WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Peter Carrington/ Party Night Inc.

Case No. D2003-0114

 

1. The Parties

The Complainant is AT&T Corp., C/O Michele A. Farber of New Jersey, United States of America, represented by Sidley Austin Brown & Wood of Washington, D.C., United States of America.

The Respondent is Peter Carrington/ Party Night Inc., of Amsterdam, Netherlands.

 

2. The Domain Name and Registrar

The disputed domain name <atttws.com> ("the domain name") is registered with Key-Systems GmbH dba domaindiscount24.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2003. On February 14, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On February 17, 2003, 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 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 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 11, 2003.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on March 19, 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.

 

4. Factual Background

4.1 It is a matter of common knowledge that Complainant is one of the world's oldest and largest telecommunications companies. In 2001 it split off its wireless subsidiary AT&T Wireless Services. That company in turn is one of the largest wireless communication service providers in the United States with revenues in excess of 10 billion dollars. Under the de-merger arrangements Complainant retained ownership of and responsibility for Group trademarks used by the former subsidiary and now licensed to it. A survey conducted in 2001 by Interbrand Inc. rates Complainant's AT&T Brand at number ten in the world and values it in excess of $22bn.

Complainant is the owner of many trademark registrations in the United States and elsewhere which consist of, or include, the letters "AT&T". Complainant is also the owner of many registrations in the United States and elsewhere of trademarks which include the letters "ATT".

Among Complainant's many registered trademarks in the United States are included:

● No. 1293305 - AT&T
Registered September 4, 1984 in respect of digital network telecommunication services.

● No. 1298084 - AT&T
Registered September 25, 1984 in respect of telecommunication services and transmission of data via satellite and telecommunications links.

● No. 1876928 - 1800 Call ATT
Registered January 31, 1995 in respect of telecommunication services; namely electronic transmission of voice, facsimile, data, video and information.

● No. 2076093 - 1800 ATT-Gift
Registered July 1, 1997 in respect of telecommunication services, namely the delivery over a telephone line of audio greetings and songs and the ordering of gifts tied to a specific occasion.

● No. 2144994 - att.net
Registered March 17, 1998 in respect of a wide range of telecommunications and information services.

Complainant is also the owner of several domain names containing the letters "ATT", including the domain name <attws.com>.

4.2 According to Complainant, at the time of filing the Complaint, persons accessing the domain name were diverted to a site advertising pornography sites, <www.amaturevideos.nl>. At that site the user is invited to take free trials of the advertised sites and is duped into providing credit card details. Provision of these details results in a charge of $49.99 per month unless cancelled. Complainant asserts a belief that the diversion site is part of <www.porncash.com> network that promises a fee of $30 for each user duped into a "free trial". Complainant further asserts that on attempting to exit the site, the user is "mousetrapped" to advertisements for further pornographic sites.

Complainant asserts on circumstantial evidence and information, and beliefs that Respondent is merely an alias for John Zuccarini. John Zuccarini was the Respondent in AT&T Corp., v. John Zuccarini D/B/A RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002).

4.3 No response has been filed, and no information is available as to Respondent, save that Respondent was the respondent in AT&T Corp., v. Peter Carrington - Party Night Inc, WIPO Case No. D2002-0931 (November 21, 2002).

Absent rebuttal by Respondent, the Panel accepts Complainant's foregoing assertions.

 

5. Partiesí Contentions

A. Complainant

5.1 The Complainant contends that it and its trademarks are famous and that Respondent's registration of a confusingly similar, one-letter typing variation of its famous marks constitutes a deliberate attempt to divert to a pornographic advertising site, Internet users searching for its former subsidiary AT&T Wireless Services. Complainant cites a number of prior panel decisions holding domain names including the letters "ATT" to be confusingly similar to Complainant's famous trademarks, including WIPO Case No. D2001-1503 referred to above where, as in this case, an "extra t" is included in the domain name.

5.2 Complainant contends that Respondent has no legitimate interests in the domain name. It has no licence or authority from Complainant to use Complainant's mark, and does not own any corresponding mark itself. It is not commonly known by the domain name and is not making any legitimate non-commercial fair use of the domain name.

5.3 Complainant further contends that Respondent has registered and used the domain name in bad faith and contends that Respondent's conduct represents an archetypical pattern of cybersquatting in which the domain name is registered with intent, for commercial gain, to divert consumers from the mark owner's on-line location to a site accessible under the domain name. Complainant draws particular attention to the fact that the site to which the domain name diverts is a site which in turn diverts to pornographic sites and from which the domain name holder derives a fee for such diversion.

B. Respondent

5.4 The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

6.1 To succeed in the Complaint, Complainant must establish each of the following grounds:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

6.2 Complainantís AT&T trademark is world famous. As shown by the Interbrand survey referred to in paragraph 4 above, it is one of the world's most recognised brands. When the brand is used in a domain name, the ampersand is of necessity omitted, since it is not a permissible integer for use in a domain name. Furthermore, as shown by Complainant's own registrations referred to in paragraph 4, Complainant owns a number of trademarks which include the letters "ATT" simpliciter. The addition of the letters "ws" signifying wireless services merely serves to reinforce the likelihood that consumers will confuse the domain name with Complainant's mark and with its former subsidiary, now licensee. The addition of the extra "t" does not detract from the dominant impression of the letters "ATT" and is obviously intended to entrap persons who make a typographical error in seeking to enter the site of Complainant's licensee.

It is furthermore apparent, for the reasons discussed under sub-paragraph C below, that the raison d'etre for Respondent's choice of the domain name is the very fact that it is likely to be confused with Complainant's trademarks to attract to the Internet site, persons who, in confusion type an extra "t" in the domain name.

6.3 The Panel therefore finds that the domain name is confusingly similar to a trademark in respect of which Complainant has rights.

B. Rights or Legitimate Interests

6.4 Respondent has not responded to the Complaint, and specifically has not responded to Complainant's contentions summarised in paragraph 5(a) above. There is no prima facie indication of any rights or legitimate interests on the part of Respondent, and the Panel therefore finds that Respondent has no such rights or interests.

C. Registered and Used in Bad Faith

6.5 Complainant has demonstrated to the satisfaction of the Panel that Respondent registered and is using the domain name with intent for commercial gain to divert to pornographic web-sites persons who, in seeking to access Complainantís <attws.com> web-site, inadvertently type an extra "t". Complainant cites several prior UDRP decisions in support of its contention that such behavior demonstrates bad faith. In AT&T Corp., v. Peter Carrington - Party Night Inc, WIPO Case No. D2002-0931 (November 21, 2002), learned Panelist Antonio Millé wrote, at page 4:

"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 he undeniable bad will of the Respondent when registered and used (actively or passively) the Domain Names in dispute."

No other inference can be drawn than that in registering the domain name Respondent did so with the intent of using it for the bad faith purpose to which it has in fact been put.

This is behavior which clearly falls within the circumstances enumerated in paragraph 4(b)(iv) of the Policy.

6.6 The Panel therefore finds that the domain name has been registered and is being used in bad faith.

 

7. Decision

For all of the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <atttws.com> be transferred to Complainant.

 


 

Desmond J. Ryan
Sole Panelist

Dated: April 1, 2003