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AT&T Corp. v. LaPorte Holdings, Inc. [2005] GENDND 148 (25 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. LaPorte Holdings, Inc.

Case No. D2004-1088

1. The Parties

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

The Respondent is LaPorte Holdings, Inc., a/k/a Horoshiy, Inc., Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mobileatt.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2004. On December 23, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On December 30, 2004, NameKing.com 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. A request for an amendment to the Complaint was made on January 11, 2005, and an amendment to the Complaint was filed on January 15, 2005. The Center verified that the Complaint together with the amendment to 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 January 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2005.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on February 17, 2005. 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

(a) AT&T has been selling telecommunications goods and services for well over a century under the name “AT&T”. Complainant has promoted its brand among consumers in the United States and other countries around the world. As a result, the AT&T trademark is well known worldwide.

(b) The AT&T marks are famous and entitled to the scope of protection afforded by law, including protection against dilution. AT&T has been ranked as one of the most valuable international brands in the world.

(c) The value of the AT&T brand has been recognized by over 35 previous WIPO panels.

(d) AT&T has rights in numerous registered trademarks and service marks in the United States, as well as in many other countries. AT&T Corp. holds a host of incontestable registrations for its AT&T mark, including, inter alia, U.S. Reg. Nos. 1,298,084 and 1,699,744. For examples, AT&T has rights in the U.S.-registered mark “AT&T” in several different classes. Specifically, “AT&T” is a service mark with Reg. No. 1,298,084 in class 38; a trademark and service mark with Reg. No. 2,110,288 in classes 9,37,38, and 42; a service mark with Reg. No. 1,970,579 in class 38, and a trademark with Reg. No. 1,699,744 in class 98.

(e) AT&T owns numerous marks which use “ATT” without an ampersand and in combination with other words and phrases.

(f) AT&T has been the registrant for the domain name <att.com> since at least 1986 and for <att.net> since 1993.

(g) AT&T is a leading provider of mobile telecommunications products and services to consumers and businesses throughout the world.

(h) When a user enters the domain name <mobileatt.com>, that user is diverted to a framed site at DomainSponsor, which advertises itself as the industry leader in the monetization of parked domain names.

(i) Although it is actually a framed site, it appears to the user to be a web page at “http://www.mobileatt.com/”. This website has the title “mobileatt.com” in the top left corner of the page. The left column of the website has links to various products and services associated with mobile communications, such as “Cellular Phones”, “Ringtones” and “Text Message”. The site includes advertisements for websites that specialize in mobile communications products and services.

(j) If a user clicks on any of the links associated with mobile communications products and services, he or she is redirected to other websites that contain more links to websites that compete with AT&T.

(k) When a user attempts to leave “www.mobileatt.com”, he or she confronts a pop-up advertisement entitled, “Try some of these similar categories!”. This site invites users to access the same websites as “www.mobileatt.com” that offer products and services that compete with AT&T.

(l) AT&T has made attempts to resolve the matter. On July 26, 2004, AT&T contacted Respondent via electronic mail. AT&T received no response to this correspondence.

(m) On October 6, 2004, AT&T again attempted to contact Respondent via electronic mail and via regular mail at the address indicated for the Respondent according to the Whois information at that time. In response to this attempt, AT&T was contacted via electronic mail by a representative of the Registrar Nameking.com, who stated that Respondent had agreed to transfer the disputed domain name to AT&T Corp. On October 11, 2004, AT&T transmitted documents to the representative in order to facilitate the transfer. AT&T also transmitted the transfer documents to Respondent via federal express, but the documents were returned as undeliverable. AT&T received no response from Respondent or the representative to this correspondence.

(n) On October 22, 2004, AT&T again attempted to contact the representative regarding Respondent’s agreement to transfer the disputed domain name to AT&T. In response, the representative reported that AT&T would receive the documents transferring the domain name to AT&T within one week. AT&T never received the documents transferring <mobileatt.com> from Respondent to AT&T.

(o) On November 8, 2004, AT&T again contacted the representative via electronic mail and informed him that no documents had been received regarding the transfer of the domain name. No further response was received from the representative or Respondent.

(p) At some time after AT&T’s initial attempts to contact Respondent, Respondent changed its contact information from the prior address in Curacao, Netherlands Antilles to the current address in Los Angeles, California. The address for the Respondent is the same as the address for the Registrar.

5. Parties’ Contentions

A. Complainant

(a) The contested domain name <mobileatt.com> is identical or confusingly similar to AT&T’s official, legal and world-famous name, its common law marks, and its famous registered “AT&T” marks. Internet users attempting to locate information regarding AT&T’s mobile telecommunications products and services will likely be confused into believing that the web page associated with the contested domain name, as well as those pages that link from that web page, are sponsored by or connected with AT&T.

(b) Previous WIPO panels have considered domain names containing “ATT” to be confusingly similar to AT&T’s marks and required those domain names transferred to AT&T. See, e.g., AT&T Corp. v. Tianfu Guo, WIPO Case No. D2004-0294 (August 8, 2004) (<attone.com>); AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634 (October 25, 2003) (<attphonecard.net>); AT&T Corp. v. Darren Swain, WIPO Case No. D2003-0633 (October 25, 2003) (<atttelephone.com> and <attwirelessretailer.com>); AT&T Corp. v. Yong Li, WIPO Case No. D2002-0960 (December 11, 2002) (<attbroad.com>); AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002) (<atttwireless.com>); AT&T Corp. v. Caimmi Rappresentanze & Marketing Italia, WIPO Case No. D2001-0541 (June 14, 2001) (<attbusiness.com> and <attbusiness.org>); AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 (September 27, 2000) (<attweb.com>).

(c) Respondent’s combination of AT&T’s famous, protected mark with the additional phrase “mobile” only heightens the confusion with the original mark. WIPO panels have held that a domain name constructed of a registered trademark and another term, especially one that relates to the business in which the registered trademark is used, is confusingly similar for the purposes of paragraph 4(a)(i) of the Policy. See Pivotal Corp. v. Discovery Street Trading Co., WIPO Case No. D2000-0648 (August 14, 2000); Ermenegildo Zegna Corp. v. Shiekman, WIPO Case No. D2000-1375 (December 20, 2000) (coupling a trademark with a reference to activities conducted under it creates confusing similarity).

(d) The use of a phrase related to AT&T’s mobile telecommunications service exacerbates the confusion.

(e) In the present case, the confusing similarity between AT&T’s brand and trademark and <mobileatt.com> cannot be seriously contested. Persons familiar with or looking for AT&T’s services, or those generally familiar with Complainant’s world-famous marks, will be confused into thinking that the domain name is owned, endorsed, sponsored, or maintained by AT&T to promote telecommunications products and services. Thus, the domain name <mobileatt.com> is confusingly similar to AT&T’s registered and common law marks.

(f) Respondent has absolutely no rights nor legitimate interests in the contested domain name <mobileatt.com>. Respondent is not AT&T’s licensee in any respect, nor is Respondent authorized to use AT&T’s marks. AT&T has not endorsed, authorized, or sponsored the Respondent’s use of its marks. Respondent does not own any registered or common law marks containing the terms “AT&T”, “ATT”, or any similar derivation. To the best of Complainant’s knowledge, Respondent has not been commonly known by the contested domain name, nor does Respondent run any enterprise commonly and legitimately known by the contested domain name.

(g) Respondent is not making legitimate noncommercial or fair use of the contested domain name. Respondent’s only demonstrated use of the disputed domain name is to direct Internet traffic to websites unaffiliated with the Complainant. Where Respondent’s only use of a disputed domain name is to link users to unrelated websites, and no legitimate business has been established, such behavior consistently has been found not to establish legitimate rights or interests in the domain name. See AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634 (October 25, 2003) (finding no legitimate rights or interests in the <attphonecard.net> domain name where the only demonstrated use was to direct users to a site that recommends searches for other websites and “sponsored links”). The use of pop-up advertisements on the website that frustrates users’ attempts to exit the site is further evidence of the illegitimate nature of Respondent’s use of the domain name. See Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214 (May 10, 2004).

(h) Respondent has registered and is using <mobileatt.com> to divert Internet traffic to websites offering competitive products by exploiting consumer confusion with AT&T’s world famous mark. Internet users who arrive at the contested domain name while looking for a site to obtain information about AT&T’s mobile telecommunications products and services will believe that they have arrived at an official AT&T website or a site sponsored by or otherwise affiliated with AT&T. This bad faith registration and use tarnishes and dilutes AT&T’s famous marks by confusing customers and potential customers, and interferes with AT&T’s business by frustrating attempts by Internet users to reach AT&T’s actual websites.

(i) Registration of a famous mark as a domain name, by an entity that has no legitimate relationship to the mark, is itself sufficient to demonstrate bad faith. In one case, a WIPO panel found that by virtue of “the fame and widespread use of the trademarks AT&T and ATT, the use of the letters ‘att’ in the domain name <attanywhere.com> immediately raises questions as to its bona fides”. See AT&T Corp v. Woppies, WIPO Case No. D2000-1724 (April 24, 2001).

(j) Respondent’s use of the contested domain name to divert Internet traffic to unrelated sites creates a likelihood of confusion as to Complainant’s endorsement of those websites and constitutes bad faith. See Policy, paragraph 4(b)(iv); AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0666 (September 5, 2002).

(k) Respondent’s obvious attempt to derive income from the domain name is further evidence of its bad faith. By using the disputed domain name in this manner, Respondent intentionally attempts to attract Internet users to a bogus “AT&T” location, cause confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location, and then take advantage of that confusion by referring traffic to other competing sites.

(l) In this case, the bad faith is only exacerbated by the fact that the websites to which Respondent directs traffic are competitors of AT&T. U-Haul International, Inc. v. Accurate Business Systems, WIPO Case No. D2003-0512 (August 4, 2003).

(m) As blatant evidence of Respondent’s registration and use of <mobileatt.com> for its own profit, the website associated with the disputed domain name is actually merely a frame for a website sponsored by DomainSponsor, which advertises itself as offering the “highest payouts” for using parked domain names to derive income. See Annex 16 of the Complaint. In addition, Respondent’s use of pop-up advertisements for products and services that are similar to AT&T’s products and services is further evidence of Respondent’s bad faith registration and use of AT&T’s marks for its own commercial gain. See Ticketmaster Corporation v. Dotsan, WIPO Case No. D2002-0167 (April 8, 2002).

(n) The only reasonable inference is that Respondent registered the disputed domain name in order to dilute and tarnish AT&T’s famous marks, to trade on and profit from AT&T’s famous name and marks, and to disrupt AT&T’s business by diverting customers. See Broadcom Corp. v. Robert Wirth, NAF Claim No. FA102713 (January 11, 2002) finding bad faith where Respondent “intentionally registered a domain name that was likely to confuse Internet users and cause them to believe any site hosted at the domain name would be affiliated with or endorsed by Complainant”).

(o) As further evidence of Respondent’s bad faith registration and use of <mobileatt.com>, Complainant notes that on numerous previous occasions, Respondent has been ordered by WIPO and NAF panels to transfer domain names that were registered and used in violation of rights of others. See, e.g., Hyatt Legal Plans, Inc. v. La Porte Holdings d/b/a Horoshiy, NAF Claim No. FA340736 (November 28, 2004); etc.

(p) Respondent’s dubious contact information further supports a finding of bad faith registration and use of the domain name <mobileatt.com>.

(q) Respondent lacks any true or legitimate interest in the disputed name. And Respondent’s website confirms its bad faith and reveals the absence of any legitimate business or other activity.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, Complainants must prove each of the following:

(i) the Domain Name is identical or confusingly similar to Complainants’ trademark or service mark;

(ii) 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.

A. Identical or Confusingly Similar

The Complainant’s marks are registered in the United States and many other countries. The Complainant owns numerous marks using both “AT&T” and “ATT”. The Domain Name wholly incorporates Complainant’s distinctive marks and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a) of the Policy).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s marks pursuant to the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several past UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the Domain Name; the Panel further notes that the Respondent has not, and has never been, commonly known by the Domain Name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the Domain Name pursuant to paragraph 4(b) of the Policy.

C. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is well known worldwide, it is unlikely that the Respondent, at the time of registration of the Domain Name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States, or of many other countries would have made Complainant’s registrations known to the Respondent.

The Respondent has, in using the Domain Name, diverted Internet users to a competing website, and the Panel notes that the Respondent has done so on previous occasions. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554, at paragraph 8) March 9, 2000)).

The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and used the Domain Name in bad faith.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

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 <mobileatt.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist