WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Wireless Services, Inc. v. GMS Webmedia
Case No. D2003-0119
1. The Parties
The Complainant is AT&T Wireless Services, Inc., C/O Kathy Buckley, Redmond, WA of United States of America, represented by Sidley Austin Brown & Wood of United States of America.
The Respondent is GMS Webmedia, Eindhoven, of Netherlands. The Respondent is not represented.
2. The Domain Names and Registrar
The disputed domain names; <mmodeinfo.com>, <mmodelinks.com>, <mmodesex.com>, <mmodestart.com>, and <mmodestartpage.com>
("the mmode Domains")
are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2003. On February 17, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On February 19, 2003, Intercosmos Media Group d/b/a directNIC.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 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2003. The Response was filed with the Center on March 13, 2003.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on March 17, 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.
A Supplemental Filing was filed by the Complainant on March 26, 2003.
4. Factual Background
Following its spin-off from AT&T in July 2001, the Complainant AT&T Wireless (NYSE:AWE) is the largest independently traded wireless carrier in the United States. AT&T has sold telecommunications goods and services internationally for over a century.
The Complainant is one of the largest digital wireless networks in the United States, with approximately 20 million subscribers and revenues exceeding US$13 billion annually. Wireless services offered by the Complainant to consumers and business, locally and internationally, include voice, data, Internet and text.
The Complainant undertook a significant marketing campaign during 2002 to generate interest in a newly-coined term "mLife" with the teaser line "What is mLife?" This culminated in a 2002 Superbowl advertisement revealing that "mLife" was the new marketing theme for the Complainantís services. The Superbowl is widely accepted to be one of the largest viewing audiences available in the United States.
The Complainant (via its wholly-owned subsidiary Alphie, Inc which was merged into the Complainant on June 20, 2002) applied for the following MMODE trademarks:
United States trademarks applications serial numbers: 7817863, 78178661, 78178659, 78178658, 78178657, 78157021, 76975129, 76975193, 76975191, 76975190, 76975189 and 76353278.
EU trademark application number: 2756088.
Benelux trademark application number: 1013662.
The earliest filing date for such marks is December 28, 2001.
On April 2, 2002, the Complainant introduced its mMode brand in limited markets as part of its mLife advertising theme, with a major advertising campaign being launched on April 16, 2002.
mMode is the term used by the Complainant to refer to its wireless GPRS data services that allow users (amongst other things) to use the Internet, play games, look up sports scores and find restaurants via their mobile phones.
The Respondent gives no information on the nature of its business (outside of the Web sites which are the subject of this dispute), although the Respondent does also appear to run an additional business from the Web site "www.xs4money.com".
On April 22, 2002, the Respondent registered the mmode Domains. Each of the mmode Domains contains the same mobile telephone related portal service provided by the Respondent, with the exception of "www.mmodesex.com" which forwards users to "www.i-modesexlinks.com" (which is the same as the other portal, but framed with explicit sexual content). The mmode Domains contain numerous metatags including "mmode", "at&t" and "at&t wireless".
The Complainant promotes its mMode service through the Web site "www.attwireless.com/mmode" and via the online magazine at the Web site "www.attwireless.com/mmodemagazine". These are portal sites that seek to aggregate mMode users to allow focused advertising and provide information on the mMode service. The Complainant also owns the domains <mmode.com> and <mmodemagazine.com>. The mMode Magazine is also published by the Complainant in hard copy.
On December 19, 2002, counsel for the Complainant sent a cease-and-desist letter to the Respondent notifying the Respondent that the registration and use of the mmode Domains is unauthorized and infringes upon the Complainantís trade marks.
On December 14, 2002, counsel for the Respondent replied and questioned the Complainantís claims to the mMode mark.
On January 17, 2003, the Complainant again asked the Respondent to cease-and-desist.
Over January 27-28, 2003, the Complainantís counsel had several conversations with Respondentís counsel in which the sale price of the mMode Domains was discussed, which fluctuated from US$7,000 to US$12,300.
5. Partiesí Contentions
The Complainant seeks the transfer of the mmode Domains from the Respondent to the Complainant in accordance with the Policy, paragraph 4(b)(i). The Complainant contents that the mmode Domains are confusingly similar to the Complainantís trade marks, that the Respondent has no right or legitimate interest in the mmode Domains and that the mmode Domains are registered and being used in bad faith. The Complainant seeks the transfer because the contested mmode Domains "were registered to profit from the mMode branding which [Complainant] invented, spent tens of millions popularizing, and which [Complainant] actively uses. Allowing Respondent to retain [the mMode Domains] would result in consumer confusion, unjust enrichment, and would tarnish [the Complainantís] mMode brand."
The Respondent resists the transfer of the domain names on the basis that mmode is a technology standard and it is using the mmode Domains to aggregate content for mmode users.
6. Discussion and Findings
The Complainant cites an unusually high number of precedent cases in the Complaint. The Panel has sought to refer to the most appropriate of those cases when dealing with the Complainantís contentions.
Complainants, and, indeed, Respondents are encouraged to provide Panels with the most appropriate precedents by way of example rather than seek to influence Panels by sheer volume of precedent.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the mmode Domains are "identical or confusingly similar to a trademark or service mark" in which the Complainant has rights.
The Complainant has established its rights in the mMode mark through the trade mark applications/registrations above and through the extensive use of the mMode mark in its business, whether through advertising or by providing the mMode service to its users. (The contention of the Respondent that the Complainant cannot have rights in the mMode mark whilst held by Alphie, Inc is plainly false as all rights of Alphie, Inc were merged into the Complainant, thus giving the Complainant all rights of Alphie, Inc.)
The mmode Domains comprise the mMode mark of the Complainant and the following appended generic words: "info", "links", "sex", "start" and "startpage".
Numerous previous decisions (including AT&T Corp v Woppies, WIPO Case No. D2000-1724 [April 24, 2001]) have been cited by the Complainant to establish that the addition of a generic word to a complainantís marks amounts to confusing similarity under paragraph 4(a)(i) of the Policy.
In addition, the Respondentís portal contains a disclaimer stating the portal is not an official site of the Complainant. Numerous previous decisions (including Madonna Ciccone, p/k/a Madonna v Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847[October 12, 2000]) are cited by the Complainant to establish that the adding of disclaimer does not excuse a confusing or similar domain name.
Nothing in the Response is able to rebut the assertions of the Complainant that the mmode Domains are confusingly similar to the Complainantís trademark. Indeed, the admission of the disclaimer leads the Panel to believe that the Respondent placed the disclaimer on the portal because it was fully aware that the mmode Domains are confusingly similar.
Therefore, the Panel finds that the mmode Domains are confusingly similar to the Complainantís trademark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to show that the Respondent has "no rights or legitimate interests" in the mmode Domains.
Paragraph 4(c) of the Policy sets out three examples of how, amongst other things, the Respondent may show its rights or legitimate interests in the mmode Domains:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organisation) have been known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue".
The Complainant contends that the Respondent has no rights or legitimate interests in the mmode Domains because it is not a licensee or authorized user of the mMode mark, nor has the Complainant "endorsed, authorized, or sponsored" the Respondentís use of the mMode mark.
The Complainant contends that the Respondent does not own any registered or common-law marks containing the term "mmode", nor has the Respondent been commonly known as "mmode".
The Complainant contends that the Respondentís use of the mmode Domains is solely to "divert unsuspecting traffic to its own site or to prevent the consumers and other members of the public from finding [the Complainant] easily".
The Complainant contends that the Respondentís use of the mmode Domains is not fair use of the mmode Domains because it is a phrase coined entirely by the Complainant.
The Respondent contends that it is making legitimate use of the mmode Domains as mmode refers to a generic mobile technology standard used by the Complainant. The evidence of use of "mmode" by either the Respondent or third parties as a generic technology standard relating to mobile phones is negligible. Indeed, the Respondentís own portal makes widespread use of "i-mode" as the relevant technology standard and the online ĎGoogle Glossaryí, a well-respected lexicon of technology phrases and standards, fails to list "mmode".
The evidence of use of "mmode" by one supplier and two other domain name registrants prior to December 28, 2001, is insufficient to attract a generic status to the mMode mark in the face of overwhelming use of the mMode mark by the Complainant.
Therefore, given that mmode is not an accepted technology standard, the Panel finds that the Respondent has no rights or legitimate interest in the mmode Domains under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the Respondent registered and used the mmode Domains in bad faith.
Paragraph 4(b) of the Policy sets out four examples of how, amongst other things, the Complainant may show bad faith on the part of the Respondent:
"(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your Web site or another on-line location, by creating the likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your Web site or location or of a product or service on your Web site or location."
The Complainant contends:
"Respondentís egregious conduct makes its bad faith clear. Respondent chose to register the disputed mMode names in order to profit from the creation of a dubious portal site based on [the Complainantís] trade marks. Respondent has registered and used the Complainantís mMode mark to profit from Internet traffic searching for Complainantís brands Ö This patent exploitation of consumer confusion and the strength of the mMode marks demonstrates bad faith".
The Complainant lists numerous elements of bad faith in relation to sub-paragraphs (i) and (iv), which are outlined below.
Numerous previous decisions (including America Online, Inc v Dolphin @Heart, WIPO Case No. D2000-0713 [April 24, 2000]) have been cited by the Complainant to contend that the Respondentís attempts to sell the mmode Domains to the Complainant for more than the registration and transfer fees amounts to bad faith.
The Panel notes that a respondentís documented out-of-pocket expenses are not limited solely to the registration and transfer fees and may also include other fees related to the domain such as design fees.
However, given the fluctuating nature of the Respondentís asking price for the mmode Domains, and the failure by the Respondent to back up those prices with any form of reasoned calculation or proof of its out of pocket expenses, the Panel finds that the Respondent has attempted to sell the mmode Domains for more than its documented out-of-pocket expenses.
Numerous previous decisions have been cited by the Complainant to contend that the use of a mark to generate Internet traffic amounts to bad faith.
Diversion of Internet traffic amounts to bad faith because it is an abuse of the Complainantís goodwill (Sony Kabushiki a/t/a Sony Corporation v Fujiko Kikuno WIPO Case No. D2000-1372 [December 27, 2000]).
That Internet traffic is diverted away from the Complainant is demonstrated by performing a <google.com> search for the mMode mark, where the Respondentís mmode Domains achieve a prominent listing. (As stated earlier, the other listings for mmode are overwhelmingly those of the Complainant.) The diversion is achieved by the Respondent through its use of metatags, which contain several trade marks of the Complainant. Use of such metatags to divert traffic also amounts to bad faith (Microsoft Corp v Montrose Corp, WIPO Case No. D2000-1568 [January 25, 2001]).
The Complainant contends that the bad faith diversion of Internet traffic away from its Web sites is further compounded by the diversion to sex-related Web sites. Numerous previous decisions have upheld this, including Hasbro, Inc v Internet Entertainment Group, Ltd (40 USPQ 2d 1479) where the use of "candyland" for an adult Web site diluted the value of the "candyland" trade mark for a childrenís board game and in Nokia corp v Nokiagirls.com a/k/a IBCC, WIPO Case No. D2000-0102 (April 18, 2000) where adult material on the target Web site was stated to be "an aggravating element in the assessment of the bad faith".
The Panel finds that the Respondent has used the mmode Domains to divert Internet traffic to its site. However, the Panel does not find that the Respondent diverted traffic solely for the purposes of re-direction to a pornographic Web site as this occurred only with the <mmodesex.com> domain name.
Therefore, taking into consideration the cumulative effect of the matters cited by the Complainant and the fact that the mmode Domains were registered only 6 days after the Complainantís advertising campaign commenced, the Panel finds that the Respondent has registered and used the mmode Domains in bad faith under paragraph 4(a)(iii) of the Policy.
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 names be transferred to the Complainant.
Debrett G Lyons
Date: April 4, 2003