WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT & T Corporation v. LanLA

Case Number D2001-0890

 

1. The Parties

Complainant is AT & T Corporation, and according to its complaint, it is a corporation incorporated under the laws of the State of New York, U.S.A., with its principal place of business in Basking Ridge, New Jersey, U.S.A..

The Respondent in this proceeding is the entity LanLA, according to the Whois database maintained by the Registrar in this case. Respondentís address is in Beverly Hills, California, U.S.A.

 

2. The Domain Name and Registrar

The dispute is with respect to the following domain name (hereafter "the domain name"):

<atthola.com>

The registrar with which this domain name is registered is BulkRegistrar.com, Baltimore, Maryland, U.S.A. (hereafter "the registrar").

 

3. Procedural History

The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANNís Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").

The current dispute lies within the scope of the Policy, so that the Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between Registrar and the Respondent clearly incorporate the Policy, so that Respondent was notified of the existence of the Policyís provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that (ii) Respondent has no rights or legitimate interests in the domain name; and that (iii) Respondentís domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to successfully make its case, the Complainant must prove each of these three elements.

An electronic copy of the complaint was filed with the Center on July 12, 2001, with a hard copy filed on July 17, 2001. A request to suspend the proceeding was made on July 17, 2001, and such request was granted on July 18, 2001. A request for further suspension of the proceeding was made and granted on August 17, 2001. A request to re-instate the proceeding was made on August 30, 2001. As a result, a request for Registrar Verification was made to the Registrar of the domain name on August 30, 2001, and such Verification was made on September 6, 2001. On September 7, 2001, the Center notified the Registrar of the filing of the complaint with the Center.


The Centerís formal Notification to Respondent of September 7, 2001, was sent to Respondent by post/courier, fax, and email. There is no indication of communication problems or non-receipt of this Notification by Respondent. Paragraph 5 of this Notification indicates the last day for Respondent to send its Response to the complaint to the Center and to Complainant was September 27, 2001. As Respondent has not replied, on September 28, 2001, a Notice of Default in the case was sent to Respondent.

Although no Response has been received, under Paragraph 6 of the Centerís Notification to Respondent of September 7, 2001, citing Paragraph 14 of the Rules, the Administrative Panel may choose to go ahead and review the facts in the case and make its decision based upon the facts before it at this time, as well as drawing any appropriate inferences from Respondentís failure to respond.

The Panel consists of a single Panelist pursuant to Complainantís request, and the Panelist was duly appointed by the Center. A Statement of Acceptance and Impartiality and Independence was submitted to the Center by the Panelist on October 9, 2001, and the Panelist was appointed by the Center on October 12, 2001. A decision on the Complaint is due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules.

There have been no further submissions by either side as of the date of this decision.

 

4. Factual Background

First, it is noted that because no Response has been received from Respondent, the facts cited in the Complaint will be evaluated on their own merits.

Complainant states that for a long time prior to Respondentís registration of the domain name <atthola.com>, Complainant has continuously owned and used the name and trademark "AT & T" in connection with its telecommunications products and services, with large numbers of Complainantís "AT & T" marks having been registered with the U.S. Patent & Trademark Office. Complainant also states that it owns various marks that use "ATT" without the ampersand (&) sign. See Complaint, paragraphs 11(a) and (d).

Complainant points out that from its many years of widespread advertising using these marks, the "AT & T" trademark has become one of a class of "famous marks" worldwide. See Complaint, Paragraph 11(b).

Complainant also states that it has registered with the U.S. Patent & Trademark Office numerous other marks that combine the word "ATT" with other words, e.g. "1 800 CALL ATT", "CAMP ATT", "1 800 ATT-GIFT" and <att.net>. See Complaint, paragraph 11 (d).

Further, Complainant declares that it has registered the trademark "ATTHOLA" in one or more international trademark classes in ten Latin American countries from 1997 - 99, and has such registrations pending in four other countries Ė all for the purpose of marketing its products and services to the Latin American Hispanic market. See Complaint, Paragraph 11(g).

Paragraph 12 (c) of the Complaint declares that Complainant in 1986 created and registered the domain name <www.att.com> for its website. A visit to this website by the Panel on October 12, 2001, confirms that it is functioning viably and legitimately in Complainantís name.

 

5. Partiesí Contentions

Again, because no answer has been received from Respondent, the contentions cited herein will be those of the Complainant only.

In paragraph 12(d) of its Complaint, Complainant alleges that Respondent owns, has registered, and up until at least May 25, 2001, had been using the domain name <atthola.com> for a website at <www.atthola.com> which resolved to a pornographic website or websites run by Respondent. Although Respondent appears to have ceased this practice of automatic re-direction of <www.atthola.com> visitors to its pornographic website (referred to as "site-jacking" by Complainant at Complaint, p. 1), at this time Respondent still retains active registration of the domain name. See Complaint, paragraph 12(d).

As a result, Complainant asks this Panel to issue a decision to the effect that the domain name be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.

To support its contentions, Complainant, in Paragraph 13(a) of the Complaint, alleges that (1) the domain name is identical or confusingly similar to Complainantís "AT & T/ATT" and "ATTHOLA" marks referred to in Section 4 of this decision; (2) the Respondent has no rights or legitimate interests in the domain name; and (3) the domain name is registered and used in bad faith.

As regards element (1) above, the confusion element, Paragraph 13(a) of the Complaint states that Respondent are merely adding the word "hola" as a generic suffix to Complainantís famous "ATT" trademark which does not further distinguish Respondentís usage from the "AT & T/ATT" marks in any meaningful way. "Hola" means "hello" in Spanish.

As regards element (2) above, the lack of legitimate rights or interest in the domain name element, Paragraph 13(b) of the Complaint asserts that Respondent has no intellectual property rights in the domain name, and is using the domain name without the consent of Complainant.

As regards element (3) above, the bad faith element, Paragraph 13(c) of the Complaint alleges that Respondent has made no use of the domain other than to leverage Complainantís famous name, reputation and mark to attract visitors to Respondentís site, automatically re-direct these visitors to Respondentís pornographic website, and collect referral fees for this activity. Complainant alleges that the re-direction referred to above was stopped only upon receipt by Respondent of a cease-and-desist letter sent by Complainant.

 

6. Discussion and Findings

Based on the facts and contentions referenced above, the Panel finds as follows:

a. As Respondent have not disputed any allegations of fact by Complainant in Section 5 of this Decision, the Panel accepts these allegations as true.

b. Complainant has adequately demonstrated its own intellectual property rights in the trademarks "AT & T/ATT" and other closely affiliated marks containing the word "AT & T/ATT", including "ATTHOLA" in the relevant trademark product/service international classes. Here the Panel notes that in the Latin American countries where "ATTHOLA" has been and is being registered by Complainant, full legal trademark rights derive from registration of the mark accompanied by a modicum of commercial usage.

c. As regards proof of element (1) above, the confusion element, Complainant is alleging that the mere addition of a supposedly generic suffix such as "hola" to Complainantís trade name and trademark containing the acronyms "AT & T" and "ATT" creates confusion between Complainantís marks and Respondentís domain name. To support its contention, Complainant cites a number of WIPO domain name decisions where prefixes or suffixes such as "myOracle", "bodyshop-digital", "att2000" and "attweb" have been held to be so generic as to create substantial confusion. See Complaint, Paragraph 13(a), at p. 11. Although "hola" at first seems less generic than these other prefixes and suffixes, the Panel finds that for Spanish speakers who seek information about telecommunications products and services, the probability of confusion with Complainantís products, services and activities is very high. Recall that in Spanish, "hola" is one of the most common initial greetings made on the telephone.

d. As regards proof of element (2) above, the lack of legitimate interest or rights in the domain name, Respondent has failed to assert any such interest or right. Therefore, the Panel finds that Respondent does not have any such interest or right.

e. As regards proof of element (3) above, the bad faith element, Complainant cites a number of WIPO Panel decisions in support of the proposition that the misdirection of traffic to real or suggested "adult" websites from websites with domain names confusingly similar to famous trademarks is an "aggravating element" of bad faith under the UDRP. See Nokia Corp. v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, Singapore Airlines Limited v. Nielson, WIPO Case No. D2000-0644, and National Football League Properties, Inc. et al. v. One Sex Entertainment Co., WIPO Case No. D2000-0118. See Complaint, paragraph 13(c), at pp. 13-14. The Nokia decision aptly labels this practice "Ö[Respondentís] taking a free ride on the goodwill of ComplainantísÖtrademark".

The Panel agrees with Complainant that Respondent appears to have had no other commercial use for the name other than to attract visitors to its pornographic website based on attempts to create confusion with the legitimate "ATTHOLA" marks, and collect referral fees for this activity.

Paragraph 4(b) of the Policy cites, without limitation, various examples of bad faith. Paragraph 4(b)(iv) of the Policy provides one such example of bad faith by a Respondent:

"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."

The Panel finds that this situation occurs in the present case.

 

7. Decision

Based upon the Panelís Findings from Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panelís Decision and order is for the Registrar to transfer the domain name registration to the Complainant.

 


 

Paul E. Mason
Sole Panelist

Dated: October 15, 2001