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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. The Coleman Company
Case No. D2002-0533
1. The Parties
1.1 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 being 295 North Maple Avenue, Basking Ridge, New Jersey 07920, United States of America ("AT&T" or "Complainant").
1.2 The Respondent is The Coleman Company ("Coleman" or "Respondent") located in Lantana, Florida, United States of America.
2. The Domain Names and Registrar
The domain names upon which this Complaint is based are <attmanagement.com> and <attmarketing.net> (the "Domain Names"). The Registrar of the Domain Names as at the date of the Complaint is Internet Names Worldwide whose address is Level 2, 120 King Street, Melbourne, Victoria 3000, Australia("INW" or "Registrar").
3. Procedural History
The Complaint was received on June 6, 2002, by e-mail and in hardcopy on June 11, 2002, by the WIPO Arbitration and Mediation Center ("WIPO Center"). The WIPO Center has determined that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers on October 24, 1999 (the "Policy"). Further, the WIPO Center has verified that the Complaint also satisfies the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") as well as WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), which such rules implement the Policy. Payment to the WIPO Center in the required amount was made by the Complainant.
On June 8, 2002, the WIPO Center notified INW that the Complaint had been filed. In response, on June 11, 2002, INW confirmed to the WIPO Center that, inter alia, the Domain Names were registered with INW, the Respondent was the registrant of the Domain Names at issue, the Policy applies to the dispute at issue, and that the language of the registration agreement and hence the dispute is English.
In accordance with Paragraph 2 (a) of the Rules, the WIPO Center notified the Respondent on June 12, 2002, of the filing of the Complaint and the commencement of the Administrative Proceeding. This Notice advised the Respondent that Respondent had until July 2, 2002, to respond to the Complaint. Respondent filed a Response by e-mail on June 27, 2002, followed by a hardcopy on July 9, 2002, and three additional hard copies on July 16, 2002. The WIPO Center has accepted the Response from Respondent although Respondent has not fully complied with the Rules, Paragraph 5 and the Supplemental Rules in that only an e-mailed copy (not a hard copy as required) was received within the time limit for a Response.
On July 26, 2002, the WIPO Center transmitted the case to the Administrative Panel consisting of a single member, James H. Grossman of San Francisco, California, United States of America. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence in accordance with the Rules and agreed to forward a decision in accordance with Paragraph 15 of the Rules on or before August 9, 2002.
Except for the Complaint and Response referred to above, there have been no additional submissions by either party.
4. Factual Background
The following is asserted as fact by the Complainant:
Complainant has been selling telecommunications goods and services for over a century under the name AT&T as well as phrases that combine AT&T or ATT with other words. Complainant asserts that it has invested at least hundreds of millions of dollars promoting these names among consumers in the United States and other countries around the world, as a result of which these names are well-known worldwide. In respect of this, Complainant points out that various surveys have ranked AT&T among the most valuable brand names and a prior WIPO panel has determined that Complainant's famous and distinctive marks are "entitled to the widest scope of protection afforded by law." AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723 (April 26, 2001).
Complainant has rights in numerous registered trademarks and service marks in the United States, as well as in many other countries, including the U.S. registered mark "AT&T" as well as marks which use "ATT" without an ampersand. Complainant sites a number of these marks in its Complaint and accompanying Annexes. Complainant alleges that a number of these marks are registered for its telecommunications management services as well as for its strategic marketing services. With regard to domain name registration, Complainant has been the registrant of the domain name <att.com> since at least 1986. Complainant points out that it conveys its mark "AT&T by using <att> on the web, since the ampersand character in a domain name is one of those characters never permitted in web addresses. Accordingly, it is the contention of Complainant that the contested Domain Names have become "world famous names".
While Respondent fails to set forth the date of its registration in its Response, such information has been provided by INW. According to INW, both of the contested Domain Names were "created" and "registered" on March 16, 2002.
According to the copy of an e-mail annexed to the Complaint, on March 20, 2002, Respondent e-mailed Complainant stating its interest in selling the two contested Domain Names to AT&T. Another e-mail the following day from Respondent to Complainant, also annexed to the Complaint, states that Respondent will not sell the Domain Names for less than $10,000 per domain name and further states "If and when you're ready to meet this price please contact me." Complainant does not refer to any other communications between the parties until the filing of the Complaint.
On the other hand, Respondent avers that Respondent did not demand $10,000 from the Complainant, but rather contacted the Complainant on March 20, 2002, advising he was interested in selling the Domain Names. Respondent advises Complainant responded with an offer of $30 per domain name to which Respondent answered with the statement described above relating to a sale at no less than $10,000 and the phrase "If and when you're ready to meet this price please contact me." Respondent states that this was what Respondent considered to be a fair price for the Domain Names which Respondent "legally and legitimately purchased from the registrar".
5. Parties' Contentions
Complainant argues that the Domain Names should be transferred to Complainant because all of the three elements required by Paragraph 4 (a) of the Policy are present, namely, (i) Respondent’s Domain Names are "identical or confusingly similar to Complainant's official, legal and world famous names, and registered marks," (ii) Respondent has "no rights or legitimate interests in respect of the contested domain names..;" and (iii) Respondent has "registered and used the contested domain names in bad faith."
Complainant states that the confusing similarity between the contested Domain Names and Complainant's other marks is apparent from a simple comparison. Complainant points out that it offers a large and diverse number of management services and products and engages in substantial marketing activities, which services and activities are used in conjunction with the marks. Further, internet users' expectations are frustrated by Respondent's registration of the Domain Names. Complainant points out that prior WIPO panels have found numerous domain names containing the character string <att> to be confusingly similar to AT&T's marks and cites some of these cases. e.g. AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 (September 27, 2000). With regard to Respondent's having no legitimate interest in the Domain Names, Complainant advises that Respondent 1) is not a licensee in any respect of Complainant and thus any use is unauthorized, 2) does not own any registered or common law marks containing the terms AT&T or ATT or any similar derivation, 3) has not been commonly known by the contested Domain Names, and 4) is not making legitimate noncommercial or fair use of the contested Domain Names. Finally, it is Complainant's position that Respondent registered the Contested Domain Names for the purpose of selling them to Complainant and/or to divert internet traffic to its websites. Accordingly, Complainant cites a prior WIPO decision for the premise that registration of a trademark or famous mark as a domain name, by an entity that has no relationship to the mark, in and of itself, is evidence of bad faith registration and use. Sony Kabushiki Kaisha a/t/a Sony Corporation v. Fujiko Kikuno, WIPO Case No. D2000-1372 (December 27, 2000). Further, WIPO panels have found that combining a famous mark with generic words to form a domain name is bad faith. (Panel in Domains by Brian Evans cited above).
Further, Respondent’s attempt to ransom the Domain Names is compelling evidence of bad faith and warrants transferring the Domain Names to Complainant.
Respondent's only argument with regard to the issue of whether the Domain Names are identical or confusingly similar to trademarks and service marks in which the Complainant has rights is that "The domain names do not have a trademark on them as AT&T and do NOT refer to AT&T in any way." With regard to rights or legitimate interests in respect of the domain names, Respondent advises that the domain names will be used to promote a recovery overcharge consulting business called "auditing telephone technology management" and "auditing telephone technology marketing" with the purpose of auditing local telephone bills for companies that may have been overcharged by Complainant. Thus, Respondent asserts there is a legitimate interest in the Domain Names and that they are being used in good faith to provide a needed service. Finally, Respondent takes considerable effort to clarify that Respondent's response relating to the $10,000 and nothing less referred to above was made only after the Complainant responded to Respondent's original request to sell the Domain Names with a $30 offer. Respondent alleges that for some reason Complainant failed to mention its response with the $30 offer. Respondent strongly rejects any cybersquatting allegation. Respondent denies any extortion and relies on Respondent's First Amendment rights to utilize the names "legally" purchased from the Registrar.
6. Discussion and Findings
With regard to the issue of whether the Domain Name is nearly identical or confusingly similar to Complainant’s world famous trademarks, the Panel takes notice of the fact that both Domain Names incorporate in their entirety a distinctive trademark and by simply adding a generic phrase create sufficient similarity between the trademark and the Domain Names to render them confusingly similar. The Panel is of the view that the Domain Names clearly create consumer confusion. The fact that special characters such as an ampersand is not permitted in web addresses gives further weight to Complainant's arguments. The Panel finds that the Complainant has proven Paragraph 4 a. (i) of the Policy.
Paragraph 4 c. of the Policy explains how a Respondent can demonstrate its rights to and legitimate interests in the Domain Name. Respondent has described his intended use of the Domain Names for various business purposes as described above. However, surely the Respondent does not expect the Panel to believe that there is such a legitimate business purpose when the creation and registration of the Domain Names occur on March 16, 2002, and the Respondent offers them for sale to Complainant four days later on March 20, 2002. The Panel is persuaded that the filing and registration of the Domain Names had as its purpose the sale of such Domain Names to Complainant and no other purpose. In so doing, the Panel makes no judgment as to the validity of Respondent's expressed business concept to assist companies that may have been overcharged by entities with whom Complainant is affiliated. The Panel finds that the Complainant has proven Paragraph 4 a. (ii) of the Policy.
The Panel agrees with Complainant's contentions described above that Respondent has registered and/or is using the Domain Names in bad faith for the reasons that Respondent not only has no connection to the mark, but also has merely added generic words to a well known mark to create the Domain Names. Prior panels have stated this is enough to show bad faith; however, the Panel also is of the view that the very few days (4 days ) between the registration of the Domain Names and offer to sell them demonstrates Respondent's bad faith intentions. Notwithstanding this position, the Panel is troubled by the possible failure of Complainant to disclose the full extent of its exchange of communications with Respondent as alleged by Respondent. It would be quite appropriate for there to have been a response by Complainant to Respondent's offer. Accordingly, the Panel cannot concur that there was any "ransom" attempt without knowing more about the alleged response of Complainant to the original offer to sell which contained no dollar amount.
With regard to Respondent's reliance on the First Amendment, it should be pointed out that the Policy has been developed to establish a balance between such free speech rights and the rights of those who have taken the time and effort to gain trademark protection. In this case, Complainant's rights weigh heavily against someone who has simply found a device to create wealth by usurping well known and well regarded Domain Names.
The Panel has found that all of the requirements of Paragraph 4 of the Policy have been proven by the Complainant. The Panel is not persuaded by the arguments of the Respondent. Accordingly, in accordance with the remedy provided in Paragraph 4 i. of the Policy, the Panel requires that the domain names <attmanagement.com> and <attmarketing.net> be transferred by Respondent to the Complainant.
James H. Grossman
Dated: August 6, 2002