WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp v. Shenzhen Zhidong Computer Co., Ltd

Case No. D2000-1574

 

1. The Parties

The Complainant is AT&T Corp., a United States Corporation incorporated under the laws of the State of New York with its principal place of business in Basking Ridge, New Jersey, U.S.A.

The Respondent is Shenzhen Zhidong Computer Co., Ltd, 3-302 Nantian Plaza, Futian District Shenzhen, Guangdong 518028, Peopleís Republic of China.

 

2. The Domain Name and Registrar

The domain name in issue is <attcore.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI"). (The domain name was registered on April 17, 2000).

 

3. Procedural History

The Complaint submitted by AT&T Corp was received on November 15, 2000 (email) and November 16, 2000 (hardcopy), by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On November 22, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with NSI.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

Indicate the current status of the domain name.

By email dated November 29, 2000, the Registrar advised WIPO Center as follows:

NSI had received the Complaint sent by the Complainant.

NSI is the Registrar of the domain name registration <attcore.com>.

The Respondent is shown as the "current registrant" of the domain name <attcore.com>. The Registrantís contact details are as above.

The administrative and billing contact is: George CT Chen, Beijing Sinonets Network&Telecom Co Limited, No. 21, Fuxing Road, Haidian, Beijing 100036, China.

The technical and zone contact is: Beijing Sinonets Network & Telecom Co., Limited, No. 21, Fuxing Road, Haidian, Beijing 10036, China.

Network Solutionsí 5.0 Service Agreement is in effect. The Uniform Domain Name Dispute Resolution Policy is applicable to <attcore.com> domain name.

The domain name registration <attcore.com> is in "Active" status.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Rules, the WIPO Center on November 30, 2000, transmitted by email and by courier a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also sent by email to NSI on November 30, 2000.

The Complainant elected to have its Complaint resolved by a single-member panel: it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by December 19, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by an original and four sets in hard copy and by email.

On January 17, 2001, the WIPO Center invited Andrew Brown, Barrister, of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On January 17, 2001, Andrew Brown advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On January 18, 2000, WIPO Center forwarded to Andrew Brown by e-mail and courier the relevant submissions and the record. The hardcopies were received by him on January 22, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by January 31, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, which is the language of the registration agreement.

 

4. Factual Background

The Complainant is a US based corporation that has been selling telecommunication goods and services for over a century under the trade mark AT&T and phrases that combine AT&T or ATT together with the words "Corp" and "Corporation". The Complainant states that it has invested at least hundreds of millions of dollars promoting these names among consumers in the US and other countries around the world and that as a result its names and trade marks are well-known worldwide.

The Complainant has rights in the US registered trade mark AT&T in class 38 in respect of digital network telecommunication services. It also has been the registrant of the domain name <att.com> since at least 1986. The use of "att.com" shows that on the web the Complainant conveys its mark AT&T as ATT.

The Complainant is also the registered proprietor in the US of the trade mark AT&T CAPITAL CORPORATION Ė WE GIVE YOUR BUSINESS THE CREDIT IT DESERVES in several different classes.

The respondent registered the domain name <attcore.com> on April 17, 2000.

The Complaint refers to a cease and desist letter which the Complainant sent to the Respondent (although this is not produced as part of the Complaint). On September 15, 2000 a Mr. Han Wenyong responded to this letter stating that he acted with full authority of the Respondent. This claimed that:

- The respondent had no intention of infringing the legal rights and interests of AT&T Corporation. The purpose of registering the domain name "was to make it become an information exchange center for electronic products, which can enable the companies and individuals in the business of trading electronic products to find useful information from our website".

- "If the ownership of the domain name <attcore.com> is transferred to AT&T Corporation, we will suffer certainly economic losses. Therefore, we hope AT&T Corporation can give us certain economic compensation. Such compensation should include the necessary expenses for us to apply a new domain name and make relevant technical treatment, as well as the expenses for us to do marketing for the new domain name. Based on our calculation, such compensation should be US$50,000."

- "The domain name <attcore.com> is not identical to ATT, the registered trade mark of AT&T Corporation. But we have no intention to argue with AT&T Corporation in the court, because we have no time and energy. Of course, we admit that AT&T Corporation may eventually obtain the ownership of the domain name <attcore.com> by making request to China through the World Intellectual Property Organisation. But the necessary expenses for obtaining such domain name through this process should cost no less than US$50,000. It will take longer, and we should not assume the expenses because we have not violated any law. We hope we can solve this problem amicably with AT&T Corporation, and we are sincere at this point. We have changed the homepage of the website and stop using it on an interim basis."

On November 15, 2000 this Complaint was submitted to the WIPO Center.

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that <attcore.com> is confusingly similar to the Complainantís official, legal and world famous name AT&T Corp as well as its registered trade mark AT&T and ATT CAPITAL CORPORATION. It is further claimed that the Respondent is engaged in "typo-piracy" and had registered and is now capitalising on the AT&T famous mark.

The Complainant also submits that the one letter difference between "Attcore" and "ATT Corp" uses the same name convention as the Complainant has adopted with its domain names <att.com> and <att.corp>. Phonetically "attcore" and "attcorp" are still identical and the Respondent registered the typo version of Corp to attract internet users who misspell Corp with an "e" instead of with a "p". It is also contended that the registration was with the intent of selling the domain name to the Complainant for valuable consideration in excess of the Respondentís out of pocket costs.

The Complaint cites US case law including AT&T Corp v Synet, Inc CA No. 96-0110, 997 WL89228 (ND Ill Feb 13, 1997) where the US court concluded that use of the mark 1800.ATT.INET infringed several of AT&T Corpís trade marks and service marks including AT&T and 1800CALLATT. The court held that in the United States the consuming public associates ATT with AT&T only.

Reference is also made to several decisions of WIPO panels which had ordered the transfer of domain names:

AT&T Corp v Tala Alamuddin, Case No. D2000-0249 which ordered the transfer of the domain name <att2000.com>.

AT&T Corp v WworldclassMedia , Case NO. D2000-0553 where the Panel ordered the transfer of the domain names <attmexico.com> and <att-latinamerica.com>.

The Complainant cites other cases where Panels applying the UDRP have held that registration of phonetically identical spelling variations of famous marks is confusingly similar: Neuberger Berman, Inc v Alfred Jacobsen, Case No. D2000-0323; Dow Jones & Company, Inc and Dow Jones LP v John Zuccarini, Case No. D2000-0578.

The Complainant also alleges that the Respondent has no rights or legitimate interest in respect of the contested domain name <attcore.com> and that it registered and used the domain name in bad faith. In this latter regard the Complainant contends that the Respondent intends to sell <attcore.com> for a substantial profit and that if it cannot make an extremely profitable sale, it intends to divert internet traffic to a customer it is hosting at the website. Internet users end up at Attcore Electronics Co., "a randomly named front which [the Respondent] has set up as an advertisement page for the Chinese office of a Korean electronics company. The Complainant alleges that persons who misspell "attcorp" with a phonetically identical "e" would believe that "attcore.com" and the company advertised on it were affiliated with the Complainant.

B. Respondent

The Respondent has not filed any formal response or challenge to the Complaint.

The Record does however include an email dated November 25, 2000 to the attorney acting for the Complainant. This states:

"Dear Alan

I am the person who applied <www.attcore.com> to Network Solutions. As Korean businessman based in HK and Shenzhen China, I have BR, bank account of Attcore Electronics. I am promoting my electronic products in some of daily newspapers and magazines under Attcore Electronics. Also I am participating in various trading shows in China, with brochures and other related printed materials under Attcore Electronics.

Attcore comes from my business concept that every business of mine starts Ďat the coreí of everything. Pls make sure I have no BAD intention of using my website. No matter what you do, I am very confident that I am doing my business under legal framework in HK and China.

If any further questions, pls contact me.

Regards

Albert"

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar to registered trade mark

The Panel finds that the domain name <attcore.com> is confusingly similar to the Complainantís famous name and trade mark AT&T CORP and its US registered trade mark AT&T.

The Complainant has produced clear evidence of substantial use of both AT&T and ATT as its trade marks. In the internet environment, the Complainantís main website is "att.com". A US court in AT&T Corp v Synet (cited earlier) has made a factual finding that in the US the consuming public associates ATT with AT&T only.

Here the Complainant is relying on both its registered trade and unregistered trade mark rights. It is clear that under the Policy the Complainantís rights do not have to be registered.

Previous decisions of WIPO Panels have recognised the Complainantís rights in the initials ATT. In addition to the decisions cited by the Complainant and referred to earlier, there are two further recent decisions, AT&T Corp v Fred Rice, Case No. D2000-1276 and AT&T Corp v Global Net 2000, Inc, Case No. D2000-1447 where the Complainantís rights in ATT were recognised and where the transfer to the Complainant of respectively <attglobalsecurity.com>, <attglobalsolutions.com>, <attglobalsolutions.net> and <attt.net> was ordered.

WIPO Panels have previously recognised that registration of phonetically identical spelling variations of famous marks or misspellings of famous marks are confusingly similar: Microsoft Corp v Global Net 2000, Inc, Case No. D2000-0554; Reuters Limited v Global Net 2000, Inc, Case No. D2000-0441.

The Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

No legitimate rights or interest in <attcore.com>

The Panel finds that the Respondent has no legitimate rights or legitimate interests in relation to the trade marks ATT, ATTCORE, or the domain name <attcore.com>. The September 15, 2000 letter written on behalf of the Respondent provided no legitimate reason for adoption of the domain name or any prior association on the part of the Respondent with the initials ATT or ATTCORE. The informal response sent by email by "Albert" on November 25, 2000 claims to have a bank account for Attcore Electronics and that "I am promoting my electronic products in some of daily newspapers and magazines under Attcore Electronics. Also I am participating in various trading shows in China with brochures and other related printed material under Attcore Electronics". No evidence has been provided to substantiate these claims. The Respondent has not chosen to defend the Complaint. Moreover the letter of September 15, 2000 "admits" that AT&T Corporation may eventually obtain the ownership of the domain name <attcore.com> through the World Intellectual Property Organization.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith:

(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; or

(ii) 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 that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel finds that the domain name was registered and used in bad faith:

(a) There is strong prima facie evidence that the name was registered with the intention of attracting for commercial gain internet users to the website by creating a likelihood of confusion with the Complainantís marks ATT and/or ATTCORP as to source, sponsorship, affiliation or endorsement.

The Respondentís trading name contains no reference to ATT or ATTCORE and the Respondent does not provide any credible evidence to show any legitimate use of that mark or prior rights to it.

The correspondence from or on behalf of the Respondent admits having used the website to advertise electronic products. There is a close affinity between such goods and the services offered by the Complainant such that confusion of internet users is likely.

(b) There is no direct evidence that the Respondent acquired the domain name for the purpose of selling it to the Complainant for valuable consideration in excess of its out of pocket expenses. However, the actions of the Respondent in immediately seeking US $50,000 for the domain name as soon as challenged by the Complainantís demand letter strongly suggests that part of the motives of the Respondent included an opportunistic intention to offer the site back to the trade mark owner if and when challenged. The Respondent has chosen not to contest or deny claims to this effect in the Complaint.

(c) Although the domain name has now been voluntarily suspended by the Respondent (which in itself can be taken as an admission), it is clear from the Respondentís informal responses that the site was being used until at least September 2000.

The Panel therefore finds that the Respondent registered and used the domain name in bad faith.

 

6. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is confusingly similar to trade marks Ė both registered and unregistered - to which the Complainant has rights;

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

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

Accordingly, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <attcore.com> be transferred to the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: 25 January, 2001