WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. f kahen

Case No. D2002-1177

 

1. The Parties

The Complainant is AT&T Corp. of Bedminster, NJ, United States of America, represented by Sidley Austin Brown & Wood of United States of America.

The Respondent is f kahen, AAA Computer Services Net of Los Angeles, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <attmall.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 31, 2002. On December 31, 2002, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On January 2, 2003, Go Daddy Software, Inc. 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 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 January 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2003. The Response was filed with the Center on January 11, 2003.

The Center appointed Gaynell Methvin as the sole Panelist in this matter on February 4, 2003. 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 or about February 7, 2003, the Respondent e-mailed the Center and contended that he had not received a copy of the Complaint and requested additional time to respond. On February 10, 2003, the Center replied and pointed out to Respondent that the record clearly indicated that the Complaint had been sent to and received by Respondent. The Panel has reviewed the Centerís response and the complete record on which it was based. The Panel agrees with the Centerís position and concludes that the Respondent did indeed receive a copy of the Complaint in a timely fashion as stated in Procedural History above. Nevertheless, the Panel, in the interest of complete fairness, granted Respondent until 5:00 p.m., Pacific Coast Time, on February 14, 2003, to file any additional response Respondent wished to make. Respondent did not file any additional response to the Complaint on February 14, 2003, or at any subsequent date.

 

4. Factual Background

The following facts are uncontested:

(a) Complainant has been selling telecommunications goods 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 at least 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 well known worldwide.

(b) Numerous WIPO panels have confirmed the worldwide recognition of the great value in AT&Tís brand name.

(c) Complainant has rights in numerous registered trademarks and service marks in the United States, as well as in many other countries.

(d) Complainant has never authorized Respondent to use <attmall.com> in any way. Respondent is not Complainantís licensee in any respect.

 

5. Partiesí Contentions

A. Complainant

(1) In general:

(a) Notwithstanding the absence of any association with or authorization by Complainant, Respondent has registered the <attmall.com> domain name. The URL currently resolves to a website "http://allcellularmall.com/default.php?cPath=23," which offers telephone accessories for sale online, as well as advertising competitorsí marks such as Sprint, Nextel, cingular, and Verizon. The website contains AT&Tís name and its trademarked Global Design logo. Furthermore, in April 2002, before Complainantís cease and desist letter, the domain name resolved to a website at "http://www.attmall.com," which prompted users to "click here to enter," whereupon users arrived at a page entitled "AT&Tmall.com," at the address "http://www.attmall.com/shop/." This page offered telephone products for sale online and headed his list of products: "AT&T Phones and Accessories." The products listed, however, were those of other brands, such as Nokia, Panasonic, Motorola, and Mitsubishi. Respondent can only be using the <attmall.com> domain name unlawfully in order to divert potential AT&T customers and exploit and dilute AT&Tís famous mark, and/or to sell the domain name to AT&T.

(b) On May 20, 2002, AT&T sent a cease and desist letter to the Registrant. When no response was received, Complainant sent a second letter on June 5, 2002. On August 1, 2002, AT&Tís counsel sent a cease and desist letter via email to Respondent. As of December 26, 2002, AT&T has not received any communication from Respondent.

(c) Respondentís infringement of AT&Tís famous marks continues.

(2) The Contested Domain Name Is Confusingly Similar to AT&T Corp.ís Marks

The contested domain name <attmall.com> is confusingly similar to Complainantís official, legal and world famous names and registered marks. The confusing similarity between <attmall.com> and Complainantís Marks is apparent from a simple comparison of the marks with the contested domain name: the contested name is Complainantís own name, with the addition of "mall." The addition of "mall" does not diminish AT&Tís rights in the name. A domain name combining a protected mark with an additional term creates confusing similarity with the original mark. See Bloomberg L.P. v. Mybloomberg.com, Claim No. 97777, at 3 (NAF July 27, 2001).

A WIPO panel reached the same conclusion in a similar case in which the infringing domain name included the word "store" after a registered mark. See Adaptec, Inc. v. Sure Source, WIPO Case No. D2000-1488, at 6 (January 29, 2001); see also Vodafone Group Plc v. Brendan Conlon, WIPO Case No. D2002-0822, at 4 (October 31, 2002). The analysis applies equally to "mall," because "mall" is essentially equivalent to "store" in this context. See also AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723, at 5 (April 26, 2001); AT&T Corp. v. The Coleman Company, WIPO Case No. D2002-0533, at 3-4 (August 6, 2002); AT & T Corp. v. Caimmi Rappresentanze & Marketing Italia, WIPO Case No. D2001-0541, at 7 (June 14, 2001); AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790, at 3 (September 27, 2000); AT&T Corp. v. Yong Li, WIPO Case. No. 2002-0960, at 3 (December 11, 2002). In each of these cases, the panels recognized the confusion that results from combining a well-known mark, such as AT&T, with a generic term.

Indeed, this case presents the circumstance in which the likelihood of confusion is greatest because the AT&T mark is famous, as United States courts and WIPO panels have recognized. See, e.g., AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249, at 6 (May 18, 2000); AT&T Corp. v. Synet, Inc., No. 96 C 0110, 1997 WL 89228, at *6 (N.D. Ill. February 13, 1997); AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790, at 3.

In this case, Internet users will be confused into thinking that domain names combining "att" with "mall" will provide information about products or services offered by AT&T. See AT&T Corp v. Woppies, WIPO Case No. D2000-1724, at 5 (April 24, 2001). In fact, before the cease and desist letter from Complainant, Respondent used the header "AT&TMall.com" to identify the very web page to which users were directed after typing in "attmall.com." Respondent was trading on AT&Tís good will and aimed at AT&Tís customer base. Confusion was clearly Respondentís goal. Because a "domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base," Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998), Respondentís confusion of users attempting to find AT&Tís domain name interferes with AT&Tís valuable trademarks.

(3) Respondent Has No Legitimate Interest in the Domain Name

Respondent has absolutely no rights or legitimate interest in the contested domain name <attmall.com>. Policy, paragraph 4 (c) sets forth conditions under which a Respondentís right or legitimate interest in a domain name can be demonstrated.

None of these conditions applies here. Respondent is not Complainantís licensee in any respect, nor is Respondent authorized to use Complainantís marks. Respondent does not own any registered or common law marks containing the terms "AT&T," "ATT," "attmall," or any similar derivation. Respondent has not been commonly known by the contested domain name. Respondent does not have an agreement with AT&T to sell AT&Tís products, nor has he sought to negotiate such an agreement or to stock AT&T products. Instead, he is exploiting AT&Tís mark to divert AT&T customers and sell the products of AT&T competitors.

In considering similar infringements of AT&Tís marks, WIPO panels have previously concluded that the fame of a worldwide mark, such as AT&T, generally precludes assertions of legitimate use of the mark by others. See, e.g. AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790, at 3; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1338, at 5 (December 27, 2000).

Respondentís action makes clear that he has no legitimate independent basis for use of this protected mark other than to divert potential AT&T consumers and exploit AT&Tís mark for the purposes of commercial gain, and/or to extract money from AT&T. Such uses of AT&Tís trademarks are not a legitimate use of a domain name. Cybersquatting for the purposes of diverting confused users or coercing payment from rightful owners are the very types of activity the Policy aims to prevent.

(4) Respondent Has Registered and Used the Domain Name in Bad Faith

Respondent has registered and used the contested domain name in bad faith. Policy, paragraphs 4(b)(i) & (iv) provide examples of the type of evidence indicating bad faith by a Respondent.

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. See 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", WIPO Case No. D2001-1160, at 9 (November 16, 2001). In the instant case, "AT&T" is an internationally famous mark, and Respondent has no rights to or affiliation with AT&T Corp., AT&T, or <attmall.com>.

In addition to his misappropriation of AT&Tís famous mark, which is alone a sufficient basis for finding bad faith, Respondentís use of the domain name to divert Internet traffic indicates his bad faith intentions. Use of a domain name to direct Internet traffic to websites unaffiliated with the trademark holder constitutes bad faith. See, e.g., AT&T Corp. v. Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503, at 4 (April 3, 2002); Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1338, at 6. AT & T Corp. v. Caimmi Rappresentanze & Marketing Italia, WIPO Case No. D2001-0541, at 7. General Electric Company v. Momm Amed Ia, WIPO Case No. D2000-1727, at 4 (March 21, 2001). See also AT&T Corp. v. Yong Li, WIPO Case. No. D2002-0960, at 5.

In addition, there is further evidence of bad faith in Respondentís alteration of the website: After Complainant sent cease and desist letters, the page entitled "AT&Tmall.com" was deactivated and users were redirected to a different website that stated under the "AT&T" heading: "no products to list in this category." The website nevertheless uses AT&Tís name and mark on the page. Respondentís alteration of the website after the cease and desist letters amounts to an admission that Respondent lacks any justification for his use of <attmall.com>. In another case involving a Respondentís alteration of a website after a Complaint was filed, the WIPO panel found bad faith based at least in part on the Respondentís alteration of the website: AT&T Corp v. May Halabi and All Time Talk Cellular, WIPO Case Nos. D2002-0569 and D2002-0606, at 6 (September 13, 2002).

In the instant case, the registration of AT&Tís famous mark, combined with a generic word, is sufficient evidence of bad faith use; Respondent is clearly attempting to divert potential AT&T customers and to exploit AT&Tís mark for commercial advantage by selling products on a web page that contains AT&Tís trademarks and is reached by typing AT&Tís name. Moreover, Respondentís current website, prior website, and subsequent reaction to Complainantís cease and desist letter all constitute a plain admission that the registration and use of <attmall.com> violates AT&Tís rights.

B. Respondent

The following is a complete statement of the only response received from Respondent:

"I am developing the site "AllCellularMall.com" which it is steel [sic] under construction and no yet publicized. My company is planning to resell cellular phones and accessories related to many popular cellular phone manufacturers and providers such as AT&T, Cingular, Nextel, Sprint, and Verizon and we would like to be classified as accessory provider of such companies. As I have mentioned, "allcellularmall.com" is steel [sic] under development and, not only it has not yet been publicized, it is not ready to sell a single item. The only domain name that ever gets displayed on the URL and the site is "allcellularmall.com" and that is the domain name presented to anyone who enters our site. To be cautious and certain that no one confuses our site with other sites, we have been hesitant to use anyoneís logo in our web site until we have their authorization, and have noted on our site, and every page the following statement:

Please note that our website "AllCellularMall.com" is an independent company and has no affiliation with any company listed in our categories. All the names used in this site are copyrighted and register trademarked of their respected companies.

We are hopping and planning to resell AT&T products in our web site. Our intentions are completely genuine and sincere. We believe that success exists only trough [sic] cooperation between companies not competition."

 

6. Discussion and Findings

A. Identical or Confusingly Similar

It is undisputed that the name "AT&T" and phrases that combine "AT&T" or "ATT" with other words are well known worldwide. Complainant has listed numerous WIPO panelsí decisions which confirm the worldwide recognition of the great value in AT&Tís brand name. Furthermore, Complainant has rights in numerous registered trademarks and service marks (see paragraph 4 above) in the United States, as well as in many other countries.

The confusing similarity between <attmall.com> and Complainantís marks is apparent from a simple comparison of the marks with the contested domain name: the contested name is Complainantís own name, with the addition of "mall." The addition of "mall" does not diminish AT&Tís rights in the name. A domain name combining a protected mark with an additional term creates confusing similarity with the original mark. The Panel has carefully reviewed the numerous cases cited in support of Complainantís position on the issue of whether the disputed domain name is confusingly similar to Complainantís marks. The Panel finds such cases to be highly relevant and unequivocally support Complainantís position.

In this case, there can be no doubt that Internet users will be confused into thinking that domain names combining "att" with "mall" will provide information about products or services offered by AT&T. The Panel agrees with Complainant that Respondent has been trading on AT&Tís good will and aimed at AT&Tís customer base. Confusion was clearly Respondentís goal.

Finally, Respondent has not provided the Panel with any rebuttal to Complainantís argument on the issue of confusion. Indeed this is not surprising, since, in the Panelís view, no legitimate position can be established to justify Respondentís registration of the domain name at issue.

In light of the foregoing, the Panel finds that the domain name at issue is confusingly similar to the Complainantís marks.

B. Rights or Legitimate Interests

Under Policy, paragraph 4(c), a Respondentís right or legitimate interest in a domain name can be demonstrated if the Respondent shows that (i) it uses or is preparing to use the domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the domain name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent to misleadingly divert consumers or to tarnish the trademark or service mark at issue for commercial gain.

None of these conditions applies here. Complainant has not licensed Respondent, nor authorized the use of its marks. Respondent does not own any registered or common law marks containing the terms "AT&T," "ATT," "attmall," or any similar derivation. Respondent has never been known by or associated with the contested domain name. Respondent has no agreement with AT&T to stock or sell AT&Tís products. Instead, it is clear that Respondent is attempting to use AT&Tís mark to divert AT&T customers and sell the products of AT&T competitors.

The Panel agrees with Complainant that "such uses of AT&Tís trademarks are not a legitimate use of a domain name. Cybersquatting for the purposes of diverting confused users or coercing payment from rightful owners are the very types of activity the Policy aims to prevent."

In light of the foregoing, the Panel finds that the Respondent has no rights or legitimate interest in the domain name at issue.

C. Registered and Used in Bad Faith

Under Policy, paragraphs 4(b)(i) & (iv), evidence of bad faith may consist of, among other things, circumstances indicating that a Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant; or circumstances indicating that a Respondent intentionally attempted for commercial gain to attract Internet users by using a domain name that creates a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or product or service.

In this case, Respondent has registered a trademark or famous mark as a domain name without any connection to these marks. Such conduct in and of itself is evidence of bad faith registration and use.

Furthermore, Respondent has used the domain name to divert Internet traffic and this conduct indicates his bad faith intentions. Use of a domain name to direct Internet traffic to websites unaffiliated with the trademark holder constitutes bad faith. The Panel agrees with Complainant that "Respondent is exploiting AT&Tís name to confuse AT&T customers by using AT&Tís famous name in a domain name, and he has furthered the deception by using AT&Tís trademarks on his page in an effort either to sell AT&Tís competitorsí products, or to have consumers submit billing information electronically."

Once again, the Panel has reviewed the numerous cases cited by Complainant in support of its position that Respondent has registered the disputed domain name in bad faith. The Panel finds the cases to be highly relevant and persuasive. The facts here, in light of the relevant precedent, compel a finding of bad faith. Not surprisingly, Respondent has not presented any arguments in opposition to Complainantís position.

In light of the foregoing, the Panel finds that the Respondent has registered and used the domain name in bad faith.

 

7. Decision

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 name, <attmall.com> be transferred to the Complainant.

 


 

Gaynell Methvin
Sole Panelist

Dated: March 7, 2003

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