WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Swarthmore Associates LLC
Case No. DBIZ2002-00077
1. The Parties
Complainant is AT&T Corp., a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at 295 North Maple Avenue, Basking Ridge, New Jersey, United States of America.
Respondent is Swarthmore Associates LLC, an entity having its address at 754 Swarthmore Avenue, Pacific Palisades, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <att.biz>, which domain name was registered with PSI-Japan in Tokyo, Japan.
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Arbitration and Mediation Center (the "WIPO Center") on April 26, 2002, in electronic format and on April 30, 2002, in hard copy. The Complainant has standing to file such a Complaint, as Complainant timely filed the required Intellectual Property (IP) Claim Form with the registry operator, NeuLevel. As an IP Claimant, Complainant noted its intent to file a STOP Complaint against Respondent. The WIPO Center transmitted an Acknowledgement of Receipt of Complaint on April 30, 2002.
Complainant submitted a Supplement to the Complaint to the WIPO Center on May 21, 2002, in electronic format and on May 24, 2002, in hard copy.
The WIPO Center verified that the Complaint and Supplement satisfied the formal Requirements of the STOP, the STOP Rules, and the WIPO Supplemental STOP Rules. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules. The required Panel fees were paid on time and in the required amount by Complainant.
No deficiencies having been recorded, on May 22, 2002, a Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, the Registrar, and ICANN), setting a deadline of June 11, 2002, by which the Respondent could file a Response to the Complainant. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in PSI-Japan's records. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the STOP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, Respondent acknowledges having received actual notice by filing a Response.
On June 11, 2002, the WIPO Center received in electronic format and on June 17, 2002, in hardcopy, a Response. On June 14, 2002, the WIPO Center transmitted its Acknowledgement of Receipt (Response) to the parties.
On June 19, 2002, Complainant filed a "Notice to Panel," indicating that Complainant was prepared to file a Reply to the Response, at the Panel's discretion.
On July 8, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the WIPO Center appointed M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties a Notification of Appointment of Panel.
4. Factual Background
Complainant has been providing telecommunications services and goods under the name ATT and AT&T for over 100 years, and Complainant has invested hundreds of millions of dollars in the promotion of those names.
Complainant also owns a large Internet Service Provider portal, serving over two million customers in the United States.
Complainant holds many registrations with the United States Patent and Trademark Office ("USPTO") for the mark AT&T, the earliest of which issued in 1984. Complaint, Annex 8. Complainant has also registered many marks with the USPTO that include the mark ATT, the earliest of which issued in 1995. Complaint, Annex 9.
Complainant has filed a trademark application for ATT.BIZ with the USPTO in connection with telecommunication services. In conjunction with this application, the opposition period has concluded and a notice of allowance has been issued. Complaint, Annex 10.
Complainant registered the domain name <att.com> in 1986 and <att.net> in 1993. Complaint, Annex 11. Complainant registers the domain names in this form, since it is unable to register an ampersand character in a domain name.
Respondent registered the domain name at issue in April 2002. The Administrative Contact is John Kirkland. The primary email address is <KirklandJ@GTLAW.com>. The mailing address is 754 Swarthmore Avenue, Pacific Palisades, CA 90272, United States of America .
Respondent also registered several other familiar business acronyms in the .biz generic Top Level Domain ("gTLD"), including <amex.biz>, <cnn.biz>, and <mgm.biz>. Supplement to Complaint, Annex 2.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical to a mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the domain name at issue was registered in bad faith.
Respondent contends that the domain name at issue is not confusingly similar to Complainant's mark, that Respondent has rights or legitimate interests in respect of the domain name at issue, and that the domain name was registered in good faith.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
1) the domain name is identical to a trademark or service mark in which the Complainant has rights;
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered or is being used in bad faith.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant's Rights in the Mark and Identity
Complainant has rights in the marks ATT and AT&T as demonstrated by its registered trademarks. The Panel finds that Complainant has demonstrated that it has rights and legitimate interests in respect of the domain name at issue.
The test under STOP does not involve the question of confusing similarity, but rather only whether the alphanumeric string registered by Respondent is identical to a mark in which the Complainant has rights. STOP, Paragraphs 1 and 4(a)(i). The question of identity has been raised in many UDRP decisions. Where the differences between the domain name and the mark can be accounted for by the technical limitations imposed on the domain name registrant, the domain name and the mark have been treated as identical. See, e.g. Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 (elimination of space between words); Stella D'Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012 (elimination of space and apostrophe). Thus, the Panel finds that the elimination of the ampersand is of no significance and that the domain name at issue is identical to Complainant's mark.
Rights and Legitimate Interests
Respondent asserts that the registration of the domain name in and of itself gives Respondent rights and legitimate interests in respect of the domain name. UDRP Panel decisions have consistently rejected this contention. "If mere registration of the domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the [UDRP], then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abusive registration. Construing the [UDRP] so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of Paragraph 4(a)(ii) of the [UDRP]." Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. The same logic applies mutatis mutandis to the application of the identical provision in the STOP.
Bad Faith Registration or Use
In this case there has been no use. In the present case, the Panel believes that bad faith registration can be inferred from the following facts: 1) Respondent registered other well-known acronyms or abbreviations of business names that are also the registered trademarks of other; 2) that Respondent's administrative contact has been found to be the only person involved in Respondent's business; 3) that it has been found that Respondent has no listing in the Pacific Palisades telephone directory; 4) that the address for Respondent is the residence address of Respondent's administrative contact; 5) that Respondent did not attempt to show for what purpose it registered the domain name at issue. See, e.g. MDU Resources Group, Inc. v. Swarthmore Associates, LLC, NAF Case No. FA00102957. Accordingly, the Panel finds that the domain name at issue was registered in bad faith.
Accordingly, the Panel finds that the domain name at issue is identical to marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent registered the domain name at issue in bad faith. In accordance with STOP, Paragraph (i), the registration of <att.biz> shall be transferred to the Complainant.
M. Scott Donahey
Dated: July 23, 2002