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AT&T Corp. v. ATandT.net [2005] GENDND 1922 (22 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. ATandT.net

Case No. D2005-1006

1. The Parties

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

1.2 The Respondent is ATandT.net, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <atandt.net> is registered with Tucows.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2005. On September 23, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 23, 2005, Tucows 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”).

3.2 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 29, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2005.

3.3 The Center appointed Mr. Jay Simon as the Sole Panelist in this matter on November 9, 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.

3.4 The Center sent an electronic copy of the Complaint to the Panel on November 15, 2005, and a hard copy was forwarded to the Panel on the same day.

3.5 Complainant forwarded a communication to the Center on September 22, 2005. This supplemental paper advises the Center that a copy of the Complaint sent to Respondent at its address of record by Federal Express was refused because of false address, and an electronic version of the Complaint was not deliverable because of inability to connect to the remote server.

3.6 The Panel notes that the above-mentioned communication was forwarded to the Center in accordance with paragraph 2(j) of the Rules.

4. Factual Background

4.1 Complainant owns some of the most well known marks in the history of commerce.

4.2 Among the marks owned by Complainant and registered in the United States Patent and Trademark Office are:

All of which relate in some way to goods and services for the telecommunications industry.

4.3 Complainant has also registered the domain names <att.net> (1993) and <att.com> (1986).

4.4 Complainant is and has been well known for many years and was at one time referred to as the stock “for widows and orphans”. Such is its reknown. Complainant continues to advertise heavily; and many previous UDRP panels have acknowledged Complainant’s goodwill, reputation and the unparalleled degree of consumer recognition and fame.

4.5 The disputed domain name was registered by Respondent on January 24, 2004.

4.6 Respondent did not file a response in these proceedings and was notified of its default by the Center.

5. The Parties’ Contentions

A. Complainant

5.1 Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s AT&T service marks and trademarks, the only difference between Complainant’s marks and the disputed domain name being the substitution of “and” for the ampersand.

5.2 Complainant contends that Respondent has no legitimate interest in the disputed domain name and that Respondent has not been authorized to use the name, has not been licensed for such use by Complainant, and that Complainant has not endorsed, sanctioned or sponsored Respondent’s use of Complainant’s marks.

5.3 Complainant further contends that Respondent is not making any legitimate non-commercial or fair use of the disputed domain because the website which the name resolves has links to other websites not affiliated with Complainant (and often compete with Complainant) or to a website that offers the disputed domain name for sale.

5.4 Complainant further contends that Respondent has not been commonly known by the disputed domain name, and the links at Respondent’s website are not a bona fide use of the disputed domain name.

5.5 Complainant contends that Respondent registered and is using the disputed domain name in bad faith by exploiting Complainant’s well known mark for Respondent’s gain.

5.6 Complainant further contends that the registration of a domain name confusingly similar to Complainant’s famous marks, by an entity having no relationship with Complainant, cannot be for any good faith purpose. Complainant further contends that Respondent’s use of the disputed domain is for the purpose of diverting Internet traffic to unrelated sites having no connection with Complainant.

5.7 Complainant further contends that Respondent’s bad faith is shown by the standing offer to sell the disputed domain name, and by providing false (and fictitious) contact information to the registrar of the disputed domain name. In Complainant’s supplemental filing both a Federal Express and electronic mailing to Respondent at its addresses of record were undeliverable, the former because it is a false address.

5.8 Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

5.9 Respondent has failed to respond to the Complaint and has not otherwise participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark rights holders against registrants of domain names where the rights holder (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of Paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with Paragraphs 14(b) of the Rules, “the Panel shall draw such inferences… as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 This proceeding involves one of the most famous trademarks in the history of commerce. This Panel agrees with the characterization of Complainant’s marks in AT&T Corp. v. ATandT.com to the effect that Complainant’s marks are distinctive and famous. As such it must be afforded the greatest measure of protection available. Such protection is not necessary regarding the first element to be proved by Complainant. The disputed domain name differs from Complainant’s mark by the substitution of “and” for the ampersand in the mark, the use of lower case letters, and the addition of the “.net” suffix. None of these differences, together or individually, even comes close to distinguishing the disputed domain name from Complainant’s marks. Thus, the “.net” suffix is simply a necessary part of an address and has never been considered as a potentially distinguishing feature of a domain name. See Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381. The use of lower case letters rather than upper case letters is similarly of no distinguishing value. The use of “and” rather than an ampersand, also is no value in distinguishing a domain name from another’s mark. See, for example, AT&T Corp. v. ATandT.com, WIPO Case No. D2002-1178, where the very same issue was before a UDRP panel. That panel held that “the absence of an ampersand in domain names is dictated by the fact that such a character may not be included in domain names…domain names are expected to exclude that character…[or] to be replaced with an equivalent [such as “and”]…” This Panel agrees; and the disputed domain name is found to be confusingly similar to Complainant’s mark. See Chadbourne & Parke LLC v. American Distribution Systems, Inc. d/b/a DefaultData.com and Brian Wick, WIPO Case No. D2003-0553.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.5 While Complainant is obliged to prove that Respondent has neither rights nor legitimate interests in the disputed domain name, Complainant’s evidence and assertions are sufficient to make a prima facie case regarding this element. Respondent has elected not to reply to the Complaint and there is no evidence to the contrary, evidence that would be uniquely within Respondent’s control.

6.6 Complainant asserts that there is no connection between it and Respondent and that Respondent is neither authorized nor licensed to use Complainant’s mark, and Complainant does not endorse Respondent’s website. There is no evidence to the contrary.

6.7 Further, there is no evidence that Respondent has ever been known by the disputed domain name, and to this Panel, it seems inconceivable that Respondent could ever have been known by that name.

6.8 Respondent’s use of the disputed domain name is to provide links to other websites primarily associated with telecommunications goods and services offered by competitors of Complainant. Respondent’s website also contains a link to a site that offers the disputed domain name for sale. Respondent’s website thus acts as a referral service to other websites. While Respondent may or may not make commissions on sales by others who receive Internet traffic from Respondent’s website, the fact that Respondent is using a rather famous mark to attract Internet users cannot be the basis for a bona fide offering of goods or services. Respondent is simply trading off the reputation (and it is a long standing reputation) to attract Internet users and direct them to Complainant’s competitors. See Pitney Bowes v. Mike Ostanic, WIPO Case No. D2000-1611. Therefore, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.9 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a domain name. Because Paragraph 4(b) is not exclusive, other factors may be considered by this Panel.

6.10 This Panel finds it inconceivable that Respondent was unaware of the existence of the AT&T marks. Thus, the only reason for registering the disputed domain name was for trading off the goodwill and reputation of Complainant’s mark. Therefore, the disputed domain name must have been registered in bad faith.

6.11 As for the use of the disputed domain name, Paragraphs 4(b)(i) and 4(b)(iv) of the Policy are pertinent even though the offer to sell the disputed domain name may not have been the primary purpose for registering the domain name and there was no direct offer to sell the name to Complainant or a competitor of Complainant (although a competitor could have bought the name from Respondent under this general offer to sell). There is no doubt, however, of the applicability of Paragraph 4(b)(iv) of the Policy to the facts of this case. Thus, Respondent registered a domain name confusingly similar to a famous, long standing mark and then diverted Internet users to the goods and services of others, as well as offering the name for sale. Commercial gain can be imputed to Respondent from the offer to sell, and this Panel can draw the conclusion, in the absence of evidence to the contrary, that Respondent is profiting from the links to others including competitors of Complainant, at Respondent’s website.

6.12 Further it is clear that Respondent provided false and fictitious information to the registrar of the domain name. Thus, the zip code provided by Respondent is for a city in New York and not for the address given in Florida; the telephone number provided by Respondent has an exchange that does not exist and no area code is given. Respondent’s actions in this regard are particularly egregious, and indicative of bad faith. See Chadbourne & Parke LLC, cited above.

6.13 For all of these reasons, this Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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

Jay Simon
Sole Panelist

Dated: November 22, 2005