WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Amjad Kausar

Case No. D2003-0327

 

1. The Parties

The Complainant is AT&T Corp., of Bedminster, New Jersey, United States of America, represented by Sidley Austin Brown & Wood of United States of America.

The Respondent is Amjad Kausar, of Karachi, Pakistan.

 

2. The Domain Names and Registrar

The disputed domain names <attinternet.com> and <attuniversal.com> are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2003. On April 30, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name <attuniversal.com>. On May 1, 2003, eNom 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. Since filing its Complaint, the Complainant discovered that the Respondent had registered an additional infringing domain name, <attinternet.com>. Rather than file a separate Complaint and in an effort to avoid burdening the Panel with duplicative materials, the Complainant requested the Center's permission to file an Amended Complaint along with supplemental exhibits. The Amended Complaint and a Notice of Amendment to Complaint, were submitted to the Center on by email on May 17, 2003, and in hard copy on May 21, 2003, with accompanying Supplemental Annexes, and the Notice of Amendment to the Complaint. Additionally, copies of the Amended Complaint and the Supplemental Annex were mailed to the registrar, as well as the Respondent. Consequently, the Center transmitted a second request for registrar verification to eNom in connection with the additional domain name <attinternet.com>. On June 2, 2003, eNom transmitted by email to the Center its verification response for <attinternet.com>, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center then verified that the Amended Complaint together with accompanying Supplemental Annexes, and the Notice of Amendment to 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 June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 30 2003.

The Center appointed Simon Minahan as the sole panelist in this matter on July 18, 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

The Complaint is uncontested. After review of the Complaint and accompanying materials and the Panelís viewing of the site to which the contested domain names resolved as at the date of this decision, the following are accepted as fact:

4.1 The Complainant has significant national and international reputation as a supplier in the telecommunications industry and more particularly in the provision of cable broadband telecommunications service in the USA;

4.2 Further it has rights in the trademarks in the acronym letters "AT&T" or "ATT" when combined with certain other words relevant to that industry. It is accepted as fact that the AT&T brand is famous in the world and holds registered marks involving the "ATT" acronym in many jurisdictions;

4.3 More particularly, it is accepted that the Complainant is the registered holder of "www.att.com" and has made use of the mark "ATT" in various combinations on the web for some time.

4.4 AT&T currently provides telecommunications services in Pakistan, the country of the Respondent.

4.5 Each of the domain names <attuniversal.com> and <attinternet.com> instantly divert Internet users to a pop-up dialog box at "www.ownbox.com/treasure/search.html". The dialog box contains the text: "CONGRATULATIONS!!! YOUíVE WON VIRTUAL REALITY CASINO! CLICK on OK and Get up to +100$ Bonus on your first deposit!" Users that click "OK" within the dialog box are sent to "www.super-casino.com/BestCasino.html". This is a gambling website that solicits visitors to play various casino games and promises substantial cash rewards. From that page browsers may link to sites promoting various phone services where the logos for several competitors of AT&T appear on the page as links, depending on their selection of hyperlink. From there users may be further diverted to gambling and/or pornographic websites;

4.6 There has been no substantive use of the domain names the subject of this Complaint other than the present use;

4.7 There is no evidence or fact tending to support a trademark or other legitimate interest in the Respondent in respect of the disputed domain names (other than the present use of the domain names);

4.8 The Respondent is not the Complainantís licensee and is not endorsed, authorized, or sponsored by the Complainant;

4.9 The Respondent has a well established history of abusive registrations which have been the subject of numerous UDRP Complaints which demonstrate identical or very similar factual circumstances to the present case (see eg: See Daddyís Junky Music Stores, Inc. v. Amjad Kausar, No. FA0301000140598 (NAF Febraury 11, 2003).)

 

5. Partiesí Contentions

A. Complainant

The Complainant among other things, raises factual contentions in line with the matters outlined in the foregoing factual background. To the extent it makes further contentions of facts which are not necessary to this decision and are not otherwise specifically considered in this decision, the Panel makes no finding or comment concerning these.

Further the Complainant contends that the domain names which are the subjects of the Complaint are confusingly similar to its own trademarks, that the Respondent has no legitimate interest in the domain names and that the Respondent has registered and used the names in bad faith.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that each of the domain names is confusingly similar for the purposes of paragraph 4(a)(i) of the Policy to AT&T registered and common law trademarks.

The domain name <attuniversal.com> combines the Complainantís mark "ATT" with a generic term "universal". The domain name <attinternet.com> similarly combines the Complainantís mark with the generic term "internet". The combination in each case is calculated to suggest the involvement of the Complainant with the domain names by reference to an adjectival quality "universal" which fairly describes the commercial reach of the Complainant in the telecommunications market and in the case of "internet" is suggestive of a particular branch of telecommunications service in an area where the Complainant is active commercially.

In the circumstances the disputed domain names are inherently similar to the Complainantís marks and likely to be confusing to the public on face value as suggesting either an operation of the Complainant or one associated with or endorsed by it. The Panel has particular regard to and agrees with the comments made in this regard in the UDRP decision AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0666, (September 5, 2002); Telstra Corp. Ltd. v. 11/Shinpyo Kang, WIPO Case No. D2001-0623, (June 28, 2001); and Pivotal Corp. v. Discovery Street Trading Co., WIPO Case No. D2000-0648, (August 14, 2000) and its own decision in AT&T Corp v. Yong Li, WIPO Case No. D2002-0960 (December 11, 2002).

It also notes the numerous UDRP decisions in which the Complainantís trademark rights in "ATT" have previously been accepted and upheld.

B. Rights or Legitimate Interests

In the absence of any submission or contention by the Respondent asserting a legitimate interest in the domain name and in the light of the use being made of the domain name, the Panel finds that the Respondent lacks any right in or has made or is making legitimate use of the domain names.

The Panel regards it reasonable to conclude on the evidence before it that the Respondent was aware of the Complainantís trademark incorporated in the domain names and indeed finds that on balance the Respondent selected the domain names precisely because of their incorporation of and similarity to those trademarks. The Panel further notes that it has some doubt as to the Respondent being a real person, given the pattern of abusive registrations involving the Complainantís mark which resolve to the website in question here where the registrants nominally hail from a variety of jurisdictions.

In the face of the evidence of the use to which the disputed names are presently being put, and the history of repeated cases of making the same use of other abusive registrations, the Panel regards it as plain that the Respondent is using the domain name in a commercial venture.

In this aspect the Panel has regard to and adopts the reasoning in Charles Schwab & Co., Inc. v. Polanski, WIPO Case No. D2001-0959 (September 21, 2001), in so far as there was no apparent reason for the Respondent to have chosen the contested domain name other than to profit by its fame and by the traffic generated by the likely initial expectation of users that it is a name associated with the Complainant and its services.

The Panel also has regard to the remarks made in Nintendo v. Baltic Consultants Limited, WIPO Case No. D2002-0449 (July 26, 2002), with respect to the inference to be drawn from such commercial use and lack of apparent association between the Respondentís name and activities and the domain names and, conversely the apparent connection with the high profile name and trade marks of the Complainant.

C. Registered and Used in Bad Faith

Each of the disputed domain names is presently being used in bad faith. The use of the names, in each case, does not appear to be directed to inflicting any deliberate damage on the Complainant. However it does appear in each case that the use is calculated to "free-ride" on and profit from the Complainantís reputation in its mark. In the context of the Respondent's lack of interest in the domain names and the apparent commercial benefit the Respondent derives from association and confusion with the Complainant via the domain names, it seems the resolution of the domain names to such sites is solely motivated by profit. Further there is no natural connection between the site to which the domain names resolve and the area of the Complainantís reputation.

On the other hand to the extent that the domain names do subsequently resolve to web pages or sites relating to communications products or services, none of these is associated with the Complainant nor do they appear to be distinctly differentiated as comparative or evaluative sites.

In the premises the Panel regards the use of each of the domain names falls within 4(b)(iv) of the Policy in that it is use by which the Respondent "intentionally attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location."

The Panel does not however consider it necessary to find any sustained confusion of users as to the Complainantís association with the sites linked with the domain names after the initial moment of calling up the pages to which the domain names resolve. In this regard it refers to and repeats its observations in AT&T Corp v. Yong Li, WIPO Case No. D2002-0960 (December 11, 2002).

The Panel notes the history of the Respondent as referred to in the Complainants supplemental filing, and its comments above as to whether the Respondent is in fact a real person, but does not regard it as necessary to go beyond the opportunistic use of the noted similarity between domain names and the Complainantís mark to find bad faith use.

As to registration, in the absence of any contradictory submission or evidence and in light of the other matters found in this decision, namely the lack of the Respondentís interest in the domain names, the bad faith use by way of exploitation of the Complainantís name and the lack of any evidence of any other use of the domain names, the Panel regards it as reasonable and is willing to infer bad faith registration of the names. In this vein it also has regard to the Respondentís recidivism as a Respondent in successful Policy actions as noted above.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that both of the domain names <attuniversal.com> and <attinternet.com> be transferred to the Complainant.

 


 

Simon Minahan
Sole Panelist

Dated: July 29, 2003