WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Byeong Deog Im
Case No. D2004-0026
1. The Parties
The Complainant is AT&T Corp., Bedminster, New Jersey, United States of America, represented by Sidley Austin Brown & Wood, United States of America.
The Respondent is Byeong Deog Im, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <www-att.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 14, 2004. On January 15, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 30, 2004, Tucows 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 January 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 4, 2004.
The Center appointed Jacques A. Léger as the Sole Panelist in this matter on March 19, 2004. 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
Complainant has been selling telecommunications goods and services for over a century under the name "AT&T"; it has invested hundreds of millions of dollars promoting its brand in the United States and around the world, which has become well known worldwide.
The value of the AT&T brand has been recognized by 34 previous WIPO panels. One WIPO Panel summed up the worldwide recognition of AT&Tís brand name by stating simply that the phrase AT&T "is a household name the world over." AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 (November 25, 2000).
Complainant has rights in numerous registered trademarks and service marks in the United States, as well as in many other countries, including, inter alia, U.S. Reg. Nos. 1,298,084 (service mark for AT&T) and 1,699,744 (trademark for AT&T). Complainant holds the registered trademark for "AT&T" in various countries, including Korea. AT&T registered the trademark "AT&T" in Korea on June 3, 1986. AT&T also registered the service mark "AT&T" in Korea on January 16, 1986, (registration number 126175).
Complainant also owns numerous marks which use "ATT" without an ampersand and in combination with other words and phrases, including those that describe Complainantís services. For example, AT&T has rights in the U.S.-registered marks: "ATT.COM" (Reg. No. 2,539,552); and "ATT.NET" (Reg. No. 2,144,994).
Moreover, WIPO decisions have specifically found that Complainant has established common law trademark rights in "ATT." See AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002 (October 11, 2002) and AT&T Corp. v. Yong Li, WIPO Case No. D2002-0960 (December 11, 2002).
The association of "ATT" with AT&T is commonplace. A search for "ATT" in the International Abbreviation/Acronym Database returns American Telephone & Telegraph Company Ė the former corporate name of Complainant Ė as its first hit.
Since 1986, Complainant has been the registrant for the domain name <att.com>, its primary corporate website. This domain name shows that Complainant conveys its "AT&T" mark by using "att" on the web, which does not permit the use of an ampersand character in a domain name.
The domain name <www-att.com> resolves to a single place-holding website, which states that it is currently "Under Construction" and contains several hyperlinks, all of which take the user to the "gagadomain.com" webpage.
On July 29, 2003, Complainantís legal counsel sent a cease-and-desist letter to Respondent advising him that his registration and use of AT&Tís trademark by means of the <www-att.com> domain name was unauthorized, and infringed on AT&Tís intellectual property. On August 28, 2003, the letter was returned to AT&Tís legal counsel, opened, and bearing a stamp stating that it had been "REFUSED."
5. Partiesí Contentions
Identical or Confusingly Similar
The domain name is confusingly similar to Complainantís official, legal and world-famous name, its common law marks and its registered marks.
WIPO panels have repeatedly recognized that AT&Tís trademarks are well-known worldwide and that the consuming public associates "ATT" with AT&T only. See AT&T Corp. v. Woppies, WIPO Case No. D2000-1724, (April 24, 2001), AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790, at 3 (September 27, 2000), amongst several others.
The risk of confusion here is particularly acute because domain name addresses on the world wide web are preceded by the three letters "www." Respondent is surely seeking to exploit this fact.
The domain name is functionally identical to "www.att.com", the primary mark and website with which Complainant identifies itself on the Internet. See, e.g., AT&T Corp. v. Yong Li, WIPO Case No.D2002-0960, (December 11, 2002), ("[I]t is accepted that the Complainant is the registered holder of <att.com> and has made use of the mark ĎATTí in various combinations on the web for some time.")
Respondent has misappropriated Complainantís "ATT" trademark by using the very same naming convention as AT&T itself uses in its own domain, < att.com>, and then merely appending to that mark the prefix "www-," "a common expression to indicate the world wide web." Individuals searching for AT&Tís website, who inadvertently type "www-" instead of "www." will be taken to Respondentís website, and thus mislead into thinking that the contested domain name links to a site owned, endorsed, sponsored or maintained by AT&T.
Rights and Legitimate Interests
Respondent is not Complainantís licensee in any respect, nor is Respondent authorized to use AT&Tís marks. Complainant has not endorsed, authorized, or sponsored the Respondentís use of Complainantís marks.
Respondent does not own any registered or common law marks containing the terms "AT&T" or "ATT" or any similar derivation.
To the best of Complainantís knowledge, Respondent has not been commonly known by the contested domain name, nor does Respondent run any enterprise commonly or legitimately known by the contested domain name. Respondent has not been commonly known by any name whose initials form the contested domain name as an acronym, nor is Respondent making legitimate noncommercial or fair use of the contested domain name.
Even if Respondent were actually engaged in a legitimate business, of which there is absolutely no evidence, such would not provide any legitimate rights to use AT&Tís trademark. Several WIPO panels have concluded that where a mark is famous, third parties are presumed to have knowledge of the trademark ownerís rights, and cannot themselves have legitimate rights to that mark. In one such case involving AT&T, the panel specifically found that even if the respondent did have "a company called ĎAt the Web,í" as it had claimed, "it is highly unlikely Respondent could sustain a right to register the domain name <attweb.com> in the face of [AT&Tís] famous trademarks of long standing." See AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 (September 27, 2000).
Respondentís bad faith is apparent from his blatant attempt to capture Internet traffic via typo-squatting. Further, its registration of a domain name directly incorporating AT&Tís internationally famous name and marks, and his failure to make any legitimate use of the site, are also demonstrative of bad faith.
In addressing the bad faith inherent in such "www-" typo-squatting, panels have repeatedly held that bad faith "can be inferred from all of the circumstances." CTV Television Inc. v. iCANADA Co., WIPO Case No. D2000-1407 (December 13, 2000).
Respondents do not own any registered or common law marks containing the terms "AT&T" or "ATT" or any similar derivation. This bad faith use blurs and dilutes AT&Tís well-known mark by confusing both customers and potential customers, and interferes with Complainantís business by frustrating attempts to reach Complainantís actual websites.
Registration of a famous mark as a domain name by an entity that has no legitimate relationship to the mark is itself sufficient to demonstrate bad faith.
The fact that the domain name currently resolves to a place-holder site is nonetheless evidence of bad faith in this case. Bad faith use can be established where a site is inactive, as "absent a transferal, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site." Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, (March 10, 2000). This is particularly true where, as here, the domain name reproduces Complainantís trademark in full and "[i]t would be difficult, perhaps impossible, for Respondent[s] to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainantís rights."
Here, an Internet user who accidentally reaches the "www-att.com" web page will see a classic "under construction" page in several languages with hyperlinks to "gagadomain.com."
The only reasonable inference is that Respondent registered the disputed domain name in order to exploit or disrupt Complainantís business by diverting customers attempting to access AT&Tís services.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Pursuant to the UDRP Policy, Complainant must convince the Panel of three elements if it wishes to have the domain names transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the domain names are identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the domain names; and
(iii) that the domain names were registered and used in bad faith.
These three elements are considered below.
A. Identical or Confusingly Similar
The Panel is of the opinion that the evidence provided by Complainant supports a finding that Complainant is the owner of, amongst others, the registered trademark AT&T and that Complainant has rights in that mark.
While the domain name is not identical to Complainantís AT&T mark, the Panel finds that it is confusingly similar. The test of confusion in comparing the words or marks at issue is from the standpoint of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.
It is trite law that the mere addition of a generic term to a famous mark does not preclude a finding of confusing similarity. The Panel relies on the findings in Viacess v. Satolivier, WIPO Case No. D2003-0361, wherein it was stated that: "The Domain Name incorporates in whole Complainantís famous registered VIACCESS mark and the only deviation is that Respondent has added the number "2" as a suffix. The Panel adopts the finding in Viacom International Inc. v. MTVMP3.COM, WIPO Case No. D2001-0275, Parfums Christian Dior v. Netpower, Inc., WIPO Case No. D2000-0022 and The Tylenol Company v. Farmacias Mexicana, SA DE CV, WIPO Case No. D2002-0597 where it was decided that the addition of a generic term to a trademark (such as VIACCESS) creates a Domain Name that is confusingly similar to the trademark. Because the Domain Name refers to "VIACCESS," consumers are likely to believe that they refer to websites that concern Complainantís products."
More specifically, "Certainly, it is clear that Ďwwwí . . . is not a distinctive element in the context of top level domain names and is merely a generic element that is part of the full syntax for entering the full URL of any domain name in a browserís address or location field." CTV Television Inc. v. iCANADA Co., WIPO Case No. D2000-1407 (December 13, 2000). In fact, "[t]he role of Ďwww-í in this context, with the hyphen specifically included, has been held to constitute use of a generic term that does nothing to reduce the potential for confusion with a registered trade-mark or service mark."
As to the absence of ampersand in the domain name, see AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002) wherein it was stated that the absence of an ampersand (Ď&í) in the disputed domain name is dictated by the fact that this character may not presently be included in domain names, and Internet users expect domain names to exclude that character."
The Panel therefore finds that Complainant has satisfactorily met the burden imposed upon it at Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain dame. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
The Panel agrees with Complainantís contention that Respondent has no rights or legitimate interests in the domain names.
First, there is no relationship between the parties giving rise to any license, permission, or other right by which Respondent could own or use any domain names incorporating Complainantís mark.
Second, the Panel agrees with Complainant in that there is no evidence that Respondent has been commonly known by the domain names. In fact, since when typing in the domain names, the Internet user is automatically directed to a vacant website. Bearing the inscription "Under Construction," it is the Panelís opinion that the Respondent has not been commonly known by the domain names.
Third, the fact that the Respondent uses the domain name to misdirect Internet traffic for its own benefit and profit to a website located at "www.gagadomain.com" is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain name. The Panel relies on the findings expressed in Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611.
Fourth, the Panel finds that Respondentís failure to respond constitutes further evidence that Respondent lacks rights or legitimate interests in the disputed domain names. In this regard, the Panel refers to the decision in Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648. The Panel is of the opinion that, once lack of legitimate rights or interests has been alleged by a complainant, the respondent is obliged to adequately address this issue. This finding is supported by the various means, which are available to a respondent under the URDP Policy to show legitimate right or interest, on a balance of probabilities.
Therefore, the Panel finds that Complainant has established prima facie that the respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under Policy paragraph 4(a)(ii). See MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein it was stated that "The Administrative Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the respondentís failure to respond to this administrative proceeding, that the complainant is correct in its assertion that the respondent has no rights or legitimate interest in the domain name." See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 wherein it was found that: "Respondentsí failure to respond can be construed as an admission that they have no legitimate interest in the domain names."
The Panel thus finds that Complainant has met its burden under Policy Paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
It is often quite difficult to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once the Complainant has presented some evidence pointing in that direction, it is then incumbent upon the Respondent to either respond or explain why its conduct should not be assimilated to bad faith.
The Panelís understanding of the Policy is that although the initial burden to prove the Respondentís bad faith in the registration or the use of the disputed domain name relies squarely on the shoulders of the Complainant and once it has done so, as it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw negative inferences.
In the present case, the Panel finds that, since Complainantís trademark AT&T is registered in Respondentís country, i.e. the Republic of Korea, it is very unlikely that when Respondent registered the domain name, it was not aware that it was infringing on Complainantís trademark rights (see e.g. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Furthermore, the Panel is of the opinion that the domain name is so obviously connected with Complainantís trademark that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Moreover, the Panel finds that the evidence, as submitted by Complainant, tends to demonstrate that Respondent registered the domain names with the purpose of intentionally attempting to attract, for its own commercial benefit, Internet users to its website by creating a likelihood of confusion with Complainantís trademark and by using the goodwill and positive reputation attached to the Complainantís AT&T trademark. See Snapple Beverage Corp. v. Telmex Management Services, WIPO Case No. D2002-0114.
In view of all the above, the Panel is of the opinion that the Complainant has discharged of its burden under Policy paragraph 4(a)(iii), and finds that the Respondent has registered and used the domain names in bad faith.
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 name, <www-att.com> be transferred to the Complainant.
Jacques A. Léger
Dated: April 2, 2004