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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin
Case No. D2002-0440
1. The Parties
Complainant is AT&T Corp., a New York corporation with its principal place of business at Basking Ridge, New Jersey, United States of America, represented by Sidley Austin Brown & Wood, LLP at Washington, D.C., United States of America.
Respondent is John Zuccarini, an individual, d/b/a Music Wave and RaveClub Berlin, whose given addresses are at Geneva, Switzerland, and RaveClub Berlin at Cherry Hill, New Jersey, United States of America.
2. The Domain Names and Registrar
The three domain names at issue are <attwirelesss.com>, <attwieless.com> <attwierless.com>.
The registrar of all three names is Computer Service Langenbach (CSL) GmbH d/b/a/ joker.com, Dusseldorf, Germany.
3. Procedural History
On May 7, 2002, Complainant filed its Complaint which the WIPO Arbitration and Mediation Center (the "Center") received in electronic form on May 7, 2002, and in hard copy on May 13, 2002. Complainant made the required payment to the Center. The Center acknowledged receipt of the Complaint on May 13, 2002.
On May 13, 2002, the Center transmitted an e-mail to the registrar requesting verification in connection with the case and, on May 14, 2002, received the registrar's Verification Response confirming that the domain names, <attwirelesss.com>, <attwieless.com>, and <attwierless.com> were registered with Computer Services Langenbach GmbH d/b/a joker.com, and that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied to the domain names. The Verification Response stated that Music Wave was the registrant of domain names <attwieless.com> and <attwirelesss.com>, provided the registrant's postal address at Geneva, CH, and its e-mail address, and the owner's address at Amsterdam, NL and its e-mail address. The Verification Response stated that RaveClub Berlin was the registrant of the domain name <attwierless.com>, and provided the registrant's postal address at Cherry Hill, New Jersey, US and its e-mail address, and the owner's address at Amstelveen, NL and its e-mail address.
On May 17, 2002, the Center requested that Complainant amend section VIII of its Complaint relating to a place of Mutual Jurisdiction in order to conform to Paragraphs 1 and 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). Complainant submitted an amendment to section VIII of the Complaint which the Center received in electronic form on May 20, 2002, and in hard copy on May 22, 2002.
On May 24, 2002, the Center determined that the Complaint was filed in accordance with the requirements of the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel agrees with that determination. On the same date, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent by Courier and by E-Mail (without Complaint attachments) to the addresses identified in the Registrar Verification Response. The Center advised Respondent that the administrative proceeding was formally commenced on May 24, 2002, and that Respondent had until June 13, 2002, to submit a Response. The Center further notified Respondent that if he did not submit a response by that date, Respondent would be considered to be in default and that the Administrative Panel would be appointed to decide the case.
The attempted courier deliveries of the Notification of Complaint and Commencement of Administrative Proceeding to the Cherry Hill, New Jersey, Amsterdam and Amstelveen, Netherlands addresses given in the Registrar's Verification all proved undeliverable and were returned to the Center. An attempted mailing of the Notification to the Geneva, Switzerland address given in the Registrar's verification was returned as addressee unknown. All attempts to deliver the Notification to the e-mail addresses given in the Registrar's Verification were notified to the Center as undeliverable. Attempts to transmit the Notification by e-mail to "postmaster" addresses for each of the domain names were not successful.
Respondent did not file a timely Response. On June 14, 2002, the Center sent by e-mail a Notification of Respondent Default informing Respondent that he was in default, that the Center would proceed to appoint an Administrative Panel, that the Panel "will decide in its sole discretion whether to consider your Response (if submitted later) in deciding the case." This Notification also appears to have been undeliverable. Respondent has not submitted a Response.
On August 19, 2002, in accord with Complainant's request that the dispute be decided by a single-member administrative panel, and having received the Statement of Acceptance and Declaration of Impartiality and Independence of John R. Keys, Jr., the Center appointed Mr. Keys as the sole panelist and transmitted to the Parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date is September 2, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel issues its decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules. The proceeding has been conducted in the English language.
4. Factual Background
The Complainant is AT&T Corp., a United States corporation incorporated under the laws of the State of New York. Its principal place of business is in Basking Ridge, New Jersey. Complainant is one of the largest international suppliers of telecommunications products and services.
AT&T Corp. licenses its "AT&T" brand and certain trademarks to AT&T Wireless Services, Inc., which was formerly a part of AT&T Corp. Under the license agreement, AT&T Corp. is responsible for taking actions to protect the "AT&T" brand.
The nominal Respondents in this administrative proceeding are Music Wave and RaveClub Berlin, which appear to be doing-business-as names used by named Respondent John Zuccarini, an individual.
Mr. Zuccarini used the name "Music Wave" in two proceedings before the WIPO: The Sportsman’s Guide, Inc. v. Zuccarini, WIPO Case No. D2001-0617 (July 19, 2001), and Autosales Inc. d/b/a Summit Racing Equipment v. Zuccarini, WIPO Case No. D2001-0230 (March 30, 2001), in which he filed a response.
The Geneva address for Music Wave on file with the registrar is a "spoof" address in that it is actually the address for the official CORE Internet Council of Registrars. The Amsterdam address for Music Wave on file with the registrar does not appear to be valid. E-mails sent to the addresses for Music Wave on file with the registrar have proved undeliverable.
"RaveClub Berlin" has been deemed to be a "doing-business-as name" for John Zuccarini by a United States federal district court in Federal Trade Commission v. Zuccarini, Civ. Action No. 01-CV-4854 (E.D. Pa. October 18, 2001). In AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002), the Panel expressly found that "RaveClub Berlin is controlled by John Zuccarini."
The Cherry Hill, New Jersey and Amstelveen, Netherlands addresses for RaveClub Berlin on file with the registrar do not appear to be valid. E-mails sent to the addresses for RaveClub Berlin on file with the registrar have proved undeliverable.
b) Complainant's Marks
Complainant has been selling telecommunications products and services for over a century under the name "AT&T" and phrases that combine "AT&T" or "ATT" with other words. Complainant has invested substantial resources promoting its brand among consumers in the United States and other countries. The AT&T brand name has been recognized as one of the most valuable brand names in the world.
Complainant has rights in numerous registered and common law AT&T trademarks and service marks in the United States as well as in many other countries. Complainant has rights in the U.S.-registered mark "AT&T" in several different classes.
Complainant also owns numerous marks that use "ATT" without an ampersand. For example, Complainant has rights in the U.S.-registered marks: "1 800 CALL ATT;" "CAMP ATT;" "1 800 ATT-GIFT;" and "ATT.NET."
Complainant has been the registrant for the domain name <att.com> since at least 1996. The domain name <att.com> resolves to AT&T Corp.’s primary corporate website. This domain name shows that Complainant conveys its mark "AT&T" by using <att> on the web, which does not permit the use of an ampersand character in a domain name.
AT&T Corp.’s licensee, AT&T Wireless Services, Inc., provides wireless services under the service mark "AT&T Wireless." AT&T Wireless Services, Inc. was originally part of AT&T Corp. but is now an independent, publicly-traded company, which is a leading international provider of wireless telephone services.
AT&T Corp. continues to own the AT&T brand and licenses certain rights to AT&T Wireless Services, Inc. for use in its sales of wireless telecommunications products. The license agreement between AT&T Corp. and AT&T Wireless Services, Inc. authorizes AT&T Corp. to initiate a proceeding to protect its rights in the AT&T marks, including "AT&T WIRELESS SERVICES", as to which [AT&T Corp.] remains the holder of the relevant trademark registrations at the US Patent & Trademark Office (PTO).
AT&T Corp. continues to own the federal trademark registration for several marks that combine "AT&T" and the word "Wireless" including the service marks "AT&T Wireless Services" (registration number 2099822), "AT&T Wireless Group," "AT&T Wireless Enterprises" "AT&T Wireless Customer Advantage," "attwireless.pro," "attwireless.name," "attwireless.info," "attwireless.biz," and "AT&T Wireless Intelligent Network Services."
Advertising and links for AT&T Wireless Services, Inc. are located on the main AT&T web site at <att.com>. AT&T Wireless Services, Inc.’s corporate home page is the site <attws.com>. AT&T Corp. owns the domain name registration for "ATTWIRELESS" in the .com, .org, .info, and .biz domains. A customer who enters the domain name <attwireless.com> in his or her browser is directed to the AT&T Wireless homepage at <attws.com>.
In AT&T Wireless Services, Inc. and AT&T Corp. v. Phone Center, WIPO Case No. D2000-0678 (November 11, 2000), a WIPO Administrative Panel awarded the domain name <attwireless.com> to AT&T Corp.
The AT&T Wireless brand and its services are well-known and famous nationally, internationally, and specifically on the Internet. Search engines identify many web pages that contain references to "AT&T Wireless" in the context of AT&T Wireless telephone service and hyperlink to the web address <attwireless.com>.
c) The Contested Sites
The names of the contested sites, <attwirelesss.com>, <attwieless.com>, and <attwierless.com>, appear to be intended to capture visitors who make common typographical mistakes when searching for <attwireless.com>. The typo-sites contain no normally visible content but divert visitors to a website called <amatuervideos.nl> that advertises sexually-explicit, adults-only material. Browsers searching for these sites are thus directed to <amatuervideos.nl>.
A surfer who is misdirected to <amatuervideos.nl> may encounter two slightly different sites. Sometimes, the user hits a warning page noting "Warning: Adults Only." The user who clicks on "ENTER SITE" is taken to a page offering "The Secret to Getting Free XXX Passwords To Top Adult Paysites" and advertisements for sexually explicit material sites, <amatuervideos.nl/party-college.html>. On other occasions, the user receives no warning and is taken directly to the "The Secret to Getting Free XXX Passwords To Top Adult Paysites" with its graphic and explicit advertisements.
The advertisements for "Free XXX Passwords" state that visiting the sites is free but demand credit card numbers that are ostensibly used only as "age verification." The website states "They won’t charge you for the free pass." The payment terms of the related sites reveal that a subscriber's credit card will be charged as much as $49.99 per 31 days. These sites appear to be part of a network that promises a $30.00 fee to the referring site for each user who elects a "free trial." The site advertises its "unique HitGrid" technology expressly designed to allow site owners to alter the visitor’s web browser’s exit console to divert visitors who are attempting to exit to other affiliated advertisement sites.
Visitors to the advertisements at times receive a "pop-under" advertisement for the <bellybuttonpictures.com> site. This advertisement is "mousetrapped," that is, both the "back" and "forward" keys on the visitor’s browser are disabled by the site to inhibit the visitor from leaving the site except by "clicking" on the advertisement. This site is registered in the name of John Zuccarini.
The inadvertent visitor to <amatuervideos.nl>, also may receive a "pop-under" advertisement for the <prescription-drugs.org> site. This advertisement is also "mousetrapped." The site is registered in the name of John Zuccarini.
In addition, the inadvertent visitor to these sites also receives a "pop-under" advertisement for the Casino On Net site. This advertisement is "mousetrapped," in that it lacks all navigation keys.
Mr. Zuccarini does not appear to have used the names "attwierless", "attwieless", or "attwirelesss" in any bona fide trade or business.
Respondent’s use of these domain names continues and the registrations remain in an active status.
5. Parties’ Contentions
(a) The Domain Names Are Confusingly Similar to AT&T's Marks
Complainant contends that it has established legal rights in its common law and registered marks, including, "AT&T" and several marks that combine "AT&T" and "wireless," such as "AT&T WIRELESS SERVICES". AT&T further alleges that its AT&T marks are inherently distinctive, famous, and entitled to the widest scope of protection afforded by law, including protection against dilution.
Complainant alleges that each of the contested domain names is confusingly similar to AT&T Corp.’s legal and famous trade and service marks. The confusing similarity between the disputed sites and Complainant’s marks is apparent from simple comparison of the marks with the contested domain names. The misspellings in the domain names transposing letters, deleting from, or adding to the marks creates confusion with the marks.
Complainant contends that individuals will be confused into thinking that the disputed sites are owned, endorsed, licensed, sponsored, or maintained by AT&T to promote wireless telecommunications services.
(b) Respondent Has No Legitimate Interests In The Domain Names
Complainant contends that Respondent has no legitimate rights or interests in the contested domain names. Respondent is not Complainant’s licensee. Complainant has not endorsed, authorized, or sponsored Respondent’s use of Complainant’s marks.
Respondent does not own any registered or common law marks containing the terms "AT&T", "ATT", "AT&T Wireless", "ATTWIRELESS", "ATTWIRELESSS", "ATTWIELESS", "ATTWIERLESS" or any similar derivation. Respondent has not been commonly known by the contested domain names, nor does Respondent run any legitimate enterprise commonly known by the contested domain names. Respondent has not been commonly known by any name whose initials may form "AT&T", "ATT", "AT&T Wireless", "ATTWIRELESS", "ATTWIRELESSS", "ATTWIELESS", "ATTWIERLESS" as an acronym.
Respondent’s only demonstrated use of the disputed domain names has been in connection with diverting Internet users to websites unrelated to Complainant. Complainant contends that such bad faith use of a domain name does not establish rights or legitimate interests in the name in the sense of paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent is not making legitimate noncommercial or fair use of the contested domain names. Respondent’s exclusive use of the names is to divert unsuspecting traffic to unseemly advertisements. Complainant alleges, upon information and belief, that Respondent appears to be attempting to profit from referral fees for internet traffic misdirected from the disputed domain names.
(c) Respondent Has Registered And Used The Domain Names In Bad Faith
Complainant contends that it is apparent based on the typosquattings of the name of an internationally-prominent brand, on Mr. Zuccarini’s past practices and undoubted control of the sites at issue that Respondent's registration and use of the contested domain names is in bad faith.
Complainant asserts that Respondent has registered a domain name that Internet users are likely to employ inadvertently as they misspell Complainant’s mark when attempting to locate Complainant’s website using its logical address identifier "attwireless". Upon entering the disputed domain name, Internet users have been directed to websites that advertise services that are not sponsored or endorsed by, or affiliated with, Complainant. Respondent’s provision of redirection services is presumably undertaken for commercial purposes. Respondent has used Complainant’s’ mark in the disputed domain name for commercial gain by creating a likelihood of confusion regarding Complainant’s sponsorship, affiliation or endorsement of his or third party websites. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Moreover, Complainant contends that registration of a domain name that is confusingly similar to a famous trademark by any entity which has no relationship to that mark is itself sufficient evidence of bad faith registration and use. "AT&T" and "AT&T Wireless Services" are clearly internationally-registered and famous marks. Respondent has no rights to or affiliation with AT&T Corp., AT&T Wireless Services, Inc., or AT&T wireless products and services. The information at the site likewise has no legitimate connection to AT&T or AT&T Wireless. The only reasonable inference is that Respondent chose to register the disputed domain names in order to exploit Complainant’s marks and goodwill and to divert Internet traffic to his website.
Respondent has registered and used Complainant’s famous marks to take advantage of Internet traffic searching for Complainant’s brands and diverted this traffic to web site advertisements in exchange for referral payments. Complainant contends that Respondent has entered into referral fee arrangements that provide a remuneration based on each visitor who either sees, clicks on, or responds to a given advertisement. This pattern of cybersquatting is recognized as bad faith.
Complainant contends that the pornographic nature of the advertisements to which traffic is misdirected demonstrates the bad faith registration and use of the site.
The inaccurate and incomplete contact data and aliases submitted to the registrar of the domain names in question demonstrate Respondent’s bad faith.
Complainant further contends that Mr. Zuccarini’s notorious pattern of flagrant typosquatting demonstrated in other, prior cases corroborates the bad faith apparent in registering these sites. Complainant asserts that Mr. Zuccarini in his own name and under at least the 25 different aliases (including "RaveClub Berlin" and "Music Wave") has registered thousands of typo-sites to profit from consumer confusion through a course of conduct virtually the same as his conduct in this case.
Complainant notes that other panels of WIPO, the National Arbitration Forum, and eResolution have found Mr. Zuccarini in bad faith in the same sort of profiteering exemplified here and that, in each of the cases, he has been held to have acted in bad faith by registering domain names that are confusingly similar to famous or otherwise established trademarks for the purpose of profiting from diverted Internet traffic.
Respondent did not submit a response in these proceedings.
6. Discussion and Findings
We first address the question whether the Respondent has been correctly identified. The domain names at issue are registered in the name of Music Wave and RaveClub Berlin. Based on the registration information, there is no indication that either of these names refers to a corporate or other legal entity. Based upon Complainant's and the Center's experience in trying unsuccessfully to communicate with these nominal registrants, the Panel concludes that the physical and electronic addresses of Music Wave and RaveClub Berlin on file with the registrar are fictitious and do not represent the addresses of any legal entity using those names.
At the same time, there is substantial evidence that Music Wave and RaveClub Berlin are names used by John Zuccarini in his business. As noted above, Mr. Zuccarini used the name "Music Wave" in two WIPO domain name proceedings, and, in another WIPO proceeding, the Panel found that "RaveClub Berlin is controlled by John Zuccarini." AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002). In that case and this one, the registrant misdirected traffic to the same sexually-oriented advertising site, <www.amatuervideos.nl>, and sent the same mousetrapped pop-under advertisement of other Zuccarini sites, <bellybuttonpictures.com> and <prescription-drugs.org>. All four of the sites have nearly identical HTML code and all run off the same server (internet address 62.129.136), hosted at ns1.pgw.nl. In addition, a U.S. federal court listed "RaveClub Berlin" as one "d/b/a" for John Zuccarini. Federal Trade Commission v. Zuccarini, Civ. Action No. 01-CV-4854 (E.D. Pa. October 18, 2001).
The Panel thus concludes, based on the evidence, that nominal respondents Music Wave and RaveClub Berlin are d/b/a names for John Zuccarini and that Mr. Zuccarini is a proper respondent in this proceeding.
The procedural history of this case raises the question whether Respondent has received notice of this proceeding. Notices sent to him have been returned or proved undeliverable. The Panel concludes that the Center has employed all reasonably available means to notify Respondent of this proceeding and has discharged its responsibility under Rule 2(a) of the Rules. There is substantial evidence in the record to support a conclusion that any failure to reach Respondent with official notices of this proceeding is the result of calculation on the part of Respondent to be unreachable. The Panel sees no unfairness to Respondent in proceeding to a decision in this case.
Under Paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:
(i) [Respondent's] domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
a) Confusing similarity of marks
Complainant AT&T Corp. has demonstrated by substantial evidence that it possesses legitimate, well-established rights in the "AT&T" mark and several marks that combine "AT&T" and "wireless," such as "AT&T WIRELESS SERVICES" (U.S. registration number 2099822). As mentioned above, the registration of these marks, including the "AT&T WIRELESS SERVICES", on the Principal Register at the USPTO establishes a presumption of their validity under U.S. law. See AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002).
Each of the contested domain names, <attwirelesss.com>, <attwieless.com>, and <attwierless.com>, is confusingly similar to AT&T Corp.’s established marks. Each uses the familiar three-letter ATT combination and links it with a one-letter misspelling of "wireless" thus creating a strong impression not only of a telecommunications-related site but of a telecommunications site that is sponsored by or part of AT&T. See Sporty's Farm, L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000).
The minor misspellings of "wireless" do not obviate the confusion. As one NAF panel found, "[m]isspelling words and adding letters onto words do not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks." Victoria’s Secret v. John Zuccarini d/b/a Cupcake Patrol, Case No. 95762 (NAF November 18, 2000).
The panel in AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002), addressed typo-squatting specifically with respect to AT&T Corp.’s marks finding that:
The disputed domain name [<atttwireless.com>] is very similar to the mark in its visual impression. An Internet user or consumer viewing the disputed domain name is likely to confuse it with Complainant’s mark. Complainant’s mark is distinctive and well known. Respondent appears to have employed a minor misspelling of Complainant’s mark to take advantage of a typographical error that may be made by Internet users while attempting to enter Complainant’s mark as its logical Internet address in their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarity. The Panel determines that the disputed domain name <atttwireless.com> is confusingly similar to "AT&T WIRELESS SERVICES" in the sense of paragraph 4(a)(i) of the Policy.
Id.; see Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999) ("[T]he intentional registration of a domain name knowing that the second level domain is another company's valuable trademark weighs in favor of likelihood of confusion.").
The mere addition of an extra "T" to AT&T’s other famous marks has been found by a U.S. District Court and the PTO to create a confusing similarity. See AT&T Corp. v. ATT&T, Inc., No. 00-699-SLR (D. Del. June 28, 2001)(granting preliminary injunction); PTO Decision of September 23, 1999 (Application No. 75/677342)(denying ATT&T application). As the PTO observed, "Marks may be confusingly similar in appearance notwithstanding the addition, deletion or substitution of letters or words." Id. Indeed, as one prominent commentator observes, the "difficulty of remembering multiple-letter marks makes the likelihood of confusion between such marks, when similar, more probable. 3 J. McCarthy, Trademarks and Unfair Competition, § 23:33, pp. 23--97-98 (4th ed. 1996).
Relying on the PTO’s decision and Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973 (1956), a WIPO panel thus rejected another typo-squatter’s registration of <attt.net>, noting,
But for the addition of a "T", the subject domain name would be identical to rights of the Complainant. It clearly is similar. It also is confusing.
AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447 (December 23, 2000). Nothing in the <attt.net> or the <atttwireless.com> cases is materially different from the present one. The fact that this case involves dropping an "r", transposing an "re" or adding an "s", while those prior cases involved adding an extra "t", does not diminish the persuasive authority of the prior rulings.
Each of the contested domain names creates a likelihood that individuals will be confused into thinking that the site is owned, endorsed, licensed, sponsored, or maintained by AT&T to promote wireless telecommunications services. Complainant has established the confusing similarity of the disputed domain names with its own legitimate AT&T marks.
b) Respondent's rights or legitimate interests in the contested domain names
Respondent has done nothing to show that he has rights or a legitimate interest in any of the contested domain names. There is no evidence that Respondent owns any registered or common law marks containing the terms "AT&T", "ATT", "AT&T Wireless", "ATTWIRELESS", "ATTWIRELESSS", "ATTWIELESS", "ATTWIERLESS" or anything similar. Respondent has not been commonly known by the contested domain names, or by any name whose initials may form an acronym approximating the AT&T marks. There is no evidence that Respondent operates any legitimate enterprise commonly known by any of the contested domain names.
On the other hand, Complainant has produced substantial evidence that Respondent's only use of the disputed domain names has been to divert Internet users to websites unrelated to Complainant. The contested domain names take the user to a site that has nothing to do with the AT&T corporation, its business, or telecommunications generally. Instead, the user is diverted to a site which advertises access to sexually explicit materials. This use of confusing domain names to divert users mistakenly to completely unrelated websites is in bad faith, and the bad faith use of a domain name does not establish rights or legitimate interests in the name within the meaning of paragraph 4(a)(ii) of the Policy.
Respondent is not making legitimate noncommercial or fair use of the contested domain names. Respondent’s use of the names to divert traffic to unrelated advertisements based upon the user's confusion or mistake in hopes of generating referral fees is neither a noncommercial nor a fair use of the names, and does not establish legitimate interests in the names.
Inasmuch as it appears that Respondent does not have rights or legitimate interests in any of the three contested domain names, Complainant has established the second element of its claim.
c) Bad faith registration and use
Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing registration and use of a domain name in bad faith is
by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 or of a product or service on [Respondent's] web site or location.
Respondent, first of all, has registered three domain names each of which appears to have been selected precisely because it is confusingly similar to AT&T's famous marks. "AT&T" and "AT&T Wireless Services" are internationally-registered and famous marks with which Respondent has no affiliation. Registration of a domain name that is confusingly similar to a famous trademark by any entity which has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty's Farm, 202 F.3d at 498; Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum August 30, 2000); Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (June 27, 2000).
Respondent's purpose appears to be to divert Internet users to unrelated websites by exploiting their confusion or mistakes. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 369 (4th Cir. 2001). Respondent has registered domain names that Internet users are likely to employ inadvertently as they misspell Complainant’s mark when attempting to locate Complainant’s website. On reaching the disputed domain name, Internet users have been directed to websites that advertise services that are not sponsored or endorsed by, or affiliated with, Complainant. Respondent thus is providing redirection services--presumably for commercial purposes. AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002).
Complainant has submitted evidence sufficient to draw a fair inference that Respondent's purpose is commercial gain. The contested domain names divert Internet users to a site which advertises and refers the user to other sites, clearly commercial, that offer sexually explicit materials. There is also evidence to suggest that these commercial sites are part of a network of such sites which pays referral fees to the referring site. "Pop-unders" advertise other sexual, gambling, and prescription drug sites. Moreover, Mr. Zuccarini has previously testified in U.S. federal court that he has more than three thousand web sites and earns between $800,000 and $1,000,000 a year from their use. See Shields v. Zuccarini, 254 F.3d 476, 486 (3d Cir. 2001). There, the court noted that "Zuccarini admitted that he is in the business of profiting from the public's confusion, and that he does, in fact, profit from this confusion." Id. Mr. Zuccarini has not come forward to rebut the inference of commercial purpose, and the Panel perceives no apparent educational or eleemosynary purpose in his activity with respect to the domain names at issue in this proceeding.
The fictitious names and inaccurate and incomplete contact data submitted to the registrar of the domain names further demonstrate Respondent’s bad faith. PETA, 263 F.3d at 369. People conducting business in good faith use real names and provide valid information that identifies who sponsors and conducts the business.
Respondent has used Complainant’s’ marks in the disputed domain names for commercial gain by creating a likelihood of confusion regarding Complainant’s sponsorship, affiliation or endorsement of his or third party websites. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Complainant thus has established that the domain names in question were registered and are being used in bad faith.
Beyond the foregoing conclusion, the Panel notes that evidence of Mr. Zuccarini's past conduct and previous cases do not determine his cause here. Having already concluded that Complainant has established all of the elements of its case necessary to obtain the relief requested, the Panel finds it unnecessary to discuss Respondent's other activities.
Complainant proved by sufficient evidence each element prescribed by Paragraph 4(a) of the Policy and is entitled to the relief requested. Therefore, the Panel orders that the Registrar transfer the domain names <attwirelesss.com>, <attwieless.com>, and <attwierless.com> to Complainant AT&T Corp.
John R. Keys, Jr.
Dated: August 28, 2002