks by reason of its USPTO-registered trademarks. The disputed domain name is identical to the two marks when combined and confusingly similar to each.
2. The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has never licensed the Respondent to use its marks and the Respondent has never been commonly known by either mark or the two in combination. The use to which the Respondent has put the marks, adult services, is not bona fide for Policy purposes.
3. The Respondent’s use of the Complainant’s marks “is likely to tarnish” them, and attracts Internet users “to third party sites offering sexually explicit and pornographic material.” Further, “[u]pon information and belief, Respondent registered [the disputed domain name] well after the [Complainant’s] Marks had become famous trademarks of Cincinnati Bell, and after Respondent knew of Cincinnati Bell’s superior and prior rights.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Standard of Proof in a Default Case
UDRP proceedings differ from U.S. civil litigation in two respects material to the Panel's discussion of bad faith in part D below. The Respondent’s failure to reply to the Complaint does not constitute an admission of any factual matter pleaded in the Complaint and similarly does not result automatically in the relief sought in the Complaint, in this case a transfer of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6; see also Rules, paragraph 4, which uses words such as “proof” and “evidence.” B. Identical or Confusingly Similar
The Complainant has rights in its CINCINNATI BELL and FIOPTICS by reason of its USPTO-registered marks. Rights in a mark are determined as of the date the Complaint is filed, see WIPO Overview 2.0, paragraph 1.4, so the Panel need not address the fact that the registration of the disputed domain name predates the date the marks matured to registration under this Policy head. The disputed domain name incorporates both marks verbatim and is thus identical to them. The Complainant has established this Policy element. C. Rights or Legitimate Interests
The Complainant makes its prima facie case under paragraph 4(a)(ii) of the Policy by stating that it has never authorized the Respondent to use its trademarks and that the Respondent has never been commonly known by either or both of the trademarks. The burden of production thus shifts to the Respondent to demonstrate a right or legitimate interest in the disputed domain name; none is apparent from the record. As the Respondent has shown nothing, the Complainant has established this Policy element. D. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name, while nowhere near as lurid as pleaded by the Complainant, in the Panel’s opinion establishes use in bad faith by reason of its reference to “Adult Fantasies.” That phrase is at least suggestive of the forbidden fruit of pornography and bears no relation to anything (the city of Cincinnati, a bell, or fiber optics) named in or implied from the site’s identifier, the disputed domain name.
That fact alone does not suffice however to imply registration in bad faith, something that must be separately proven – not just alleged. The Respondent registered the disputed domain name before the Complainant earned USPTO registration of its marks. The Complainant’s “information and belief” allegation, quoted above, is by itself of no moment, nothing more than an allegation. The Complainant does assert – but again provides no evidence to support – common law rights in the marks prior to registration. The Panel does note that numerous public documents indicate widespread use of the CINCINNATI BELL mark many years before the disputed domain name was registered, however, and the Panel finds these sufficient to establish common law rights in that mark.1
Was the Respondent aware of either mark, and did it select the marks to take advantage of their value and goodwill? Both of these must normally be proven, as of the registration date, to demonstrate registration in bad faith. Once again the Complainant’s bare allegation means nothing, nor does its similarly bare (i.e. unsupported) allegation that one or both of its marks are famous.2 But the record does include two bits of evidence that convince the Panel that the answer to both questions in the first sentence of this paragraph is “yes”. One of the Respondent’s addresses, as disclosed by the Registrar (but not the Complainant), is in Cincinnati, and the Panel will presume that a resident of that city will be aware of the name of a prominent telecommunications provider there. Far more telling is the Respondent’s combining two of the Complainant’s marks verbatim. The CINCINNATI BELL mark is distinctive; the FIOPTICS mark, while arguably descriptive as an abbreviation of “fiber optics,” is not so common that the Respondent’s choosing it was coincidence. The likelihood that combining these two marks into the disputed domain name was anything but intentional is exponentially smaller. The Panel finds that the Complainant has established bad faith in registration.
The Complainant could have made the Panel’s job considerably easier by including with the Complaint evidence of actual use of its marks prior to their registration – a simple reference to its United States Securities and Exchange Commission filings (the Panel’s source for this information) or pre-registration advertising, for instance. The Policy and Rules require proof of factual assertions, or at least proof of matters from which the Panel may fairly infer the pleaded conclusion. As is true of far too many pleadings, the Complaint in this case proceeds upon either of two premises antithetical to sound Policy procedure: the assumption that everyone is aware of the Complainant and its marks, or that a pleaded matter is deemed admitted if not expressly denied.
The Policy has been in force for almost fifteen years and is the source of many thousands of decisions. Any party that “maintains strict control over the use of” its marks (Complaint, paragraph 11(l)) ought to be aware by now that procedures and precedent in UDRP proceedings differ, sometimes significantly, from those in trademark and other civil litigation, and ought to conform to the UDRP ground rules when proceeding under the UDRP. The statements in the preceding sentence apply with even greater force to any professional representative of a party involved in a UDRP proceeding. Failure to play by the rules may have consequences beyond exasperating the panel. Had this Panel been asked, for example, to evaluate a mark owned by a regional telecom company in Germany, or had this Complaint been assigned a panel who resided in Germany and had never heard of Cincinnati, the result might have been different, in what is otherwise an open-and-shut case. Once again this Panel admonishes parties and their representatives seeking resort to the streamlined UDRP process thoroughly to familiarize themselves with its ground rules and precedent before asking a panel for a domain name transfer. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Date: July 15, 2014
1 A panel is entitled to make its own examination of public records. WIPO Overview 2.0, paragraph 4.5.
2 The allegation of tarnishment is likewise unsupported.
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