WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT & T Corp. v. Caimmi Rappresentanze & Marketing Italia

Case No. D2001-0541

 

1. The Parties

The Complainant is AT & T Corp., a corporation incorporated under the laws of the State of New York, with a principal place of business in Basking Ridge, New Jersey.

The Respondent is Caimmi Rappresentanze & Marketing Italia, VSD Acquisto 10 S. Maria A. Assisi, 06088, Italy.

 

2. The Domain Name and Registrar

The domain names in issue are <attbusiness.com> and <attbusiness.org> ("the Domain Names"). The Registrar is Network Solutions, Inc.

 

3. Procedural History

3.1 The Complaint was dated April 12, 2001, and received by the WIPO Arbitration & Mediation Center, ("the Center") on April 13, 2001, and in hard copy on April 18, 2001. The Center acknowledged receipt of the Complaint on April 18, 2001.

3.2 On April 18, 2001, a request for Registrar Verification was transmitted by the Center to Network Solutions requesting it to:

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

- confirm that the Domain Names were registered with it;

- confirm that the person identified as the Respondent was the current registrant of the Domain Names;

- provide full contact details (i.e. postal addresses, telephone numbers, facsimile numbers, e-mail addresses which were available in its WHOIS database for the domain name registrant, the technical contact and administration contact and billing contact for the Domain Names;

- confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the Domain Names;

- indicate the current status of the Domain Names.

3.3 On April 23, 2001, Network Solutions sent an e-mail to the Center indicating as follows:-

- the Domain Names were registered with it;

- Caimmi Rappresentanze & Marketing Italia (of the above address) is shown as the registrant of the Domain Names. Pietro Caimmi of Caimmi Rappresentanze & Marketing Italia is the administrative and billing contact for the Domain Names;

- confirmation that full contact details in relation to the Domain Names;

- confirmation that Network Solutionsí 5 Service Agreement is in effect;

- the domain name registrations status is "active".

3.4 By e-mail dated April 19, 2001, the Respondent indicated that he wished to reply to the dispute in Italian. The Center replied by e-mail of the same date recommending that he hire a translator to submit a Response on receipt of the official Notification of the Complaint. This was in accordance with paragraph 11(a) of the Rules which states that proceedings will be in the language of the Registration Agreement unless the parties have agreed otherwise. The Registration Agreement with Network Solutions Inc is in English.

3.5 Having verified that the Complainant satisfied the requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), the Center, on April 25, 2001, transmitted by courier and by e-mail a Notification of the Complaint and Commencement of Administrative Proceedings and the Complaint to the Respondent. This was also copied to ICANN.

3.6 On May 2, 2001, the Center received an e-mail from the Respondent. This was copied to a Mr. Stephen H. Sturgeon (his role is unclear to the Panel) and sought to describe the history of the Domain Names in broken English. The Center also received a Response from the Respondent dated May 3, 2001. This took the form of the standard form response with few amendments made to it.

3.7 On May 3, 2001, the Center sent to the Respondent a Response Deficiency Notification and requested a final response by May 14, 2001. This indicated the following deficiencies:

- the response was not submitted in electronic format as required by the Rules, paragraph 5(b);

- the response was not submitted in one original and 4 copies, as required by the Rules, paragraph 5(b) and the Supplemental Rules, paragraph 3(c);

- the response did not specify a preferred address for case related communications to the Respondent or its authorised representative as required by the Rules, paragraph 5(b)(ii). It stated that until such time as WIPO was provided with this information, it would chose which contact details to use when sending the case-related communications to the Respondent;

- the response did not specify a preferred method of communication for case-related communications to the Respondent or its authorised representative as required by the Rules, paragraph 5(b)(iii). It then stated that until such time as WIPO was provided with this information, it would chose the method by which it would communicate case-related communications to the Respondent;

- the response did not state that a copy of the Response had been sent or transmitted to the Complainant in accordance with the Rules, paragraph 2(b), as required by Rules paragraph 5(b)(vii);

- the response did not contain the full statement specified in Rules, paragraph 5(b)(ix);

- the response had not been signed by the Respondent or its authorised representative, as required by Rules, paragraph 5(b)(ix);

- the response did not contain a response to the Statements and Allegations Made in Complaint.

Finally, it stated that upon expiry of the May 14, 2001, deadline, regardless of whether the Center had received the information requested, it would proceed to appoint the Administrative Panel in accordance with the Rules and the Administrative Panel would be informed of any deficiencies which were not remedied.

3.8 By e-mail dated May 4, 2001, the Respondent sent his Response to the Center, stating that he had sent by DHL 4 copies and one original. He then stated "To legal support I defend me I wish to decision of President Commission". By e-mail dated May 9, 2001, the Respondent wrote to the Center stating "OK. Now I hope have understand what I must to do now. I accept your rules and conditions of Uniform Domain Name Policy adopted August 26, 1999 implementation documents approved October 24, 1999 and sent to you my adhesion, Marketing Italia di caimmi "Pietro Caimmi Rappr. & Marketing Italia"ÖÖI accept and adhesion these conditions with confidence your decision, because I have establish and are using domain name in good faith and I not want, not are infringing any trade mark right the complainant may have in the domain name". And at the end of a copy of the Policy he stated "I approve".

3.9 The Center then forwarded the same to the Complainant by e-mail dated May 10, 2001, stating "here is the Respondentís response".

3.10 The Complainant elected to have the dispute decided by a single member. Accordingly, on June 1, 2001, the Center notified the parties that an Administrative Panel, composed of a single member, Nick Gardner, had been appointed. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.

3.11 No further submissions were received by the Center or the Panel. Therefore, the Administrative Panel was scheduled to forward its decision to the Center by June 14, 2001.

 

4. Factual Background

4.1 The Complainant owns various trade marks which it has listed in the Complaint. These include US Registrations, Community Trade Mark ("CTM") registrations and Italian Registrations. Some marks include "&" in the name and others do not. Some examples are set out below:

US Registration

MARK

REG. NO.

DATE

Class of Goods or Services

AT&T

1,293,305

September 4, 1984

38

1 800 ATT-GIFT

2,076,093

July 1, 1997

38

Community Trade Mark Registration

MARK

REG. NO.

DATE

Class of Goods or Services

AT&T

000064428

April 1, 1996

9 and 38

Italian Registration

MARK

REG. NO.

DATE

Class of Goods or Services

AT&T

415712

August 11, 1983

9

4.2 The Complainant is famous around the world for its products and services, which include a variety of telecommunications and internet services, such as long distance telephone services, internet access services, e-mail services, web hosting services, as well as web sites offering a "myriad" of other goods and services. It submits that for over a century it has continuously provided telecommunications services under the name "AT&T", both as an abbreviation of its former corporate name, and American Telephone & Telegraph, and as part of its current corporate name, AT&T Corp.

4.3 The Complainant states that since 1988, it has continuously operated companies in Italy under the AT&T name to sell its goods and services (as set out in the Italian registrations of the mark), including "AT&T S.P.A", incorporated in Italy on October 24th, 1988 and "AT&T Communications Services Italia S.P.A.", incorporated in Italy on October 26, 1992. It currently operates a company in Italy under the name of "AT&T Global Network Services Italia S.R.L.", incorporated in Italy on January 21, 2000.

4.4 The Complainant owns the following domain names:

<attbusiness.net> (since October 1, 1999 owned through the Complainantís wholly owned subsidiary, AT&T Global Network Services)

<att.com>
<att.net>
<attws.com>

These domain names are for web sites that are accessible in Italy and offer a variety of goods and services.

4.5 The Complainant states that it has invested and continues to invest a substantial amount of money and effort in advertising and promoting its goods and services under the name AT&T and AT&T and ATT marks. Evidence is adduced of brand recognition, use, advertising, and promotion of the names and marks as an exclusive designation of origin of the Complainantís goods and services and as symbols of the goodwill and reputation that it enjoys worldwide.

4.6 The Complainant provides details of the web site accessible through the domain names in issue. These state "work in progress", contain (1) information on how to obtain an e-mail account under that web site, (2) rotating banner advertisements for a variety of web sites and (3) links to these web sites. These links include links to adult entertainment web sites, a gambling web site, a web site offering internet and telecommunications services (including the sale of telephones and a web site that advertises cellular telephones).

4.7 In response to a letter sent by the Complainantís Counsel, the Respondent in an e-mail dated January 3, 2001, stated that its name was "attbusiness.com" and "not att only" and referred to the address htt://communities.msn.it/attbusiness which the Respondent indicated was "builded since 01.01.00". The web site located at this address shows "Att-Business" used as a mark in connection with consultancy, marketing support and the research services for people who sell the "Gabriella Carlucci" brand of wedding apparel, handbags and shoes. It contains rotating banner advertisements and links to a site called "MSN Shopping" which sells a variety of goods and services and another site called "1 Telefona gratis" concerning telephones. However, the Respondent does not explain why it uses "Att-Business" as a mark and name in circumstances where its brand appears to be "Gabriella Carlucci". The relevance of this site is not clear, other than it is a site operating under a name "attbusiness", although not a top level domain.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions are set out at length in the Complaint but may be summarised as follows:

(1) The Domain Names at issue are confusingly similar to its trade name, service marks and trademarks because the domain name incorporates its mark without the "&", the absence of which is of little import. It states that the designation ATT means AT&T and the word "business" in the Domain Names suggests business services.

It submits that as a consequence of its worldwide reputation in telecommunications services and provision of goods and services through its web site, consumers are likely to believe the designation "attbusiness" refers to its business services, especially because it owns the "attbusiness.net" web site on which it offers a variety of business services under the mark "AT&T BUSINESS INTERNET SERVICES".

(2) The Respondent has no rights or legitimate interests with respect to the domain names in issue or "ATT-BUSINESS".

- The Complainant submits that the Respondent registered the domain names in issue well after the Complainant had acquired its rights to the AT&T name and marks and ATT marks in Italy and throughout the world, and after the Complainant had registered and used its domain name "attbusiness.net".

- The Respondent has no connection or affiliation with it, neither has the Respondent received any express or implied licence or authorisation to use its name, marks and domain names.

- It is not aware of any trademark or service mark registrations owned by the Respondent for "ATT Business" or "ATT-Business" or any variations of the same.

- There is no reference to <attbusiness.com>, <attbusiness.org>, "Att-Business" or "att-business" on the web sites located at the Domain Names.

- The web site located at the address htt://communities.msn.it/attbusiness shows "Att-Business" used as a mark in connection with the "Gabriella Carlucci" brand of wedding apparel, handbags and shoes. However, the Respondent does not explain why that site uses "Att-Business" as a mark and name in circumstances where the brand promoted on the site appears to be "Gabriella Carlucci".

- The alleged use of "Att-Business" at the above web site (even if it occurred as early as January 1, 2000) is not related to the use of the Domain Names. If the use began after it received the communication from the Complainantís Counsel, this use cannot be a basis for a claim of legitimate use because it occurred after notice of the dispute.

Even if the Respondentís claims are correct in relation to such use, registration of the Domain Names was illegitimate because the Respondent must have had notice of the Complainantís use of its famous AT&T name, AT&T and ATT marks and domain names.

The use of the "attbusiness" designation unfairly trades upon the Complainantís goodwill in its name and marks to create profits for the Respondent.

The Respondentís use of the "ATT-Business" mark and the Domain Names infringes the Complainantís rights in violation of Italian trade mark law. It also infringes the Complainantís US registrations by virtue of its web sites and has violated its Registration Agreement with Network Solutions.

(3) The Respondent has registered and is using the Domain Names in bad faith

Given the fame of the Complainantís name and marks, its prior use of the web site <attbusiness.net> and its registrations in Italy, the Respondent has registered the Domain Names in bad faith.

The Respondentís use of the Domain Names for web sites with banner advertising and links shows an intent to attract Internet users to these web sites for commercial gain through likelihood of confusion with the Complainantís name, marks and domain name. Users are likely to believe that the Complainant approves or sponsors the Respondentís web sites and Internet users are likely to be diverted to the Respondentís web sites.

The Complainantís goodwill in its name is likely to be damaged by the association with adult entertainment and gambling stemming from the links from the Respondentís web sites.

B. Respondent

The Respondentís contentions are set out in the hard copy of the Response dated May 8, 2001 and may be summarised as follows:

(1) In relation to element (i) of paragraph 4(a) of the Policy, the Respondent says that "attbusiness" is different from (and therefore not confusingly similar to) the Complainantís mark. The Respondentís e-mail to the Complainants dated January 3, 2001, stated that its name was <attbusiness.com> and "not att only".

(2) In relation to element (ii) of paragraph 4(a) of the Policy, the Respondent says that "attbusiness" in the Domain Names stands for "attention business" and appears to argue that the Complainantís trade marks are not valid under international or Italian law as it is "not possible to consider a trade mark on word or more words together that are used in popular use, because these words are part of proprietary language of people".

(3) In relation to element (iii) of paragraph 4(a) of the Policy, the Respondent says that he registered the Domain Names in good faith and did not know of AT&T at the time or its sites. Further, he says that according to networksolution.com the Domain Names were "free" on a WHOIS test.

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complainant and the Response and the documents annexed thereto. In the light of this material and matters that are (on the evidence) not challenged the Panel finds as set out below.

6.2 The domain names <attbusiness.com> and <attbusiness.org> are confusingly similar to the Complainantsí trade marks and service marks. `

6.3 There is no evidence to suggest that the Respondent has any rights or legitimate interest in the Domain Names. The Respondent has provided no convincing explanation for its choice of the "attbusiness" name. It seems unlikely that the Respondent was not aware of the famous AT&T name. Indeed, although it is not entirely clear from the wording in the Response, it seems the Respondent may have searched and thus been an actual notice of the Complainantís trade marks. The Respondent includes copies of various trade mark searches at Annex D of the Response and states in the Response that before he registered the Domain Names he "searched" and "studied" international and Italian law "about trade marks".

6.4 The fact that the name appeared to be "free" (i.e. available) on the networksolutions.com WHOIS search is not, contrary to the Respondentís contention, sufficient to found a claim of legitimate interest. `

6.5 There is merely a bare assertion of prior use of the name "Att-Business" as another subsidiary domain name which is not properly explained and which, given the fame of the Complainantís name and mark is not sufficient in showing prior rights of the Respondent.

6.6 The Respondentís use of the Domain Names for web sites with banner advertising and links strongly suggests an intent to attract Internet users to its web sites for commercial gain through likelihood of confusion with the Complainantís name, marks and domain name, particularly those links relating to telephony products and services. There is no credible evidence that the name of the site is intended to represent "attention business".

 

7. Decision

In the light of the above findings the Panelís decision is as set out below:

The Domain Names are confusingly similar to the Complainantís trade marks (see paragraph 4(a)(i) of the Policy).

The Respondent has no rights or legitimate interests in the Domain Names (see paragraph 4(a)(ii) of the Policy).

The Domain Names were registered and are being used in bad faith (see paragraph 4(a)(iii) of the Policy). In particular, they were registered primarily for the purpose of attracting Internet users to the Respondentís web sites (see paragraph 4 (b) (iv) of the Policy).

The Panel directs that both Domain Names be transferred to the Complainant.

 


 

Nick Gardner
Sole Panelist

Dated: June 14, 2001