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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Creative Cafй BBS
Case No. D2000-0994
1. The Parties
The complainant is AT&T Corp. ("AT&T"), a United States corporation operating under the laws of the State of New York, with its principal place of business at 295 North Maple Avenue, Basking Ridge, New Jersey, United States.
The Respondent is Creative Cafй BBS ("Creative Cafй"), an entity of unknown nature, with its principal place of business at 6606 Old River Trail, Lansing, Michigan, United States.
2. The Domain Name and Registrar
The disputed domain is "attjens.com". It is registered with Network Solutions, Inc. ("NSI") of Herndon, Virginia, United States.
3. Procedural History
AT&T’s Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on August 9, 2000, and in hard copy on August 11, 2000.
The Center acknowledged receipt to the complainant and obtained from NSI a confirmation that it is the Registrar of the disputed domain name; that the current registrant of this domain name is Creative Cafй BBS; that Creative Cafй’s Administrative and Billing contact is Alan Willis, II, reachable at the E-mail address firstname.lastname@example.org, and that the status of the registration is "active."
On September 13, 2000, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to Creative Cafй by post/courier and facsimile, as well as electronically to email@example.com and to AT&T’s representative.
On October 6, 2000, having received no response from Creative Cafй within the time specified in the Notification of Complaint, the Center issued to both parties a Notification of Respondent’s Default, by E-mail and post/courier to Creative Cafй and by E-mail to AT&T’s representative.
On October 27, 2000, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing them that the Administrative Panel will be comprised of a single Panelist, Natasha C. Lisman, and that her decision, absent exceptional circumstances, will be forwarded to the Center by November 10, 2000.
4. Factual Background
AT&T alleges and has provided evidence of the following key facts:
In 1984, AT&T entered into a joint venture with 25 Japanese firms to provide enhanced Internet services in Japan under the name "AT&T JENS Corporation." In April 1999, AT&T JENS Corporation was merged into Japan Telecom, where it continues to do business under the name JENS Corporation. AT&T owns internationally known marks "AT&T" and "ATT". AT&T has used them in connection with other terms to identify its goods and services in the telecommunications field in the United States and abroad since the 1980’s. AT&T’s marks are registered in the trademark offices of both the United States and Japan. AT&T has also registered numerous domain names consisting of "att", alone or in conjunction with other terms, such as "att-mciworldcomstudy.com", "attargentina.com," and "attbizclub.com."
On March 29, 1999, June 15, 1999 and July 22, 1999, representatives of AT&T wrote so-called cease-and-desist letters addressed to the President of Creative Cafй. On July 26, 1999, Creative Cafй’s Administrative and Billing contact, Alan Willis, replied to AT&T by E-mail, acknowledging his receipt of the last cease-and-desist letter. Mr. Willis declined AT&T’s demand to cease using the disputed domain name. He denied that he misused the domain name "attjens.com" and asserted that he was using the web site with that domain name to establish a new part of his business under the name "Alan’s Trusted Telecommunications Just Entertaining Network Solutions." Mr. Willis acknowledged that his business has no connection to AT&T.
5. Parties’ Contentions
AT&T contends that (1) the disputed domain name, "attjens.com," is confusingly similar in appearance, sound, and meaning to its marks "AT&T" and "ATT"; (2) Creative Cafй has no rights or legitimate interests in the disputed domain name, as evidenced by the content on the web site found by AT&T on several visits, the fact that AT&T has never authorized Creative Cafй to use its marks, and a number of other facts which AT&T alleges on "information and belief"; and (3) Creative Cafй has registered and used the disputed domain name in bad faith, for various illegitimate purposes which are evident from the domain name on its face and from the content of the web site.
Because Creative Cafй has failed to submit a response to AT&T’s Complaint in this proceeding, there is no record of its contentions. The Panelist shall consider Mr. Willis’ E-mail as evidence submitted by AT&T but not as an equivalent of a response cognizable under Paragraph 5 of ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
6. Discussion and Findings
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (" the Policy") requires a complainant to prove three elements: first, that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; second, that the respondent has no rights or legitimate interests in respect of the domain name; and third, that the disputed domain name was registered and is being used in bad faith.
Under this standard, the threshold - - and in this case, dispositive - - issue is whether the disputed domain name is or is not identical or confusingly similar to the Complainant’s trademark. AT&T does not contend that the disputed domain name is identical to any of its trademarks and, indeed, "attjens.com" is not identical to either "AT&T" or "ATT" or any other trademark of AT&T that includes "AT&T" or "ATT" as a component. The question, then, is whether "attjens.com" is confusingly similar to any of AT&T’s marks.
In support of its contention that it is, AT&T cites two authorities, the unpublished decision of the United States District Court for the Northern District of Illinois, Eastern Division in AT&T Corp. v. SYNET, INCORPORATED, 1997 WL 89228 (1997) and the decision of the Administrative Panel in AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249. This Panelist finds both authorities inapposite. The AT&T v. SYNET, INCORPORATED decision was rendered long before the promulgation of the Anti-Cybersquatting Consumer Protection Act (ACCPA), 15 U.S.C. §1125 (d) at et. seq., and ICANN’s adoption of its Uniform Domain Name Dispute Resolution Policy ("the Policy"). It was a trademark infringement case and the issue decided was whether the defendant’s use of the mark at issue created likelihood of confusion. In Case No. D2000-0249, the Administrative Panel equated the phrase "confusingly similar" with "various tests in trademark law of whether the use of a mark is likely to deceive or cause confusion." (P.6) This Panelist disagrees that the principles associated with the "likelihood of confusion" issue in trademark law have a significant, if any, bearing on the determination of what constitutes confusing similarity for purposes of the ACCPA and ICANN Policy. As a leading court has noted, the language " ‘confusingly similar’ is a different standard from the ‘likelihood of confusion’ standard of trademark infringement… ." Sport’s Farm LLC v. Sportsman’s Market, Inc. 202 F.3d 489, 498 n.11 (2d Cir. 2000).
Moreover, this Panelist finds the domain name that was disputed in Case No. D2000-0249, "ATT2000.COM," is distinguishable from "attjens.com." Visually, "ATT2000" plainly connotes a millennium web site for AT&T: the letter component of that domain name, "ATT," stands out because the remainder of the domain name is numerical and strongly connotes the millennium. By contrast, "attjens.com" consists only of letters and tends to be both visually and phonetically perceived as one word. Because the first three letters of "attjens.com" do not stand out, it is not confusingly similar to AT&T’s trademarks. (Footnote 1)
Since AT&T has failed to discharge its burden of proof as to the threshold element of its case under Paragraph 4(a) of the Policy, it is not necessary to reach the remaining elements, namely whether Creative Cafй has any rights or legitimate interests with respect to its domain name and whether it has registered and is using the domain name in bad faith.
Having considered this case in accordance with Paragraph 15 of the Rules, the Panelist finds that Complainant has failed to prove an essential element of its case under Paragraph 4(a) of Policy. Therefore, its request that the domain name "attjens.com" be transferred from Respondent to Complainant is DENIED.
Natasha C. Lisman
Dated: November 2, 2000
1. On this record, only a facial comparison of the disputed domain name to the Complainant’s marks is possible. It is conceivable that, when similarity is not apparent, latent similarity can be demonstrated by some additional evidence, such as a survey of a random sample of Internet users. AT&T offered no such evidence.