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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp v. Woppies

Case No. D2000-1724

 

1. The Parties

The Complainant is AT&T Corp, a United States Corporation incorporated under the laws of the State of New York with its principal place of business in Basking Ridge, New Jersey, United states of America.

The Respondent is Woppies, PO Box 87881, Riyadh, Central SA 11652, Saudi Arabia.

 

2. The Domain Name and Registrar

The domain name in issue is <attanywhere.com>. The domain name is registered with Namesecure.com, PO Box 127, Moraga, CA 94556, United States of America. The domain name was registered on January 11, 2000.

 

3. Procedural History

The Complaint submitted by AT&T Corp was received on December 9, 2000 (email/hardcopy), by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On December 13, 2000, a request for Registrar verification was transmitted by the WIPO Center to Namesecure.com.

No response was received from Namesecure.com, but details of the Respondent conform to the online WHOIS records available at the Namesecure.com website. The Namesecure.com website also provides a copy of its Registration and Services Agreement which incorporates the ICANN Uniform Domain Name Dispute Resolution Policy (see Complaint Appendix B). The domain name registration is current until

January 11, 2002.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on February 21, 2001 transmitted by email a Notification of Complaint and commencement of administration proceedings to the Respondent.

The Complainant elected to have its Complaint resolved by a single member panel. It has duly paid the amount required to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days i.e. by March 12, 2001. No response was received.

On March 20, 2001, the WIPO Center invited Andrew Brown, Barrister of Auckland, New Zealand to serve as sole panelist on the case. On March 30, 2001 Andrew Brown advised his acceptance and forwarded to the WIPO Center a Statement of Impartiality and Independence. The panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On April 2, 2001, WIPO Center forwarded to Andrew Brown by courier the relevant submissions and the record. These were received by him on or about April 11, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by April 15, 2001. Because of the late receipt of the documents by the Panelist immediately prior to Easter, the finalising of the decision has been delayed.

 

4. Factual Background

The Complainant is a US based corporation that has been selling telecommunication goods and services for over a century under the trade mark AT&T and phrases that combine AT&T or ATT together with the words "Corp" and "Corporation".

The Complainant states that it has invested at least hundreds of millions of dollars promoting these names among consumers in the US and other countries around the world and that as a result its names and trade marks are well-known worldwide.

The Complainant is the registered proprietor of the US registered trade mark AT&T in class 38 in respect of digital network telecommunication services. The Complainant has used its mark without the "&" in a variety of formats including the mark ATT.COM since 1986 for a variety of telecommunication services and has the following registrations in class 38:

- 1800 ATT-GIFT

- 1800 CALLATT

- CAMP ATT

On October 20, 1999 the Complainant filed applications in the US to register the marks AT&T I M ANYWHERE and I M ANYWHERE in class 38. These applications are still pending.

In Saudi Arabia (the claimed domicile of the Respondent), ATT has a registration for its mark ATT&T in class 38.

The Complainant has registered and owns several Internet domain names incorporating ATT including <att.com> <att.net> and <attws.com>.

The Respondent registered the domain name <attanywhere.com> on January 11, 2000, after the Complainant acquired its rights to the AT&T trade marks and after the Complainant had filed applications to register the marks AT&T I M ANYWHERE and I M ANYWHERE.

The Complaint refers to a letter of demand which the Complainant sent to the Respondent on September 21, 2000. This letter informed the Respondent of the Complainant’s objection to registration of <attanywhere.com> and demanded the transfer of the domain name to the Complainant. No response was received to that letter. However the Complainant’s attorney did receive a letter from counsel for Automated Systems Company stating that his client was the owner of the post office box to which the cease and desist letter had been sent. The letter also advised that his client had no involvement in the dispute involving the domain name nor had his client authorised any entity named "Woppies" to use its mailing address. The Complainant points to the fact that section 6(a)(i) of the Registration Agreement pursuant to which the Respondent registered this domain name requires registrants to provide an update postal information so that it is current, complete and accurate. Because the Respondent maintains a false postal address on the WHOIS database for its domain name registration, the Complainant states that the Respondent has failed to comply with the Registration Agreement and (as referred to later) is evidence of bad faith.

 

5. Parties’ Contentions

A. The Complainant

The Complainant contends that <attanywhere.com> is confusingly similar to the Complainant’s name and trade marks. It is claimed that the designation ATT means AT&T and the word "anywhere" suggests expansive service.

The Complainant also submits that consumers are likely to believe that the designation "attanywhere" means the availability of AT&T’s telecommunications services anywhere, namely through wireless technology, the worldwide web or ordinary telephones. As a consequence, consumers are likely to believe that the domain name <attanywhere.com> refers to an AT&T website for such services. This confusion will be compounded with the Complainant’s use of the marks AT&T I M ANYWHERE and I M ANYWHERE for telecommunication services.

The Complainant cites the decision of the WIPO Panel in AT&T Corp Tala Alamuddin, Case No. D2000-0249 which ordered the transfer of the domain name <att2000.com>.

The Complainant also alleges that the Respondent has no connection or affiliation with AT&T and has not received any express or implied licence or authorisation to use the AT&T name or the AT&T/ATT marks as a domain name or in any other manner. There is no website accessible through the domain name <attanywhere.com> and the Respondent is not engaged in the bona fide offering of goods and services under that domain name, is not known by that domain and is not making non-commercial or fair use of the domain name.

Finally the Complainant alleges that the Respondent has registered and is using the domain name <attanywhere.com> in bad faith.

B. Respondent

The Respondent has not filed any formal response or challenge to the Complaint.

As noted earlier, the website <attanywhere.com> does not open to any website.

 

6. Discussion and Policy

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That 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

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar to registered trade mark

The Panel finds that the domain name <attanywhere.com> is confusingly similar to the Complainant’s registered trade marks AT&T. The Complainant has also produced clear evidence of substantial use of both AT&T and ATT both as registered and unregistered trade marks. It is clear that under the Policy, the Complainant’s rights do not have to be registered. In the Internet environment, the Complainant’s main website is <att.com>.

A US court in AT&T Corp v Synet CA No. 96-0110, 1997 WL 89228 (ND Ill Feb 13 1997) has made a factual finding that in the US the consuming public associates ATT with AT&T only.

Previous decisions of WIPO Panels have recognised the Complainant’s rights in the initials ATT. In addition to the decisions cited by the Complainant and referred to earlier, there are three further recent decisions, AT&T Corp v Fred Rice, WIPO Case No. D2000-1276, AT&T Corp v Global Net 2000, Inc and AT&T Corp v Shenzhen Zhidong Computer Co LtdWIPO Case No. D2000-1574 where the Complainant’s rights in ATT were recognised and where the transfer to the Complainant of respectively <attglobalsecurity.com>, <attglobalsolutions.com>, <attglobalsolutions.net> and <attt.net> and <attcore.com> was ordered.

WIPO Panels have previously recognised that registration of phonetically identical spelling variations of famous marks or misspellings of famous marks are confusingly similar: Microsoft Corp v Global Net 2000, Inc, WIPO Case No. D2000-0554; Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Complainant has met the requirements of paragraph 4(a)(i).

No legitimate rights or interest in <attanywhere.com>

The Panel finds that the Respondent has no legitimate rights or legitimate interests in relation to the trade marks ATT or the domain name <attanywhere.com>. The Respondent has not chosen to defend the Complaint or to detail any legitimate rights or interests it might have had of the type defined in paragraph 4(c) of the Policy. The Panel finds it appropriate to draw an adverse inference from this failure: LLS International v Mark Freeman, WIPO Case D2000-1080 and Altavista Company v Grandtotal Finances Ltd, WIPO Case D2000-0848.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel finds that the domain name was registered and used in bad faith. Because of the fame and widespread use of the trade marks AT&T and ATT, the use of the letters "att" in the domain name <attanywhere.com> immediately raises questions as to its bona fides. If the Respondent truly wished to use the combination "at anywhere" it could have spelled the words correctly without two ts. The Respondent has failed to answer the allegations or to provide any explanation as to why it chose to use the distinctive "att" combination.

The Panel is entitled to and does draw adverse inferences from this failure to respond. In addition, as the Complainant has pointed out, the Respondent’s contact address for this domain name is not correct and involves use of another person’s address. A previous WIPO decision has regarded false contact information as evidence of bad faith, Nick Carter v The Afternoon Fiasco, WIPO Case D2000-0658.

The Panel therefore considers that this domain name was registered in bad faith. It is most likely that the intention was to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant and its distinctive trade marks AT&T and ATT. As noted earlier, the Respondent has no connection with ATT and has not provided any explanation for this use. The Panel considers that use of the initials "att" as part of the domain name would lead a significant number of consumers into thinking that the Complainant was the source of it or somehow associated with it.

As to use, it is well established that passive holding of a domain name can constitute bad faith use of that domain name under the Policy, Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case, too, the Respondent had provided and failed to correct unreliable telephone and postal information.

The Panel therefore finds that the Respondent registered and used the domain name in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is confusingly similar to the trade marks – both registered and unregistered - to which the Complainant has rights;

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

(c) the Respondent’s domain name has been registered and used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <attanywhere.com> be transferred to the Complainant.

 

 

Andrew Brown
Sole Panelist

Dated: April 24, 2001