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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. William Gormally
Case No. D2002-0738
1. The Parties
1.1 The Complainant is AT&T Corp., New Jersey 07920, United States of America ("USA"). ("AT&T" or "Complainant").
1.2 The Respondent is William Gormally Swansea, MA 02777, United State of America. ("Gormally" or "Respondent").
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <attelephone.com> (the "Domain Name"). The Registrar of the Domain Name as at the date of the Complaint is Network Solutions, Inc. of Herndon, Virginia, United States of America.
3. Procedural History
The Complaint was received on August 5, 2002, by the WIPO Arbitration and Mediation Center (the "Center"). The 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 Name and Numbers on October 24, 1999, (the "Policy"). Further, the 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 the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Payment to the Center in the required amount was made by the Complainant.
On August 5, 2002, the Center notified Registrar that the Complaint had been filed. In response, on August 8, 2002, Registrar confirmed to the Center that, inter alia, the Domain Name was registered with Registrar, the Respondent was the registrant of the Domain Name at issue, and that the language of the registration agreement is English.
In accordance with Paragraph 2 (a) of the Rules, the Center notified the Respondent on August 9, 2002, of the filing of the Complaint and the commencement of the Administrative Proceeding. This Notice advised the Respondent that Respondent had until August 29, 2002, to respond to the Complaint. Respondent filed a response which, while dated August 27, 2002, was only received by the Center on August 30, 2002, one day after the deadline. On September 9, 2002, Complainant submitted a supplemental filing entitled "Notice to Panel in accordance with the Uniform Domain Name Dispute Resolution Policy" stating that, should the Panel so request, it is prepared to file a reply to Respondent’s Response.
On September 4, 2002, the Center notified the parties of the appointment of a single-member panel. The proposed panelist withdrew when a possible ground of conflict of interest was brought to the proposed panelist’s attention. On September 13, 2002, the 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 September 27, 2002.
The Panel, in its discretion, pursuant to Rule 12 of the Rules, agreed to request the Complainant’s supplemental document filed by Complainant on September 9, 2002, and such document was considered in evidence by the Panel. Further, on September 25, 2002, the Panel, pursuant to Rule 12 of the Rules, requested the Center to request from Respondent a copy of the Respondent’s Annex 10 referred to in the text of Respondent’s response, but not attached as an annex thereto, as well as any other correspondence between the parties. At the request of the Panel, Respondent provided additional documentation relating, inter alia, to correspondence between the parties. Finally, Complainant advised that the e-mail from Respondent to Complainant dated July 3, 2002, and included with Respondent’s documents was not received by Complainant since it was improperly addressed.
Except for the documents 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. 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 Name merely uses AT&T's "world famous name" with "other words or descriptors, to be confusingly similar to AT&T's trademarks.
The following is asserted as fact by Respondent:
Respondent does not make any statement as to the facts but focuses his response on refuting the contentions of the Complainant. Respondent does make one general statement that "This Complaint is inconsistant (sp) with what takes place in the marketplace and is unfounded and fundamentally unreasonable." Respondent also states during his argument that the Domain Name was registered on August 28, 2001, together with a number of other domain names.
5. Parties' Contentions
The Complainant argues that the Domain Name should be transferred to Complainant because all of the three elements required by Paragraph 4 (a) of the Policy are present, namely, (i) "the confusing similarity between <attelephone.com> and Complainant's marks is apparent from simple comparison of the marks with the contested domain name," (ii) Respondent has "no rights or legitimate interests in respect of the contested domain name..;" and (iii) Respondent has "registered and used the contested domain name in bad faith."
Complainant points out that the courts and WIPO panels have recognized that the consuming public associates "ATT" with AT&T only. Complainant argues that numerous WIPO panels have also found domain names that contain the character string <att>, and combine it with other words or descriptors, 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). Complainant devotes considerable time to the argument made by certain courts that the likelihood of confusion and bad faith may be based on "initial interest" confusion—the use of another's trademark in a manner calculated to capture initial consumer attention even though the consumer quickly becomes aware of the source's actual identity and no purchase is made as a result of the confusion. Complainant also refers to a court decision in the United States wherein the court found a likelihood of confusion between Complainant's registered marks and the defendant's registration of the domain names <payphoneeatt.com>, <payphonesatt.com>, and <attpayphone.com>, resulting in a finding of probability of success on Complainant's claims for trademark infringement and trademark dilution. Finally, Complainant notes that Respondent's website does have a "disclaimer" to the effect the site is not associated with Complainant, but argues the disclaimer is not conspicuous and requires the reader to scroll past empty text to the bottom of the web page.
With regard to Respondent's having no legitimate interest in the Domain Name, Complainant advises that Respondent 1) is not a licensee in any respect of Complaint 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 Name, and 4) is not making legitimate noncommercial or fair use of the contested Domain Name. Finally, with regard to bad faith, 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, certain 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).
Respondent’s response to Complainant's argument that the Domain Name is confusingly similar to the Complainant's marks is that a printout of a search on WhoisReport states there are 13,700 active sites that begin with <att>. Further, the "at" is used for the symbol "@" and telephone is a generic word used in over 3,400 active domains. Respondent also cites AtHome Corporation v. Metro.Net and the Innovation Group, Inc, a/k/a/ Metro.Net. WIPO Case No. D2000-0422 (October 23, 2000) for its argument relating to this issue.
With regard to its rights or legitimate interests in respect of the domain name, Respondent argues that the Domain Name site is under development, is non-commercial at present, and there is no intent for commercial gain to mislead or divert consumers or to tarnish the trademark or service mark "at issue." Respondent alleges he has the intention of using the Domain Name in connection with a bone fide offering of goods and services and points out that he registered a number of other domain names on the same date as the Domain Name including, but not limited to, atSolar.com, atNano.com, atNanotech.com, atBio.com, atBiotech.com, and atSuper.com.
Respondent argues that there is no bad faith and distinguishes between the famous mark <att> and a word forming a domain name and this case in which Respondent claims that <attelephone.com> is not a combination of <att> and another word since the remaining portion would read <elephone> which is not a word. Respondent refers to its disclaimer stating the site is not connected to the Complainant. Further, the Respondent states the Domain Name was not registered for purpose of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor of Complainant. Respondent states he is not a competitor nor does he seek to disrupt Complainant's business and again lists the many other domain names registered at the same time as the Domain Name.
6. Discussion and Findings
With regard to the issue of whether the Domain Name is confusingly similar to Complainant’s world famous trademarks, the Panel acknowledges the possibility that a consumer could initially be confused by the Domain Name. However, it is the Panel's view that the confusion would not relate to Complainant's mark but, more likely, the consumer would simply not know what to make of the website. The Panel distinguishes the possibility of confusion in this case with other cases involving the <att> name such as <attmexico>, <att2000.com>, and <attlatinamerica.com>. Neither does the Panel find the case involving <attpayphone.com>, <payphoneatt.com>, <payphonesatt.com> to be "directly on point" as contended by Complainant. While the Panel notes the fact that the letters "att" begin the Domain Name, the Panel distinguishes this usage from the decision in Adamovske Strojirny v. Tatu Rautiainen, WIPO Case No. D2000-1394 (December 20, 2000) in that it is the Panel's view that it is far more likely for a viewer to conceptualize the Domain Name as "at telephone" which does not involve Complainant. In fact, the actual site shows in large print "www.@t Telephone.com". Also, unlike the above case, the Panel is unaware of any offer or discussion regarding the sale of the Domain Name to Complainant or any other party. Finally, the Panel does not agree that this case is similar to the United States Patent and Trademark Office's denial of a trademark application for "ATT&T" on the grounds of "likelihood of confusion." In that instance, an extra "t" certainly would have still led consumers to believe they were dealing with Complainant. The Panel does not think this is the case in this instance—at least not under the present factual situation. Accordingly, the Panel finds that the Complainant has failed to meet its obligation to prove Paragraph 4 a.(i) of the Policy.
There is no reason for the Panel at this time to consider Paragraph 4 c. of the Policy which explains how a Respondent can demonstrate its rights to and legitimate interests in the Domain Name. However, with regard to the issue of bad faith, the Panel did take notice that many of the other domain name sites registered by Respondent at the same time with the Domain Name are for sale. Also, Respondent's failure to use the Domain Name site in over a year other than to state "This site is planned for development" would be a consideration in any determination of bad faith, had the Panel decided in favor of Complainant under Paragraph 4 a.(i).
For the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is not identical to or confusingly similar to the trademark in which the Complainant has rights. Accordingly, without regard to whether the Respondent has legitimate interests in respect of the Domain Name, or whether the Domain Name has been registered in and is being used in bad faith, the Panel finds in favor of the Respondent.
James H. Grossman
Dated: October 7, 2002