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AT&T Corp. v. William Gormally [2005] GENDND 1418 (31 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. William Gormally

Case No. D2005-0758

1. The Parties

Complainant is AT&T Corp. (“Complainant”), a corporation incorporated under the laws of the State of New York, located at Bedminster, New Jersey, United States of America.

Respondent is William Gormally (“Respondent”), an individual located at Swansea, Massachusetts, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <attelephone.com> (the “Contested Domain Name”). The registrar is Moniker Online Services LLC (the “Registrar”) located at Pompano Beach, Florida, United States of America.

3. Procedural History

On July 14, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On July 15, 2005, the Center received hardcopy of the Complaint. Complainant paid the required fee.

On July 19, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Contested Domain Name and that the Contested Domain Name is registered in Respondent’s name.

On July 22, 2005, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On July 22, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy sent to Complainant. This notification was sent by the methods required under Paragraph 2(a) of the Rules.

On August 12, 2005, the Center received the Response of Respondent via email. On August 16, 2005, the Center received the Response of Respondent in hardcopy.

On August 17, 2005, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

On August 19, 2005, Complainant tendered a supplemental pleading with a request that it be accepted and considered by the Panel. On August 23, 2005, the Panel issued Procedural Order No. 1 accepting the tender of Complainant’s supplemental pleading and allowing Respondent to file his supplemental pleading. On August 29, 2005, Respondent filed his supplemental pleading. Both of the supplemental pleadings have been considered.

4. Factual Background

Complainant has been selling telecommunications goods and services for over one hundred years under the name “AT&T.” Complainant has invested hundreds of millions of dollars promoting its brand among consumers in the United States of America and other countries around the world.

Complainant has rights in numerous registered trademarks and service marks in the United States of America, as well as in many other countries. These registrations include the AT&T trademark in several different classes and the ATT trademark without the ampersand (collectively referred to herein as the “ATT Marks”). Complainant is the registrant for the domain name <att.com> which resolves to Complainant’s main corporate website at www.att.com and for the domain name <att.net> which resolves to the website www.att.net.

A dispute between these parties was previously decided by a WIPO Panel on October 7, 2002, in the decision entitled AT&T Corp. v. William Gormally, WIPO Case No. D2002-0738 (the “Prior Decision”). The Prior Decision found that Respondent’s use of the Contested Domain Name was not confusingly similar under the factual circumstances then provided and considering the disclaimer that the website was not affiliated with or sponsored by Complainant. Upon losing the Prior Decision, Complainant informed Respondent that it would continue to monitor Respondent’s website.

The present Complaint is re-filed on the basis of changed circumstances. In support of this Panel’s ability to considered a re-filed Complaint under changed circumstances, Complainant cites Scottish Provident Limited v. Scottish Provident Ministry, WIPO Case No. D2002-1059 (January 9, 2003); Jones Apparel Group Inc. v. Jones Apparel Group.com, WIPO Case No. D2001-1041 (October 16, 2001); GA Modefine S.A. v. Sparco P/L, WIPO Case No. D2001-0370 (May 6, 2001); Creo Products Inc. v. Website in Development, WIPO Case No. D2000-1490 (Jan. 19, 2001).

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the ATT Marks, that its trademark registrations are valid and subsisting and that they serve as prima facie evidence of its ownership and the validity of the ATT Marks. See 15 U.S.C. § 1115. Complainant further contends that the ATT Marks are inherently distinctive, famous worldwide and entitled to the broadest protection against dilution.

ii. Complainant argues that the Contested Domain Name is confusingly similar to the ATT Marks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the ATT Marks in conjunction with the non-distinctive term “telephone.”

Complainant alleges that Respondent has changed the circumstances of his use of the Contested Domain Name. Respondent’s website now has “attelephone.com” in the top left corner of the page and does not have the “@telephone” phrase or the disclaimer of association with Complainant, each of which was considered in the Prior Decision.

Complainant further alleges that Respondent’s website now contains a variety of links to websites of competitors of Complainant that market and sell various telecommunications products and services. Consumers can link to webpages for “telephones,” “discount long distance,” “free cell phone,” and “long distance phone service.” These links direct the Internet User to websites which compete directly with Complainant. Among these links are sponsored links and a link inviting consumers to make an offer to purchase the Contested Domain Name. Given the links to competitive projects, Complainant contends that Internet Users are likely to be confused as to the origin of these telecommunications products.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Contested Domain Name, pursuant to Paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Contested Domain Name.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Contested Domain Name under Paragraph 4(c)(i) of the Policy because he has not used, or evidenced demonstrable preparations to use, the Contested Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that Respondent has re-directed Internet traffic through links on his website to competitors of Complainant and that such an intentional diversion of traffic cannot constitute a bona fide offering of goods and services.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Contested Domain Name under Paragraph 4(c)(ii) of the Policy because he is not commonly known under the Contested Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the ATT Marks in a domain name or in any other manner.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Contested Domain Name under Paragraph 4(c)(iii) of the Policy because he is not making a legitimate noncommercial or fair use of the Contested Domain Name without the intent to: (a) derive commercial gain; (b) misleadingly divert consumers; or (c) tarnish the trademark at issue. Complainant alleges that, since the Prior Decision, Respondent has sought commercial gain from the diversion of customers, hence tarnishing the ATT Marks.

iv. Complainant contends that Respondent registered and is using the Contested Domain Name in bad faith in violation of Paragraph 4(a)(iii) of the Policy.

Complainant contends that Respondent’s actions violate, among other provisions, Paragraph 4(b)(iv) of the Policy by using the Contested Domain Name to intentionally attract, for commercial gain, Internet Users to Respondent’s website, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent’s contentions

i. Respondent does not dispute that Complainant has registrations of the ATT Marks, and that Complainant has enforceable rights in the ATT Marks.

ii. Respondent asserts that the Contested Domain Name is not confusingly similar to the ATT Marks. Respondent invokes the findings of the Prior Decision that the ATT Marks and the Contested Domain Name are not confusingly similar. Respondent asserts that the analysis of confusing similarity should be done strictly on the basis of a comparison of the Contested Domain Name with the ATT Marks, thus ignoring the circumstances surrounding the use of the Contested Domain Name. Respondent reasons that such an analysis is the same now as it was for the Prior Decision. Therefore, the present Panel does not have grounds upon which to find confusing similarity.

If additional circumstances regarding the use of the Contested Domain Name are to be considered, Respondent asserts that Complainant has not shown any “changed circumstances” to warrant the re-filing of the Complaint. Then as now, Respondent asserts that the Contested Domain Name should be read as “at Telephone.com.” Respondent admits that he is not using the “@” sign but insists that the “at” in the Contested Domain Name is a necessary substitute.

Respondent admits that the Prior Decision did not discuss the other elements after failing to find confusing similarity in the original Complaint.

iii. Respondent contends that he does have rights or legitimate interests in the Contested Domain Name, pursuant to Paragraph 4(a)(ii) of the Policy. Respondent admits that this element of the analysis was not decided in the Prior Decision.

iv. Respondent denies that he registered or used the Contested Domain Name in bad faith. Paragraph 4(b) of the Policy suggests four types of evidence of bad faith registration, of which Respondent asserts that none applies. Respondent asserts that there is no evidence of bad faith based on Paragraph 4(b)(iv) of the Policy because Respondent is not misleading any Internet Users. Respondent admits that this element of the analysis was not decided in the Prior Decision.

Respondent asserts that the re-filing of this Complaint by Complainant is an act of bad faith, intended to deprive Respondent of his rights in the Contested Domain Name. Respondent requests a finding that Complainant is engaging in reverse domain name hijacking.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Because both Complainant and Respondent are domiciled in the United States, and because United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. See Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001).

The Panel in the Prior Decision states that Respondent’s website was then under construction, was not commercial and evidenced no intent for commercial gain. The Panel in this proceeding will analyze the surrounding circumstances as part of its analysis and will not limit the analysis to a comparison of only the Contested Domain Name and the ATT Marks.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the ATT Marks, that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the ATT Marks. See 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the ATT Marks and exclusive right to use the ATT Marks in connection with the stated goods. See 15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this presumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (March 24, 2000).

Respondent has not contested the enforceablility of Complainant’s rights in the ATT Marks. Therefore, the Panel finds that Complainant, for the purposes of this proceeding, has enforceable rights in the ATT Marks.

Identity or Confusing Similarity

Complainant contends that the Contested Domain Name is confusingly similar to the ATT Marks pursuant to Paragraph 4(a)(i) of the Policy.

Complainant must now show sufficient new facts to justify the present Panel’s consideration of the re-filed Complaint.

Respondent admits that he deleted the disclaimer of association with Complainant and the phrase “@telephone” from his Webster. In addition, he admits that he is routing traffic to competitors of Complainant through links, including sponsored links, on his Webster. The Prior Decision recites as a basis for analysis that Respondent’s website was then under construction, was not commercial and evidenced no intent for commercial gain. The Panel finds that Respondent has made material changes to his website, many of which demonstrate a commercial intent. These new circumstances are sufficient to justify the re-filing of the Complaint.

The Contested Domain Name includes the entirety of Complainant’s ATT Marks. As numerous courts and prior WIPO UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical).

The present Panel has indicated that it will consider the circumstances surrounding the use of the Contested Domain Name to be consistent with the Prior Decision. The changes to Respondent’s website accentuate the likelihood of confusion and show a motivation of commercial gain. Therefore, the present Panel finds that the Contested Domain Name is confusingly similar to the ATT Marks pursuant to Paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

This element was not considered in the Prior Decision. Complainant contends that Respondent has no rights or legitimate interests in the Contested Domain Name pursuant to Paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights to or legitimate interests in the Contested Domain Name. Once Complainant establishes a prima facie showing that none of the three circumstances establishing rights or legitimate interests applies, the burden shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

The parties agree that Respondent has no relationship with or permission from Complainant to use the ATT Marks.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Contested Domain Name:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”

Complainant has alleged facts contesting each of these elements and has sustained its burden of making a prima facie showing that Respondent lacks rights to or legitimate interests in the Contested Domain Name.

Respondent asserts that he is making a bona fide use of the Contested Domain Name and that he has had no intention of misleading Internet Users to access his website or to connect to his links.

The Contested Domain Name was under construction at the time of the Prior Decision and the development of the website was done after the Prior Decision. Therefore, the provisions of Paragraph 4(c)(i) of the Policy do not apply.

Respondent has offered no evidence that he is commonly known by the Contested Domain Name. Therefore, the provisions of Paragraph 4(c)(ii) of the Policy do not apply.

The Panel concludes that the traffic being routed to Respondent’s website and to the links on his website is the result of a misleading diversion of consumers. Therefore, the provisions of Paragraph 4(c)(iii) of the Policy do not apply.

The case file contains no further evidence that the use of the Contested Domain Name meets the elements for any of the nonexclusive methods provided for in Paragraph 4(c) of the Policy. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Contested Domain Name pursuant to Paragraph 4(a)(ii) of the Policy.

Bad Faith

This element was not considered in the Prior Decision. Complainant contends that Respondent registered and is using the Contested Domain Name in bad faith in violation of Paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

“(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [Respondent] have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [Respondent’s] 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 your [Respondent’s] web site or location or of a product.”

The changes which Respondent made to his website appear to be intentional and the links to competitive telephone goods and service appear to be designed to attract customers for commercial gain. The Panel finds that Internet Users are being attracted to Respondent’s website by a likelihood of confusion regarding the source or sponsorship of the website.

The Panel finds that this evidence casts a more complete light on why Respondent registered the Contested Domain Name. The Panel finds that this new evidence, together with other indications, is sufficient to establish the necessary elements of bad faith under Paragraph 4(b)(iv) of the Policy and that Respondent registered and used the Contested Domain Name in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

Reverse Hijacking

Complainant has prevailed in its claim and, therefore, has not engaged in reverse hijacking.

7. Decision

The Panel concludes (a) that the Contested Domain Name <attelephone.com> is confusingly similar to Complainant’s registered ATT Marks; (b) that Respondent has no rights or legitimate interest in the Contested Domain Name; and (c) that Respondent registered and used the Contested Domain Name in bad faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Contested Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: August 31, 2005