WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Fred Rice
Case No. D2000-1276
1. The Parties
Complainant: AT&T Corp., 32 Avenue of the Americas, New York, New York 10013, United States of America.
Respondent: Fred Rice, 52 Victoria Avenue South, Hamilton, Ontario L8N 2F7, Canada.
2. The Domain Names and Registrar
Domain Name: "attglobalsecurity.com"
Registrar: Network Solutions Inc.
3. Procedural History
The Complaint was received by WIPO by email on September 27, 2000, and in hard copy on September 28, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules paragraph 2(a) and the Respondent responded to the Complaint within time by email on October 21, 2000. The Panel is properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO as a consequence of which the date scheduled for the issuance of the Panelís Decision was initially November 17, 2000.
The Panel noted that the Response contained an allegation of reverse domain name hijacking and indicated to the parties that it would give the Complainant an opportunity to respond to that allegation. The Complainant submitted a rebuttal on November 16, 2000. The Respondent has put in an unsolicited response to the rebuttal, which the Panel has read, but which does not take the matter any further.
The date now scheduled for the issuance of the Panelís Decision is November 30, 2000.
4. Factual Background
The Complainant is the well-known provider of telecommunications and related services under the mark AT&T. The Complainant has provided ample evidence as to its rights (registered and unregistered) in the mark AT&T, which go back many years. In addition the Complainant has registered rights in the mark AT&T SOLUTIONS, which it has used since at least as early as 1995. The trade mark registrations have filing dates going back to 1995 and 1996.
The Complainant also uses and has for many years used the letter combination ATT in relation to its services, the ampersand not being a symbol available for use on touch tone keypads and in the formulation of domain names. The Complainant has provided evidence of use of 1-800 CALL ATT and trade mark registrations of that mark with filing dates going back to 1994. In addition the Complainant has registered the trademark "att.net" in both Canada and the US with filing dates going back to 1995 and 1996.
The Complainant uses the domain names "att.com", "att.net", "attglobal.com", "attglobal.net", "attsolutions.com" and "attsolutions.net" in the sense that they are all connected to AT&T sites. The Complaint does not indicate when those domain names were first registered or used. From evidence filed by the Respondent it appears that, notwithstanding the Complainantís claim to the contrary, they are not all owned by the Complainant. However, they all appear to the Panel to be owned by members of the AT&T group of companies.
The Complainant has a subsidiary, which trades under the name AT&T Solutions, but there is no evidence before the Panel as to when it started trading under that name. The website pages exhibited, which are dated August 2000, demonstrate that this company is concerned with global networks.
On December 11, 1998, the Respondent registered the domain names "attglobalsecurity.com", "attglobalsolutions.com" and "attglobalsolutions.net" (together hereinafter referred to as "the Domain Names").
Between February 19, 1999, and June 20, 2000, the parties engage in a spasmodic and inconclusive correspondence regarding the Domain Names. The Complainant wrote to the Respondent on February 19, 1999, notifying the Respondent of the Complainantís rights and demanding inter alia that the Respondent "delete" "attglobalsecurity.com". The Respondent replied in a dismissive manner. On March 29, 1999, the Complainant wrote an identical letter, this time in relation to the other two of the Domain Names.
On April 6, 1999, the Complainant wrote two letters to the Respondent one making reference to its letter of February 19, 1999, and the other making reference to the letter of March 29, 1999, and informed the Respondent that if he commenced use of the domain names "attglobalsecurity.com" and "attglobalsolutions.net" or offered either of them for sale to a third party, the writer would advise management to take further legal action. Again the Respondent indicated an unwillingness to cooperate.
On August 19, 1999, the Complainant approached the Respondent again, this time through a Canadian law firm inviting the Respondent to indicate the circumstances under which the Respondent would be prepared to assign the Domain Names. The Respondent sent a holding reply on August 25, 1999. In the days following that exchange the partiesí lawyers spoke by telephone, but there is no contemporaneous record of what was said. On September 15, 1999, the Complainantís Canadian lawyer informed the Respondent that the Complainant did not purchase Ďattí domain names and warned the Respondent that if he commenced use of the Domain Names "further legal action" would be taken.
There the matter rested until May 29, 2000, when the Complainantís Canadian lawyer again wrote to the Respondent. The letter "noted that the above-noted domain name registrations remain for sale" and had not been used. The Complainant offered to buy the Domain Names for an aggregate sum of $70 US. The Respondent sent a holding reply by email on June 14, 2000, which provoked an automatic Out of Office reply from the Complainantís Canadian lawyer.
On June 20, 2000, the Respondent denied that the Domain Names had ever been for sale and denied that he had violated the Complainantís rights. He asserted that the Complainant had no valid trademark at the time of registration of the Domain Names. He quoted a US judge to the effect that holders of famous trade marks are not automatically entitled to use their marks as domain names and that a legitimate, competing use of a domain name is not dilution. He went on to say this:
"Or alternatively; I have established rights of free speech and "fair use" for parody, comment, criticism ÖÖ (Weíve watched AT&Tís stock drop from the mid 60ís to the low 30ís! We also believe Mr. Armstrong GROSSLY OVERPAID for the Media One acquisition. Weíre also watching EBIDTA slide at AT&T wireless Ö..)."
On September 26, 2000, the Complaint was launched.
5. Partiesí Contentions
The Complainant identifies all its above-mentioned AT&T and ATT names, trade marks and service marks as "the AT&T Marks". Its contentions appear from what follows which are largely verbatim quotes from the Complaint:
AT&T has invested a substantial amount of money and effort advertising and promoting marks incorporating the AT&T Marks. As a result, the AT&T Marks have achieved an unparalleled degree of consumer recognition and fame and serve as an exclusive designation of origin of AT&T and of its goods and services, and as a symbol of the goodwill and excellent reputation represented by AT&T Marks.
The domain names are clearly identical or confusingly similar to the AT&T Marks, particularly AT&T, AT&T SOLUTIONS, "att.net" and 1-800 CALL ATT marks and web sites "att.com", "att.net", "attsolutions.com" and "attglobal.com". Whatever differences exist between the AT&T Marks and the disputed domain name ó such as spaces between words and the insertion or deletion of words like ".com" or "SECURITY" OR "GLOBAL" ó are trivial and made primarily because the primary domain names "att.com" and "att.net" have been registered by the Complainant.
This confusing similarity is apparent from a simple comparison of the marks with the contested domain names, which use the character string "ATT" by dropping the ampersand character from "AT&T". In this sense, the contested domain names use the very same naming convention as Complainant itself uses when formulating its own domain names, such as "att.com", "att.net", "attsolutions.com" and "attglobal.com". Moreover, in the case of Complainantís mark 1-800 CALL ATT, Respondentís use of ATT is identical to, rather than merely similar to, Complainantís mark.
In circumstances similar to those, which exist in this very case, the Courts have not hesitated to find for AT&T and against the infringer of AT&Tís famous marks. For example, in AT&T Corp. v. Synet, Inc., C.A. No. 96-0110, 1997 WL 89228 (N.D. Ill. Feb 13, 1997), the Court concluded that the Defendantís use of the mark "1.800.ATT.INET" infringed several of AT&Tís trademarks and service marks, including "AT&T" and "1 800 CALL ATT". In reaching the conclusion that the impugned mark was confusingly similar to "AT&T", the Court observed that the consuming public associates "ATT" with AT&T only. According to the Court: "The degree of similarity between the marks is indisputable. "ATT" clearly signifies AT&T. In addition, the Defendantsí use of "ATT" in 1.800.ATT.INET is identical to Plaintiffís use of "ATT" in Plaintiffís marks such as 1 800 CALL ATT." This indisputable similarity, combined with other factors, led to the conclusion of trademark infringement in that case. The same result should obtain here, where Respondent creates consumer confusion by using the character string ATT in precisely the same manner that AT&T uses it, just like the Defendant Synet.
Similarly, in a recent WIPO administrative Panel Decision, the panel concluded that the domain name "att2000.com" is confusingly similar to the "ATT" and "AT&T", rejecting the Registrantís contention that the absence of the ampersand sufficiently distinguished her domain name from these marks. The panel explained the confusing nature of the use of the Respondentís domain name in light of the Complainantís marks as follows: "The name "AT&T" and "ATT" is well-known internationally as being associated with a very large telephone communications company in the U.S.A. Persons who have had dealings with AT&T Ė which would be most persons in the United States and most visitors to that country Ė could be confused into thinking that "att2000.com" has some millennium promotion by AT&T. Focusing on the expressions in marks where ATT is used and even when AT&T is used, confusion with another name using ATT plus the numerals 2000 is likely. The panelís overall impression Ė deciding it as a "jury question" is of a real danger of confusion." See AT&T Corp., v. Tala Alamuddin, Case No. D2000-0249 (May 18, 2000) (http://www.wipo.int/amc/en/domains/decisions/html/d2000.0249.html). In the result, the panel required that the domain name be transferred to AT&T.
In the same way, persons who have had dealings with AT&T could be confused into thinking that "attglobalsolutions.com", "attglobalsolutions.net" and "attglobalsecurity.com" are sites owned and maintained by AT&T to promote products and services.
On December 11, 1998, Respondent registered the Internet domain names "attglobalsecurity.com", "attglobalsolutions.com" and "attglobalsolutions.net". Accordingly, Respondent has registered the domain names identical or confusingly similar to the Complainantís AT&T Marks. Respondentís awareness that visitors to its web site would likely access the site believing it to be related to AT&T Corp. and/or AT&T Marks, including AT&T SOLUTIONS, is evidenced by the same notice placed at the web sites indicating that each site is an internet incubator that registers domain names and commercializes ideas. This notice does nothing to dispel the actual confusion created by Respondentís registration and use of a confusingly similar domain name.
Moreover, U.S. courts have held that the actions of cybersquatters, such as the Respondent, damage the rights of legitimate trademark owners (like Complainant) merely by virtue of their preventing the trademark owners from using their marks as domain names. For example, the Court in a case involving the "panavision.com" name held: "Permissible, non-trademark uses stand in sharp contrast to Toeppenís use of the Panavision marks. Toeppen traded on the value of the marks as marks by attempting to sell the domain names to Panavision. This conduct injured Panavision by preventing Panavision from exploiting its marks and it injured consumers because it would have been difficult to locate Panavisionís web site if Panavision was forced to establish a web site under a name other than its own."
Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainantís mark. The terms "ATT GLOBAL SOLUTIONS" or "ATT GLOBAL SECURITY" are not the subject of any federal trademark registration belonging to Respondent. Moreover, to the best of Complainantís knowledge, none of the domain names is a legitimate name of any business of Respondent, nor is any of them in any other way identified with or related to a legitimate interest of Respondent.
In addition, Respondentís lack of any legitimate interests in the domain names can be inferred from the correspondence between Complainantsí counsel and Respondent and its counsel referred to above.
On information and belief, Respondent registered the domain name at issue in an attempt to attract, for commercial gain, Internet users to Respondentís web site by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site, products, and services. See Policy, paragraph 4(b)(iv).
On information and belief, Respondent registered the domain name at issue in order to prevent Complainant, the owner of the AT&T Marks, from using the marks in a corresponding domain name. See Policy. paragraph 4(b)(ii). This can be inferred by Respondentís pattern of such conduct. Specifically, Respondentís website indicates clearly that it registers domain names for profit.
Further, a WHOIS Database search of the Network Solutions Inc. web site reveals as many as 34 domain name registrations held in the name FRED RICE. The Registrant information for the domain names "incognitos.com", "incognitos.net", "skynetsecurity.com", "northstarsecurity.com", "directglobalsecurity.com" and "globalstarsecurity.com" reveal that each and every one is registered to a Fred Rice living in Hamilton, Ontario, with two different street addresses but the same telephone number. A visit to each of these web sites also reveals that all of them have an identical notice indicating it is "under construction", even though they have been registered, in some cases, since December of 1998.
Many of these domain name registrations are confusingly similar with registered trademarks in Canada. For example, the domain name "northstarsecurity.com" may be confusing with the registered trademark NORTH STAR, Cdn. Reg. No. TMA530, 542 for use in association with Vinyl windows, patio doors and steel entrance doors. The trademark SKYNET WORLDWIDE EXPRESS is registered to Skynet Inc., bearing Cdn. Reg. No. TMA428, 551, for use in association with courier services. The Respondent has registered the domain name "skynetsecurity.com", since March 15, 1999, and the web site features only an "under construction" sign. The Respondent has also registered the domain names "directglobalsecurity.com" and "globalstarsecurity.com", but is not the owner of the Canadian trademark application for GLOBAL SECURITY NETWORK, for use in association with burglar alarm panels, and other security system components, bearing Cdn. Appl. No. 875,459, filed on April 17, 1998.
Several administrative panel decisions have ruled that a respondentís practice of registering the domain names of well-known third parties is evidence of bad faith registration. [Citations are given.]
In addition, the Respondent admits in its correspondence, referred to above and attached hereto, that it has registered 17 domain names, which are likely for sale. This, along with the above evidence of its additional current registrations, which are confusingly similar with registered trademarks in Canada, clearly demonstrates that the Respondent has a consistent practice of cybersquatting.
The Respondentís contentions appear from what follows, which likewise are largely verbatim quotes from the Response:
"(The American) Congress passed the ACPA, (Anticybersquatting Consumer Protection Act) to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks Ė a practice commonly referred to as Ďcybersquattingí." S. Rep. No. 106-140, at 4. 15 U.S.C. 1125(d)
Respondent is not a cybersquatter as defined by the "(ACPA)"
Respondent is not a Ďcybersquatterí and this Complaint has been brought forth in bad faith. The Complainant maliciously neglected to include numerous pieces of correspondence between themselves and the Respondent. Respondent States "If AT&T Corp. thinks they have a case then ĎWE WILL KICK THEIR ASSí in Court." This is not a bad faith domain name registration and therefore is not covered by the policy.
The Complainant does not own one of the most famous trade names and trademarks in the world. Any and all of the Complainantís alleged "MARKS" including, but not limited to those referenced in (see Complaint, (ANNEX C, D and E) are not famous, unique, exclusive, distinctive, arbitrary or fanciful. They are generic and / or descriptive, or at best, suggestive of the Complainantís goods / services. A suggestive mark requires imagination and perception to determine the nature of the goods and services. The claimant has the burden of proving distinctiveness, and has not provided survey evidence of secondary meaning, and has failed to submit circumstantial evidence. Furthermore, Complainantís use has not been substantially exclusive and third party trademark use is rampant. [The Respondent goes on to develop that theme in detail.]
AT&T Corp has failed to submit any evidence regarding money or efforts spent on advertising and promoting the AT&T Corp marks. As previously stated AT&T Corp marks do not serve as an exclusive designation of origin of AT&T Corp and its goods / services. In light of AT&T Corpís Reverse Domain Name Hijacking of the disputed domain names we assert AT&T Corpís marks have no goodwill or excellent reputation.
In addition, "att.com"; "attglobal.com"; "attglobal.net"; "attsolutions.com" and "attsolutions.net" are not marks of AT&T Corp, they are web sites operated by AT&T Corp.
"att.com", "attsolutions.com" and "attglobal.com" are not marks of AT&T Corp. As previously stated, AT&T Corp does not own the web site "att.com". As previously stated, AT&T Corp has no established rights whatsoever in the character string "ATT." As previously stated, the words "SECURITY", "SOLUTIONS" and "GLOBAL" are truly generic.
IN FACT, Respondent was unaware of the "AT&T SOLUTIONS" or "AT&T GLOBAL" marks. Complainant has failed to provide any evidence of advertising these marks.
As previously stated, AT&T Corp. has no rights in the character string "ATT", or in the domain name "att.com". In addition, the domain name "attglobal.com", "attglobal.net", & "attsolutions.net" were registered after Respondent registered the disputed domains.
The Respondent is not a Ďcybersquatterí. The Complainants argument is irrelevant. In addition, no marks existed at the time the respondent registered the disputed domains. The Respondent has created no consumer confusion by using the character string "ATT" in the formulation of a domain name. Many other, possibly thousands of domain names are formulated using the character string "ATT" in combination with other character strings, such as "ORG" to form the active website "att.org".
Respondent registered the domain names in connection with a bona-fide offering of services. Specifically, Respondent registered the generic / descriptive domain names as part of his domain name web site development enterprise. Respondent is in the business of registering domain names that comprise generic words and/or descriptive terms, and developing business-oriented web sites using these domain names. Respondent did not plan to sell the domain names, but rather planned to develop an Internet "Incubator" for "Young Women Entrepreneurs", since he has developed other successful web sites. Several ICANN - approved panels have held that exactly such an enterprise creates a legitimate bona-fide business interest in the generic or descriptive domain name. Respondent never attempted to sell the domain names to the Complainant. The Complainant was first to contact Respondent in regards to purchasing the domain names. It has been held that a legitimate interest in a domain name does not become illegitimate once another party offers to purchase the domain name (s). Thus Respondentís rights and interest in the domain names remained legitimate even after Complainant approached Respondent with its offer to purchase the domain names from Respondent. Furthermore Respondent did not attempt to capitalize on whatever alleged trademark rights of the Complainant, or to profit from Complainantís business, and Complainant can provide no such evidence of such. Furthermore Respondent registered the domain names prior to the development of alleged trademark rights by another party.
IN FACT, the Respondent was actively recruiting Ms. Beaton in the fall of 1998. In November of 1998, the Respondent registered a number of domain names i.e. "youdothemath.com", "fly-on-the-wall.com". Ms. Beaton took on the role of President & Director of our web development enterprise on December 3, 1998, the day Respondent registered "stephaniesworkout.com", "stephaniesworkout.net", we also registered a number of other domains for the Internet Incubator including "homegrownradio.com", "virtualhottie.com", "fitchik.com", "protectyourkids.net", we then registered a bunch of domain names for the Young Womenís Entrepreneur Program. Despite all this harassment we have managed to incorporate two companies. e*Creative "Destruction.com" was created on August 10, 1999. Our "STEPMEDIA" Division was registered November 23, 1999, and our "NOTCOM" and "FREEBANK" divisions were registered July 27, 2000. We incorporated You Do The Math Inc on May 30, 2000. We registered about 35 "DO THE MATH" domains, each with their own IP address. We host these sites on our own dedicated server leased / located at "Interland.com". We have 200GB of bandwidth per month, a majority of which will be available for use in the global "FREEDOM" network sponsored by "ZERO KNOWLEDGE SYSTEMS", as soon as this malicious harassment ends. We operate a financial and small business portal website. www.youdothemath.com Furthermore, we would have all of our "under construction" sites hosted on our server and linked to "www.attglobalsolutions.com" and / or "www.ecrerativedestruction.com" but continued harassment from the Complainant seriously disrupted our business.
In addition, Ms. Beaton is from a small town and commonly called "Princess Stephanie" and her Young Womenís Internet Incubator is commonly known as Ascension Terra-Trix, and her website is "attglobalsolutions.com".
IN FACT, we sponsored two demolition cars entering The Norfolk County Fair in Simcoe, Ontario on October 6, 2000. One car displayed "youdothemath.com" and the other "attglobalsolutions.com". Unfortunately, after arriving at the fair, brake problems were discovered with both cars and entry to the race was denied. (Ms. Beatonís Grandfather operates an automotive wrecking yard and to promote our Internet Enterprise Ms. Beatonís Grandfather and Uncle were the drivers of the cars. In addition, we are running an ad in Canadaís national newspaper,
The Globe and Mail, that began running September 25, and ends October 28, 2000. This ad is in the Internet Directory under Financial Services. It reads
"AVOID INTERNET INVESTMENT SCAMS
Ironically, it was the information and resources available on our website "www.youdothemath.com" that helped us effectively defend ourselves.
The Respondent is not a Ďcybersquatterí. No marks existed at the time of registration. According to Policy, Paragraph 4(c), as previously stated these domain names are generic and/or descriptive.
Several ICANN-approved panels have held that exactly such an enterprise creates a legitimate bona fide business interest in the generic or descriptive domain name in the domain name owner. Allocation Network GmbH v. Steve Gregory, WIPO Domain Name Dispute Case D2000-0016, Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Domain Name Dispute Case AF-0104.
It has been held that a legitimate interest in a domain name does not become illegitimate once another party offers to purchase the domain. Thus, Respondentís right and interest in the domain name remained legitimate even after Complainant approached Respondent with its offer to purchase the domain name from Respondent.
Furthermore, even after being approached by Complainant to sell the domain name, Respondent did not attempt to capitalize on whatever alleged trademark rights or to profit from Complainantís business, and Complainant can provide no evidence of such.
Respondent has not registered or used the domain name in bad faith. The Uniform Domain Name Dispute Resolution Policy established by ICANN clearly requires a domain name to be (1) registered and (2) used by the respondent in bad faith See Policy 4(a)(iii). Complainant fails to provide evidence of either. Bad faith registration is negated by a finding that the domain name owner registered the domain name prior to the development of trademark rights by another party, and/or that the domain name owner did not know of or could not have known of the complainant and/or the complainants trademark rights at the time of registration.
Respondent and AT&T Corp engaged in correspondence on many more occasions than the Complainant wishes to admit. AT&T Corp. has maliciously neglected to include numerous pieces of correspondence. These letters clearly assert & reaffirm Respondentís Intellectual Property Interests and his Refusal to sell the disputed domain names. Furthermore the Complainantís statements regarding Mr. Stanley O. Kotick Q.C. are totally false. Mr. Kotick threatened to seek remedies from AT&T Corp. for their malicious harassment and character assassination of Respondent. In addition, he expressed the intrinsic value of an active group of websites selling Ďhigh marginí third party ĎInternet Privacy & Securityí solutions on a global scale.
Respondent did not register the domain names in an attempt to confuse anyone. The Complainant has failed to provide any evidence of such. Respondent did not register the domain names to prevent Complainant from using any alleged marks in a corresponding domain name. In fact a WHOIS search of the name "AT&T Corp" revealed many domain names registered by the Complainant. Therefore Respondent did not prevent AT&T Corp from register corresponding domain names. The Respondent is not a Ďcybersquatterí. As previously stated Respondent registers domain names which are combinations of generic words / descriptive terms as part of his business. Combinations of these words in a domain name is generic. Canadian trademarks are NOT protected Complainant has failed to prove otherwise.
Respondent did not register these domain names in bad faith as defined by the "(ACPA)" Complainant has the burden of proving "Bad Faith".
Respondent has never offered any domain names for sale. Respondentís domain names were registered with NSI and are not subject to Canada Trademark Regulation, are not confusing similar to any Canadian Trademarks. Respondent is not a cyber-squatter as defined by the "(ACPA)" and has never had "a consistent practice of cybersquatting."
Respondent requests that the Administrative Panel make a finding of Reverse Domain Name Hijacking. The fact that Respondent registered the generic domain names prior to any trademarks being registered should have indicated to the Complainant that Respondent was not a "cybersquatter" of ANY mark. The Complaint is a malicious, bad faith attempt to hijack Respondentís domain name registrations and as such constitutes an abuse of the administrative process.
C. Complainantís Rebuttal
The Complainant denies that the correspondence omitted from the Complaint comprising four letters and two emails were omitted in bad faith. The Complainant asserts that they add nothing to either the Complaint or the Response. The Complainant expresses lack of familiarity with the term "Reverse Domain Name Hijacking".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Identical or confusing similarity
Despite the Respondentís sustained attack on the Complainantís rights to the AT&T Marks, it is absolutely clear to the Panel that the Complainant has rights (registered and unregistered) in the marks AT&T and AT&T SOLUTIONS. It is also abundantly clear that the Complainant has rights in the initials/mark ATT in context (see, for example, the "att.net" trademark registrations).
The fact that those rights may not be exclusive across all fields of activity and across all territorial boundaries is irrelevant. The purpose of paragraph 4(a)(i) of the Policy is simply to establish that the Complainant has a bona fide basis for making the Complaint.
The Panel accepts the Respondentís criticisms of much of the Complainantís evidence as to the Complainantís ownership of some of the ATT names. Some of the Domain Names asserted by the Complainant to be owned by the Complainant are not owned by the Complainant (at least not directly) and the dates of registration of some of the Complainantís domain names postdate the dates of registration of the Domain Names.
Nonetheless it is the fact that whatever the Respondent may feel about the descriptiveness of the trade/service mark AT&T, it is a household name the world over and identifies the Complainant. Furthermore in the context of the Internet and domain names where ampersands are not available for use, ATT also (although perhaps not exclusively) identifies the Complainant. Accordingly, both AT&T and ATT are service/trade marks (registered and unregistered) in which the Complainant has rights. In the case of both, the Complainantís use predates the date of registration of the Domain Names. Moreover the Complainantís registered rights in the marks AT&T SOLUTIONS and "att.net" also predate the date of registration of the Domain Names.
In the domain name context, ATT being a known abbreviation of AT&T, "attgtlobalsolutions.com" and "attglobalsolytions.net" are plainly very similar to AT&T SOLUTIONS. The intervening word "global" is generic and, given the global nature of the Complainantís business, will not serve to distinguish.
"attglobalsecurity.com" is rather different. True, it commences "ATT", but the Complainantís evidence in relation to use of the word "global" is defective. The ATTGLOBAL domain names are not owned by the Complainant, but by another company and the registrations postdate the Domain Names. Further the evidence as to the use of "global" by the Complainant is dated August 2000. The Panel contemplated treating this name differently, but has decided that in context the ATT prefix is strong enough as an indicator to be treated the same as the other two. Furthermore, it was clearly the Respondentís intention that the three Domain Names, all commencing "ATTGLOBAL-" and all registered the same day, should be regarded as being part of the same family.
The Panel finds that the Domain Names are all capable of identifying and indeed in use are likely to be thought to identify the Complainant and are therefore confusingly similar to trade marks or service marks in which the Complainant has rights.
In light of some of the arguments deployed by the Respondent which appear to have had more to do with the US Anti-Cybersquatting legislation than with the Policy, the Panel reminds the Respondent that for the purposes of the Policy the relevant rights of the Complainant do not have to be registered rights and do not have to be international.
Respondentís Rights and Legitimate Interests
For the purposes of paragraph 4(a)(ii) of the Policy the Complainant must show a prima facie case and it is then for the Respondent to demonstrate his rights or legitimate interests. Paragraph 4(c) offers some examples of circumstances, which will satisfactorily answer the allegation.
The Domain Names are not in use in relation to a developed site. The Domain Names do not have any obvious association with any name or business of the Respondent and the Complainant has drawn attention to other domain names in the name of the Respondent, which appear to incorporate the names of others. The Panel noticed from exhibit O to the Complaint that the Respondent is the registrant of "bskybsecurity.com," B Sky B being a telecommunications company very well known in the UK. The Respondent did not address this in the Response, although the general allegation was clearly made. The Panel finds that the Complainant has made out a prima facie case calling for an answer by the Respondent.
The only justification given by the Respondent for the selection of the letters "ATT" as part of the Domain Names is as follows:
"In addition, Ms. Beaton is from a small town and commonly called "Princess Stephanie" and her Young Womenís Internet Incubator is commonly known as Ascension Terra-Trix, and her website is attglobalsolutions.com."
The Panel finds the Respondentís explanation unconvincing and notes that the Respondent has produced no contemporaneous evidence to demonstrate that the explanation offered by the Respondent is a true one and that the Respondent had relevant rights/legitimate interests prior to receiving notice of the dispute.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Paragraph 4(b) of the Policy sub-paragraphs (i) to (iv) set out various circumstances which if found by the Panel to be present shall constitute bad faith registration and use for the purposes of paragraph 4(a)(iii).
The Panel does not know why the Respondent registered the Domain Names. He has not in fact offered them for sale, so one cannot be certain that paragraph 4(b)(i) applies. He may have registered them to block the Complainant, but if he did, that is likely to be tied in with an intention to sell them to the Complainant. Certainly, there appears to be a pattern, given the other names, which he has registered, but he is not a competitor of the Complainant so (iii) does not apply. As to (iv) he is not using the Domain Names at present in relation to any developed site, so it is not possible to identify what are his intentions in that regard.
However, paragraph 4(b) does not constitute an exhaustive list of what is bad faith registration and use. The Panel notes that in the absence of a satisfactory explanation, it is more than likely that the Domain Names were intended to indicate the Complainant. While the Complainantís evidence was open to attack regarding the word "global", "global" has long represented a fair view of the Complainantís activities. When one then adds the word "solutions", a word which the Complainant has widely used in conjunction with the mark AT&T, there is not much room for doubt.
Nobody registers domain names for no purpose. The Panel concludes that the Respondent either registered them in order to sell them to the Complainant hoping that the Complainant would offer a large sum of money for them or he registered them in order to use them to connect to an internet facility. In use they will inevitably lead to confusion of some kind. In the Panelís view the Domain Names are so obviously indicative of AT&T that a significant proportion of visitors to sites connected to those names would do so in the expectation that they were visiting a site of the Complainant.
The tone of the Respondentís correspondence has been inconsistent with that of someone seeking to ensure that the dispute is dealt with quickly, fairly and expeditiously. His letters were downright dismissive in circumstances where the Complainant clearly had grounds for complaint. His attack on the validity of the Complainantís underlying rights in the mark AT&T in particular were doomed to failure, yet he pursued the attack to absurd lengths. His attack on the bona fides of the Complainant went well beyond what was reasonable. He even alleged that the failure by the Complainant to exhibit an autoreply email indicating that an email to the Complainantís lawyer would not be seen until she returned to the office from holiday constituted "a transparent attempt to show bad faith".
In the result, looking at the evidence in the round and looking too at the Respondentís conduct, the Panel takes the view that when the Respondent registered the Domain Names he did so in bad faith knowing that they were names likely to be taken to be names of the Complainant and knowing that he had no legitimate reason for registering them. The justification he put forward was false and the Panel concludes that if the Domain Names are left with him he will use them in a manner calculated to cause damage to the Complainant i.e. in bad faith. Holding them with that threat hanging over the Complainant is itself use of the Domain Names in bad faith.
Accordingly, the Panel holds that the Domain Names were registered and are being used in bad faith.
Reverse Domain Name Hijacking
In light of the above, it is not necessary for the Panel to address the Respondentís allegation of Reverse Domain Name Hijacking.
In light of the above findings, namely that the Domain Names are confusingly similar to trade marks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered in bad faith and are being used in bad faith, the Complaint succeeds. The Panel directs that the Domain Names, "attglobalsecurity.com", "attglobalsolutions.com" and "attglobalsolutions.net" be transferred to the Complainant.
Dated: November 25, 2000