WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp v All Time Talk Cellular and All Over Land

Case No. D2002-0741

 

1. The Parties

The Complainant in this administrative proceeding is AT&T Corp., a United States corporation incorporated under the laws of the State of New York, whose principal place of business is in Basking Ridge, New Jersey, United States of America ("USA"), represented by Alan Charles Raul, of Sidley Austin Brown & Wood LLP, 1501 K Street, N.W., Washington, D.C. 20005, United States of America. The Respondents are All Time Talk Cellular of Bouar, Karam Karam Blg., Jounieh, Keserwan 613435, Lebanon and All Over Land of Dekwaneh, Beirut, Lebanon.

 

2. The Domain Names and Registrars

(a) The domain names in issue are <attvideophone.biz>, <attphone.biz>, <attvideophone.info>, <attphone.info>, <attcredit.biz>, <attmobile.biz>, <attcredit.info> and <attmobile.info> (the "Domain Names");

(b) The registrar with which the domain names <attvideophone.biz>, <attphone.biz>, <attcredit.biz> and <attmobile.biz> are registered is iHoldings.com, Inc. D/B/A DotRegistrar.com of 13205 SW 137th Avenue, Suite #133, Miami, FL 33186, United States of America;

(c) The registrar with which the domain names <attvideophone.info>, <attphone.info>, <attcredit.info> and <attmobile.info> are registered is Domain Bank, Inc., of 23 West 4th Street, Bethlehem, PA 18015-1603, United States of America.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received on August 6, 2002, an electronic version of the Complaint and on August 15, 2002, a hard copy of the same and accompanying documents. On August 6, 2002, the Complainantís Attorney also lodged with the Center a Consolidation Petition, seeking to consolidate this administrative proceeding with WIPO Case Nos. D2002-0569 and D2002-0606. That petition was denied by the Center on the grounds that those two earlier cases (which had been consolidated) had already proceeded too far (these proceedings were decided on September 13, 2002.)

On August 8, 2002, the Complainant sought leave to amend the Complaint by including the four "attcredit" and "attmobile" domain names listed above to the original group of the first four "attvideophone" and "attphone" domain names. Leave was granted on August 9, and on August 12, 2002, an Amended Complaint was filed (this is referred to hereafter simply as the "Complaint"). The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). The Complainant made the required payment to the Center. On August 20, 2002, the Center formally notified the Respondents that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

The Center has transmitted via e-mail requests for registrar verification in connection with this case in relation to all the Domain Names. The respective Registrars confirmed that they are the Registrars of the domain names listed in paragraph 2 above and that the Administrative, Billing and Technical Contacts are:

(i) in the case of the four .biz domain names All Time Talk Cellular, of the address given in paragraph 1; and

(ii) in the case of the four .info domain names All Over Land, at its above-stated address.

No Response has been filed by either Respondent. The Center sent notification of the Complaint to the Respondents by FedEx courier, and by e-mail (and by fax to an inoperative fax number given for All Over Land).

On September 13, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by September 27, 2002.

 

4. Factual Background

(a) The Complainant is the registered proprietor of the trade mark AT&T in a large number of countries. To satisfy the requirements of the Policy, it is sufficient to record that it owns United States Trade Mark No. 1,342,197, issued on June 18, 1985 (the "Trade Mark").

(b) The Complainant has been the registrant of the domain name <att.com> since 1986.

(c) The Domain Names were all registered on December 1, 2001. The four .biz domain names were registered over the space of about 8 seconds, and the four .info names some 24 minutes later over a similar space of time.

(d) The Complainant initially filed WIPO Case No. D2002-0569 against the Respondent All Time Talk Cellular and another respondent May Halabi. The Complainant then filed a second, related complaint (WIPO Case No. D2002-0606) against All Time Talk Cellular and, based on the Complainantís firm belief that All Time Talk Cellular and Halabi are acting in concert, petitioned the Center for consolidation of the second matter with the first. After filing its second complaint, the Complainant learned that All Time Talk Cellular owns additional infringing domain names, and that it is likely acting in concert with yet a third party, All Over Land. The Complainant thus filed a third complaint in this case before the Panel, naming All Time Talk Cellular and All Over Land as Respondents. Having filed its third complaint, the Complainant again discovered additional infringing domain names. The Complainant consequently filed the present (amended) Complaint to incorporate these additional names.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:-

(a) The 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. The Complainant has invested at least hundreds of millions of dollars promoting its brand among consumers in the United States and other countries around the world. As a result, the Trade Mark is well-known worldwide.

(b) A WIPO Panel has confirmed the worldwide recognition of the great value in AT&Tís brand name. The Panel stated:

"The AT&T brand name recently has been recognized as one of the ten most valuable brand names in the world, as noted by the article from U.S. News & World Report, September 11, 2000 and the 2000 Interbrand Annual Survey. The AT&T marks are inherently distinctive, famous, and entitled to the widest scope of protection afforded by law, including protection against dilution."

AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723

(c) The Complainant is the registrant of the domain name <att.com>. The name <att.com> resolves to AT&Tís primary corporate website, <www.att.com>. Thus, the Complainant conveys the Trade Mark by using <att> on the web, which does not permit the use of an ampersand character in a domain name.

(d) Numerous WIPO panels have already found that domain names combining the Trade Mark with another term create confusing similarity, and have transferred these names to AT&T. See, e.g.:

- AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 (<attweb.com> is confusingly similar to AT&Tís extensive family of trademarks, and the generic term "web" does not detract from the similarity);

- AT&T Corp. v. Woppies, WIPO Case No. D2000-1724 (given AT&Tís substantial use of "AT&T" and "ATT," and AT&Tís strong rights in these marks, <attanywhere.com> causes confusing similarity);

- AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249 (transferring <att2000.com>);

- AT&T Wireless Services, Inc and AT&T Corp. v. Phone Center, Mark Hentrich, WIPO Case No. D2000-0678 (transferring <attwireless.com> after finding confusing similarity);

- AT&T Corp. v. Shenzhen Zhidong Computer Co. Ltd., WIPO Case No. D2000-1574 (transferring <attcore.com>);

- AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (<attmexico.com> and <att-latinamerica.com> are confusingly similar to AT&Tís trademark);

- AT&T Corp. v. Caimmi Rappresentanze & Marketing Italia, WIPO Case No. D2001-0541 (deciding in favour of AT&T after rejecting the argument that "attbusiness" designated a company called "Attention Business").

(e) At the time the Complainant filed its initial complaint against All Time Talk Cellular and May Halabi, the domain names <attcellular.biz>, <attdsl.com>, <attdsl.biz>, and <attdsl.info> resolved to a single, inoperative website labelled "Attention DSL". Though that site is clearly designed to appear as though it is that of a business offering DSL services, the site in fact does not function at all. Internet users cannot click on any portion of the site, including the headings, graphics, or ostensible "links". No contact information for the "business" is provided. The website therefore consists of a single screen that offers no access to products or services and no information about the purported business. After receiving the Complainantís initial complaint, Halabi disclaimed ownership of <attcellular.biz>. AT&Tís attorneys then received an e-mail from All Time Talk Cellular stating that it had deactivated the link between <attcellular.biz> and the "Attention DSL" website. The <attcellular.biz> name now resolves to a generic screen stating "The page cannot be found". The domain names <attdsl.com>, <attdsl.biz> and <attdsl.info> still resolve to the "Attention DSL" site. Significantly, despite Halabiís attempt to disclaim any connection with All Time Talk Cellular, the latterís <attvideophone.biz> and <attphone.biz> domain names, which are contested here, do resolve to the "Attention DSL" site.

(f) The contested domain names <attvideophone.info>, <attphone.info>, <attcredit.info> and <attmobile.info> resolve to a generic page stating: "Your account is currently not active on DomainRedirect.com". The contested names <attcredit.biz> and <attmobile.biz> resolve to a blank page.

(g) The Domain Names have never been used in any bona fide trade or business. Rather, by registering these names, the Respondents intended to divert and confuse Internet users seeking the Complainantís products and services for the purpose of exploiting AT&Tís famous mark and improperly diverting users to another website.

(g) It cannot be contended that the numerous links between Halabi, All Time Talk Cellular and All Over Land are merely the product of coincidence. The evidence that these parties are acting together is abundant.

B. Respondent

As noted above, no Response has been filed.

 

6. Discussion

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) the domain name has been registered and is being used in bad faith.

As to element (i), the Trade Mark is "AT&T", and is without doubt internationally famous in the field of communications. In the context of the Internet the Trade Mark is reduced to "att", and has been extensively used by the Complainant in that form. Here, the Respondents have combined "att" with the words "videophone", "phone", "mobile" and "credit". All four words describe products or services provided by the Complainant. A member of the public seeing any of the Domain Names would inevitably conclude that this was a domain name emanating from the Complainant and reflecting some aspect of its famous business. The Panelist has no hesitation in concluding that each of the Domain Names is confusingly similar to the trade mark AT&T.

As to element (ii) of paragraph 4(a) of the Policy, the Respondents have done nothing to demonstrate that they have any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the Policy apply (ie before notice of the dispute preparation to use the Domain Names, being commonly known by the Domain Names or making a legitimate non-commercial or fair use of the Domain Names). In the absence of any justification from the Respondents of their activities in relation to the Domain Names, the Panelist concludes that the Complainants have established element (ii).

So far as element (iii) is concerned the Respondentsí conduct is redolent of bad faith. The following are matters that the Panelist has particularly noted:-

(a) On the evidence assembled by the Complainant, spanning 6 pages of the Complaint, the Panelist is satisfied that the Respondents and May Halabi have been acting in concert to register a string of domain names beginning with the letters "att", i.e. this is a plain case of cybersquatting.

(b) It is in the Panelistís opinion no coincidence that the initial letters of the Respondentsí names happen to be A.T.T. and A.O.L., and that this suggests an intention to operate other than in good faith.

(c) The virtually simultaneous registration of the four .biz Domain Names by one Respondent with one registrar and the four .info Domain Names by the other Respondent with another registrar.

(d) It is a matter of speculation as to how the Respondents might intend to use the Domain Names. Given the fame of the Complainant and the Trade Mark, the attempts by the Respondents (and indeed many other parties Ė see paragraph 5A.(d) above) to register domain names in which "att" is prominent, and the absence of any attempt by the Respondents to explain their conduct, the inference that the Respondents have been acting in bad faith is irresistible.

In all the circumstances, therefore the Panelist finds that the Complainant has established element (iii) of paragraph 4(a) of the Policy.

 

7. Decision

In the light of the findings in paragraph 6 above, the Panelist concludes that:-

- the domain names <attvideophone.biz>, <attphone.biz>, <attvideophone.info>, <attphone.info>, <attcredit.biz>, <attmobile.biz>, <attcredit.info> and <attmobile.info> are confusingly similar to the trade mark AT&T of the Complainant;

- the Respondents have no rights or legitimate interests in the domain names;

- the domain names have been registered and are being used in bad faith.

Accordingly, the Panelist orders that the domain names <attvideophone.biz>, <attphone.biz>, <attvideophone.info>, <attphone.info>, <attcredit.biz>, <attmobile.biz>, <attcredit.info> and <attmobile.info> be transferred to the Complainant, AT&T Corp.

 


 

Christopher Tootal
Sole Panelist

Dated: September 20, 2002