DECISION

 

AT&T Knowledge Ventures, L.P. v. Cem Ersoy c/o PROJECT Bell Telecom

Claim Number: FA0708001063475

 

PARTIES

Complainant is AT&T Knowledge Ventures, L.P. (“Complainant”), represented by Purvi J. Patel, of Haynes and Boone, LLP, 6500 Riverplace Boulevard, Austin, TX 78730 .  Respondent is Cem Ersoy c/o PROJECT Bell Telecom (“Respondent”), 3775 Green Brier Blvd., Apt. 252b, Ann Arbor, Michigan 48105.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <belltelecom.us>, registered with Melbourne It Ltd.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 14, 2007; the Forum received a hard copy of the Complaint on August 15, 2007.

 

On August 15, 2007, Melbourne It Ltd confirmed by e-mail to the Forum that the <belltelecom.us> domain name is registered with Melbourne It Ltd and that Respondent is the current registrant of the name.  Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On August 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 12, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On September 19, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <belltelecom.us> domain name is confusingly similar to Complainant’s BELL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <belltelecom.us> domain name.

 

3.      Respondent registered and used the <belltelecom.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AT&T Knowledge Ventures, L.P., is the largest communications holding company in the world.  In connection with its communication services, Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BELL mark (i.e., Reg. No. 1,545,199 issued June 27, 1989).

 

Respondent registered the <belltelecom.us> domain name on October 26, 2005.  Respondent’s <belltelecom.us> domain name resolves to a commercial website that provides services that are similar to Complainant’s services and directly compete with those offered under the BELL mark.  In addition, Respondent has offered to sell the disputed domain name to Complainant for $9,000.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the BELL mark with the USPTO sufficiently establishes rights in the mark for the purposes of Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to UDRP ¶ 4(a)(i)).    

 

Respondent’s disputed domain name contains Complainant’s entire mark, adds the term “telecom,” which obviously relates to Complainant’s business, and adds the country-code top-level domain (“ccTLD”) “.us.”  The Panel finds that these additions to Complainant’s mark fail to sufficiently distinguish the disputed domain name from the mark for the purposes of satisfying Policy ¶ 4(a)(i), and thus the disputed domain name is confusingly similar to the mark.  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.   

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must present a prima facie case that Respondent lacks rights and legitimate interests in the <belltelecom.us> domain name.  Once Complainant establishes such a case, the burden shifts to Respondent to demonstrate rights and legitimate interests with respect to the disputed domain name.  The Panel finds that Complainant has met its burden, and therefore has shifted the burden to Respondent.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the [UDRP], the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under [UDRP] ¶ 4(a)(ii).”).

 

Because Complainant has established rights to the BELL mark and Respondent has not come forward with any evidence showing it is the owner or beneficiary of a mark identical to the <belltelecom.us> domain name, Complainant has satisfied Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). 

 

Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring competitive and similar services as those offered by Complainant.  The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

Complainant asserts that Respondent is not commonly known by the disputed domain name.  A review of Respondent’s WHOIS information reveals that the registrant of the <belltelecom.us> domain name is “Cem Ersoy c/o PROJECT Bell Telecom.”  Given the lack of evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Furthermore, Respondent offered to sell the disputed domain name registration to Complainant.  Respondent’s offer to sell the disputed domain name, which is confusingly similar to Complainant’s mark, evidences its lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.            

      

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to redirect Internet users to its own website, which features services competitive with, and similar to, those offered by Complainant.  The Panel finds that Respondent’s use is a disruption of Complainant’s business, which suggests registration and use in bad faith pursuant to Policy 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

Respondent’s disputed domain name resolves to Respondent’s own website, wherein Respondent presumably receives financial benefit.  Respondent’s resultant website also displays competing services that are similar to Complainant’s services, thus increasing the likelihood of confusion among unsuspecting Internet users.  The Panel finds that Complainant’s purposeful misdirection of unsuspecting Internet users for commercial gain evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated UDRP ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).

 

Complainant contends that Respondent’s offer to transfer the disputed domain name registration for $9000 demonstrates Respondent’s bad faith registration and use of the domain name.  The Panel finds that Respondent’s offer insinuates that the domain name was registered primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name, which evidences registration and use in bad faith under Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under UDRP ¶ 4(b)(i)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the U.S. Department of Commerce’s usTLD Dispute Resolution Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <belltelecom.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: October 3, 2007

 

 

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