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AT&T Corp. v. Asia Ventures, Inc. [2005] GENDND 1947 (14 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Asia Ventures, Inc.

Case No. D2005-1012

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 America.

The Respondent is Asia Ventures, Inc., Hong Kong, SAR of China.

2. The Domain Names and Registrar

The disputed domain names, <attathome.com> and <atttelephones.com>, are registered with The Registry at Info Avenue d/b/a IA Registry (“IA Registry”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2005. On September 26, 2005, the Center transmitted by email to IA Registry a request for registrar verification in connection with the domain names at issue. On September 26, 2005, IA Registry 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 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2005.

The Center appointed David H. Tatham as the Sole Panelist in this matter on October 31, 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

The Complainant is a leading provider of telecommunications products and services to consumers and businesses throughout the world. It advertises and markets its telecommunications products and services on its website which, for example, contains “The Store @ AT&T” where it advertises and sells several types of telecommunications equipment, including telephones.

The Complainant has been selling telecommunications products and services for well over a century under the name “AT&T”. It has invested hundreds of millions of dollars in promoting 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.

The AT&T marks are inherently distinctive, famous, and entitled to the widest scope of protection afforded by law, including protection against dilution, and the Complainant annexed a copy of the Final Order in the case of AT&T Corp. v. CyberTelecom, Inc., Case No. 04-61052 (S.D. Fla. June 16, 2005) which found its marks to be “inherently distinctive of AT&T’s services and products and… widely and extensively used in commerce to advertise, promote, and sell its services and products”.

The Complainant has rights in numerous registered trademarks and service marks in the United States, as well as in many other countries. It holds a host of incontestable United States registrations for its AT&T mark, and annexed to the Complaint were copies of the registration certificates for the following AT&T marks in the United States: Nos. 1,298,084, 1,293,305, 1,314,059, 1,353,769, 1,331,847, 1,342,197, 1,367,439, 1,493,970, 1,699,744, 1,970,579, and 2,076,846. Also annexed were copies of the registration certificates of the following United States trademarks: Nos. 1,688,845, 1,542,937, 1,550818 and 2,049,544 consisting of a mark consisting of the letters AT&T plus a circular device.

The Complainant also owns numerous marks that use “ATT” without an ampersand and in combination with other words and phrases such as: 1 800 CALL ATT (No. 1,876,928); CAMP ATT (No. 2,020,639); 1 800 ATT-GIFT (No. 2,076,093); ATT.COM (No. 2,539,552); and ATT.NET (No. 2,144,994). Copies of the registration certificates of these marks were annexed to the Complaint.

The Complainant also annexed details of its two United States pending applications for the trademarks AT&T HOME AND MOBILE and AT&T HOME AND WIRELESS indicating the Complainant’s provision of telecommunications services to consumers both at home and away from home.

The Complainant has been the registrant of the domain name <att.com> since at least 1986 and of <att.net> since 1993. The domain name <att.com> resolves to the Complainant’s primary corporate website, “www.att.com”, on which its service and coverage are advertised. This domain name shows that the Complainant conveys its AT&T mark by using “ATT” on the web, which does not permit the use of an ampersand character in a domain name.

The Complainant is also the registrant of the domain names <atthome.com> <attbusiness.com>, and <attmobile.com>.

Internet search engines consistently identify queries for “ATT” with the Complainant’s multiple Internet sites and services, specifically: “www.att.com” and “www.att.net”.

The Complainant became the controlling shareholder of At Home Corporation in 2000 and distributed broadband Internet services through the At Home network until December 2001. During the period that At Home Corporation provided services to the Complainant, its portal was featured on the Complainant’s high-speed Internet start page. This relationship caused consumers to associate AT&T and its marks with the term “at home”.

The immense value of the AT&T brand has been recognized by approximately 40 previous WIPO UDRP panels. One panel, for instance, stated that “[b]y virtue of AT&T’s extensive use, advertising, and promotion, the AT&T name and AT&T and ATT marks have achieved an unparalleled degree of consumer recognition and fame and serve as exclusive designations of origin of AT&T’s goods and services and symbols of the goodwill and excellent reputation AT&T enjoys”, and thus AT&T’s famous marks are “entitled to the widest scope of protection afforded by law”. AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723 (April 26, 2001).

Other WIPO UDRP panels have specifically found that AT&T has established common law trademark rights in the ATT mark without the ampersand and the Complainant referred to two specific WIPO UDRP decisions in this respect.

5. Parties’ Contentions

A. The Complainant

The Complainant contends that the Respondent is a notorious cybersquatter who has deliberately registered and used the disputed domain names in bad faith to confuse consumers and profit from referral fees. Both disputed domain names resolve to websites that offer links to providers of telecommunications products and services that compete directly with the Complainant. This bad faith attempt to confuse consumers and profit from the trademarks of others is precisely the kind of behavior the Policy was designed to thwart.

This particular Respondent’s pattern of cybersquatting behavior has been repeatedly condemned by WIPO and National Arbitration Forum (“NAF”) UDRP panels and the Complainant made reference to 13 prior panel decisions in which Asia Ventures, Inc. (the Respondent in this case) was named as the respondent.

The Complainant contends that the Respondent has improperly and in bad faith violated its right to protect its AT&T and ATT marks, a right that has been upheld in approximately 40 previous WIPO UDRP decisions. The Complainant further contends that this case is no different from numerous prior WIPO UDRP decisions in which cybersquatters have registered domain names combining AT&T’s famous mark with other indicators of telecommunications products or services, thereby infringing and diluting the Complainant’s marks.

A user, entering the website at either of the disputed domain names is presented with a number of options, all of them containing links to numerous other websites, some of them belonging to corporations or traders competing directly with the Complainant. It is the Complainant’s belief that the disputed domain names have never been used in any bona fide trade or business other than to divert customers away from the Complainant. Rather, the sites appear to use artificial intelligence to generate a page related to the subject of the domain names and/or the search terms used. The Complainant contends that the Respondent’s efforts to derive income from the disputed domain names indicates that it seeks to profit from sales that result from links from the websites associated with the disputed domain names.

Furthermore, when a user attempts to leave either of the websites at the disputed domain names he/she is confronted by pop-up advertisements, one inviting users to websites offering products and services that compete with those of the Complainant, and the other a self-styled “website directory” provided by SearchCo.com.

Confusing Similarity

The disputed domain names are identical or confusingly similar to the Complainant’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 the Complainant’s telecommunications products and services are likely to be confused into believing that the web pages associated with the contested domain names, as well as those pages that link from the web pages, are sponsored by or connected with the Complainant.

Previous WIPO UDRP panels have considered the following domain names containing “ATT” to be confusingly similar to AT&T’s marks and required them to be transferred to the Complainant: <mobileatt.com>, <attone.com>, <attphonecard.net>, <atttelephone.com>, <attwirelessretailer.com>, <attbroad.com>, <atttwireless.com>, <attbusiness.com>, <attbusiness.org>, and<attweb.com>.

The Respondent’s combination of the Complainant’s famous mark with the additional phrases “telephones” and “athome” only heightens the confusion with the original mark. WIPO UDRP 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. Panels reviewing the combination of the Complainant’s “ATT” mark with a host of words have held that such combinations increased the likelihood of confusion and the Complainant listed five previous UDRP decisions in this category.

The confusing similarity between the Complainant’s brand and trademark and one of the disputed domain names, <atttelephones.com>, cannot be seriously contested. Indeed, two previous WIPO UDRP panels have found virtually identical domain names confusingly similar to the Complainant’s marks. In a recent decision, a panel determined that the domain name <attelephone.com> was confusingly similar to AT&T marks. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (August 31, 2005). Another panel had previously determined that the domain name <atttelephone.com> was confusingly similar to the Complainant’s marks. AT&T Corp. v. Darren Swain, WIPO Case No. D2003-0633 (October 25, 2003).

The domain name <attathome.com> is also confusingly similar to the Complainant’s marks because the addition of the descriptive phrase “at home” to the ATT mark will either confuse consumers into believing that the website is associated with the Complainant’s residential products and services, or will connect it with the phrase “AtHome”, which is the name of the AtHome Corporation, who has a history of being closely affiliated with the Complainant. The addition of the descriptive term “at home” does not negate the confusing similarity of the domain name <attathome.com> with the Complainant’s marks.

The Complainant further contends that persons familiar with or looking for the Complainant’s telecommunications equipment or services, or those generally familiar with the Complainant’s world-famous marks, will be confused into thinking that both <atttelephones.com> and <attathome.com> are owned, endorsed, sponsored, or maintained by the Complainant to promote telecommunications products and services.

Thus, the contention is that the domain names <atttelephones.com> and <attathome.com> are confusingly similar to the Complainant’s registered and common law marks.

No Legitimate Interest

The Respondent is a notorious cybersquatter and as such it has absolutely no rights nor legitimate interest in the disputed domain names. The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s marks. The Complainant has not endorsed, sanctioned, or sponsored the Respondent’s use of its marks. The Respondent does not own any registered or common law marks containing the terms “AT&T”, “ATT”, or any similar derivation. To the best of the Complainant’s knowledge, the Respondent has not been commonly known by the contested domain names, nor does the Respondent run any enterprise commonly and legitimately known by the contested domain names.

The Respondent is not making legitimate noncommercial or fair use of the contested domain names and its only demonstrated use of the disputed domain names is to direct Internet traffic to virtually identical websites that are unaffiliated and in direct competition with the Complainant, who contends that where a respondent’s only use of a domain name is to link users to unrelated websites, and no legitimate business has been established, such behavior has consistently been found by UDRP panels not to establish legitimate rights or interests in a domain name.

The Complainant also contends that the use of pop-up advertisements on a website that frustrates users’ attempts to exit the sites is further evidence of the illegitimate nature of the Respondent’s use of the domain names.

Bad Faith

The Complainant believes that there can be no doubt regarding the Respondent’s bad faith cybersquatting. He has registered and is using the disputed domain names to divert Internet traffic to identical websites that offer competitive products by exploiting consumer confusion with the Complainant’s world famous marks. His motive is to profit improperly from the goodwill and fame that the Complainant has achieved for its AT&T marks. Internet users who arrive at the websites at the disputed domain names looking for a site to obtain information about the Complainant’s 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 the Complainant’s famous marks by confusing customers and potential customers, and interferes with the Complainant’s business by frustrating attempts by Internet users to reach the Complainant’s actual websites.

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 UDRP 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”. AT&T Corp v. Woppies, WIPO Case No. D2000-1724 (April 24, 2001).

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

The evidence of bad faith is only exacerbated by the fact that the websites to which the Respondent directs traffic belong to competitors of the Complainant.

There can be no doubt that such referrals of Internet users to other sites are done in order to profit from referral fees from these websites. As blatant evidence of the Respondent’s registration and use of the disputed domain names for its own profit, the websites at the disputed domain names contain numerous links to competing products and services and use pop-up advertisements for products and services that are similar to the Complainant’s products and services. The Respondent is thus blatantly engaging in ongoing profiteering using the Complainant’s marks. Through a referral program with the sites to which it is diverting traffic, the Respondent has no doubt been profiting illicitly from the Complainant’s trademarks since registration of the disputed domain names. Under these circumstances, the only reasonable inference is that the Respondent registered the disputed domain names in order to dilute and tarnish the Complainant’s famous marks, to trade on and profit from the Complainant’s famous name and marks, and to disrupt the Complainant’s business by diverting customers.

As further evidence of the Respondent’s bad faith registration and use of the disputed domain names, the Complainant notes that on numerous previous occasions, this Respondent has been ordered by WIPO and NAF UDRP panels to transfer domain names that were registered and used in violation of rights of others, and the Complainant again referred to 14 UDRP cases in which Asia Ventures, Inc. had featured as a respondent.

The inference of bad faith is also supported by the registration of more than one domain name that is confusingly similar to the trademarks and service marks of another entity.

In this case the Respondent has registered two domain names that impermissibly infringe on the Complainant’s marks, both of which divert consumers to websites that offer products and services in direct competition with the Complainant. This pattern of conduct is a further indication that the Respondent is acting in bad faith, having no legitimate use for either of the infringing domain names.

In sum, the Complainant contends that the Respondent has engaged in quintessential cybersquatting. It has intentionally registered domain names that were chosen because they are confusingly similar to the Complainant’s famous marks. The Respondent lacks any true or legitimate interest in the disputed names. Its websites confirm its intention to profit from diverted consumers and reveal the absence of any legitimate business or other activity. Accordingly, the disputed domain names should be transferred to the Complainant, just as other confusingly similar domain names have been transferred to it in numerous analogous WIPO UDRP proceedings.

B. The Respondent

As noted above, the Respondent did not reply to the Complainant’s contentions. However the absence of a response does not mean that a respondent has no answer to the case, and a complainant must still make out its case.

6. Discussion and Findings

Since the Respondent has not submitted a Response, the Respondent is in default, and the Panel will, under paragraph 14(a) of the Rules “proceed to a decision on the complaint”.

Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, namely:

(i) that the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) that the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established to the satisfaction of the Panel that it has substantial and long-standing rights in the name and trademark AT&T as well as lesser rights in the name ATT. The only question therefore is whether these names and marks are similar to the disputed domain names, which are <attathome.com> and <atttelephones.com>. It is customary, when comparing marks and domain names to disregard the suffix “.com” so the comparison is between AT&T or ATT and “attathome” and “atttelephones”.

With regard to the first of these names, “at home” is an everyday phrase, but there is, in the United States, an At Home Corporation, which is an Internet access provider and of whom the Complainant was, for a short time, the controlling shareholder. This corporation subsequently merged with another to become ExciteAtHome but according to documents filed by the Complainant it still currently controls 74% of the voting stock of this merged corporation. There is therefore a strong link between the names AT&T, or ATT, and AtHome. In any case there is, as the Complainant asserts, a strong possibility that because of the fame and wide reach of the Complainant, consumers would automatically associate a phrase such as “att at home” with the Complainant, believing it to be a logical extension of its telecommunication services.

As for the second name – “atttelephones” – since the Complainant’s reputation rests principally in the telephone services which it provides, there is an obvious connection between the domain name and both the Complainant’s reputation and its trademark rights.

These arguments alone would be sufficient for the Panel to find similarity between the disputed domain names and the Complainant’s trademark rights, but this is strengthened by the pattern established in previous disputes. As the Complainant points out, UDRP panels have consistently found that a domain name which is made up 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. For example, this Panel is aware of two decisions in which the trademark UGG was found to be confusingly similar to a series of domain names consisting of this mark plus 24 common English words or phrases such as <sheepskinuggboots.com>, <uggbootstore.com> and <australianuggs.com>. UGG Holdings, Inc. and Deckers Outdoor Corporation v. Paul Barclay d/b/a Australian Made Goods, NAF Case No. 216873 (February 5, 2004); UGG Holdings, Inc. and Deckers Outdoor Corporation v. Paul Barclay and Barclay Holdings, Inc., NAF Case No. 217320 (February 4, 2004).

Furthermore, the Complainant has already been involved in numerous UDRP cases and other panels have found the trademarks AT&T and ATT to be confusingly similar to domain names which have combined these marks with ordinary words or terms such as “mobile”, “one”, “phonecard”, “wirelessretailer”, “broad”, “wireless”, “business”, and “web”. Even “attelephone” and “atttelephone” have featured in previous UDRP decisions.

The Panel therefore has little difficulty in concluding that both of the disputed domain names are confusingly similar to trademarks in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy has been proved.

B. Rights or Legitimate Interests

The Complainant has made out a very strong and prima facie case that the Respondent has no legitimate rights or interest in the disputed domain names. This was set out at length in the Complaint and has been summarized above. It will not be repeated here.

Once a prima facie case is established by a complainant, the onus falls upon a respondent to refute it. But in this case there has been not a word from the Respondent. Therefore, in the light of this, and in view of the persuasive and well-argued case put forward by the Complainant, the Panel has no hesitation in finding for the Complainant.

Paragraph 4(a)(ii) of the Policy is therefore also proved.

C. Registered and Used in Bad Faith

Again, the Complainant has made out a very strong case that the disputed domain names are registered in bad faith, and again this has been set out at length in the Complaint and summarized above.

The Panel finds that paragraph 4(a)(iii) of the Policy is also proved, but in doing so wishes to single out the cybersquatting aspect of this case. One of the examples of a bad faith registration is contained in paragraph 4(b)(ii) of the Policy (“you 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 you have engaged in a pattern of such conduct”). With some 40 UDRP decisions against him, it is clear that the Respondent has engaged in such a pattern, so this alone would be sufficient for a finding of bad faith.

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 disputed domain names, <attathome.com> and <atttelephones.com>, be transferred to the Complainant.

David H. Tatham
Sole Panelist

Dated: November 14, 2005