WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. WorldclassMedia.com
Case No. D2000-0553
1. The Parties
1.1 The Complainant is AT&T Corp., a company incorporated under the laws of New York, United States of America.
1.2 The Respondent is WorldclassMedia.com, of Postfach 458, Graz, Steiermark 8011, Austria.
2. The Domain Names and Registrar
The domain names upon which this complaint is based are attmexico.com and att-latinamerica.com. The registrar of the domain name as at the date of the Complaint is Network Solutions Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Centre") by email on June 5, 2000 and in hard copy on June 8, 2000. The Complaint states that the fees were paid by check payable to WIPO. The Complaint stated that a copy of the Complaint was sent to the Respondent by post and by email, and that a copy had been sent to Network Solutions Inc. by courier and email.
3.3 Upon receipt of the email copy of the Complaint, the Centre sent the Complainant an "Acknowledgment of Receipt of Complaint" on June 8, 2000 by email, with a copy being sent to the Respondent by email.
3.4 The Centre sent a Request for Registrar Verification to NSI on June 8, 2000 by email. NSI responded to the Centreís request by email on June 10, verifying (1) Network Solutions was in receipt of the Complaint, (2) that NSI was the Registrar for the domain names in dispute, (3) that the Respondent was the current registrant of the domain names in dispute, (4) the Respondentís contact details, (5) that Network Solutionsí 5.0 Service Agreement was in effect in relation to the domain names, and (6) that attmexico.com and att-latinamerica.com had Ďholdí status.
3.5 The Centre sent the Notification of Complaint and Commencement of Administrative Proceeding on June 13, 2000 to the Respondent by post/courier, facsimile and email, and to the Complainant by email.
3.6 The Centre received the Response from the Respondent by email on July 2, 2000 and hardcopy on July 17, 2000. The Response did not request that the dispute be dealt with by a three member panel. The Centre sent an Acknowledgment of Receipt (Response) to both the Respondent and Complainant on July 5, 2000 by email.
3.7 The Centre received a supplemental filing, in the form of an email dated July 12, 2000 from the Complainant, which was also sent to the Respondent, attaching a request for consent to file a supplemental memorandum and the proposed supplemental memorandum.
3.8 The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on July 17, 2000 via email. A copy was also sent to the Panel on the same date by email.
3.9 The Centre dispatched a Transmission of Case File to the Panel, to the Respondent and to the Complainant on July 17, 2000. The Panel did not receive this material until 21 July, 2000.
3.10 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted as fact by the Complainant and remains uncontested.
The Complainant is a provider of telecommunications goods and services in the United States and other countries.
4.2 The Complainantís Trade and Service Marks
The Complainant has trade mark and service mark registrations for AT&T in the United States, details of which are contained in Annex 5 to the Complaint. This mark (the "Principal Mark") is registered in four classes including telecommunications services. The evidence shows that the Principal Mark was first registered on September 25, 1984 and remains current.
The Principal Mark is also registered in Austria, the European Community, Mexico and other countries throughout Latin America, details of which are contained in Annex 12 to the Complaint.
The Complainant also has a service mark registration for AT&T WIRELESS SERVICES in the United States, details of which are contained in Annex 8 to the Complaint. This service mark (the "Wireless Services Mark") is registered in international class 38. The evidence shows the Wireless Services Mark was first registered on September 23, 1997 and remains current.
Further, the Complainant has a service mark registration for 1-800 CALL ATT in the United States, details of which are contained in Annex 8 to the Complaint. This service mark (the "Call ATT Mark") is registered in international class 38. The evidence shows the Call ATT Mark was first registered on May 9, 2000 and remains current.
The Complainantís above trade and service marks will be described as the "Complainantís Marks".
4.3. Activities of the Respondent
The Respondent asserts as fact in the Response that it provides free travel tips and information for travellers to Latin American countries, at least in respect of the att-latinamerica.com domain name. The Response asserts that the website for attmexico.com is still being designed and developed but does not indicate the kind of activity to which it will relate.
5. The Complainantís Contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element described in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain names in dispute are confusingly similar to the Complainantís Marks.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no legitimate interest in the domain names. In particular, the Complaint submits that the Respondent (in regard to paragraph 4(c) of the Policy):
- Is not Complainantís licensee in respect of the Complainantís Marks;
- Does not own any registered or common law marks containing the terms "AT&T" or "ATT";
- Is not commonly known by either disputed domain name; and
- Is not making legitimate non-commercial or fair use of either disputed domain names without intent for commercial gain.
5.4 In reference to the requirement of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered and is using the disputed domain names in bad faith, in that they were registered primarily for the purpose of selling or otherwise transferring it to the Complainant or to a third party, for valuable consideration in excess of the out-of-pocket expenses related directly to them (as referred to in paragraph 4(b)(i) of the Policy). Further, the Complainant asserts that the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its marks in a corresponding domain name and has engaged in a pattern of such conduct (as referred to in paragraph 4(b)(ii) of the Policy).
5.5 In support of this allegation the Complaint refers to the fact that on January 19, 2000 <att-latinamerica.com> resolved to a site stating "This Domain Name is FOR SALE!", as reflected in Annex 2 to the Complaint. Further, the Complainant refers to the fact that, as of May 22, 2000, <attmexico.com> resolved to a place-holder "under construction" site, as reflected in Annex 1.
The Complainant also asserts that many domain names registered by the Respondent (or closely associated entity) are for sale, indicating an intent to sell the disputed domain names as part of a larger pattern.
6. The Respondentís Contentions in the Response
6.1 The Response refutes the allegation in the Complaint that the domain names in dispute are confusingly similar to the Complainantís Marks.
6.2 In relation to the allegation in the Complaint that the Respondent has no legitimate interest in the domain names in dispute, the Response submits that the Respondent is using the disputed domain names in a legitimate non-commercial and fair manner. The Response states that:
"On the website for <att-latinamerica.com> we are providing free travel tips and information for travellers to latin american countriesÖ.
The fact that the website for <attmexico.com> currently resolves to a place-holder "Este sitio esta bajo construccion. Favor de regresar mas tarde." by Agencia de Transacciones Tecnicas de Mexico does not imply that the holder of the domain name does not have a legitimate interest or right to the domain name. Our client is still in the process of designing and developing the website.."
6.3 In answer to the allegation in the Complaint that the domain names in dispute were registered and are being used in bad faith, the Response submits that the domain names could not be said to have been acquired by the Respondent for any of the purposes described in paragraph 4(b) of the Policy. In support of this contention, the Response cites the following:
(i) Both domain names were registered on March 3, 2000 and there is no evidence to suggest they were registered for the purpose of transferring them to the Complainant or one its competitors for valuable consideration far in excess of the Respondentís out of pocket expenses directly related to the domain names;
(ii) the print-out of the website for <att-latinamerica.com> in Annex 2 of the Complaint is dated January 19, 2000 and not associated with the current registrant or registration dated March 3, 2000;
(iii) the disputed domain names were not registered in order to prevent Complainant from reflecting its marks in a corresponding domain name. Complainant has already reflected its marks in several domain names, including <attlatinamerica.com>; and
(iv) other domain names offered for sale by Respondent or its clients are only for sale because of a change in business focus. There is no evidence that Respondent has engaged in a pattern of preventing trademark owners from reflecting their marks in domain names.
7. Complainantís request to file supplemental memorandum and supplemental memorandum in support of Complaint of July 12, 2000
7.1 The Complainant submitted to the Panel a request to file supplemental memorandum in support of Complaint. Complainant sought to justify the filing of a supplemental memorandum on the basis of "dubious new facts and legal arguments" asserted in the Response and because "new, pertinent facts" had come to light since the filing of the Complaint. Complainantís supplemental points relate to the relationship between Respondent and Worldclass Media Inc and the partiesí respective rights to the marks AT&T and ATT.
7.2 Respondent did not make any submissions in respect of Complainantís request to file the supplemental memorandum.
7.3 In the Panelís view, the points raised in the supplemental memorandum are sufficiently articulated in the Complaint and accordingly the Panel refuses consent to file the supplemental memorandum and will have no regard to it.
8. Discussion and Panel Findings
8.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
8.2 Domain Names identical or confusingly similar to Complainantís Marks
The domain names in dispute are attmexico.com and att-latinamerica.com. The Marks owned by the Complainant are AT&T, AT&T WIRELESS SERVICES and 1800 CALL ATT. The Panel has come to the view that the "att" portion of the domain names in dispute is confusingly similar to a trademark in which the Complainant has an interest for the following reasons:
(i) the letters ATT are a fundamental feature of the Complainantís Marks and the Complainant has proven that it uses "ATT" as a synonym for "AT & T" and, although somewhat curiously the Complainant did not explicitly assert that Complainant had common law rights in "ATT" as an unregistered mark, the evidence adduced by Complainant is certainly to that effect. The Panel also notes the Complainantís registrations of att.com, attlatinamerica.com and attla.com.
(ii) an ampersand is not a valid character in a domain name and its absence is not sufficient to prevent the domain names in dispute from being confusingly similar to the Complainantís Marks; and
(iii) the Complainant is a well known provider of telecommunications services with trademark registrations in Mexico and Latin American countries.
The Panel is of the view that ATT is a trade mark of the Complainant and that the first three letters of each of the domain names in dispute is identical to that mark. The balance of the characters in the domain names in dispute are geographical descriptors. In the Panelís view, where a domain name is composed of a trade mark juxtaposed with a place name, a reader will naturally split them in that way, and the absence of a space, or the insertion of a dash, underscore, or hyphen does not prevent that approach. Accordingly, the Panel is of the view that each of the domain names in dispute comprises a portion identical to a mark (ATT) in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainantís mark ATT or Complainantís Marks.
Paragraph 4(a)(i) of the Policy is plainly satisfied in the view of the Panel.
8.3 The Respondent has no rights or legitimate interests in the Domain Names
The Respondent has not provided any evidence of legitimate noncommercial or fair use of the disputed domain names but rather has merely asserted its intention. And in respect of attmexico.com Respondent actually disavows its own use, referring to a client rather than itself preparing to use the domain name. Respondent has not tried to assert any use of the domain names or names corresponding to the domain names in connection with a bona fide offering of goods and services before notification of the dispute (paragraph 4(c)(i) of the Policy). Nor has the Respondent suggested that it has been commonly known by either of the disputed domain names (paragraph 4(c)(ii) of the Policy). Accordingly, the Panel accepts the Complainantís contentions in respect of the absence of Respondentís rights or legitimate in the disputed domain names.
The Panel finds that the Complainant has proven paragraph 4(a)(ii) of the Policy.
8.4 The Domain Names have been registered and are being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith AND use in bad faith. Paragraph 4(b) of the Policy provides:
" . . .the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith: . ." (emphasis added).
In some cases it has been found that it is unnecessary to consider the two limbs of this provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. However, although bad faith use can be found to follow bad faith registration without more, it is still necessary for the Complainant to prove registration in bad faith.
The Respondentís contention that "the domain names were available for registration by complainant or anyone else prior to March 3, 2000" is not supported by the print-out dated January 19, 2000 at Annex 2 to the Complaint which describes the domain name att-latinamerica.com as "FOR SALE!". The copyright notice at this site refers to Worldclass Media, Inc. strongly suggesting that the domain name was registered by that entity or one closely related to it. The doubt is resolved by the letter of April 10, 2000 from Robert Heine to Complainant at Annex 16 to the Complaint. The letter does not seek to diassociate Respondent from Worldclass Media, Inc. and indeed implicitly confirms the relationship. The Panel notes and accepts the submission in notes 3 and 4 on page 9 of the Complaint regarding the relationship between the Respondent, Worldclass Media, Inc. and Trydex. Accordingly, the Panel finds that the domain name att-latinamerica.com was registered in bad faith.
Further, the alleged pattern of offering domain names for sale has not been adequately refuted by the Respondent. Sale of domain names due to a "change in business focus" does not explain the offer of domain names such as MISSMALAYSIA.COM for sale. While the Complainantís evidence of bad faith registration and use of attmexico.com may not have been sufficient to obtain relief in the absence of a Response, the Respondent has had the opportunity to show that its registration and use of the mark is bona fide but has not provided any such evidence and has, as noted above, actually disavowed any intention to use that domain name itself. In the absence of such evidence, and given the pattern of selling domain names for commercial gain, the Panel concludes that attmexico.com was registered in bad faith.
The Panel is of the view that the Complainant has proved paragraph 4(a)(iii) of the Policy.
Having decided that the Complainant proved all the requirements of paragraph 4(a) of the Policy in respect of each of the domain names in dispute, the Panel upholds the Complaint and orders NSI to transfer to the Complainant the domain names attmexico.com and att-latinamerica.com.
Philip N. Argy
Dated: July 28, 2000