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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. A.T. of Treyding
Case No. D2003-0697
1. The Parties
The Complainant is AT&T Corp., New Jersey, United States of America, ("the Complainant"), represented by Sidley Austin Brown & Wood, United States of America.
The Respondent is A.T. of Treyding, Zhitomir, Ukraine, ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name <attcom.com> ("the Domain Name") is registered with Go Daddy Software ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2003. On September 5, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 5, 2003, the Registrar 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 September 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2003.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 9, 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.
4. Factual Background
The Complainant is AT&T Corporation, a United States corporation incorporated under the laws of the State of New York. The Complainant is very well known worldwide as being one of the largest suppliers of telecommunications products and services.
The Complainant’s principal website is at "www.att.com", the domain name <att.com> having been registered in 1986. The Complainant is the proprietor of a large number of trade marks and service marks for the mark "AT&T". It is also the proprietor of service mark registrations in the United States for "ATT.COM" in various classes including class 38 covering a wide variety of telecommunications services.
The Domain Name was originally registered in the name of a domain name broker, with an address in Scotland. On May 12, 2003, a letter was sent to the president of the broker on behalf of the Complainant drawing attention to the Complainant’s rights and seeking transfer of the Domain Name to the Complainant.
On May 15, 2003, a sales executive at the original registrant responded by email offering to lease the Domain Name to the Complainant for a monthly payment of $19.50 or to sell it for a single payment of $975. The substance of the letter reads as follows:-
"Thank you for your email which we have studied in great detail.
We note that you do not have at trade mark on "attcom" and the UDRP is quite specific that you must have a famous trade mark for the exact domain name (that is only one of three criteria which need to be proved to win a UDRP case).
Please also refer to the recent bad publicity over the "domain name crusade" of EasyGroup Plc and their efforts to use legal bullying tactics to seize all other names with "easy" in them….
Indeed we would be outraged if a company claiming to own the name "Nu" tried to take our domain name "nucom" from us.
We have already received many inquiries into purchasing the <attcom.com> domain name from companies who would like to be represented by these letters (attcom), who have nothing to do with your company (AT&T). For example, our last purchase inquiry was from the Attco, Inc, a show business company in Hawaii, who were presumably looking into having a shorter version of their website address which is currently "www.attcoinc.com".
A UDRP case costs at least US$1500 – just for the arbitration fee… and we believe that you would probably not prevail due to your lack of famous trade mark for the "ATTCOM" name, and the fact that many other organizations, companies or people could also rightfully use "ATTCOM" or other names that happen to have the letters "ATT" in them e.g. lets just consider: att followed by the letter "a", ie "atta" – there are (just to mention a few): the Atlanta Team Tennis Association – "www.atta.org", The African Travel and Tourism Association – atta.co.uk, Atta-Höhle Attendorn – "www.atta.nl", ATTA Makelaaras – atta.nl etc.
We could carry on like this for "ATT" followed by any other letter or combination of letters – there will always be many companies, organizations and individuals besides your company with a rightful use for names starting "ATT".
However, in our mutually shared interest of coming to an amicable and confidential agreement, we are prepared to offer you the outright purchase of this domain name at 50% of its previous asking price ($1950). This means that you can buy the domain name from us for only $975, which is over $500 less than taking the case to a UDRP arbitrator, in which we would argue our side of the case vigorously…"
On May 16, 2003, the same sales executive sent a further email to the Complainant
reading as follows:
"This further email is to let you know that we have just received an offer to purchase this domain name.
We will be accepting this offer by the end of today, so please let us know before midnight UK Time (7pm Eastern US Time) if you accept our proposal below, so that we can decline this offer.
You can reply to this email or send a fax to [fax number].
Sorry to rush you into a decision, but we will be transferring the domain name into the buyer’s account with their domain name registrar over the weekend, assuming that we have received their payment, so unfortunately tomorrow will probably be too late.
On May 19, 2003, the Domain Name was registered in the name of the Respondent.
On July 11, 2003, attorneys acting on behalf of the Complainant sent a cease and desist letter via email to the Respondent drawing attention to the Complainant’s rights and seeking, inter alia, transfer of the Domain Name to the Complainant. The Respondent did not reply.
The Complainant alleges that at the time of the filing of the Complaint visitors to the website at "www.attcom.com" arrived at a site at "www.att.com.ua" also operated by the Respondent and promoting/offering for sale goods and services associated with the telecommunications/computer industry. The papers attached to the Complaint do not provide chapter and verse of this allegation and at the date of this Decision the Domain Name does not appear to be connected to a website. Nonetheless, there is a website at "www.att.com.ua", it does promote/offer for sale goods and services associated with the telecommunications/computer industries and the company operating the site has a name which commences "AT". The following word commences with a "T" and appears to the Panel to be the Cyrillic version of the word "TREYDING".
In these circumstances and having regard to the fact that the Respondent has not contested the Complainant’s allegations, the Panel accepts as fact that (a) it is the Respondent who is operating the site at "www.att.com.ua" (b) that site is promoting /offering for sale equipment and services within the broad ambit of the Complainant’s field of activity and (c) at the time of the Complaint visitors to "www.attcom.com" found themselves at "www.att.com.ua".
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s name and registered trade mark AT&T and of course its registered trademark ATT.COM being the domain name to which its principal trading website is connected.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points to the circumstances under which the Domain Name was transferred when complaint was raised against the original registrant and it also points to the Respondent’s connection of the Domain Name to the website at "www.att.com.ua". The Complainant contends that anybody operating in the field of telecommunications will be aware that "ATT" is the central feature of the Complainant’s domain names and that anybody operating a website connected to a Domain Name featuring "ATT.COM" can only be doing so with the deliberate intent of taking business from the Complainant. The Complainant contends that in those circumstances the Respondent’s business cannot by any stretch of the imagination be said to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
On much the same basis the Complainant contends that the Domain Name was acquired by the Respondent in bad faith and is being used by the Respondent in bad faith.
The Complainant seeks transfer of the Domain Name.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
For present purposes it is sufficient to take the Complainant’s registered trade mark "ATT.COM", which is very well known to traders throughout the internet world as being the domain name of the Complainant. Manifestly, the Domain Name, <attcom.com>, is similar to the Complainant’s trade mark and domain name and there is a serious potential for confusion. While it is possible that internet users will enter the "com" twice by mistake, the Panel believes it more than likely that internet users will perceive the body of the Domain Name to be an abbreviation for "AT&T Communications" or "AT&T Commercial". In the circumstances the Panel has no hesitation in finding that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds on the balance of probabilities that the original registrant, the domain name broker Nucom, registered the Domain Name having in mind that it is confusingly similar to the Complainant’s registered trade mark and domain name <att.com>. The original registrant will have been well aware of the Complainant’s website at "www.att.com". The original registrant’s response to the Complainant’s opening letter (the substance of the response is quoted in full above) appears to the Panel to be a pretty transparent attempt to extort an excessive fee from the Complainant such as to constitute bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy.
The Complainant asserts that the Respondent has to be tainted by the abusive behaviour of the original registrant. Manifestly, to say the very least, the circumstances are suspicious.
The Complainant contends that the Respondent’s acquisition of the Domain Name and its use of its Ukrainian domain name <att.com.ua> to connect to its Ukrainian website with a view to trading in the same general field of activity as the Complainant must have been done deliberately with a view to taking business from the Complainant. On the face of it, this would seem to be a reasonably arguable point. That said, it is conceivable that the Respondent may have traded under its name of AT Treyding for a very long time and perhaps going back beyond 1986, the year when the Complainant acquired its <att.com> domain name. Clearly, if the Respondent has been trading as AT Treyding and in the communications field for the last 17 years or more, then the Respondent may have rights or legitimate interests in respect of the Domain Name.
Proving that a respondent has no rights or legitimate interests in respect of a domain name is a very difficult task for any complainant. More often than not the relevant information is not readily available to the complainant. Accordingly, for the purposes of paragraph 4(a)(ii) of the Policy the burden on the complainant is to make out a prima facie case. A prima facie case having been made out, paragraph 4(c) of the Policy comes into play. Paragraph 4(c) of the Policy, which is addressed to Respondents and headed "How to demonstrate your rights to and legitimate interests in the domain name in responding to a complaint" reads as follows:-
"When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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."
Accordingly, a prima facie case having been made out, it is for the complainant to demonstrate that it has rights or legitimate interests in respect of the domain name.
In this case the Panel is satisfied that the Complainant has made out a prima facie case. The Complainant is a very famous name in the telecommunications field and its name, its trade marks and its domain names will be particularly well known to others operating in the same field. The Respondent will assuredly have known of the Complainant when it acquired the Domain Name and probably too when it registered its Ukrainian domain name which embraces within it the Complainant’s registered trade mark and domain name. Certainly, when it acquired the Domain Name it would have been aware of the potential for confusion.
Moreover, as the Complainant observes, the circumstances under which the Respondent acquired the Domain Name are to say the least suspicious.
The Respondent had an opportunity to answer the Complainant’s allegations and has failed to do so. The Respondent not having provided an answer to the Complainant’s prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Having found that the Domain Name is inherently confusing, that anyone operating in the field in which the parties are engaged will recognize the potential for confusion and that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Panel believes it likely that the Complainant’s allegations in this regard are correct.
In the absence of any explanation from the Respondent the Panel believes it likely that the Respondent deliberately acquired the Domain Name in order to benefit commercially from the resultant confusion of internet users.
Accordingly, the Panel finds on the balance of probabilities that the Domain Name was registered/acquired in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, namely that the Domain name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered/acquired in bad faith and is being used in bad faith, the Panel directs that the Domain Name, <attcom.com>, be transferred to the Complainant.
Dated: October 21, 2003