WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. ATandT.com
Case No. D2002-1178
1. The Parties
The Complainant is AT&T Corp. of Bedminster, New Jersey, United States of America, represented by Mr. Alan Charles Raul, with the law firm of Sidley Austin Brown & Wood LLP, Washington D.C, United States of America.
The Respondent is ATandT.com, registered by Lodi Esta, Broummana, Lebanon, and previously registered at the address P.O. Box 56002, Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <atandt.com> is registered with eNom Inc., and was previously registered through NameScout.Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 31, 2002, at which date the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the domain name at issue.
On January 3, 2003, eNom Inc. verified that the Respondent is listed as the registrant and provided the contact details for the administrative, billing and technical contact.
An Amended Complaint was filed with the Center on January 3, 2003.
In accordance with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2003. The Complaint notification was sent to the Respondent in accordance with the prescribed measures in the Rules, paragraph 2(a), via e-mail, facsimile and registered mail to the contact addresses shown in the disputed domain nameís registration data in the Registrarsí Whois databases.
In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 30, 2003.
The Center appointed Anders Janson as the sole Panelist in this matter on February 6, 2003. 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.
The Panel independently determines and agrees with the assessment of the Center that the Complaint is in formal compliance with the applicable requirements. The Center has issued a notification of Complaint in accordance with the prescribed measures in the Rules, paragraph 2(a), via e-mail, facsimile and registered mail to the contact addresses shown in the disputed domain name registration data in the Registrarsí Whois databases. Having notified the Respondent of the Complaint in the manner described above, the Center satisfied its obligations under the Rules, which the Respondent agreed to follow when registering the disputed domain name.
The WIPO Center transmitted to the parties on February 6, 2003, a Notification of Appointment of Panel and Projected Decision Date, which specified the date of decision as February 20, 2003. The Panel finds that it was properly constituted and appointed in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
4. Factual Background
The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:
Complainant is AT&T Corp., a United States corporation incorporated under the laws of the State of New York. AT&T is in the business of selling telecommunications goods and services under the name AT&T, or variations thereof. Because the web does not permit the use of an ampersand character in a domain name, Complainant is the owner of the domain name <att.com>. The domain name <att.com> resolves to AT&T Corp.ís primary corporate website, "www.att.com".
The trademark AT&T has been repeatedly ranked among the worldís most valuable brands in the media, as stated in Business Week, August 6, 2001, US News & World Report, September 11, 2000, and the 2000 Interbrand Annual Survey. The Panel finds it established that AT&Tís famous and distinctive marks are entitled to the widest scope of protection afforded by law.
AT&T has invested and continues to invest a substantial amount of money and effort in order to advertise and promote its goods and services under the trademark AT&T and ATT marks.
Complainant has rights in the registered trademark AT&T, and related combinations thereof, covering a wide variety of classes of goods and services in the United States, Canada and Lebanon, among other countries. The following are examples of current registrations:
Registrations with the United States Patent and Trademark Office:
- Registration No. 1342197, registered June 18, 1985; for speakerphones;
- Registration No. 1367439, registered October 29, 1985; for telephone installation apparatus;
- Registration No. 1493970, registered June 28, 1988; for electronic key telephone systems;
- Registration No. 1699744; registered July 7, 1992; for digital telephone answering machines etc.;
- Registration No. 1970579, registered April 23, 1996; for telecommunications services;
- Registration No. 2076846, Registered July 8, 1997; for telecommunications products etc.
- Registration No TMA372298, registered August 24, 1990; for telecommunications equipment and services;
- Registration No TMA316454, registered July 18, 1986; for telecommunications equipment and services.
Trademark registration in Lebanon:
- Registration No 60318, registered April 5, 1993; for telephones and telephone systems, etc.;
- Registration No 60319, registered April 5, 1993; for telecommunications services etc.
The Panel notes that the registration dates of all of the above referenced registrations predate the date of registration of the disputed domain name by the Respondent.
The Respondent has a stated contact address in Broummana, Lebanon, and previously in Montreal, Canada.
The disputed domain name <atandt.com> was initially registered with NameScout Inc. on January 27, 2002. The registration was transferred to eNom Inc. on December 12, 2002.
The disputed domain name is linked to AT&T Corp.ís online billing website. When the user clicks on the link to the AT&T page, a pop-up advertisement appears inviting users to "Compare Prices of Long Distance carriers at LowerMyBills.com" and to "Get the Best rates! Click here." With a single click, the user is sent to a website for "LowerMyBills.com", a company that offers discount phone rates. The "LowerMyBills.com" website also seeks "affiliates" who will place a "LowerMyBills.com" banner on the affiliateís website. These "affiliates" will receive payments if referred users sign up for LowerMyBills.comís services.
5. Partiesí Contentions
Complainant contends that:
- the contested domain name is identical to and confusingly similar to AT&Tís marks; and
- the Respondent has no legitimate interest in the contested domain name; and
- the Respondent has registered and used the contested domain name in bad faith; and
- the domain name <atandt.com> should be transferred to the Complainant.
Respondent has not submitted any Response and is to be considered in default.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(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; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue is <atandt.com>. Complainant is the holder of several registered trademarks for AT&T and ATT. The Complainant has provided statements to support the supposition that the disputed domain name and the name and marks of the Complainant are confusingly similar. The Respondent does not contest this supposition.
The absence of an ampersand in domain names is dictated by the fact that such a character may not be included in domain names. For that reason domain names are expected to exclude that character. An ampersand is the character or sign representing the word "and." Internet users expect an ampersand to be replaced with an equivalent, or ignored, in domain names.
Taking the above into account, The Panel considers it obvious that the disputed domain name is identical to and confusingly similar to AT&Tís mark. This is particularly the case regarding such a famous and well-known trademark as "AT&T." The Panel therefore holds that the Complainant has established element (i) of the Policyís Paragraph 4(a).
B. Rights or Legitimate Interests
As mentioned above the Respondent has not filed a Response in accordance with the Rules, Paragraph 5. In those circumstances when Respondent clearly has no obvious connection with the disputed domain name the mere assertion from Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
The disputed domain name <atandt.com> directs users to an AT&T Corp. online billing website. When clicking on the link to the AT&T page, a pop-up advertisement appears inviting users to compare prices of long distance carriers. With one click, the user is thereafter sent to LowerMyBills.com, a company that offers discount phone rates. From this website, there are no connections to any other website or information which might indicate that the Respondent has any legitimate interest in the name.
In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name. The fact that the domain name links to AT&Tís website, and considering the similarity between the domain name and the AT&T trademark as well as the attempt to promote a competitorís product by using the domain name, it must be regarded as evident that the Respondent has no legitimate interest in using the domain name. The Panel therefore holds that the Complainant has established element (ii) of the Policyís Paragraph 4(a).
C. Registered and Used in Bad Faith
Finally the Panel has to consider the question of the disputed domain name having been registered and used in "bad faith."
Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is the use of a domain to intentionally attempt to attract, for commercial gain, internet users to your web site by creating a likelihood of confusion with the Complainantís mark.
Respondent cannot plausibly claim never to have heard of "AT&T." AT&T is a registered trademark in Canada as well as in Lebanon, where the Respondent states to have contact addresses. Respondent has on several occasions reregistered ATandT with different registrars. Furthermore, the domain name links to an AT&T website, without any further connections to "atandt.com" or any products or services provided under this name, which in itself is a demonstration of the Respondentís bad faith.
In addition, the Respondentís use of the domain name to generate referral fees for itself by directing AT&T customers to an AT&T competitor is also, in itself, a demonstration of bad faith.
The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
In view of the circumstances and facts discussed above, the Panel decides that the disputed domain name is identical and confusingly similar to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Consequently the Panel decides that the domain name <atandt.com> shall be transferred to the Complainant.
Dated: February 17, 2003