WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Yong Li
Case No. D2003-0064
1. The Parties
The Complainant is AT&T Corp., One AT&T Way, 900 Route 202/206 North, Room 3A253, Bedminster, NJ 07921, of United States of America, represented by Sidley Austin Brown & Wood of United States of America.
The Respondent is Yong Li, P.O. Box 904, Beijing, 100029, of China.
2. The Domain Name and Registrar
The disputed domain name <atandtwireless.com> is registered with IHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2003. On January 30, 2003, the Center transmitted by email to IHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On January 31, 2003, iHoldings.com Inc. d/b/a DotRegistrar.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 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 February 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2003. The Respondent was informed that if his response is not received by that date, he will be considered in default. The Center will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 25, 2003.
The Center appointed Dr. Vinod K. Agarwal as the sole Panelist in this matter on March 13, 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. The Administrative Panel is required to give its decision by March 27, 2003.
4. Factual Background
From the Complaint and the various annexures to it, the Administrative Panel has found the following facts:
The Complainant AT&T (American Telephone and Telegraph Corporation) is a corporation incorporated under the laws of the State of New York. It provides goods and services to large and small businesses, consumers and government entities in the field of telecommunications.
The Complainant has been using the trademark "AT&T" for its business activities for a very long lime. The Complainant registered the trademark AT&T for Digital telephone answering machines, telephones with incoming call line identification devices, portable laptop computers, mobile phones in 1992, and on various other dates subsequently;
The Complainant has been using the service mark "AT&T" for its business activities for a very long time. The Complainant registered the said service mark AT&T for Telecommunications and transmission of data via satellite and telecommunication links in 1984; for digital and other telecommunication services such as mobile, voice, data, and facsimile services in 1996, and on various other dates subsequently;
The said trademarks and service marks are registered with the United States Patent and Trademark office. Further that, the Complainant has invested millions of dollars promoting its brand among consumers. The AT&T Wireless Brand and AT&T Wireless services are extremely well known internationally and specifically on the Internet. Trademarks in respect of some of these items are also registered in China.
Respondentís identity and activities
The Respondent did not reply to the Complainantís contentions. Hence, the Respondentís activities are not known.
5. Partiesí Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy is applicable to this dispute. In relation to element (i), the Complainant contends that the domain name in question is confusingly similar to the "AT&T" trademark registered by the Complainant. The Complainant has rights in numerous registered and common law AT&T trademarks and service marks in the United States as well as in many other countries. The domain name <atandtwireless.com> is phonetically identical and in other respects confusingly similar to the Complainantís registered marks.
In AT&T Corp. v. Ondonk Partners, (WIPO Case No. D2000-1723) the Administrative Panel has observed that, "the AT&T marks are inherently distinctive, famous, and entitled to the widest cope of protection affordable by law, including protection against dilution."
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <atandtwireless.com> as the Respondent is known as "Yong Li". Further that the Respondent is not making a legitimate non-commercial or fair use of the said domain name. The Respondent registered the domain name for the sole purpose of misusing the same. By registering this domain name, Respondent intended to divert and confuse internet users seeking Complainantís products and services for the purpose of exploiting and diluting AT&Tís famous mark and generating revenue through internet traffic and commissions.
Regarding the element at (iii), the Complainant contends that on August 20, 2002, the Complainant had sent a cease-and-desist letter via e mail to Respondent notifying the Respondent that his registration and use of <atandtwireless.com> is unauthorized and infringed upon AT&Tís world famous trademarks. However, no response has been received from the Respondent.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has a right; and
(ii) The Respondent has no right or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to domain name <atandtwireless.com>. The Complainant is the registered owner of the trademark "AT&T" in U.S.A. and other countries. These words have been used in the domain name of the Respondent. In the present domain name only the ampersand "&" has been elaborated to "AND," and in any case, both are interchangeable. This elaboration does not make the domain name in any way different from the trademark of the Complainant. Further that, ampersand symbols are not used in Internet addresses. The domain name <at&awireless.com> indicate a relationship between the Complainantís mark and the domain name in question. In AT&T Corp. v. Tala Alamuddin, (WIPO Case No. D2000-0249) the Administrative Panel has found the letters "ATT" to be confusingly similar to AT&T mark.
There is no doubt that the domain name <atandtwireless.com> is confusingly similar to the trademark of the Complainant. The Administrative Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response in this case. It is therefore presumed that the above circumstances do not exist in this case. "AT&T" is the registered trademark of the Complainant. It is but evident that the Respondent can have no legitimate interest in the domain name. Further, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark or service mark or to apply for or use the domain name incorporating the said words. No body may use the words "AT&T" unless seeking to create an impression of an association with the Complainant. Therefore, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose 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, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 its web site or location.
The contention of the Complainant is that the present case is covered by the first and fourth circumstance. Respondentís domain name leads to a pop up dialogue box, which directs users either to a gambling site or to the web site of a competitor of the Complainant. The fact that Complainantís marks are registered in China indicates that the interest of the Respondent is not legitimate. In the case of Telstra Corp. Ltd. v. David Whittle, (WIPO Case No. D2001-0434) the Administrative Panel has held that, "the images on gambling sites to which users were being diverted are inappropriate images for users who are intending to access a telecommunication site and Ö this must inevitably tarnish the general reputation of the Complainant."
In the light of the forgoing findings, namely, that the domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered in bad faith and is being used in bad faith, the Administrative Panel directs that the domain name <atandtwireless.com> be transferred to the Complainant.
Vinod K. Agarwal
Dated: March 23, 2003