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 <bellinternet.com> and <bell-net.com>.
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 <bellinternet.com>.
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 <bellinternet.com> 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 <bell-net.com>.
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 <bellinternet.com> 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 <bell-net.com> 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) <www.work-athome.net>. After May 1999, the same domain name redirected
Internet users to the <work-athome.net> 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 <bell-net.com> 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 <workathome1st.com> website (headed
"[email protected]") (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 <workathome1st.com> 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 <workathome1st.com>
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 bellinternet.com & bell-net.com.
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:
http://www.bell.it/
http://bell.all-pics.com/
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 <bellinternet.com> and <bell-net.com>.
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 <bellinternet.com> and <bell-net.com>
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 <bellinternet.com>
or <bell-net.com>. 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 "[email protected]"
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 <bellinternet.com> and <bell-net.com> 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
<bellinternet.com> and <bell-net.com> 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 <bellinternet.com> and <bell-net.com>
within the meaning of paragraph 4(a) of the Policy, the Panel orders that the
domain names <bellinternet.com> and <bell-net.com> be transferred
to the Complainant, SBC Communications Inc.
Frederick M. Abbott
Sole Panelist
Dated: July 8, 2001
