Baby Bell company loses fight for 'ebell' domain names

In SBC Communications Inc v eWorldWideWeb Inc, a three-member World Intellectual Property Organization panel has refused to order the transfer of the domain names 'ebell.com' and 'ebell.org' to one of the principal 'Baby Bell' telephone companies. The panel was unable to ascertain whether the registrant is using the word 'bell' as a trademark or in its generic sense, and therefore was unable to conclude that the registrant does not have a legitimate interest in the domain names.

SBC Communications is the co-owner of various BELL marks for telecommunications services. On petitioning for transfer of the two disputed domain names pursuant to the Uniform Domain Name Dispute Resolution Policy, SBC alleged that:

• the domain names are confusingly similar to its BELL marks;
  
  
• eWorldWideWeb (eWWW) has no legitimate interests in the domain names; and
  
  
• eWWW had registered the domain names in bad faith.

The panel agreed with SBC that the domain names include a term that is identical or virtually identical to its BELL marks. However, it held that SBC failed to prove that eWWW does not have a legitimate interest in the domain names and had registered them in bad faith. With regard to the former, the panel recognized that the term 'bell' has a generic meaning, and that eWWW has a legitimate right to register such a generic term as part of a domain name. With regard to the bad-faith element, the panel noted that eWWW (i) is a 'warehouser' of domain names that incorporate generic terms, and (ii) offers services that are entirely different from those offered by SBC. Therefore, it is unlikely that eWWW is attempting to profit from goodwill that SBC has established in the BELL marks.

After finding for eWWW on SBC's claim, the panel rejected eWWW's contention that SBC's claim was "so groundless or frivolous as to constitute reverse domain name hijacking."

David Fleming, Brinks Hofer Gilson & Lione, Chicago