WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Wireless Services, Inc. and AT&T Corp. v. Phone Center, Mark Henrich
Case No. D2000-0678
1. The Parties
1.1 The Complainants are AT&T Corp. ("AT&T" Corp.") and its wholly owned subsidiary, AT&T Wireless Services, commonly referred to as AT&T Wireless ("AT&T Wireless"). AT&T Corp. is a corporation organized and existing under the laws of the state of New York, with a place of business at 32 Avenue of the Americas, New York, New York 10013, United States of America. AT&T Wireless is a corporation organized and existing under the laws of the state of Delaware, with a place of business at 7277 164th Ave. Northeast, Bldg. 1, Redmond, Washington 98052. (AT&T Corp. and AT&T Wireless will be collectively referred to hereinafter as "AT&T".)
1.2 The Respondent is an entity named Phone Center whose administrative contact is Mark Henrich. Both Phone Center and Mr. Henrich are named as the respondent.
2. The Domain Name and Registrar
2.1 The disputed domain name is "attwireless.com".
2.2 The registrar of the disputed domain name is Network Solutions with a business address in Herndon, Virginia.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on June 26, 2000.
3.2 On June 29, 2000, WIPO received an e-mail communication from the Respondent indicating that it had received the complaint. The communication also indicated that the Respondent is Phone Center, Inc. having a place of business at 12915 Weber Way, M/S 279, Hawthorne, CA 90251-0279. The communication was authored by Mark J. Henrich.
3.3 On July 20, 2000, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN 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 Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.4 On July 20, 2000, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.5 On July 23-24, 2000, WIPO received several e-mail communications from the Respondent and Complainant related to suspending the proceedings.
3.6 On August 3, 2000, WIPO suspended the proceedings based upon the requests of the parties.
3.7 On October 3, 2000, the Complainant requested that WIPO re-institute the proceedings, which it did and notified the parties of the same on October 6, 2000.
3.8 On October 22, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint.
3.9 On October 29, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 29, 2000, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.10 On October 30, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by November 13, 2000.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant AT&T owns the trade name and trademark "AT&T."
4.2 AT&T has registered its AT&T trademark in the United States Patent and Trademark Office and owns the following U.S. registrations: AT&T (U.S. Reg. Nos. 1,293,305; 1,298,084; 1,314,059; 1,353,769; 2,110,288; and 2,287,814) and AT&T and design (U.S. Reg. Nos. 1,542,937; 1,550,818; 1,688,845; 2,049,544 and 2,127,542). In addition, AT&T has registered its mark "AT&T" for telecommunications services in all countries of the world that have a trademark registration system.
4.3 AT&T states that it has provided wireless services under the service mark AT&T WIRELESS since at least as early as 1995. AT&T owns a federal registration for the service mark AT&T WIRELESS SERVICES (U.S. Reg. No. 2,099,822), for, inter alia, wireless services, such as "wireless voice, data, paging and facsimile services." In addition, AT&T owns a federal registration for the trademark AT&T WIRELESS INFORMATION NAVIGATOR (U.S. Reg. 2,266,819) for "computer software for use by telecommunications subscribers."
4.4 AT&T is the owner of the Internet domain names ATT.COM, ATT.NET, and ATTWS.COM. AT&T currently operates active web sites accessible through each of the domain names ATT.COM, ATT.NET, and ATTWS.COM, and others that incorporate the AT&T name 1.
4.5 Complainant states that Respondent is not a licensee of Complainant nor is it authorized to use Complainantís mark.
4.6 The domain name "attwireless.com" does not currently resolve to an active website, which the Panel confirmed for itself.
4.7 The Network Solutions' WHOIS database indicates that Respondent registered the domain name "attwireless.com" on September 10, 1996.
5. Partiesí Contentions
"The domain name "attwireless.com" is clearly identical or confusingly similar to the AT&T marks, including AT&T and AT&T WIRELESS (and AT&T WIRELESS SERVICES). Whatever differences exist between the AT&T marks and the disputed domain name Ė such as spaces between words and the insertion or deletion of words like ".com" or "services" Ė are trivial and made primarily because of the functional limitations of domain names."
"On September 10, 1996, Respondent registered the Internet domain name "attwireless.com". Accordingly, Respondent has registered a domain name identical or confusingly similar to Complainant AT&Tís marks. Respondentís awareness that visitors to its web site would likely have accessed the site believing it to be related to AT&T and/or AT&T Wireless Services is evidenced by the notice placed at the site indicating that the site is unaffiliated with AT&T."
"Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainantís mark. The term "AT&T WIRELESS" is not the subject of any federal trademark registration belonging to Respondent. Moreover, to the best of Complainantís knowledge, the domain name is not a legitimate name of any business of Respondent, nor in any other way identified with or related to a legitimate interest of Respondent."
"By letter dated August 25, 1997, sent by Facsimile, Complainant notified Respondent of the AT&T marks and AT&Tís legitimate common-law and statutory rights in the AT&T marks and specifically the name AT&T WIRELESS. Complainant further notified Respondent that its registration and use of the domain name violated AT&Tís rights."
"By letter dated September 18, 1997, sent by Certified Mail, Return Receipt Requested, Complainant again wrote Respondent, pointing out that Respondent had failed to respond to Complainantís August 25, 1997, letter."
"By letter dated September 26, 1997, counsel for Respondent first responded to Complainantís demands. Therein, Respondentís counsel sought to dispute Complainantís infringement claims, which Respondentís counsel claimed was unfounded given that the site was under construction and contained a specific disclaimer of any affiliation with Complainant. In a transparent attempt to justify its act of registering the domain name, Respondentís "under construction" notice at the domain name stated "YOU ARE AT T WIRELESS," notwithstanding that there was (and remains) no evidence that Respondent had ever operated under that name."
"Subsequently, in a November 3, 1997, conversation between Complainantís counsel and Respondentís counsel, Respondentís counsel advised Complainant that Respondent would not part with the domain name without consideration to cover Respondentís alleged "significant expenses" associated with the domain name."
"Recognizing that its non-infringement position was unsupportable and effectively acknowledging Complainantís rights in the AT&T name and mark, by letter dated November 11, 1997, Respondentís counsel advised Complainant that Respondent had "terminated" the web site located at the domain name."
"By letter dated November 13, 1997, Complainantís counsel acknowledged Respondentís counselís communication and advised that Complainant would continue to monitor the domain name to insure that it was not used."
"By letter dated November 26, 1997, Complainantís counsel again wrote Respondentís counsel, this time requesting evidence that Respondent had deleted (i.e., withdrawn its registration for) the domain name."
"Not receiving a response from Respondentís counsel, Complainant then sought to have Network Solutions cancel the domain name. See Complainantís counselís letters of December 4, 1997, and December 30, 1997. The effort was unsuccessful, for, as Network Solutionsí counsel explained, technical reasons, not as the result of a substantive trademark analysis. See Network Solutionsí letters of December 18, 1997, January 15, 1998, and January 22, 1998."
"Concurrently, by letter dated January 13, 1998, Complainant renewed its complaint regarding Respondentís use of the domain name."
"Respondent continued to ignore Complainantís demands and continued its registration of the domain name "attwireless.com."
"On May 1, 2000, Complainant sent Respondent a further letter asserting AT&Tís rights in the AT&T marks and requesting transfer of the domain name to Complainant. In the letter, Complainant again noted that the AT&T WIRELESS name has become closely associated with Complainant, and that Respondentís domain name registration for "attwireless.com" name unlawfully trades upon Complainantís goodwill. Again Respondent has neither responded to this letter nor discontinued its registration of the domain name."
"Accordingly, Respondentís failure to respond to Complainantís communications further suggests that Respondent has no legitimate rights in the "attwireless.com" domain name."
"On information and belief, Respondent registered the domain name at issue in order to prevent Complainant, the owner of the AT&T WIRELESS service mark, from using the mark in a corresponding domain name. See Policy, paragraph. 4(b)(ii). This can be inferred by the fact that respondent ceased using the cite upon receiving a protest regarding its use from Complainant, as well as from Respondentís pattern of such conduct. Specifically, as set forth below, Respondent has repeatedly registered Ė and not used Ė domain names that are either identical to or confusingly similar with othersí trademarks."
"Respondent Mark Heinrich has registered the domain name MORGANSJEWELERS.COM. See Annex H. The trademark MORGANíS is the subject of federal registration number 1,123,855, owned by Zale Corporation and for use in jewelry store services."
"Respondent Mark Heinrich has registered the domain name TELCO3.COM. See Annex H. The trademark TELCO SYSTEMS is the subject of several federal registration numbers, including 1,936,449; 2,028,582; 1,765,856; and 1,544,482, all of which are owned by Telco Systems, Inc. and for use in photoelectric sensors, amplifiers, and power packs, printing and writing paper, and electric porcelain and earthware figures. See Annex H. Respondent has not used this domain name."
"Respondent Mark Heinrich has registered the domain name WESTERNFIBER.COM. See Annex H. The trademark Western is the subject of federal registration number 2,112,451, owned by Western Pulp Products Company and for use in molded paper fiber packaging, cushioning, nursery containers and floral containers, among other things."
Respondent did not file a response to the complaint.
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 Based upon the e-mail communications received by WIPO from the Respondent, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
6.4 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.5 Complainant asserts that the domain name ""attwireless.com"" is identical or confusingly similar to Complainant's trademarks, including AT&T, AT&T WIRELESS, and AT&T WIRELESS SERVICES.
6.6 As the Respondent has failed to submit a response to the complaint, the Panel accepts as true all of the allegations of the complaint. See Talk City, Inc. v. Michael Robertson, D2000-0009, February 29, 2000.
6.7 The Panel finds the ""attwireless.com"" domain name is identical to the trademark AT&T WIRELESS and confusingly similar to the registered trademarks AT&T, AT&T WIRELESS SERVICES, and that the Complainant has established it has rights in the name "AT&T WIRELESS," pursuant to paragraph 4(a)(i) of the Policy.
6.8 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "attwireless.com." Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. See N.C.P. Marketing Group, Inc. v. Entredomains, D2000-0387, July 5, 2000.
6.9 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name "attwireless.com," pursuant to paragraph 4(a)(ii) of the Policy.
6.10 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states:
(i) circumstances indicating that you have registered or you 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 documented out-of-pocket costs directly related to the domain name.
6.11 In light of (1) the Respondent's "Under Construction" notice that disclaimed any affiliation with AT&T but stated "YOU ARE AT T WIRELESS", (2) the Respondent's willingness to sell the domain name to the Complainant and requests to the Complainant that it make proposals to acquire the domain name, (3) the termination of any use of the domain name and notice of the same to the Complainant, (4) the Respondent's registration of other domain names that are identical to or confusingly similar with registered trademarks of third parties, and (5) the Respondent's apparent unwillingness to defend itself against the Complainant's allegations, the Panel finds that these circumstances indicate that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.
6.12 The Panel finds that the Complainant has established that the Respondent registered and used the domain name "attwireless.com" in bad faith.
As the Complainants, AT&T Wireless Services, Inc. and AT&T Corp., have established that the Respondent, Phone Center, Inc. and/or Mark Henrich, have engaged in abusive registration of the domain name "attwireless.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "attwireless.com" be transferred to the Complainant.
R. Eric Gaum
Dated: November 11, 2000
1. As copies of the service mark registrations and domain names set forth in paragraphs 4.3 and 4.4 were not included as Annexes to the complaint, the Panel independently verified the registrations using the U.S. Patent and Trademark Office web site trademark database and the Network Solutions WHOIS database.