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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. CME Inc
Case No. D2001-1060
1. The Parties
The Complainant is AT&T Corp., a corporation organized in the State of New York, United States of America (USA), with place of business in Basking Ridge, New Jersey, USA.
The Respondent is CME Inc, with address in Las Vegas, Nevada, USA.
2. The Domain Name and Registrar
The disputed domain name is <attbusinessinternetservices.com>.
The Registrar of the disputed domain name is Registrars.com, with business address in Seattle, Washington, USA.
3. Procedural History
The essential procedural history of the Administrative Proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a Complaint via e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on August 23, 2001, and via courier mail received by WIPO on August 28, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On August 24, 2001, WIPO transmitted a Request for Registrar Verification to the Registrar, Registrars.com (with the Registrar’s Response received by WIPO on August 31, 2001).
(b) On September 3, 2001, WIPO transmitted Notification of the Complaint and Commencement of the Proceeding to Respondent via e-mail and courier mail. Courier mail tracking records indicate successful delivery to the address of Respondent listed in its contact information.
(c) On September 26, 2001,WIPO transmitted notification to Respondent of its default in responding to the Complaint via e-mail.
(d) On October 1, 2001, WIPO invited the undersigned to serve as Panelist in this Administrative Proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 2, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On October 3, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned Sole Panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by October 17, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of numerous trademark and service mark registrations for "AT&T" in the United States and other countries, and for the term "AT&T" and "ATT" used in combination with other terms, such as "AT&T WIRELESS SERVICES" and "ATT.NET" [collectively the "AT&T marks"]. Complainant has been found to hold valid and subsisting rights in the AT&T marks in a number of earlier Administrative Panel proceedings (e.g., AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249). Complainant’s U.S. registrations for the "AT&T" mark date back as early as 1984 (Complaint, Annex 8).
The "AT&T" mark is well known throughout the world in connection with the provision of telephone services. This finding is supported by survey evidence (Interbrand Annual Survey, Complaint, Annex 5). The "AT&T" mark has been found to be well known by previous Administrative Panels (e.g., AT&T Corp. v. Ondonk Partners, WIPO Case D2000-1723).
Complainant registered the domain name <att.com> at least as early as 1986, and uses that domain name in an Internet address (URL), <www.att.com>, identifying an active commercial website (Complaint, Annex 12).
According to the Registrar’s Verification Response to WIPO, dated August 31, 2001, "cme inc" is the listed Registrant of the domain name <attbusinessinternetservices.com>. The Administrative Contact, at the same address, is "costello, mike". The disputed domain name was registered on December 28, 1999.
On July 14, 2000, Complainant sent a cease and desist and transfer demand to Respondent via certified mail. That demand letter was returned as undeliverable.
The disputed domain name identifies a web location that posts only Registrars.com’s standard form under construction notice (WIPO case file). There is no evidence on the record of this proceeding of any other use by Respondent of the disputed domain name.
The Service Agreement in effect between Respondent and Registrars.com subjects Respondent to Registrars.com’s dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it has rights in the trademark and service mark "AT&T", as well as other marks that combine the "AT&T" mark with terms that identify its business services (see Factual Background, supra). Complainant asserts that the "AT&T" mark is well known throughout the world.
Complainant claims that the disputed domain name <attbusinessinternetservices.com> is confusingly similar to the AT&T marks. Internet users viewing the disputed domain name would assume that a website using the disputed domain name is associated with Complainant. Complainant states that since the ampersand ("&") may not be used in a domain name, the logical way to use its mark in a domain name is as "att", and this is in fact how Complainant identifies itself on the Internet. The addition of common terms describing a type of business service do not distinguish the disputed domain name from the AT&T marks.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not its licensee and is not authorized to use its marks, Respondent does not own any registered or common law AT&T marks, Respondent has not been commonly known by the disputed domain name and Respondent is not making legitimate non-commercial or fair use of the marks in the name.
Complainant asserts that Respondent registered and used the disputed domain name in bad faith because: (1) registration of another’s well known mark in a name is itself evidence of bad faith, (2) the nature of the name indicates that Respondent registered it to sell to Complainant or a third party for valuable consideration in excess of its out of pocket expenses in connection with the name, (3) previous Panels have found that combining a well known mark with generic terms to form a domain name is bad faith and (4) the provision of false contact information is evidence of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. Courier tracking records indicate successful delivery of the Notification of Complaint to the address provided in Respondent’s record of registration.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief.
Complainant is the holder of trademark and service mark registrations for the term "AT&T" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant is also the holder of trademark and service mark registrations that combine "AT&T" with terms more specifically identifying its business services, such as "AT&T WIRELESS SERVICES" and "ATT.NET" [collectively the "AT&T marks"]. This Panel hereby adopts and confirms the decisions made by prior Administrative Panels applying the Policy that (1) Complainant is the holder of rights in the AT&T marks and (2) the "AT&T" mark is well known among Internet users and consumers of telephone services. See Factual Background supra. Complainant’s rights in the "AT&T" mark arose long prior to Respondent’s registration of the disputed domain name.
Respondent has registered the domain name <attbusinessinternetservices.com>. This domain name (1) incorporates Complainant’s "AT&T" mark (2) adds the generic top-level domain (gTLD) ".com", and (3) adds the terms "businessinternetservices" to Complainant’s mark.
The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "AT&T" since ".com" does not in the circumstances of this proceeding serve to identify a specific enterprise as a source of goods or services .
Respondent has added the common descriptive terms "business internet services" to the "AT&T" mark, leaving out the spaces between terms. Domain names may not include open spaces, and use of this technically dictated convention does not result in the creation of a new non-descriptive term. By adding the terms "business internet services" following "AT&T", Respondent does not create a new or different mark in which it has rights or legitimate interests, nor does it alter the underlying mark held by Complainant. Similarly, the elimination of the ampersand in Complainant’s "AT&T" mark to create "att" does not serve to distinguish the disputed domain name from Complainant’s mark, particularly as the ampersand may not presently be used in a domain name.
Complainant’s mark is well known among consumers and Internet users. It identifies Complainant as a source of telecommunications goods and services. "[B]usiness internet services" are common descriptive terms that refer to a type of services that a telecommunications services provider would offer on the Internet. When these terms are used with Complainant’s "AT&T" mark in a domain name and Internet address, consumers and Internet users are likely to assume that Complainant is associated with the identified website and/or goods or services offered on that website.
The disputed domain name <attbusinessinternetservices.com> is confusingly similar to Complainant’s mark within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the Registrant of a domain name that is confusingly similar to a trademark and service mark in which Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.
Respondent has made no use of the disputed domain name, and has presented no evidence of legitimate rights or interests in the name. Registration alone does not establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy. Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a Respondent "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 [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a Respondent has 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 [the Respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a Respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
In this proceeding Respondent has taken no action other than to register the disputed domain name. However, the combination of registration of the well-known mark along with common descriptive terms, failure to use the name, and the absence of any apparent good faith use that Respondent could make of the name in the future, leads the Panel to conclude that Respondent has registered and used the disputed domain name in bad faith.
Because Respondent is not authorized by Complainant to use its well-known mark, it could not exploit that mark in the disputed domain name for its own commercial purposes without infringing Complainant’s rights. There is no evidence of any planned noncommercial or fair use of the mark, and the commercially descriptive nature of the disputed domain name does not readily lend itself to such use. In the absence of potential legitimate uses of the disputed domain name, the Panel must infer that Respondent registered it with the intention of offering it for sale to Complainant or a third party, or with the intention to use it to divert Internet users to a website for commercial gain by creating confusion as to Complainant’s sponsorship of or affiliation with that website. The Panel finds that the disputed domain name was registered and used in bad faith within the meaning of paragraph 4(b) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the Registrar to transfer the domain name <attbusinessinternetservices.com> to the Complainant.
Based on its finding that the Respondent, CME Inc, has engaged in abusive registration and use of the domain name <attbusinessinternetservices.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <attbusinessinternetservices.com> be transferred to the Complainant, AT&T Corp.
Frederick M. Abbott
Dated: October 17, 2001
1. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).