Bell South dials up UDRP win against cybersquatter
In Bell South Intellectual Property Corporation v Collazo, a World Intellectual Property Organization (WIPO) panellist has ordered the transfer of 10 domain names containing the BELLSOUTH trademark or various misspellings. He found that the registration and use of the domain names in connection with pop-up advertisements constituted a violation of the Uniform Domain Name Dispute Resolution Policy (UDRP).
Bell South Intellectual Property Corporation owns several BELL and BELLSOUTH trademarks in the United States and 50 other countries around the world, including Colombia, Ecuador, Guatamala and Peru, for use in connection with telecommunications-related goods and services. Bell South and its predecessors have adopted and used a large number of trademarks incorporating BELL for over 120 years.
Alvaro Collazo, a resident of Uruguay, registered 'BellSotuh.com', 'BellSouht.net', 'BellSou.net', 'BellSouthColombia.com', 'BellSouthEcuador.com', 'BellSouthGuatemala.com', 'BellSouthPeru.com', 'BellSouyh.net', 'BelSout.net' and 'wwBellSouth.net' between September 1 2002 and April 27 2004. He parked the domain names on an internet search page featuring commercial links relating to telecommunications goods and services, and other general search topics. Collazo has a history of registering domain names identical or confusingly similar to the trademarks of other corporations, such as Air France, Expedia, Hewlett-Packard, TV Globo and Prudential Insurance.
Bell South sent a cease and desist letter to Collazo on November 17 2003, demanding that he stop using and transfer the disputed domain names to Bell South. Collazo replied that he was willing to transfer the domain names if Bell South agreed to cover his alleged out-of-pocket expenses of $70 for each domain name. Bell South rejected Collazo's request and filed a complaint with WIPO.
Pursuant to Paragraph 4 of the UDRP, WIPO panellist Bradley Freedman determined that the domain names were identical and/or confusingly similar to Bell South's trademarks and that Collazo had no rights or legitimate interests in them. On the issue of bad faith, Freedman cited (i) the difference between Collazo's registrar's published registration fees ($15.95 for one domain name with reduced prices for multiple registrations) and his requested reimbursement of $70 per domain name, and (ii) his use of the domain names to "generate substantial revenue by directing traffic to other websites and presenting pop-up advertisements" as sufficient to demonstrate bad faith.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC
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