WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Peter Carrington/ Party Night Inc.
Case No: D2002-0931
1. The Parties
The Complainant is AT&T Corp., C/O Michele A. Farber, North, Bedminster, N.J. 07921, of United States of America, represented by Mr. Alan Charles Raul, from Sidley Austin Brown & Wood LLP, also of United States of America.
The Respondent is Peter Carrington/ Party Night Inc., Amsterdam, NL 1071 CS, of Netherlands.
2. The Domain Names and Registrar
The disputed domain names are <attboadband.com> and <attbradband.com>. The Registrar of both domain names is Key-Systems GmbH dba domaindiscount24.com, of Bexbach, Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2002. On October 10, 2002, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain names at issue. On October 11, 2002, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Registrar also informed that the Respondent used the English language version of the registration agreement.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 5, 2002.
The Center appointed Mr. Antonio Millé as the sole panelist in this matter on November 15, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 19, 2001, the Panelist received via courier a complete copy of the Complaint and the corresponding enclosures.
4. Factual Background
The trademark upon which the Complaint is based are:
- "1 800 CALL ATT";
- "CAMP ATT";
- "1 800 ATT-GIFT"; and
The Complainant attached copies proving that these trademarks are registered as of it ownership in the United States Patent and Trademark Office.
The Complainant also has proved having filed trademark registration applications for numerous "AT&T Broadband" marks, which already enjoy common law protection, with the United States Patent and Trademark Office, including:
- "AT&T BROADBAND";
- "AT&T BROADBAND PHONE COMMUNICATOR";
- "ATTBROADBAND.NAME"; and
The Complainant also affirms that "has been selling telecommunications products and services for over a century under the name `AT&Tī and phrases that combine `AT&Tī or `ATTī with other words" and "AT&T Broadband is a unit of AT&T Corp. and is the largest provider of broadband services in the United States" serving "past nearly 28 million homes and .. more than 16 million households". The Complainant attaches documentation that serve as evidence of the considerable efforts that it developed to publicity it trademarks and of the high value and notability of such trademarks.
The Complainant asserts and proves that "has been the registrant for the domain name <attbroadband.com> since at least March 2000" and that this domain name give access "to AT&T Broadbandís primary website, http://www.attbroadband.com/".
As per the documentations annexed to the complaint, using the contested domain names the Internet navigator is diverted to the website <www.amaturevideos.nl> that advertises pornography. The Panelist used <attboadband.com> and <attbradband.com> as addresses in his browser, obtaining only the error message "11001" and not the access to any website. Using then <www.amaturevideos.nl> as address, the Panelist verified that he entered into a pornographic image site plenty of "pop-under" adds and with resources to "mousetrapp" the visitor.
5. Partiesí Contentions
The Complainant contend that :
(a) "The contested domain names <attboadband.com> and <attbradband.com> are confusingly similar to Complainantís official, legal and world famous names and marks".
(b) "Respondent has intentionally registered single-letter typo variations of Complainantís famous AT&T Broadband marks to form the domain names <attboadband.com> and <attbradband.com>".
(c) "Courts and WIPO panels have recognized that the consuming public associates "ATT" with AT&T only".
(d) "The cybersquatting challenged in this proceeding is virtually identical to that addressed in AT&T Corp. v. John Zuccarini d/b/a/ RaveClub Berlin, Case No. D2002-0666. .. In Zuccarini the Panel found the domain names <atttbroadband.com>, <attbraodband.com>, <attboradband.com>, <attbroadban.com>, and <attbrodband.com> were blatantly confusingly similar to AT&Tís marks".
(e) "Numerous other WIPO panels have also found domain names that contain the character string <att>, and combine it with other words or descriptors, to be confusingly similar to AT&Tís marks".
(f) "Likewise, in a case involving <attweb.com>, the panel found that "Respondentís disputed domain name, Ďattweb.comí, is confusingly similar to Complainantís family of trademarks. Respondentís adding the generic "web" does not change this." and "Another panel of this tribunal ordered the transfer of the domain name <attmexico.com> and <att-latinamerica.com> from WorldClassMedia.com to Complainant, after finding a likelihood of confusion and bad faith".
(g) "Respondent has no rights or legitimate interest in respect of the contested domain names <attboadband.com> and <attbradband.com>, because: Respondent is not Complainantís licensee .., nor is Respondent authorized to use Complainantís marks; Respondent does not own any registered or common law marks containing the terms "AT&T," "AT&T BROADBAND", "ATT," or "ATTBROADBAND" or any similar derivation; Respondent has not been commonly known by the contested domain name, nor does Respondent run any enterprise commonly known by the contested domain name; Respondent is not making legitimate noncommercial or fair use of the contested domain name; and Respondent is not operating any website, only diverting Internet traffic to a pornographic website".
"Respondent has registered and used the contested domain names in bad faith. AT&T is an internationally famous mark; and Respondent has no rights to <attboadband.com> and <attbradband.com>. Respondent clearly chosen to register <attboadband.com> and <attbradband.com> to divert Internet traffic for Respondentís benefit to a pornographic website".
"Registration of a trademark or famous mark as a domain name, by an entity that has no relationship to the mark, in and of itself is evidence of bad faith registration and use".
"WIPO panels have consistently found that combining a famous mark with even generic words .. to form a domain name is bad faith".
"Respondent's typosquatting is a bald attempt to capture the Internet user's attention by exploiting AT&T's fame".
"The pornographic nature of the sites to which <attboadband.com> and <attbradband.com> traffic is misdirected harms AT&Tís image and further demonstrates Respondentís bad faith registration and use of the site".
"WIPO panels have repeatedly held that association of a complainantís mark with a pornographic web site constitutes bad faith".
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive Domain Name registration. We will examine each one of these elements in the following points:
A. Identical or Confusingly Similar
Being that the particle "com" is an attribute of the gTLD, common to all the Domain Names under this TLD, and clearly evoking the content of the domain names <attboadband.com> and <attbradband.com> the Complainant trademarks, it is beyond question that the trademark "AT&T", "AT&T BROADBAND" and others of the same families owned by the Complainant are confusingly similar to the Domain Names <attboadband.com> and <attbradband.com>. Therefore, the requirement of Paragraph 4.a.(i) is met.
B. Rights or Legitimate Interests
Not "ATTBOADBAND" nor "ATTBRADBAND" are part of the corporate name of the company registering the <attboadband.com> and <attbradband.com> Domain Names. The Respondent has not answered the complaint and therefore, it has not given any basis to a right or legitimate interest in respect of the use of the lettering "ATT" or "ATTBROADBAND" or its textual variations as a Domain Name. The conclusion about the lack of rights or legitimate interest that comes from this facts is confirmed by the lack of allegation by the Respondent of the existence of any of the circumstances listed in paragraph 4.c. of the Policy to demonstrate his rights or legitimate interest to use the Domain Name.
On these basis, the Panelist concludes that the Respondent has no legitimate interest in the Domain Names <attboadband.com> and <attbradband.com>. Therefore, the requirement of Paragraph 4.a.(ii) is met.
C. Registered and Used in Bad Faith
The Complainant based the Complaint on the existence of the circumstances set out in paragraphs 4.b.i) and 4.b.iv) of the Policy regarding the registration and use of the domain name in bad faith. In consequence, our analysis will be focused in these points.
The Complainant does not mention any attempt of the Respondent "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". As was noted, when the Panelist introduced the addresses <attboadband.com> and <attbradband.com> in his Internet navigator, he received the message that the page can not be displayed. No offering of the Domain Name for sale appeared, nor any links to other pages. It shall be concluded that the circumstances set out in paragraph 4.b.i) of the Policy are not presents in this case.
On the other hand, being "AT&T", "ATT" and "ATTBROADBAND" abbreviations by initials and fantasy denominations without meaning in any language known to the Panelist, the Panelist can not imagine a legitimate reason that could drive the Respondent to choosing this denomination as a Domain Name.
The intentional use of "misspelling" and "mousetrapping" stratagems and the evident relationship of the Respondent with an organization trying to win visitors to pornographic websites by means of the confusion of the initial interest of the Internet user, convinced the Panelist about the undeniable bad will of the Respondent when registered and used (actively or passively) the Domain Names in dispute. This conviction is reinforced by the fact of the repetition of the maneuver by different persons or entities that shall be deemed to be related with the Respondent in this case, being required to recall that in the cases CIMCITIES LLC v. Party Night Inc., WIPO Case No. D2002-0613, Sears, Roebuck and Co., v. Party Night, Inc.,WIPO Case No. D2002-0732 and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, the same Respondent lost other Domain Names registrations for having incurred in the same kind of maneuvers used in the present one.
Many precedents would support the decision that the Panelist is prepared to adopt in this case, including the ones appropriately quoted by the Complainant representation in the well based and documented Complaint; however it is sufficient to quote the decision in the previous case Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party WIPO Case No. D2000-1415, in which the factual circumstances were absolutely similar to the ones of the present case:
"Zuccariniís registration and use of the domain name is in bad faith. As noted above, the only explanation of Zuccariniís actions is that he intended to divert the internet traffic of persons intending to find websites legitimately associated with Kidman, and that he appears to have done so to profit from fees paid by advertisers. This in and of itself can show bad faith. See Policy paragraph 4(b)(iv) (it is evidence of bad faith that, "by using the domain name, [the respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [his or her] 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 [the respondentís] web site or location or of a product or service on [the respondentís] web site or location.").
In addition, the many arbitral and judicial decisions rendered against Zuccarini show that his behavior is part of an overall pattern of misuse of famous marks for illegitimate purposes. His practice of profiting from the good name of others is evidence of his bad faith registration and use of the domain names <nicholekidman.com> and <nicolekidmannude.com>".
Without any doubt, in terms of section 4. b. iv of the Policy, the conduct of the Respondent constitute an intentional attempt "to attract, for commercial gain, Internet users to (the Respondent) web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of (the Respondent) web site or location or of a product or service on your web site or location".
Because of this, the Panelist arrives at the conclusion that the Respondent has registered and used the <attboadband.com> and <attbradband.com>Domain Names in bad faith. Therefore, the requirement of paragraph 4.a.(iii) is met.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <attboadband.com> and <attbradband.com> be transferred to the Complainant.
Dated: November 21, 2002