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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Tianfu Guo
Case No. D2004-0294
1. The Parties
The Complainant is AT&T Corp., Bedminster, New Jersey, United States of
America, represented by Sidley Austin Brown & Wood LLP, United States of
The Respondent is Tianfu Guo, Cerritos, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <attone.com> is registered with Melbourne IT
trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on April 23, 2004. On April 26, 2004, the Center transmitted by email to Melbourne
IT trading as Internet Name Worldwide a request for registrar verification in
connection with the domain name at issue. On April 27, 2004, Melbourne IT trading
as Internet Name Worldwide 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 April
29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response
was May 19, 2004. A Response was filed with the Center on May 19,
The Center appointed Nels T. Lippert as the sole panelist in this matter on
June 10, 2004. 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,
On June 24, 2004, the Panel decided to receive and consider the supplemental
filing the Complainant submitted to the Center on June 3, 2004, and issued an
Administrative Order allowing the Respondent to submit a response by July 1,
2004. The Respondent did not submit a response. In accordance with paragraph
10(c) of the Rules, the date by which the Panel was required to submit the decision
to the Center was extended to August 8, 2004.
4. Factual Background
Complainant AT&T Corp. is a large, internationally well-known telecommunications
corporation and Internet service provider. It has numerous federal registrations
for the mark "AT&T" from as early as 1984. Complainant also owns
registered marks consisting of "AT&T", the word "one",
and at least one other word, such as "AT&T One Rate", "AT&T
One Rate Online", "AT&T One Rate Connections", and "AT&T
One Rate USA." Furthermore, Complainant owns registered marks consisting
of "ATT" without the ampersand in combination with other words and
phrases, such as "1 800 CALL ATT", "CAMP ATT", "1 800
ATT-GIFT", "ATT.COM" and "ATT.NET."
Complainant has been the registrant of the domain names <att.com> since
1986, and <att.net> since 1993. Complainant’s primary corporate website
is located at <att.com>. Complainant conveys its "AT&T"
mark in the domain name <att.com> without the ampersand because the use
of an ampersand character in a domain name is not permitted.
On November 26, 2002, Respondent registered the domain name in dispute, <attone.com>.
The disputed domain name <attone.com> initially resolved to a website
that displayed an image of a globe and the phrases "The World @Tone,"
and "@Tone here to help you," with no other words, logos, graphics,
links to other web pages, or any indication of the owner of the web page.
Complainant sent cease and desist letters to the Respondent as early as July
2, 2003. On or around February 9, 2004, the domain name <attone.com> began
to resolve to a web page that offered, among other things, links to various
websites offering gift ideas and gift services. The new web page did not make
any reference to "@Tone", but purported to be part of the "eLuxury
Affiliate Program," which pays a seven percent commission on every product
sold through the use of the <attone.com> domain name. On June 22, 2004,
the Panel reviewed the website to which the domain name <attone.com> resolves,
and found that it continues to purport to be part of the eLuxury Affiliate Program,
but now refers to itself as "@Tone Gift Store."
On June 2, 2003, Complainant filed a United States intent-to-use application
for the service mark "AT&T ONE" for use in connection with telecommunications
services and "providing multiple-user access to a worldwide global computer
network." Complainant describes its "AT&T One" plan as a
telephone plan providing customers with special telephone rates on both their
home and their cellular phones. Complainant has provided copies of advertisements
for the AT&T One plan dated as early as July 7, 2003.
5. Parties’ Contentions
Complainant contends that Respondent registered and is using the domain name
<attone.com> in bad faith to confuse AT&T’s customers and to exploit
and tarnish AT&T’s trademarks. In particular, Complainant contends that
<attone.com> is confusingly similar to, for example, its federally registered
"AT&T" and "AT&T ONE RATE" marks, the service mark
"AT&T ONE" in which it has common law rights, and the mark "ATT"
in which it has common law trademark rights.
Complainant also contends that Respondent misappropriated its "ATT"
trademark by adding the common term "one" to the end of it, creating
a domain name that is confusingly similar to the "ATT" trademark.
Complainant additionally contends that Respondent has no rights or legitimate
interests in the domain name <attone.com>, and that Respondent has not
used and is not using the domain name in any bona fide trade or business. Specifically,
Complainant contends that "@Tone" is a meaningless phrase, the domain
name <attone.com> is currently being used to divert unsuspecting Internet
traffic from AT&T, and that Respondent is profiting from this misuse by
earning commissions through its affiliation with eLuxury.
Finally, Complainant contends that Respondent’s registration of the domain
name <attone.com> is sufficient, in and of itself, to demonstrate Respondent’s
bad faith because it is confusingly similar to Complainant’s trademarks and
the Respondent has no legitimate interest in the domain name. Moreover, Respondent’s
bad faith is evident from the fact that the domain name initially resolved to
a one-page website with an image of a globe and "a few nonsense phrases"
mentioning @Tone, which was effectively the same as an inactive site. Furthermore,
Complainant contends that Respondent’s subsequent use of the domain name to
divert Internet traffic for profit and his failure to respond to correspondence
from the Complainant regarding the domain name demonstrates bad faith.
Respondent contends that the domain name is not confusingly similar to Complainant’s
marks because there are over 13,700 active sites that begin with "att".
Respondent also notes that "tone" is a generic word, and "at"
is commonly indicated by the symbol "@", citing AtHome Corporation
v. Metro.Net and The Innovation Group, Inc., a/k/a "Metro.Net.",
WIPO Case No. D2000-0422 (October 23,
2000) (noting that the "@" symbol is commonly used to denote the word
Originally, Respondent contended that the site was non-commercial, "there
is no intent for commercial gain to mislead or divert customers or to tarnish
the trademark of service mark "at issue,"" and it has not received
any royalties from eLuxury or any other companies. Respondent goes on to explain
that it intends to use the domain name to set up an online gift store, "with
an appeal on the tone. We are going to offer special gifts to our customers
with customized tone on their gifts,"… "again we [sic] just going
to set up an online gifts store for the use of customized tone approached."
In response to Complainant’s bad faith argument, Respondent contends that it
registered the domain name <attone.com> as a combination of "at"
and "tone," and not for the purpose of selling, renting, or otherwise
transferring the domain name to the Complainant. Furthermore, Respondent contends
that it did not have bad faith in its registration and use of <attone.com>
because it is not a competitor of AT&T.
C. Complainant’s Supplemental Filing
In a supplemental filing, the Complainant asserts that the Response was filed
with procedural deficiencies and should not be considered. The Complainant also
contends that the Respondent’s bad faith is demonstrated by a change in the
Respondent’s web site after the Complaint was filed, to include a disclaimer
that "@Tone" is not associated with other companies in any way. The
Complainant further contends that the Respondent has no legitimate interests
in the disputed domain name because the Respondent’s use of the domain name
to provide links to web sites that make online sales is contrary to its assertion
that it is making a non-commercial use of the domain name. To rebut the Respondent’s
assertion that a search on Google.com for "attone" produces no results
relating to AT&T, the Complainant provides annexes showing that a search
on Google.com for "ATT One" and "AT&T One" results in
a listing of numerous websites about AT&T and its services, including AT&T’s
own websites. Finally, the Complainant contends that bad faith registration
and use is evident because "the registered domain name does not contain
the @ symbol", despite the Respondent’s explanation that it chose the disputed
domain name because its business is called "@Tone".
6. Discussion and Findings
As a preliminary matter, the Complainant’s assertion that there are procedural
deficiencies in the Respondent’s Response has been considered by the Panel.
Although the Response did not comply with the procedural and technical requirements
of paragraphs 2(h) and 5(b) of the Rules, in an effort to treat the Parties
with equality in accordance with paragraph 10 of the Rules, the Panel has considered
the Response, for what it is worth, as well as Complainant’s Supplemental Filing.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with
respect to the disputed domain name, all three of the following elements:
(i) The domain name is identical or confusingly similar to a trademark in
which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative,
circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be
evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any
one of which, if proved by the Respondent, would demonstrate the Respondent’s
rights or legitimate interests in the domain name for purposes of Paragraph
A. Identical or Confusingly Similar
Combining a generic word with a trademark to make a domain name may result
in a domain name that is confusingly similar to the trademark, in circumstances
where a distinctive trademark is still clearly recognizable as such in the combined
domain name. The Complainant has the burden of showing that the domain name
in question is confusingly similar to its trademarks. The evidence submitted
by Complainant clearly substantiates its contention that the AT&T marks,
with and without an ampersand, are extremely well known and have been since
well before registration of the disputed domain name. The Panel concurs with
prior panelists that the AT&T and ATT marks have achieved a high degree
of consumer recognition and fame. See, AT&T Corp. v. Ondonk Partners,
WIPO Case No. D2000-1723 (April 26, 2001).
In this case, the disputed domain name <attone.com> wholly incorporates
the ATT trademark.
As for the Complainant’s contention that <attone.com> is confusingly
similar to the service mark "AT&T ONE," in which it has common
law rights, the Panel notes that the Complainant has filed an intent to use
application in the U.S. for the service mark "AT&T ONE," and registration
is still pending. While a trademark application alone is not sufficient to establish
that a Complainant has rights in a trademark, Rodale, Inc. v. Christianne
Schelling, WIPO Case No. DBIZ2002-00130
(June 30, 2002), the Complainant has provided exhibits that demonstrate its
use of the mark. The fact the disputed domain name was registered and used by
the Respondent before the Complainant’s application for registration
and use of the "AT&T One" mark is of no moment. "The issue
under the first factor is whether the Complainant has rights as of the time
of the Complainant." Document Technologies, Inc. v. International Electronic
Communications Inc., WIPO Case No. D2000-0270
(June 8, 2000). The Panel finds that at the time of the Complaint, the Complainant
had and currently has trademark rights in the mark "AT&T ONE";
and but for the addition of the generic top-level domain, the disputed domain
name is identical to Complainant’s service mark.
Furthermore, the disputed domain name differs from the Complainant’s service
mark rights in AT&T only by the addition of the common word "one",
the deletion of the "&", and the addition of a generic top-level
domain name. It is well established that the addition of a generic top-level
domain such as ".com" is not relevant when determining whether a disputed
domain name is confusingly similar to a protected mark. Universal City Studios,
Inc. v. G.A.B. Enterprises, WIPO Case
No. D2000-0416 (June 29, 2000). More specifically, the addition of a top-level
generic domain does not create a new trademark or avoid confusion. America
Online, Inc., v. Yeteck Communication, Inc., WIPO
Case No. D2001-0055 (April 23, 2001). Moreover, it is well established that
a common term or a number preceding or following a trademark does not create
a new or different mark in which the Respondent has rights. See Microsoft
Corporation v. J. Holiday Co., WIPO Case
No. D2000-1493 (February 20, 2000). Here, the Complainant has demonstrated
it has rights in a variety of marks including "ATT" as well as "AT&T
ONE". Disregarding the top-level domain, and common terms, the disputed
domain name is identical to Complainant’s marks.
Accordingly, the Panel finds that this disputed domain name is identical or
confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, a Respondent may demonstrate it
has rights or legitimate interests in a domain name if (i) before any notice
of the dispute, it used or made demonstrable preparations to use, the domain
name in connection with a bona fide offering of goods or services; or (ii) it
has been commonly known by the domain name; or (iii) it is making a legitimate
non-commercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the mark at issue.
The Respondent has not shown that he was commonly known by "@Tone"
or "AtTone," for purposes of Paragraph 4(c)(ii) of the Policy. Nor
does the Respondent contend that it was (or is) making a legitimate non-commercial
or fair use of the domain name according to Paragraph 4(c) (iii) of the Policy.
However, in effect, the Respondent contends that before any notice of the dispute
it had made preparations to use the domain name in connection with a bona fide
offering of goods and services. Yet, the Respondent has offered no evidence
supporting its contention that it was making such preparations. The record is
clear that when the Respondent registered the domain name in question, it resolved
only to a page displaying an image of a globe along with "@Tone. It was
only after notification of Complainant’s rights and the forwarding of cease
and desist letters from the Complainant’s counsel that the disputed domain name
resolved to a site which offered goods and services through links. Even at that,
where no legitimate business has been established, the use of the disputed domain
name, as here, to link to other sites does not establish rights or legitimate
interests. AT&T Corp. v. Azim Hemani, WIPO
Case No. D2003-0634 (October 25, 2003). The Respondent has not refuted the
Complainant’s contentions with any credible evidence. Therefore, the Panel finds
that the Respondent has no rights or legitimate interests in the disputed domain
C. Registered and Used in Bad Faith
According to Paragraph 4(a)(iii) of the Policy, the Complainant must show that
the Respondent registered the domain name in bad faith AND used the domain name
in bad faith.
Complainant’s marks are indisputably highly recognized and famous. It is inconceivable
that Respondent did not know of Complainant’s rights prior to registering the
disputed domain name. Here the Respondent wholly incorporated the ATT mark as
the predominant and recognizable portion of the domain name. Bad faith is shown
where the Respondent knew or should have known of the registration and use of
the Complainant’s mark prior to registering the domain name. Sony Kabushiki
Kaisha v. Inja, Kil, WIPO Case No. D2000-1409
(December 13, 2000). While the Respondent may not have known of Complainant’s
AT&T ONE service mark at the time of registering the disputed domain name,
it must have known of Complainant’s well-recognized ATT and AT&T marks.
Accordingly, the Panel finds that the disputed domain name was registered in
Under paragraph 4(b)(iv) of the Policy, the Respondent’s bad faith use of the
domain name is indicated by its intentional use of the disputed domain name
to attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with the Complainant’s mark. Casio Keisanki Kabushiki
Kaisha v. Jongchan Kim, WIPO Case No.
D2003-0400 (July 15, 2003). Here, the disputed domain name originally resolved
to a website displaying only an image of a globe and the phrases "The World
@Tone" and "@Tone Here to Help You" with no other words or any
indication of ownership of the webpage. After receipt of warning letters from
Complainant the disputed domain name began to resolve to a web page that offered
products for sale under an affiliate program. Respondent has not disputed Complainant’s
contention that the Respondent has no legitimate interests in the disputed domain
name because the Respondent’s use of the domain name to provide links to websites
that make online sales is contrary to its assertion that it is making a non-commercial
use of the domain name. Furthermore, it is clear that the Respondent now seeks
to profit from the illegitimate use of the disputed domain name by advertising
and linking to suppliers of products for a fee. Using the disputed domain name
to divert Internet users to Respondent’s website is a bad faith commercial use.
Accordingly, the Panel finds that the disputed domain name is used by Respondent
in bad faith.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name <attone.com>
be transferred to the Complainant.
Nels T. Lippert
Dated: August 8, 2004