WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. W.N.A., a/k/a "Worldwide Network of Attornies" Farouk al Khalifa a/k/a Jaye Rayes and "World of Nettie Atteberry"
Case No. D2001-1160
1. The Parties
1.1 The Complainant is AT&T Corp., a United States corporation incorporated under the laws of the State of New York. Its principal place of business is in Basking Ridge, New Jersey.
1.2 The Respondent named in the Complaint is "W.N.A." a.k.a. "Worldwide Network of Attornies" Manama BAHRAIN.
2. The Domain Name and Registrar
2.1 The Domain Name, the subject of this dispute, is
2.2 The Domain Name is registered with ENom.com, 16771 NE 80th Street, Suite #100, Redmond, WA USA.
3. Procedural History
3.1 The Complaint was filed electronically on September 21, 2001, and in hard copy on September 25, 2001.
3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.
3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).
3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00 has been made by check, payable to World Intellectual Property Organization.
3.5 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the dispute’s resolution shall be solely against the Domain Name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.
3.6 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on September 21, 2001, both by electronic means and by postal service, postage pre-paid and return receipt requested pursuant to Rules, paragraph 2(b).
3.7 A copy of this Complaint has been sent electronically and by first class mail to the concerned Registrar on September 21, 2001.
3.8 On September 27, 2001, the WIPO Arbitration and Mediation Center ("the Center") transmitted via email to eNom, Inc. a request for registrar verification in connection with this case and on September 28, 2001, the Center received a verification response confirming that the domain names are registered with eNom, Inc. and that the Registrant for the domain names is the Respondent.
3.9 On September 28, 2001, Respondent was sent a Notification of Complaint and Commencement of Administrative Proceeding from the Center informing the Respondent that an Administrative Proceeding had been commenced by Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). On October 18, 2001, a Response was received from the Respondent. On October 18, 2001, an e-mail reply from Complainant to Respondent’s Response was filed. On October 20, 2001, Respondent filed a Reply to Complainant’s e-mail message
3.10 The named Respondent, W.N.A. a/k/a "Worldwide Network of Attornies", has not filed a Response
3.11 The single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on October 25, 2001, in accordance with paragraph 15 of the Rules. The suggested date for the Panel to forward its decision to the Center was by November 8, 2001. An assertion was made that the wrong Respondent has been named, which necessitated an extension of this time.
3.12 The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
4.1 Complainant has been selling telecommunications products and services for over a century under the name "AT&T" and phrases that combine "AT&T" or "ATT" with other words. Complainant has invested hundreds of millions of dollars promoting these names among consumers in the United States and other countries around the world, as a result of which these names are famous worldwide.
4.2 Complainant also owns numerous marks that use "ATT" without an ampersand. For example, Complainant has rights in the U.S.-registered marks: "1 800 CALL ATT"; "CAMP ATT"; "1 800 ATT-GIFT"; and "ATT.NET."
4.3 Complainant has been the registrant for the domain name <att.com> since at least 1986. The domain name <att.com> resolves to AT&T Corp.’s primary corporate website, <att.com>, on which the AT&T WorldNet service is often advertised. This domain name shows that Complainant conveys its mark "AT&T" by using "att" on the web, which does not permit the use of an ampersand character in a domain name.
4.4 Complainant has also been the registrant for the domain name <att.net> since at least 1993. The domain name <att.net> resolves to AT&T Corp.’s WorldNet Internet service provider website, <att.net>. This domain name provides additional evidence that Complainant conveys its mark "AT&T" by using "att" on the web, which does not permit the use of an ampersand character in a domain name.
4.5 Complainant has used "AT&T WORLDNET" in commerce since at least August 1985, and has held a United States registered trademark in the "AT&T WORLDNET" since August 5, 1997, under registration number 2086348. In addition, Complainant holds the registered trademark for "AT&T WORLDNET" in several other countries including Canada (registration number TMA 505,920 on December 29, 1998), Germany (registration number 39531734 on June 12, 1996), and Taiwan (registration number 98720 on February 16, 1998).
4.6 Search engines routinely identify queries for "attworldnet" with the AT&T WorldNet Service. This stems in large part from a common typographical error arising from the e-mail address suffix assigned to AT&T WorldNet service users, "@worldnet.att.net." If a user omits the period after WorldNet, his or her e-mail address is incorrectly rendered as "@worldnetatt.net" – the name of the site in dispute.
4.7 The site <worldnetatt.net> returns no data currently.
4.8 Starting sometime in 1998, the site was set to refer viewers to a series of banner ads. As a result, AT&T Corp., acting through the solicitors Linklaters, contacted "CRAZYSALeemail@example.com" in writing on July 2, 1999. On July 16, 1999, an individual using the e-mail address of the registrant responded that there was a new registrant, "ynotgetyourname@DESIREME.com." That party’s site, <desireme.com>, appears to be a site dedicated to pornographic content. Complainant persisted in its efforts through counsel with letters on July 19, 1999, and July 24, 1999, in which AT&T Corp.’s trademark rights were explained and transfer of the domain requested. On August 21, 1999, counsel received an e-mail stating that the "ynotgetyourname@DESIREME.com" was inoperative, and that e-mail should be directed now to "firstname.lastname@example.org." Counsel requested a mailing address, but the request was ignored. On September 8, 1999, counsel e-mailed a July 19, 1999, letter to the email@example.com address.
4.9 At some point, the site was apparently transferred or the registration updated to the name "YnotBeEziestMemorised4ever UownTheGreatDoMain4ever"which again used the same room number at the "LaiChingHouse" in Hong Kong as the prior registrant had used initially. The domain name was then "transferred" (or "updated") to a registrant listed as the "Worldwide Network of Attornies," [sic], allegedly in Nairobi, Kenya, but with telephone and fax numbers having a Hong Kong prefix of 852.
4.10 During April 2001, Complainant, acting though the solicitors Linklaters placed a series of telephone calls to the contact numbers for the site. During a telephone call on April 27, 2001, Ms. Au Yeung, an individual who had received a prior letter from the solicitors for Complainant, spoke with Rebecca Lo, an attorney for Complainant from Linklaters. During this call, Ms. Yeung proposed to sell the domain name for $10,000 (it is unclear whether this was intended to be US $10,000 or HK $10,000). A male associate of Ms. Yeung’s then grabbed the phone and shouted in a rude and threatening manner at Complainant’s attorney.
4.11 Sometime after this discussion, the registration was updated again to the name listed for the registrant, which, as noted above, appears to be an acronym of the aforementioned "Worldwide Network of Attornies" [sic]. As of June 24, 2001, the contact for the site was listed as "Jaye Rayes," with a Bahrain address, a telephone number in the "888" area code, and the e-mail address firstname.lastname@example.org. As of July 1, 2001, the contact shifted to "Farouk al Khalifa" at the same address, but now with a (+973) area code (consistent with Bahrain), but an e-mail address in the United Kingdom, email@example.com
4.12 On or about October 18, 2001, the Center received an e-mail, purportedly from "Nettie Atteberry", Nettie@fmail.co.uk attaching what was described as a "Response to Complaint". This document was not in compliance with Rule 5 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") in a number of ways including not being signed nor certified as required by Rule 5(b)(viii) thereof.
4.13 The document mentioned above was said to have been submitted on behalf of Nettie_ATTeberry@yahoo.com, firstname.lastname@example.org, email@example.com, http://www.worldnet.att.net, World of Nettie Atteberry, and NETTIE ATTEBERRY as the other (Nettie_Atteberry@yahoo.com) and firstname.lastname@example.org, 5-6 Francis Grove, London, SW19 4DT,GB. All of these alleged persons, singularly and collectively, will be hereafter referred to as the "putative respondent". The document alleges that the "WORLD of NETTIE ATTEBERRY" is the registrant of <worldnetatt.net>, which had recently been acquired from email@example.com for $2,500. This "registrant" is said to be the creator of the "World of Nettie Atteberry" stories and is not affiliated with the claims of the Complainant with regard to "bad faith" registration, and did not offer the Domain Name for sale to the Complainant, nor did it use it any manner to dilute or tarnish the image or intellectual property of AT&T, nor did it profit or attempt to profit from any possible similarity of names and is not guilty of any of the three required violations to justify transferring the Domain Name to Complainant AT&T. It alleged that the named Respondent "was only an interim escrow contact and mediator during the procurement of the domain name in August of this year" and that "Named Respondent above has no rights, ownership, or any other affiliation with the domain name <worldnetatt.net>". The person who filed this document will hereinafter be referred to as the "putative respondent".
4.14 The putative respondent went on to say that the Domain Name in question "was registered to [the putative respondent] through a transfer of an account at eNom.com that apparently belonged to the seller. It is possible that the records appeared to be an update, however, the domain name changed hands completely. The purchase was from an unknown source resembling World Attorney Network and having a contact e-mail of ‘firstname.lastname@example.org’ ".
4.15 The document referred to above goes on to provide further information under the heading "DETAILS OF FACTS", which inter alia raises general defences to the Complaint in respect of certain facts relating to the three elements required to be proved under para. 4(a) of the Policy, and with regard to others this document purports to raise defences specific only to the putative respondent. Finally, the putative respondent "reaffirms that none of its affiliates are associated in any way to prior registrant’s of <worldnetatt.net> and would like this to end right here."
4.16 On October 26, 2001, the Center received a Supplemental Filing on behalf of the Complainant which included both a Request For Leave To File A Motion To Strike Response To The Complaint and a Request to Strike Submission Purportedly on Behalf of Respondent. This exceptional submission is argued to be warranted because the Registration in question was changed after notice of this action in violation of UDRP Rule 8(b). In essence, Complainant argued that the "World of Nettie Atteberry" is a sham, embryonic entity created to conform to the phonetic elements of the domain name at issue, and that no bona fide transfer of the name has occurred. The Panel accepts this document.
4.17 As a result of receiving the above documents, this Administrative Panel issued a Request for Further Statements pursuant to Rule 12 of the Rules. A copy of this Procedural Order is annexed as Appendix A to this Decision.
4.18 Both the Complainant and the putative respondent filed Answers to the Procedural Order.
4.19 The putative respondent, in its Answer to the Panel’s Request, repeats much of what was filed in its earlier documentation, adding that the named Respondent, W.N.A., was an interim agent and contact during the transfer of the domain name from the prior registrant to the current registrant and has no further authority or relationship to the domain name in question. Appended to this Response were alleged copies of e-mails exchanged between the person alleged by the putative respondent to be the transferor of the domain name in question ("email@example.com") and the person described as "(Agent for World of Nettie Atteberry)" relating to the disputed transfer of the Domain Name in question. In addition, the putative respondent stated that "The ‘Worldwide Network of Attornies’ has no authority to adopt the Response to Complaint because it is not the current registrant nor was it at the time that Complaint was filed." It also contained the comment "We understand the Complainant’s frustration with the previous registrant but it was not us."
4.20 The named Respondent in this proceeding, W.N.A., was notified of the Procedural Order and given an opportunity to provide its own Response, which it chose not to do.
4.21 The Complainant in its submission to the Panel Request says that "World of Nettie Atteberry" is not the proper respondent in this matter because, as of the filing of the Complaint in this action, the domain name in question was registered to "W.N.A." rather than "Nettie Atteberry" and that nothing submitted by "Nettie Atteberry" refutes this fact. In support of its submission that the name "Nettie Atteberry" is part of an elaborate bad faith shell game, the Complainant points to the fact that no record whatsoever is submitted of the actual registration of the domain name with eNom, or any other ICANN-accredited registrar. Further, serious questions of reliability are asserted in connection with the e-mail messages tendered by "Nettie Atteberry". Reference is made to the fact that the various "To" and "From" lines in the e-mail attachments to "Nettie Atteberry’s" re-submission were redacted, without disclosure, to disguise the correspondent’s true identity. This appears to be most obvious in one of the e-mail messages where the type font for "(Agent for World of Nettie Atteberry)" is Arial, whereas the remainder of the e-mail message appears to be in Times Roman. Further, it is argued by the Complainant that "Nettie Atteberry’s" failure to provide evidence of when it registered the domain name with eNom should be dispositive, and therefore, for purposes of these proceedings, "W.N.A." is the proper respondent because it was the registrant when the Complaint was filed. In this regard, it relies on Wal-Mart Stores, Inc. v. James Cann and Save Family Businesses Panel, WIPO Case No. D2000-0830.
4.22 The Complainant refers to para.8(a) of the Policy and asks this Panel to properly invoke its right thereunder to cancel the purported transfer of the Domain Name registration upon which "World of Nettie Atteberry" relies.
4.23 Subsequent to the above Responses, the Panel received from the putative respondent a further document on the of November 14, 2001, head "Respondent’s Further Statements". It contained what was identified as a "Statement of Clarification". Some of this was a rehash of what had already been said in the two earlier submissions. Another part contained an attack on the Complainant. It also gave a reason for altering the e-mail exhibits which it had provided in its earlier Response, but not a credible one. Despite this being the third written submission made on its behalf, it once again failed to provide credible documentary evidence in support of its alleged acquisition of the Domain Name from some still unknown person. It states: "given time, we guarantee we can prove that we just obtained this name and paid as stated. This is very serious to us and can be proved beyond a doubt. We do not even know who the previous registrants are, other than the names in the e-mail correspondence, ‘Drake’ and ‘Kwanyin’ ". The putative respondent asks this Administrative Panel is asked to call a telephone number to verify further information. Quite frankly, the "Statement of Clarification", rather than supporting the conclusions sought by the author, tends more to corroborate the allegations of the Complainant.
5. Parties’ Contentions
5.1 The Complainant contends that the contested name <worldnetatt.net>, is confusingly similar to Complainant’s official, legal and world-famous name, and registered marks, including, "AT&T" and "AT&T WORLDNET." The confusing similarity between <worldnetatt.net> and Complainant’s top-level brand, "AT&T," is apparent from simple comparison of the mark with the contested Domain Name, a combination of the famous "AT&T" mark and created word, "WorldNet." Complainant has also been the registered trademark holder of this specific word combination, "AT&T WORLDNET," for several years and in several countries, and operates a large and well-known Internet service provider under the "AT&T WorldNet" name, located on the web at the site <att.net>. Users of the AT&T WorldNet service are assigned e-mail addresses that end "@worldnet.att.net." Given these similarities, the Complainant says that an AT&T WorldNet customer could easily assume that <worldnetatt.net> was actually an AT&T-sponsored site.
5.2 Complainant goes on to assert that even if AT&T had not registered and used "AT&T WORLDNET" as a separate mark, the mere addition of "worldnet" to an internationally famous mark would certainly cause reasonable confusion among consumers.
5.3 Complainant concludes that persons familiar with or looking for AT&T Corp.’s "AT&T WorldNet" service or generally familiar with Complainant’s world-famous marks will be confused into thinking that <worldnetatt.net> is a site owned, endorsed, sponsored, or maintained by AT&T to promote telecommunications and internet products and services.
5.4 As mentioned in para. 3.10 above, the named Respondent WNA a/k/a "World Wide Network of Attornies", Farouk al Khalifa a/k/a Jaye Rayes has not filed a Response to this proceeding. However, the putative respondent has filed Responses, the contents of which are summarized above and the effect of which is addressed below.
Respondent’s Legitimate Interests in the Domain Name
5.5 Respondent is not Complainant’s licensee in any respect, nor has Complainant in any way endorsed, authorized, or sponsored Respondent’s use of Complainant’s marks.
5.6 Respondent does not own any registered or common law marks containing the terms "AT&T," "ATT," "AT&T WORLDNET," "ATT WORLDNET," "WORLDNET ATT," "WORLDNETATT," or "ATTWORLDNET" or any similar derivation.
5.7 No issue is taken with the assertions of the Complainant in respect of this element of the Policy as far as it concerns the Respondent. Rather, it is asserted that the Respondent in this Administrative Proceeding is not the registrant of <worldnetatt.net>, claiming that this domain name was recently acquired from firstname.lastname@example.org for $2,500, and therefore "is not guilty of any of the three required violations to justify transferring the domain name to Complainant AT&T. The putative respondent makes the bare assertion that it "is the creator of the ‘World of Nettie Atteberry’ stories".
Respondent Has Registered and Used the Domain Name in Bad Faith
5.8 Complainant asserts that Respondent’s conduct in its registration of the domain name and in its dealings with AT&T Corp. demonstrates its bad faith in registering the contested domain name, and that mere registration of a trademark or famous mark as a domain name, by an entity which has no relationship to the mark, is sufficient evidence of bad faith registration and use.
5.9 Complainant further asserts bad faith on the part of the Respondent as evidenced by its aggressive attempts to extort $10,000 from Complainant while refusing to provide its mailing address, providing insulting and materially misleading contact information, and "transferring" the registration across the globe after being contacted by AT&T Corp.’s counsel.
5.10 The Complainant says that, even if the purported Response of "Nettie Atteberry" were accepted, it adduces no credible facts or arguments supporting the Respondent’s legitimate interests of good faith. Further, the Complainant says that the dubious activity described above, plus "Nettie Atteberry’s" failure to produce any evidence to support its allegations when called upon to do so "establishes ‘bad faith’ beyond a reasonable doubt."
5.11 The putative respondent says that the Respondent is not the registrant of <worldnetatt.net> and that the current registrant is "WORLD OF NETTIE ATTEBERRY", the creator of the "World of Nettie Atteberry" stories, and is not affiliated with the claims of the Complainant "with regards to ‘bad faith’ registration, and did not offer the domain name for sale to the Complainant, nor use it in any manner to dilute or tarnish the image or intellectual property of AT&T." Nor did it "profit or attempt to profit from any possible similarity of names".
6. Discussion and Findings
6.1 The Complaint was submitted on the basis of the provisions of a Registration Agreement in effect between the Respondent and Network Solutions which incorporates by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent agree in writing to submit to a mandatory administrative proceeding regarding third-party allegations or abuse of domain name registration (Policy, para. 4(a)). No registration is approved in the absence of such a written submission.
6.2 Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abuse of domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(a)).
6.3 The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish a procedure 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), Rules).
6.4 Before dealing with the substantive issues involved with obtaining the relief requested under the Policy this Panel must decide the effect of the documentation filed on behalf of the putative respondent. The Complainant has referred to the machinations of the various pseudo owners of the Domain Name in question since the Complainant first gave notice that the Domain Name <worldnetatt.net> was identical or confusingly similar to a trademark or service mark in which it had rights, as a "shell game". This Panel agrees with that characterization.
6.5 While it must be accepted that in some cases the transfer of beneficial title may be quite legitimate, there have been a number of cases involving concurrent "passing off" of Domain Names after the first cease and desist communication is made. An early example of this is Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138. In that case, the registration was solely in the name of QUIXTAR-IBO; however, apparently out of an abundance of caution, the Complainant also named a Scott A. Smithberger as the Complainant was convinced that there was no such entity as Quixtar-IBO, thinking it to be a mere alter ego of Mr. Smithberger. However, as Mr. Smithberger was not the registrant of the Domain Name and had therefore not entered into any contract or other agreement in which he personally agreed to arbitrate a dispute over the Domain Name pursuant to the Policy, the Panel concluded that it lacked jurisdiction over him and dismissed the claims against him. However, the Panel was able to use the conduct of Mr. Smithberger in this regard as evidence of bad faith. This issue arose again in Plaza Operating Partners Ltd. v. POP Data Technologies and Joseph Pillus, WIPO Case No. D2000-0166, where, to begin with, it was unclear to the Panel from the Complaint and the Response, which of three potential owners actually owned the legal and beneficial title to the Domain Name in question. The registered owner was named as a Respondent in the Complaint. In the Response, it was alleged in one part thereof that the Respondent had sold the Domain Name to one of the other named persons, but in another part it stated that the Respondent had sold the name to the third person named (one being a corporation and the other an individual who was the sole shareholder in that corporation). The Panel held that the Corporation named as Respondent, although claiming that it was not properly before the Panel because it no longer had an interest in the Domain Name in question, was a legitimate Respondent and an order could be made against it, even though it may have signed a document selling its rights in the Domain Name. The individual not listed as an owner of the Domain Name and who had not submitted to the Panel a signed copy of the registration agreement consented to the jurisdiction of ICANN panels, because he had asserted that he was the owner of the Domain Name and participated in the proceedings, had voluntarily agreed to subject himself to the Panel’s jurisdiction, and was found to be properly before the Panel. In Tough Traveler v. Kelty Pack Inc., Mike Scherer and Inkling Pen Co., WIPO Case No. D2000-0783, the Panel found a third party, claiming to be the beneficial owner of the Domain Name, who filed the only Response and participated in the proceeding as a Respondent, to be deemed to have consented to the jurisdiction of the Panel.
6.6 Such tactics as described above have added a new name to our vocabulary -- "cyber-flying". Under the Policy, a registrant may not transfer a Domain Name registration to another holder or another registrar during a pending proceeding under the Policy or for fifteen business days after its conclusion. The Complaint is initiated by the trademark owner sending a properly constituted Complaint to any provider provided by ICANN – Rule 3(a). A copy must already have been sent to the Respondent by the Complainant – Rule 3(b)(xii). The date of commencement of the proceeding is the date on which the Provider completes its responsibilities in connection with forwarding a copy of the Complaint to the Respondent (after checking all the formalities, which can take several days) – Rule 4(c). Quick-witted Respondents seek to escape the jurisdiction of the Panel by transferring the Domain Name to a new holder or to a new registrar after receipt of the copy of the Complaint, but before the formal commencement of the proceeding. Neither a change of registrant nor even of registrar affects the proceedings. (See British Broadcasting Corporation v. Data Art Corporation/Stoneybrook, WIPO Case No. D2000-0683; Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc. WIPO Case No. D2001-0732.) It is the view of this Panel that an order for transfer of the Domain Name may be made against both the named Respondent and the putative respondent "World of Nettie Atteberry" for the transfer of the Domain Name <worldnetatt.net> to the Complainant, if the requisite elements of the Policy have been proved on a preponderance of the evidence.
6.7 In addressing the evidence necessary to prove the substantive aspects of this case, this Panel adopts what it said in a previous case mentioned above, McClatchy Newspapers, Inc. v. Moldava S.A. WIPO Case No. D2001-0304:
"Twenty-five years before the Sacramento Bee was first published , an English judge Sergeant Arabin, sitting at the Old Bailey in London concluded of the matter then before him that ‘if ever there was a case of clearer evidence than this of persons acting together this case is that case’. While this Panel may not agree with the syntax of that statement, the same conclusion may readily be adopted to the circumstances here. It is very much to be doubted that [the string of putative owners] are separately controlled persons and entities. In any event, there is sufficient evidence to warrant a finding that their conduct, individually and in concert, is such as to make the acts of any one of them admissible in this Panel’s determination that the domain name in question has been registered and is being used in bad faith. . . . The covert attempts to transfer the domain name in question through a number of nominees in a variety of countries demonstrate a transparently nefarious scheme to delay justice and further harm the Complainant."
In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:
(i) 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;
6.8 This factor contains two elements:
First, does Complainant have rights in relevant mark, and second, is the Domain Name identical or confusingly similar to that mark. (Plaza Operating Partners Ltd. v. POP Data Technologies and Joseph Pillus, WIPO Case No. D2000-0166). In this case, Complainant asserts only that the Domain Name is confusingly similar.
6.9 This Panel accepts that the Complainant is the holder of the registrations for the marks referred in paras. 4.1 and 4.2 above and has been the registrant of the domain names referred to in paras. 4.3 and 4.4 above, and has used "AT&T WorldNet" in commerce and has held United States and other registered trademarks as identified in para. 4.5 above. This Panel also accepts the facts as set out in para. 4.6 above.
6.10 The test for determining confusing similarity is one of overall impression of confusion in the mind of the person making the decision, deciding it as a "jury question", with the additional requirement that there be a real danger of confusion. (See AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249). This test has, in the opinion of this Panel, been proved on a balance of probabilities which is the appropriate standard for these Domain Name disputes.
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
6.11 This Panel accepts the assertions of the Complainant as found in para. 5.5 and 5.6 above and rejects the allegations found in the Responses filed on this issue. The Respondent has provided no credible evidence of the alleged transfer of registration. It is the responsibility of the parties to these Domain Name disputes pursuant to the ICANN process to present their evidence in full either in the Complaint or in the Response. It is of no use for the Respondent to say, as it has done in its first Response here, "If this panel believes there is any questionable facts or evidence, "World of Nettie ATTEBERRY", will cooperate in showing proof of purchase, statements of intent for the use of the domain name, communication records from the previous registrants, etc. We are a legitimate, Internet friendly, honest entity. Furthermore, we will be happy to provide confidentially to this panel our private name, address, and phone number. The information is not contained in this Response because through our research since receiving this complaint, it is apparent that AT&T has a reputation of personally harassing private individuals and using their mega-size and unlimited funds to intimidate little people. Please respect our privacy and prudence. We acknowledge e-mail as valid communication and verify receipt of such. Postal service is unreliable and inconvenient. Thank you." This Panel invited further evidence in this regard which, on receipt, was found to be doctored and lacking in substance. And, when this was exposed, rather than supply credible evidence, it repeated its desire to do so. It is the view of this Panel that the conduct of the Respondents (by which is meant the Respondent and the "putative respondent") was nothing more than a prolonged attempt to delay this proceeding and to put off the inevitable. It was no doubt hoped that another proceeding would have to be started, during which further similar machinations would take place with another putative party bearing a name with the acronym "att" being substituted with equally concealed personal contact information and identity. Nor has any evidence been presented that the putative respondent has any involvement in the creation of the "World of Nettie Atteberry" stories other than the bare assertion made in one of its Responses.
6.12 This Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) that the Domain Name has been registered and is being used in bad faith.
6.13 It has been held in earlier Panel decisions that mere registration of a trademark or famous mark as a Domain Name, by an entity which has no relationship to the mark, is sufficient evidence of bad faith registration and use. (See Sony Kabushiki Kaisha a/t Sony Corp. v. Fujiko Kikuno, WIPO Case No. D2000-1372; Sigla Sistema Globo de Gravacoes Audio Visuais Ltd. v. Italo de Barros Nade, WIPO Case No. D2000-0732, and Pivotal Corp. v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648). Further, earlier Panel decisions have held that conduct demonstrating a deliberate concealment of the true identity of the Respondent through handing off the Domain Name after it has become aware that proceedings are likely to be taken, to delay the arbitration process itself, constitutes bad faith. (See Telstra Corp. Ltd. v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Geoffrey Inc. v. Babys Russian, WIPO Case No. D2000-1011, and McClatchy Newspapers, Inc. v. Moldava S.A., WIPO Case No. D2001-0304.) This Panel repeats and affirms what it said in the McClatchy Newspapers case above.
6.14 This Panel finds that the Domain Name <worldnetatt.net> has been registered and is being used in bad faith.
6.15 In light of what has occurred, the Complainant asked that this Panel invoke its "right to cancel any transfer of a domain name registration to another holder that is made in violation of [Rule 8(a)]."
7.1 This Panel finds and decides:
(a) the Domain Name is identical or confusingly similar to a trademark or service in which the Complainant has rights;
(b) the Complainant has established that Respondent(s) has no rights or legitimate interests in respect of the Domain Name <worldnetatt.net>;
(c) the Complainant has established that the Domain Name has been registered, and is being used in bad faith.
7.2 The ruling of this Panel is that the registration of the Domain Name <worldnetatt.net> be transferred from the named Respondent and the putative respondent, as explained above, to the Complainant.
7.3 The ruling of this Panel is, further, that pursuant to para. 8(a) of the Policy the purported further domain name registration to "Nettie Atteberry" which occurred after the commencement of these proceedings, be cancelled.
8. Reverse Domain Name Hijacking
8.1 In para. 5.4 above, mention is made of an allegation on the part of the Respondent that this Complainant is far-fetched at best and is merely part of ongoing crusade by AT&T to "reverse domain name hijack". Having found for the Complainant in the matter, this Panel denies the request of the Respondent in this respect – if indeed it was a request.
Dated: November 15, 2001
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL REQUEST
PURSUANT TO RULE 12 OF THE RULES FOR
UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY
AT&T Corp. W.N.A., a/k/a
295 North Maple Avenue v. "Worldwide Network of Attornies"
Basking Ridge, NJ 07920-1002 USA Farouk al Khalifa a/k/a Jaye Rayes
(Complainant) 6 Palace Avenue, Manama BAHRAIN (Respondent)
Case No. D2001-1160
1. The Complaint in this Case was filed with the World Intellectual Property Organization ("WIPO") on September, 21, 2001, naming as Respondent W.N.A., a/k/a "Worldwide Network of Attornies".
2. An abbreviated copy of material in connection with this Case was received as an attachment to an e-mail directed to this Administrative Panel on October 25, 2001. It contained a copy of the Complaint duly authenticated by the Representative authorized to act for it in this Administrative Proceeding, pursuant to the Uniform Dispute Resolution Policy ("the Policy"). The file also contained a document entitled "Response to Complainant" submitted not by the named Respondent in this proceeding but rather by an entity describing itself as "World of Nettie Atteberry", along with its contact information but without the required statement and signature of this putative Respondent. It is alleged in this document that the named Respondent in this case is not the Registrant of <worldnetatt.net>, the Domain Name which is the subject of this proceeding, and that this Domain Name was "recently" acquired from an entity described as email@example.com . It also asserts certain defences to the Complaint which relate to it, rather than the named Respondent.
3. On October, 26, 2001, this Panel received two further documents as e-mail attachments from WIPO. Both of these documents originated from the attorneys of record on behalf of the Complainant. These documents were a "Request for Leave to File Motion to Strike Response to Complaint" and a "Request to Strike Submission Purportedly on Behalf of Respondent". The principal basis for seeking to strike the Submission in question is the fact that, allegedly contrary to para. 8(b) of the Policy, "[t]he Registration at issue was changed after AT&T Corp. issued notice of this action on September 21, 2001", in violation of para. 8(b) thereof.
4. The above-noted documents raise some new and unusual issues such as to incline this Administrative Panel to request further statements and documents from the Parties, pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"). The issues foreseen by the Panel are:
4.1 Ought the document "Response to Complaint", submitted on behalf of the putative entity "World of Nettie Attebery" to be received as a Response to the Complaint in this case?
4.2 What are the legal effects on the position of the named Respondent and the putative Respondent in this proceeding which will flow from a decision either to receive the Response, as above, or not to receive it? Please give reasons.
4.3 Ought the Complainant’s request for leave to file a motion to strike the Response to the Complaint to be granted, and in that event should the "Response" be struck? Please give reasons.
4.4 What are the legal effects that the Parties each say flows from either the success or lack thereof of the requests referred to in para. 4.3 above, particularly concerning the decisions which this Administrative Panel would then be entitled to make in regard to either or both registrations? Please give reasons.
5. This Administrative Panel would like to deal with the above in an orderly manner, and pursuant to its General Powers as stated in Rule 10 of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), which reads as follows:
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
6. This Panel has not yet received the full record by mail of this case and therefore is under some handicap in following the precise trail of material events in regard to the registration of the Domain Name in question. Nor has this Panel received any specific evidence of any of the assertions made in the document "Response to Complaint". In regard to both positions, note should be taken by the parties of the comments made by earlier Administrative Panels concerning the weight of evidence as between mere assertions on the one hand and documented or otherwise verified evidence on the other. It is noted that the "Response to Complaint" submitted does contain a conditional offer of further proof of the facts which it asserts. The first condition states that the offer is dependent on whether there "is any questionable fact or evidence". The answer to this is that all assertions are subject to question by Administrative Panels. The second condition is that this Panel not reveal some of the information provided. This Panel is of the opinion that it cannot accept this condition consistent with its authority in para. 10 of the Rules, as above.
7. In order that this proceeding not be prolonged unnecessarily, this Panel requests:
7.1 That either or both "Respondents" provide to this Administrative Panel and the Complainant (through the WIPO Case Manager) on or before Friday, November 2, 2001, any further material evidence which they have in support of the assertions made in the "Response to Complaint".
7.2 That the Complainant, on or before Friday, November 9, 2001, provide further statements and documents responsive to the issues posed in para. 4 above, along with any further material evidence touching upon the issues raised above.
7.3 That either or both of the "Respondents" on or before November 13, 2001, provide further statements and documents responsive to the issues posed above in para.4.
8. The named Respondent, W.N.A. a/k/a "Worldwide Network of Attornies" shall also make it clear whether it adopts the Response to Complaint filed by "Nettie Attebery", by Friday, November 2, 2001.
9. It would also be helpful to this Administrative Panel for it to obtain further evidence from the Registrar, eNom, Inc. concerning the most recent filing application mentioned in the "Response to Complaint". This Panel does not think it appropriate for it to do so directly.
10. This Administrative Panel deems the delay occasioned by what has occurred and which has precipitated the above to be "exceptional circumstances" pursuant to Rule 6(f) of the Rules and therefore extends the date by which its decision will be rendered until November 20, 2001.
Dated: November 16, 2001