WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Tianfu Guo

Case No. D2004-0294

 

1. The Parties

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

The Respondent is Tianfu Guo, Cerritos, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <attone.com> is registered with Melbourne IT trading as Internet Name Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2004. On April 26, 2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On April 27, 2004, Melbourne IT trading as Internet Name Worldwide 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 April 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2004. A Response was filed with the Center on May 19, 2004.

The Center appointed Nels T. Lippert as the sole panelist in this matter on June 10, 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.

On June 24, 2004, the Panel decided to receive and consider the supplemental filing the Complainant submitted to the Center on June 3, 2004, and issued an Administrative Order allowing the Respondent to submit a response by July 1, 2004. The Respondent did not submit a response. In accordance with paragraph 10(c) of the Rules, the date by which the Panel was required to submit the decision to the Center was extended to August 8, 2004.

 

4. Factual Background

Complainant AT&T Corp. is a large, internationally well-known telecommunications corporation and Internet service provider. It has numerous federal registrations for the mark "AT&T" from as early as 1984. Complainant also owns registered marks consisting of "AT&T", the word "one", and at least one other word, such as "AT&T One Rate", "AT&T One Rate Online", "AT&T One Rate Connections", and "AT&T One Rate USA." Furthermore, Complainant owns registered marks consisting of "ATT" without the ampersand in combination with other words and phrases, such as "1 800 CALL ATT", "CAMP ATT", "1 800 ATT-GIFT", "ATT.COM" and "ATT.NET."

Complainant has been the registrant of the domain names <att.com> since 1986, and <att.net> since 1993. Complainantís primary corporate website is located at <att.com>. Complainant conveys its "AT&T" mark in the domain name <att.com> without the ampersand because the use of an ampersand character in a domain name is not permitted.

On November 26, 2002, Respondent registered the domain name in dispute, <attone.com>.

The disputed domain name <attone.com> initially resolved to a website that displayed an image of a globe and the phrases "The World @Tone," and "@Tone here to help you," with no other words, logos, graphics, links to other web pages, or any indication of the owner of the web page.

Complainant sent cease and desist letters to the Respondent as early as July 2, 2003. On or around February 9, 2004, the domain name <attone.com> began to resolve to a web page that offered, among other things, links to various websites offering gift ideas and gift services. The new web page did not make any reference to "@Tone", but purported to be part of the "eLuxury Affiliate Program," which pays a seven percent commission on every product sold through the use of the <attone.com> domain name. On June 22, 2004, the Panel reviewed the website to which the domain name <attone.com> resolves, and found that it continues to purport to be part of the eLuxury Affiliate Program, but now refers to itself as "@Tone Gift Store."

On June 2, 2003, Complainant filed a United States intent-to-use application for the service mark "AT&T ONE" for use in connection with telecommunications services and "providing multiple-user access to a worldwide global computer network." Complainant describes its "AT&T One" plan as a telephone plan providing customers with special telephone rates on both their home and their cellular phones. Complainant has provided copies of advertisements for the AT&T One plan dated as early as July 7, 2003.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondent registered and is using the domain name <attone.com> in bad faith to confuse AT&Tís customers and to exploit and tarnish AT&Tís trademarks. In particular, Complainant contends that <attone.com> is confusingly similar to, for example, its federally registered "AT&T" and "AT&T ONE RATE" marks, the service mark "AT&T ONE" in which it has common law rights, and the mark "ATT" in which it has common law trademark rights.

Complainant also contends that Respondent misappropriated its "ATT" trademark by adding the common term "one" to the end of it, creating a domain name that is confusingly similar to the "ATT" trademark.

Complainant additionally contends that Respondent has no rights or legitimate interests in the domain name <attone.com>, and that Respondent has not used and is not using the domain name in any bona fide trade or business. Specifically, Complainant contends that "@Tone" is a meaningless phrase, the domain name <attone.com> is currently being used to divert unsuspecting Internet traffic from AT&T, and that Respondent is profiting from this misuse by earning commissions through its affiliation with eLuxury.

Finally, Complainant contends that Respondentís registration of the domain name <attone.com> is sufficient, in and of itself, to demonstrate Respondentís bad faith because it is confusingly similar to Complainantís trademarks and the Respondent has no legitimate interest in the domain name. Moreover, Respondentís bad faith is evident from the fact that the domain name initially resolved to a one-page website with an image of a globe and "a few nonsense phrases" mentioning @Tone, which was effectively the same as an inactive site. Furthermore, Complainant contends that Respondentís subsequent use of the domain name to divert Internet traffic for profit and his failure to respond to correspondence from the Complainant regarding the domain name demonstrates bad faith.

B. Respondent

Respondent contends that the domain name is not confusingly similar to Complainantís marks because there are over 13,700 active sites that begin with "att". Respondent also notes that "tone" is a generic word, and "at" is commonly indicated by the symbol "@", citing AtHome Corporation v. Metro.Net and The Innovation Group, Inc., a/k/a "Metro.Net.", WIPO Case No. D2000-0422 (October 23, 2000) (noting that the "@" symbol is commonly used to denote the word "at").

Originally, Respondent contended that the site was non-commercial, "there is no intent for commercial gain to mislead or divert customers or to tarnish the trademark of service mark "at issue,"" and it has not received any royalties from eLuxury or any other companies. Respondent goes on to explain that it intends to use the domain name to set up an online gift store, "with an appeal on the tone. We are going to offer special gifts to our customers with customized tone on their gifts,"Ö "again we [sic] just going to set up an online gifts store for the use of customized tone approached."

In response to Complainantís bad faith argument, Respondent contends that it registered the domain name <attone.com> as a combination of "at" and "tone," and not for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant. Furthermore, Respondent contends that it did not have bad faith in its registration and use of <attone.com> because it is not a competitor of AT&T.

C. Complainantís Supplemental Filing

In a supplemental filing, the Complainant asserts that the Response was filed with procedural deficiencies and should not be considered. The Complainant also contends that the Respondentís bad faith is demonstrated by a change in the Respondentís web site after the Complaint was filed, to include a disclaimer that "@Tone" is not associated with other companies in any way. The Complainant further contends that the Respondent has no legitimate interests in the disputed domain name because the Respondentís use of the domain name to provide links to web sites that make online sales is contrary to its assertion that it is making a non-commercial use of the domain name. To rebut the Respondentís assertion that a search on Google.com for "attone" produces no results relating to AT&T, the Complainant provides annexes showing that a search on Google.com for "ATT One" and "AT&T One" results in a listing of numerous websites about AT&T and its services, including AT&Tís own websites. Finally, the Complainant contends that bad faith registration and use is evident because "the registered domain name does not contain the @ symbol", despite the Respondentís explanation that it chose the disputed domain name because its business is called "@Tone".

 

6. Discussion and Findings

As a preliminary matter, the Complainantís assertion that there are procedural deficiencies in the Respondentís Response has been considered by the Panel. Although the Response did not comply with the procedural and technical requirements of paragraphs 2(h) and 5(b) of the Rules, in an effort to treat the Parties with equality in accordance with paragraph 10 of the Rules, the Panel has considered the Response, for what it is worth, as well as Complainantís Supplemental Filing.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, all three of the following elements:

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

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

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

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondentís rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

A. Identical or Confusingly Similar

Combining a generic word with a trademark to make a domain name may result in a domain name that is confusingly similar to the trademark, in circumstances where a distinctive trademark is still clearly recognizable as such in the combined domain name. The Complainant has the burden of showing that the domain name in question is confusingly similar to its trademarks. The evidence submitted by Complainant clearly substantiates its contention that the AT&T marks, with and without an ampersand, are extremely well known and have been since well before registration of the disputed domain name. The Panel concurs with prior panelists that the AT&T and ATT marks have achieved a high degree of consumer recognition and fame. See, AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723 (April 26, 2001). In this case, the disputed domain name <attone.com> wholly incorporates the ATT trademark.

As for the Complainantís contention that <attone.com> is confusingly similar to the service mark "AT&T ONE," in which it has common law rights, the Panel notes that the Complainant has filed an intent to use application in the U.S. for the service mark "AT&T ONE," and registration is still pending. While a trademark application alone is not sufficient to establish that a Complainant has rights in a trademark, Rodale, Inc. v. Christianne Schelling, WIPO Case No. DBIZ2002-00130 (June 30, 2002), the Complainant has provided exhibits that demonstrate its use of the mark. The fact the disputed domain name was registered and used by the Respondent before the Complainantís application for registration and use of the "AT&T One" mark is of no moment. "The issue under the first factor is whether the Complainant has rights as of the time of the Complainant." Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 8, 2000). The Panel finds that at the time of the Complaint, the Complainant had and currently has trademark rights in the mark "AT&T ONE"; and but for the addition of the generic top-level domain, the disputed domain name is identical to Complainantís service mark.

Furthermore, the disputed domain name differs from the Complainantís service mark rights in AT&T only by the addition of the common word "one", the deletion of the "&", and the addition of a generic top-level domain name. It is well established that the addition of a generic top-level domain such as ".com" is not relevant when determining whether a disputed domain name is confusingly similar to a protected mark. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000). More specifically, the addition of a top-level generic domain does not create a new trademark or avoid confusion. America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001). Moreover, it is well established that a common term or a number preceding or following a trademark does not create a new or different mark in which the Respondent has rights. See Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 (February 20, 2000). Here, the Complainant has demonstrated it has rights in a variety of marks including "ATT" as well as "AT&T ONE". Disregarding the top-level domain, and common terms, the disputed domain name is identical to Complainantís marks.

Accordingly, the Panel finds that this disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, a Respondent may demonstrate it has rights or legitimate interests in a domain name if (i) before any notice of the dispute, it used or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; or (ii) it has been commonly known by the domain name; or (iii) it 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 mark at issue.

The Respondent has not shown that he was commonly known by "@Tone" or "AtTone," for purposes of Paragraph 4(c)(ii) of the Policy. Nor does the Respondent contend that it was (or is) making a legitimate non-commercial or fair use of the domain name according to Paragraph 4(c) (iii) of the Policy.

However, in effect, the Respondent contends that before any notice of the dispute it had made preparations to use the domain name in connection with a bona fide offering of goods and services. Yet, the Respondent has offered no evidence supporting its contention that it was making such preparations. The record is clear that when the Respondent registered the domain name in question, it resolved only to a page displaying an image of a globe along with "@Tone. It was only after notification of Complainantís rights and the forwarding of cease and desist letters from the Complainantís counsel that the disputed domain name resolved to a site which offered goods and services through links. Even at that, where no legitimate business has been established, the use of the disputed domain name, as here, to link to other sites does not establish rights or legitimate interests. AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634 (October 25, 2003). The Respondent has not refuted the Complainantís contentions with any credible evidence. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, the Complainant must show that the Respondent registered the domain name in bad faith AND used the domain name in bad faith.

Complainantís marks are indisputably highly recognized and famous. It is inconceivable that Respondent did not know of Complainantís rights prior to registering the disputed domain name. Here the Respondent wholly incorporated the ATT mark as the predominant and recognizable portion of the domain name. Bad faith is shown where the Respondent knew or should have known of the registration and use of the Complainantís mark prior to registering the domain name. Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (December 13, 2000). While the Respondent may not have known of Complainantís AT&T ONE service mark at the time of registering the disputed domain name, it must have known of Complainantís well-recognized ATT and AT&T marks. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

Under paragraph 4(b)(iv) of the Policy, the Respondentís bad faith use of the domain name is indicated by its intentional use of the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís mark. Casio Keisanki Kabushiki Kaisha v. Jongchan Kim, WIPO Case No. D2003-0400 (July 15, 2003). Here, the disputed domain name originally resolved to a website displaying only an image of a globe and the phrases "The World @Tone" and "@Tone Here to Help You" with no other words or any indication of ownership of the webpage. After receipt of warning letters from Complainant the disputed domain name began to resolve to a web page that offered products for sale under an affiliate program. Respondent has not disputed Complainantís contention that the Respondent has no legitimate interests in the disputed domain name because the Respondentís use of the domain name to provide links to websites that make online sales is contrary to its assertion that it is making a non-commercial use of the domain name. Furthermore, it is clear that the Respondent now seeks to profit from the illegitimate use of the disputed domain name by advertising and linking to suppliers of products for a fee. Using the disputed domain name to divert Internet users to Respondentís website is a bad faith commercial use. Accordingly, the Panel finds that the disputed domain name is used by Respondent in bad faith.

 

7. Decision

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

 


 

Nels T. Lippert
Sole Panelist

Dated: August 8, 2004