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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp v. May Halabi and All Time Talk Cellular
Case Nos. D2002-0569 and 0606
1. The Parties
The Complainant in this proceeding 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, United States of America.
The Respondent in this proceeding comprises May Halabi of Tripoli, Lebanon, All Time Talk Cellular of Bouar, Keserwan, Lebanon and All Time Talk Cellular of Haret Al Mir, Zouk Michael, Jounieh, Lebanon (unless otherwise indicated, referred to jointly as the "Respondent" herein).
2. The Domain Name and Registrar
This dispute concerns the domain names identified below:
<attcellular.biz>, <attcellular.info>, <attdsl.com>, <attdsl.biz> and <attdsl.info> (the "Domain Names").
The Registrars with whom the Domain Names are registered are :
Case No. D2002-0569
<attdsl.com><attdsl.biz> - eNom, Inc. .
<attdsl.info> - iHoldings.com Inc. d/b/a DotRegistrar.com
Case No. D2002 0606
<attcellular.biz><attcellular.info> - iHoldings.com Inc. d/b/a DotRegistrar.com Domain Bank, Inc.
The Domain Names were registered between December 2001, and March 2002.
3. Procedural History
Two Complaints pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") both of which were implemented by ICANN on October 24, 1999, were received by the Center in electronic format on June 19 and June 28, 2002, and in hardcopy on July 5 and July 8, 2002. Payment in the required amounts to the Center has been made by the Complainant.
On June 20 and July 1, 2002, requests for registrar verification were sent to the Registrars requesting confirmation that they received a copy of the Complaint from the Complainant, that the Domain Names were currently registered with the Respondent and that the Policy was in effect, and requesting full details of the holder of the Domain Names and advice as to the current status of the Domain Names.
On June 28, 2002, the Complainant lodged a Petition for Consolidation of WIPO Case No. D2002-0569 with a new proceeding D2002-0606 which was filed by the Complainant against the Respondent All Time Talk Cellular. The Petition was lodged in accordance with paragraph 4(f) of the Policy.
On July 5, 2002, a Notice of Amendment of Complaint was lodged. In so doing, the domain name <attcellular.biz> was deleted from the Complaint in WIPO Case No. D2002-0569 and added to WIPO Case No. D2002-0606.
All Time Talk Cellular is thus the sole Respondent in D2002-0606. However, for reasons given below that fact is not of particular relevance insofar as the outcome is concerned. Further, for purposes of clarity it is worth pointing out that while a Response was received from the Respondent May Halabi, none was forthcoming from the Respondent All Time Talk Cellular.
On August 5, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") for both proceedings was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the Appointment Notification informed the parties that the Administrative Panel in both proceedings would be comprised of a Sole Panelist, Clive Elliott.
On September 13, 2002, a decision was submitted to the Center.
4. Factual Background
The Complainant sells telecommunications products and services under the name "AT&T" and phrases that combine "AT&T" or "ATT" with other words. Complainant claims that it has rights in numerous registered and common law AT&T trade marks and service marks in the United States as well as in many other countries. For example, Complainant has rights in the U.S.-registered mark "AT&T" in several different classes. Complainant’s "AT&T" and "AT&T & Globe Design" marks are registered in Lebanon. Complainant also owns numerous marks that use "ATT" both with and without the ampersand and in combination with other words and phrases, including those that describe Complainant’s services. For example, Complainant has rights in the U.S.-registered marks: "1 800 CALL ATT"; "CAMP ATT"; "1 800 ATT-GIFT"; "ATT.NET"; "ATTWIRELESS.INFO" and "ATTBROADBAND.INFO". (Exhibits provided in all cases.)
The Complainant states that it has invested hundreds of millions of dollars promoting its brand among consumers in the United States and other countries around the world. It asserts that as a result, the AT&T trade mark is well-known worldwide. Complainant also states that it is one of the largest national and international suppliers of telecommunications products and services. It has also spent a lot of time developing and promoting its Internet access services and wireless services, including digital subscriber line ("DSL") and cellular services.
The Co-Respondent May Halabi claims to run a business called "AttentionDSL". For convenience, I will refer to them collectively as May Halabi. The Co-Respondent, All Time Talk Cellular, a Lebanese business, sold or purported to sell certain domain names to May Halabi. May Halabi and All Time Talk nevertheless claim to be two separate entities.
Petition for Consolidation
The Petition for Consolidation was based on All Time Talk Cellular’s registration and use of the domain names <attcellular.biz> and <attcellular.info>. A Complaint concerning <attcellular.biz> and <attcellular.info> was filed contemporaneously with the Petition for Consolidation. The Complainant asserts that All Time Talk Cellular is acting in concert with May Halabi, All Time Talk Cellular’s Co-Respondent in the Complainant’s parallel running first proceeding.
The Complainant states that it has multiple disputes against All Time Talk Cellular and May Halabi and that both of these disputes are governed by the Uniform Domain Name Dispute Resolution Policy. This may have been the case when Complainant lodged its original Complaint naming both May Halabi and All Time Talk Cellular as Respondents. However, as noted above, that Complaint was amended and All Time Talk Cellular is the (sole) Respondent in the second proceeding WIPO Case No. D2002-0606. Nevertheless, the contention that All Time Talk Cellular is acting in concert with May Halabi appears to be well founded on the evidence before the Panel. There appears to be a clear factual nexus between the two proceedings. Both relate to domains containing the prefix "att" and words associated with the telecommunications industry, the Domain Names were registered at similar times by people or entities in the same country, their sites were linked together (even though the link was subsequently removed) and the parties were in discussion about purchase of at least one of the Domain Names in dispute. Likewise, there is some evidence (discussed below) that the parties were likely to have had common representation, at least at one point during the dispute. Accordingly, in the Panel’s assessment, consolidation is appropriate under the circumstances.
5. Parties’ Contentions
The Complainant alleges that the Domain Names <attdsl.com>, <attdsl.biz>, <attdsl.info> and <attcellular.biz> all resolve to a single, inoperative website that is labeled "Attention DSL". The site consists of a page containing the headings "Business DSL" and "Residential DSL". The Complainant notes that though the website is clearly designed to appear as though it is that of a business offering DSL services, the site in fact does not function at all. Internet users cannot click on any portion of the site, including the headings, graphics, or ostensible "links". No contact information for the "business" is provided.
The Complainant also notes that the website consists of a single screen that offers no access to products or services and no information about the purported business. It is asserted that the website appears to be a cynical attempt to give the appearance that a legitimate business operates at these sites. It is contended that the domain names <attdsl.com>, <attdsl.biz>, <attdsl.info>, <attcellular.biz> and the corresponding website have never been used in any bona fide trade or business. The Complainant also contends that rather, by registering the Domain Names, Respondent intended to divert and confuse Internet users seeking Complainant’s products and services for the purpose of exploiting AT&T’s famous mark and improperly diverting Internet users to Respondent’s website/s.
On March 13, 2002, AT&T’s attorneys sent a cease and desist letter via e-mail to May Halabi notifying her that her registration and use of <attdsl.com> and <attdsl.biz> were unauthorized and infringed upon AT&T’s trade marks. Through its attorneys, AT&T demanded that May Halabi immediately cease using the domain names and transfer those names to AT&T as soon as possible. Various additional communications between AT&T’s attorneys and May Halabi occurred over the following two months, without a satisfactory resolution of the issues.
On May 15, 2002, Co-Respondent May Halabi, through counsel, transmitted a letter via e-mail to AT&T’s attorneys asserting that Respondent intended to continue using <attdsl.com> and <attdsl.biz> and that she was completing the purchase of <attdsl.info>. This response letter did not discuss the domain name <attcellular.biz>. However, as <attdsl.info> and <attcellular.biz> were both listed at the time the original Complaint was filed as registered to All Time Talk Cellular, and both names formerly resolved to the "Attention DSL" site, Complainant asserts that May Halabi controls all four Domain Names.
In the May 15, 2002, letter, Respondent May Halabi asserted that she had rights to the domain names because they are an abbreviation for "Attention DSL" and they were available when Respondent registered them. Despite the fact that Complainant’s marks are registered in Lebanon, May Halabi claimed she could not find a record of those registrations.
On June 20, 2002, after receiving an e-mail from May Halabi’s former counsel, Issa Saba, All Time Talk Cellular stated that it owned <attcellular.biz> and that it had deactivated the re-direction of the domain name to "Attention DSL". The <attcellular.biz> domain name now resolves to a generic screen which states "The page cannot be found".
The domain name <attcellular.info> resolves to a site with the title: "Lebanon Index 2002: Your Internet Guide to Lebanon".
No Response was filed by All Time Talk Cellular. This means the basis of any defence has to be found in May Halabi’s Response. Her legal representative states that almost 30 days after registration of the domain name <attdsl.com> she executed her preliminary trial page as a partial outline of her business "Attention DSL".
May Halabi claims she later found out that AT&T registered the domains <attdsl.net> and <attdsl.org> on March 1, 2002, which is almost one month and 5 days after her registration of <attdsl.com>.
May Halabi states that on March 16, 2002, a local unconnected business in Lebanon, All Time Talk Cellular, contacted her and offered to sell <attdsl.info> to her. She denies any connection with the entity All Time Talk Cellular even though they both operate in Lebanon. She asserts that they are located some distance apart and too much cannot be read into their apparent geographic proximity.
She is somewhat critical of her legal advice and claims her previous attorney said that he was unable to find a trade mark registration in Lebanon for AT&T. She admits however she has now been able to locate the registration, which was lodged in the early nineties.
She states that, regardless of such registration AT&T itself is not known to the general public in Lebanon, which is almost 15000 miles away from the United States.
She explains why the suffix "att" was chosen. It is asserted that she often receives letters and notes with either (attn: John) or (att: John) and both are globally recognized by a good majority of people. Furthermore, it is asserted that the choice of "att" as an abbreviation for "attention" was merely based on a simplification of the abbreviation to facilitate the memorization and access of Attention DSL as attdsl and that if she were to include an "n" after "att" it would create confusion.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no right or legitimate interest in respect of the domain names; and
- The domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Names Identical or Confusingly Similar
It is clear from the evidence, and not disputed by the Respondent that, in its various manifestations, "AT&T" or "ATT" is well recognized and famous both in the United States and internationally. It is also asserted and not disputed that it represents goodwill of considerable value.
The Complainant uses the name "AT&T" and phrases that combine "AT&T" and "ATT" with other words. It has rights in numerous registered and common law AT&T trade marks and service marks in the United States and has registered certain of its marks in Lebanon.
The Complainant uses "AT&T" and "ATT" with a range of other descriptive and generic terms to identify various aspects of its business.
The words/abbreviations "DSL" and "Cellular" are well known and have an obvious telecommunications meaning.
The Domain Names are clearly a combination of generic words associated with the products and services and the trade mark/name "AT&T" or minor variations thereof. It is confusingly similar to various marks/names used by the Complainant in the course of its business.
The ground is thus made out.
Respondent has No Right or Legitimate Interest
Given the substantial exposure, registration and use of the trade mark/name "AT&T", it is difficult to imagine how a respondent might have a right or legitimate interest to use "AT&T" as part of its domain name. All the Domain Names in issue contain the prefix "att", an obvious derivative of ATT/AT&T. However, the Co-Respondent May Halabi claims to run a business called "AttentionDSL".
As noted above, the Complainant asserts that at the time the Complaint was originally filed the domain names <attdsl.info> and <attcellular.biz> were both listed as registered to All Time Talk Cellular. It seems that the domain names <attcellular.biz>, <attdsl.com>, <attdsl.biz> and <attdsl.info> all once resolved to a single, inoperative website labeled "Attention DSL". As the Complainant observes, though the website is clearly designed to appear as though it is that of a business offering DSL services, this is not the case.
The Complainant contends the website is simply an attempt to give the appearance that a legitimate business operates at these sites, but the domain names and the corresponding website have never been used in any bona fide trade or business. This point has merit and based on the evidence it is accepted.
The Respondent (through May Halabi) claims it could not find a record of the "AT&T" trade mark registrations. However this argument sits uneasily with the effective acknowledgement by the Respondent that, in its various manifestations, "AT&T" and "ATT" is very well recognized as a name/trade mark. This is thus an appropriate case for inferring knowledge, assuming actual knowledge cannot be shown.
On this basis, it is found that the Respondent clearly has no right or legitimate interest in the Domain Names. The ground is thus made out.
Domain Names Registered and Being Used in Bad Faith
When the Domain Names were registered (regardless of the legal advice received at the time) the international reputation in the various manifestations of the "AT&T" mark/name was well established and the Complainant had taken responsible steps to protect its trade mark rights in Lebanon.
In light of the above findings it is found that the registrations of the Domain Names were, on the face of it, made in bad faith.
As noted above, after receiving the Complainant’s initial Complaint, the Respondent All Time Talk Cellular deactivated the link to the "Attention DSL" website. The <attcellular.biz> domain name now resolves to a generic and inactive screen. The domain name <attcellular.info> resolves to an active but apparently unrelated site with the title: "Lebanon Index 2002: Your Internet Guide to Lebanon".
It seems that the deactivation of the re-direction of the domain name <attcellular.biz> to the "Attention DSL" site was in direct response to the Complainant’s allegations. It is a factor relevant in assessing whether the Respondent acted in bad faith.
The Complainant asserts that a "strong inference" of bad faith arises when a respondent alters its use of a disputed domain name only after a complaint is filed. In doing so the Complainant relies on Scholastic Inc. v Applied Software Solutions, Inc., WIPO Case No. D2000-1629.
What is significant in the Panel’s view is that Respondent May Halabi’s then counsel Issa Saba stated that his client did not own <attcellular.biz> and that the owner of the domain name had been told to stop redirecting Internet traffic to the "Attention DSL" site. However, as the Complainant points out, an email sent by the said Issa Saba was purportedly sent from the same e-mail address as All Time Talk Cellular, that is <email@example.com>. It is asserted that the fact that May Halabi’s counsel and All Time Cellular sent separate e-mail messages that contained the same text and were signed by the same individual provides additional evidence that May Halabi and All Time Talk Cellular are (or at least were) operating in concert. This assertion seems to have merit, particularly in the absence of any explanation or response from All Time Talk Cellular.
In the Panel’s view the earlier linking between the Respondents All Time Talk Cellular and May Halabi, the subsequent deactivation of the link and then the subsequent inaction of at least some of the Domain Names, suggests that All Time Talk Cellular and May Halabi were acting in concert and engaged in bad faith conduct.
It may well be argued (as she does) that May Halabi is an innocent victim of All Time Talk Cellular and that she did not instigate the conduct which has now somewhat tarnished the Respondent’s position. However, for the reasons outlined above, my view is that there is sufficient evidence of a connection between the two parties and it is enough to draw an inference that the said parties were acting together and knew well what the potential benefits were in using the "ATT" as part of their Domain Names.
In reaching this conclusion I also take into account the fact that two otherwise unrelated parties both chose to register domains including the prefix "att" along with a word closely associated with telecommunications services. Either this is a coincidence or one or both of the parties engaged in an exercise designed to benefit from a famous international name/trademark. The fact that the parties clearly co-operated together after this initial period indicates that they were aware of the realities and chose to work together to maximise their advantage. This is indicative of bad faith conduct.
It appears from the evidence that the Respondent, or its agents or associates are or were using the Domain Names to redirect Internet traffic to other sites. While it is difficult to see what commercial benefit they might derive (either singularly or together) from such conduct, it is not for the Panel to question what might motivate them to do so. The point is that this amounts to use of the Domain Names without authority and in a way likely to deceive users as to whom they are dealing with, whether or not it is likely to deliver a commercial benefit to the Respondent and/or its agents and associates.
It is further asserted that bad faith can be established where a site is inactive, as there is always the risk of future confusing use. This applies to both the "Attention DSL" website and the <attcellular.biz> domain name which now resolves to a generic and inactive screen. The Panel also accepts this submission.
The ground is thus made out.
Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain dispute proceeding, the factual evidence and legal contentions that were submitted, the confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:
(1) that the Domain Names are confusingly similar to the Complainant’s AT&T trade mark and name;
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(3) that the Domain Names have been registered and are being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under paragraphs 3(c) and 4(i) of the Policy, that the Domain Names be transferred to the Complainant.
Clive L. Elliott
Dated: September 13, 2002