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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. RealTime Internet.com Inc.
Case No. D2001-1487
1. The Parties
The Complainant is AT&T Corp., a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at Basking Ridge, New Jersey, United States of America. The Respondent is RealTime Internet.com Inc., an entity of unknown characteristics having its principal place of business at Fort Wayne, Indiana, United States of America.
2. The Domain Names and Registrars
The domain names at issue are: <attjobs.com>, <atandtcable.com>, <anywho.net> and <anyho.com>.
These domain names are registered as follows:
<attjobs.com>Dotster, Inc., Longview, WA ("Dotster")
<atandtcable.com>BulkRegister.com, Inc., Baltimore, MD ("BulkRegister")
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 21, 2001, in electronic form. The WIPO Center received the hard copy of the Complaint on December 28, 2001. The WIPO Center acknowledged receipt of the Complaint on December 28, 2001.
On January 3, 2002, Requests for Registrar Verification were transmitted to Dotster and BulkRegister. Dotster responded on January 4, 200, confirming the registration details and its receipt of a copy of the Complaint from Complainant by certified mail. BulkRegister responded on January 21, 2002, confirming the registration details and its receipt of the Complaint from Complainant by certified mail.
A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator, and completed January 22, 2002. The WIPO Case Administrator determined that the Complainant is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The Panelist has independently reviewed the Requirements and finds that the Complainant is in formal compliance with the requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy ("Policy"), Rules and the Supplemental Rules. The Complainant paid the required fees for a single-member Panel on time and in the required amount.
No formal deficiencies having been noted, on January 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Dotster, BulkRegister and ICANN), setting a deadline of February 11, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Whois confirmations received from Dotster and BulkRegister, by post/courier to the indicated postal addresses and by facsimile to the indicated facsimile numbers. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On February 13, 2002, having received no formal Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.
On April 15, 2002, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2001-1487 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality and Independence was received on April 15, 2002. On April 19, 2002, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was May 3, 2002.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.
The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, and the WIPO Supplemental Rules and without the benefit of any formal Response from Respondent.
The Panelist has taken note of an e-mail of record transmitted by Respondent to Counsel for Complainant dated December 21, 2001. In that e-mail Respondent said, "you can have <attjobs.com> and <atandtcable.com>", and offered to transfer <anyho.com> in exchange for $2000. Respondent also conceded that the outcome of the present proceeding in respect of <anywho.net> was probably a transfer.
The Panelist has further noted Respondent's e-mail dated December 28, 2001 addressed to Counsel for Complainant and the WIPO Case Administrator. In that e-mail Respondent claimed to have transferred the two ATT domains (presumably referring to <attjobs.com> and <atandtcable.com>). Respondent also stated that he did not wish to give up <anywho.net> and <anyho.com>.
The Panelist has also noted an e-mail dated February 21, 2002 from an attorney representing Respondent in this matter, received one week after the transmittal of the Notice of Respondent Default. In that letter Counsel for Respondent offered to voluntarily relinquish the registration of all four domain names, and requested that the Panelist when appointed terminate the proceedings and issue an order transferring the four domain names in light of Respondent's purported voluntary agreement. The Panelist notes that Respondent's Counsel contended that Respondent could not then accomplish the transfer voluntarily because the domain names were "locked".
The WIPO Case Administrator, in an e-mail dated February 28, 2002, inquired of Counsel for Complainant whether Complainant would agree to a suspension of the proceeding. On May 4, 2002, Complainant stated that it wished to proceed with the proceeding, expressing doubt about the sincerity of Respondent's offer of transfer in light of Respondent's purported conduct in other domain name proceedings in which similar offers were allegedly made and not timely carried out following suspension.
In an e-mail on May 4, 2002, Counsel for Respondent assured Complainant and the WIPO Case Administrator of his client's intention to transfer the disputed domain names promptly upon their being "unlocked". Counsel for Respondent also objected to Complainant's allegations about Respondent's actions in respect of other unnamed domain names.
The Panelist has also noted an e-mail dated March 4, 2002, from Respondent's Counsel, in which Respondent identified the domain names involved in the other proceeding concerning Respondent. Counsel for Respondent noted that Counsel for the Complainant here also represented the Complainant in those other proceedings.
The Panelist also notes an e-mail dated March 5, 2002 in which Counsel for Respondent contended that his client did attempt to transfer the domain names and was awaiting the submittal of the appropriate forms which purportedly had been tendered for execution by another member of the law firm representing Complainant.
The Panelist also notes that on March 5, 2002, Counsel for Complainant confirmed its desire to proceed with the proceedings it had initiated in December, 2001, against Respondent and requested the appointment of a Panelist. This request was repeated in an e-mail dated April 2, 2002 addressed to the WIPO Case Administrator.
4. Factual Background
Complainant is the owner of record of various U.S. trademarks which it has used in connection with its products and services, including its Internet and telecommunication goods and services, as well as its cable services. Its use of AT&T as a brand has spanned more than a century in the telecommunication business.
The Complainant has provided evidence of the registration of the following marks, which have been adopted and used in this regard:
Goods and Services
Digital network telecommunications services
Telecommunications services and transmission of data via satellite and telecommunications links
Retail store services-namely, phone centers specializing in telecommunication equipment
1 800 ATT-GIFT
Telecommunications services, namely the delivery over a telephone line of audio greetings and songs and the ordering of gifts tied to a specific occasion
1 800 CALL ATT
Telephone calling card services
Telecommunications services, namely the electronic transmission of voice, facsimile, data, video and information
AT&T has registered and used several domain names incorporating "ATT", including <att.com>, <att.net> and <attws.com>, for web sites that offer a variety of goods and services, including Internet services, telecommunications goods and services and retail services.
Since 1997, AT&T has offered Internet directory services to the general public and to business customers under the mark ANYWHO. AT&T registered its ANYWHO mark in the United States Patent and Trademark Office (Reg. No. 2,298,647, December 7, 1999). AT&T registered the domain name <anywho.com> for its on-line directory services on July 7, 1997.
The Respondent registered the domain names at issue in the summer of 2001. (Complaint, Annex A).
At the time of the submission of the dispute to the Panelist, each of the domain names resolved to a virtually identical site; the only material difference noted was the change in the domain name at the top of the home page, <atandtcable.com>, etc. The website is entitled "Looking for Something?" and offers links to various informational websites and websites where products and services are sold, including the products and services of Complainant and Complainant's competitors. On the <attjobs.com> site the phrase ATTJOBS.COM had the TM symbol superscripted after ATTJOBS and before the .COM, signifying a purported claim of common law trademark. On the <anywho.net> site the phrase ANYWHO.NET, found at the top of the homepage, has the TM symbol superscripted after ANYWHO and before the .NET. On the <anyho.com> and <atandtcable.com> sites, the same phenomenon is observed; the ANYHO and ATANDTCABLE are presented with a superscripted TM. The owner of the common law trademarks is never specifically identified.
At the time the Complaint was filed the website which was linked with the domain name was slightly different. The website was still entitled "Looking for Something?" and offered links to various informational websites and websites where products and services are sold, including the products and services of Complainant and Complainant's competitors. At the time of filing, however, there was a claim of copyright by "Infostart.com," and the website owner claimed no common law trademark. (Complaint, Annex M).
The comparison of the website at the time of filing, with the website at the time of Panelist appointment, indicates that Respondent altered the websites after the Complaint was initiated.
The Complainant wrote to Respondent by letters dated September 4, 2001, October 15, 2001 and November 21, 2001 concerning <anywho.net> and <atandtcable.com>, advising Respondent that, in its view, Respondent’s registration violated Complainant’s trademark rights and Complainant’s goodwill (Complaint, Annex S, T).
5. Parties’ Contentions
Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
Respondent has not formally contested the allegations of the Complaint.
6. Discussion and Findings
The Panelist will decide the case on the merits, despite Respondent's purported offer to transfer some of the domain names to the Complainant. See The State of the Netherlands v. Gold Names Inc., WIPO Case No. D2001-0520. The Panelist finds the offer of transfer to be disingenuous.
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall 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."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The Panelist finds that domain names at issue are either identical (Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd, NAF Case No. FA0002000093679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Case No. FA 0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case No. FA0003000094219) to Complainant’s marks. As the Panelist held in AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553, "the letters AT&T are a fundamental feature of Complainant's marks and the Complainant has proven that it uses "ATT" as a synonym for "AT&T"". Thus the use of the AND in <atandtcable.com> offers no meaningful distinction from the group of ATT Marks registered and owned by Complainant. Likewise, the addition of the word JOBS after ATT in <attjobs.com> does not meaningful distinguish the domain name from the registered group of ATT marks; indeed, it suggests some affiliation with ATT in connection with job offerings of that multi-national corporation. See America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661.
The Panelist finds that the domain names <anywho.net> and <anyho.com> are likewise either identical or confusingly similar to Complainant's registered ANYWHO mark. AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060 and Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D-2000-0554.
Complainant has alleged and Respondent has failed to deny that it has no legitimate interests in respect of the domain names at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011. Respondent is not commonly known by the domain names at issue, and has not acquired trademark or service mark rights in the domain names. The Panelist finds that Respondent has no rights or legitimate interest in the domain names.
The question thus arises whether the domain names at issue have been registered and are being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
(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 website 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 website or location or of a product or service on your website or location.
Complainant has alleged and the Panelist finds that Respondent’s use of the domain names at issue, to resolve to a website entitled "Looking for Something?", constitutes bad faith registration and use under the Policy.
Among the services offered at the sites to which the domain names at issue resolve are AT&T's products and services and the services of others who compete with AT&T. The use of domain names to sell Complainant's goods and services without Complainant's authority, as well as promoting the sale of other goods and services of other entities that compete with Complainant, is bad faith use of a confusingly similar domain name. Koppers Chocolate Specialty Co., Inc. v. Seymour Leonard, WIPO Case No. D2001-0822; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700.
The Panelist further finds that Respondent's post-Complaint alteration of the website, to asserts claims of common law trademark to the domain name roots, is further evidence of bad faith registration and use.
ANYHO and ANYWHO.NET is a common misspelling or misidentification of Complainant’s registered trademark ANYWHO and its ANYWHO.COM website. Misspellings such as this, without an explanation from Respondent, have been previously held to be "typosquatting" and in bad faith. General Electric Company v. Fisher Zuieli, A/K/A Zuieli Fisher, WIPO Case No. D2000-0377. See Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594; Microsoft Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-0554; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; and News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623.
For all of the foregoing reasons, the Panelist decides that the domain names registered by Respondent are identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names, and that the Respondent’s domain names have been registered and are being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires that the registration of the following domain names: <attjobs.com>, <atandtcable.com>, <anywho.net>, <anyho.com>, be transferred to the Complainant.
Richard Allan Horning
Dated: May 1, 2002