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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Azim Hemani

Case No. D2003-0634

 

1. The Parties

The Complainant is AT&T Corp., New Jersey, United States of America, represented by Sidley Austin Brown & Wood, United States of America.

The Respondent is Azim Hemani, Illinois, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <attphonecard.net> is registered with Domain Bank, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2003. On August 14, 2003, the Center transmitted by email to Domain Bank, Inc. a request for registrar verification in connection with the domain name at issue. On August 21, 2003, Domain Bank, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2003. The Center’s records of courier and telefax transmission indicate completed delivery to Respondent. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2003.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 6, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On October 20, 2003, the Center advised Complainant and Respondent that on the basis of exceptional circumstances the Panel had extended the due date for rendering its decision in this matter until October 27, 2003.

 

4. Factual Background

Complainant is the holder of numerous trademark and service mark registrations for "AT&T" in the United States and other countries, and for "AT&T" and "ATT" used in combination with other terms, including "AT&T PREPAID PROMOTIONAL CARD" (referred to collectively as the "AT&T marks"). The term "AT&T", for example, is registered at the United States Patent and Trademark Office (USPTO) as a service mark (reg. No. 1,298,084, dated September 25, 1984, in International Class (IC) 38, covering, inter alia, telecommunications services). The "AT&T PREPAID PROMOTIONAL CARD" service mark is registered at the USPTO (reg. No. 1946763, dated January 9, 1996) in IC 38, covering telecommunications services, namely prepaid telephone services [1]. (Complaint, paragraph 8 and Annexes 6 & 7).

Complainant is registrant of the domain name <att.com> since at least 1986, and uses that domain name in connection with an active commercial website (id., paragraph 8 and Annex 9 & 10). At its active commercial website, Complainant offers for sale the "AT&T PrePaid Phone Card" (id., Annex 11). Complainant has advertised its calling card products extensively over a wide geographic area for personal and business use (id., paragraph 8).

Complainant has submitted substantial evidence of long usage, substantial expenditure on promotion and wide consumer recognition in the United States and other national markets of the "AT&T" mark (id. paragraph 8 and Annexes 5 & 10-12). The Panel finds that the "AT&T" mark is well known, at least in the United States.

According to the Registrar’s Verification, Respondent "Azim Hemani" is the registrant of the disputed domain name <atttphonecard.net>. According to a DomainBank, Inc. WHOIS database report submitted by Complainant, the record of registration for the disputed domain name was created on July 11, 2001.

Respondent has not used the disputed domain name in connection with a commercial website offering his own product line. However, the disputed domain name is currently used to direct Internet users to a DomainBank form site that recommends to Internet users that they search for websites in the same field of service as the disputed domain name, and includes multiple links (such as for "calling cards", "phone cards" and "prepaid phone cards"). Clicking on the link "calling card", as example, directs the Internet user to a website including several "sponsored links" that in turn direct Internet users to various enterprises offering calling card services in competition with Complainant (e.g., at "www.pinzoo.com" and "www.talkitg.com"). (Complaint, paragraph 9 and Annex 14, panel visit of October 25, 2003).

Complainant transmitted cease and desist and transfer demands to Respondent. On one occasion a representative of Complainant spoke by telephone with Respondent who indicated that he sells phone cards. (Id., paragraph and Annexes 17-21).

The Registration Agreement in effect between Respondent and Domain Bank, Inc., subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the "AT&T" marks based on use in commerce in the United States and other countries, and as evidenced by numerous registrations in the United States and other countries (see Factual Background supra). Complainant asserts that the "AT&T" marks are well known.

Complainant alleges that the disputed domain name is confusingly similar to its marks.

Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant denies that Respondent is an authorized representative or reseller of its goods or services.

Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith. Complainant argues that Respondent’s domain name is currently used to intentionally direct Internet users to the services of Complainant’s direct competitors for commercial gain. Moreover, even if Respondent were not currently using the disputed domain name, in light of the well known character of Complainant’s marks and absence of Respondent’s authorization to use those marks, the only plausible explanation for Respondent’s registration of the disputed domain name was to use them in bad faith to divert Internet users for commercial gain.

Complainant requests that the Panel direct the Registrar to transfer the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings.

The records of the Center indicate completed delivery of the notifications. The Panel is satisfied that the Respondent had adequate notice of the proceedings.

A. Identical or Confusingly Similar

Complainant has established rights in the "AT&T" marks by use in commerce and as evidenced by registrations (see Factual Background, supra). Complainant has submitted substantial evidence that the "AT&T" mark is well known (see, e.g., "The 100 Top Brands", Business Week, August 6, 2001, at 60, listing "AT&T" tenth among globally recognized "brands"). The Panel finds that that Complainant has rights in the "AT&T"marks, and that the "AT&T" mark is well known, at least in the United States.

The disputed domain name <attphonecard.net> adds the term "phonecard" (or "phone card" in its more usual form) to the well known "AT&T" mark. Telephone calling cards represent a typical service of a telecommunications service provider such as Complainant. An Internet user and consumer viewing the term "attphonecard" would likely associate it with a service product of Complainant. Complainant extensively advertises "AT&T" telephone calling cards of various types on the Internet and elsewhere, adding to the likelihood that the disputed domain would cause Internet users to believe that it is associated with Complainant and its services. Addition of the gTLD ".net" does not dispel the likelihood of confusion. The Panel finds that the disputed domain name <attphonecard.net> is confusingly similar to the "AT&T" service mark.

Complainant has demonstrated that it has rights in the "AT&T" marks and the disputed domain name is confusingly similar to one or more of those marks. Complainant has satisfied the first element necessary to establishing abusive domain name and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c)).

There is no evidence that Respondent has been commonly known by the disputed domain name. Respondent has not replied to the Complaint. There is insufficient evidence before the Panel to establish a bona fide use of the disputed domain name prior to notice of a dispute. Complainant has provided prima facie evidence that Respondent has not made fair use of the disputed domain name. The only demonstrated use is in connection with a website that diverts Internet users to competitors of Complainant. Respondent has not attempted to demonstrate a fair use despite notice of these proceedings and the opportunity to do so. The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

Complainant has established the second element necessary for a finding of abusive domain name registration and use.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).

Respondent has not attempted to justify its registration of Complainant’s well-known service mark in the disputed domain name.

The disputed domain name is currently used to direct Internet users and consumers to a website which recommends using links provided there to search for services in the same line of commerce referenced by the disputed domain name. The recommended searches direct Internet users and consumers to sponsoring websites offering services directly competing with those of Complainant. While this redirection service appears to be provided by the Registrar of the disputed domain name, such activity is possible because Respondent is not actively using the disputed domain name. Respondent presumably benefits directly or indirectly from its own non-use and the redirection activities of the Registrar through contribution to lowering the price of maintaining its domain name registration. In any case, it is because of Respondent’s registration of the disputed domain name incorporating Complainant’s well known mark that Internet users are diverted to competitors of Complainant. Because the Registrar is affirmatively acting in connection with the disputed domain name, it is not clear that Respondent is literally acting in a way sufficient to "intentionally … attract, for commercial gain, Internet users to" a website creating a likelihood of confusion. However, the text of paragraph 4(b) of the Policy is not exhaustive, and the Panel may find bad faith based on other factors. The combination of Respondent’s registration of the well known mark, with the indirect diversion of Internet users through the actions of the Registrar, harms Complainant just as if Respondent was actively undertaking the diversion. He has at least actively facilitated the harm caused to Complainant. The Panel finds that this constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy.

Complainant has established the third element necessary for a finding of abusive registration and use of the disputed domain name.

The Panel will therefore direct the Registrar to transfer the disputed domain name to it.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <attphonecard.net> be transferred to the Complainant.

 

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Frederick M. Abbott
Sole Panelist

Dated: October 25, 2003

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Footnote:

1. Complainant alleged that the marks "AT&T PREPAID CALLING CARD", "AT&T CUSTOM CALLING CARD" and "AT&T TRY ME! CARD" are registered at the USPTO (Complaint, paragraph 8(e)). Examination of the documentary evidence submitted by Complainant (USPTO TESS printouts) indicates that the aforesaid marks each are cancelled (as of July 20, 2002, December 29, 2000 and May 17, 2003, respectively) (id., Annex 7). This is a serious unexplained discrepancy between pleading and evidentiary support.