WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Knowledge Venture II, L.P. v. Rnetworld
Case No. D2007-0035
1. The Parties
The Complainant is AT&T Knowledge Venture II, L.P., San Antonio, Texas, United States of America, represented by Sidley & Austin, United States of America.
The Respondent is Rnetworld, Palermo, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <atnt-sbc.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2007. On January 11, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On January 15, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative 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 Respondent of the Complaint, and the proceedings commenced on January 22, 2007. In accordance with the Rules, paragraph 5 (a), the due date for Response was February 11, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on February 12, 2007.
The Center appointed John E. Kidd as the sole Panelist in this matter on February 28, 2007. 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 AT&T Corp. has been selling telecommunication products and services for more than a century under the brand name AT&T and during that time has combined the brand name with other words and/or design elements (hereinafter the “AT&T marks”).
The AT&T Corp. has invested hundreds of millions of dollars promoting its AT&T marks in the United States of America and other countries around the world. Many of the AT&T marks have also been registered as trademarks and service marks in the United States and other countries around the world.
Over 40 previous WIPO panels have recognized the immense value of the AT&T marks. One panel, stated that by virtue of AT&T’s extensive use, advertising and promotion, the AT&T name and AT&T and ATT marks have achieved an unparalleled degree of consumer recognition and fame and serve as exclusive designation of origin of AT&T’s goods and services and symbols of the good will and excellent reputation AT&T enjoys@ and thus AT&T’s marks are “entitled to the widest scope of protection afforded by law”. See AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723.
Another WIPO panel has summed up the worldwide recognition of AT&T’s brand name by stating simply that the phrase AT&T is a household name the world over. See AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276. WIPO panels have specifically found that AT&T has established common law trademark rights in the ATT mark without the ampersand. See AT&T Corp v. Linux Security Systems, WIPO Case No. DRO2002-0002.
In a previous action against the same Respondent, a WIPO panel recognized that AT&T has been ranked as one of the most valuable international brands in the world. See AT&T Corp. v. rnetworld, WIPO Case No. D2006-0569.
AT&T Corp. merged with SBC in 2005. The new company is the principal U.S. provider of local and long distance voice services and broadband Digital Subscriber Line service and is an industry leader in the provision of Internet Protocol based communication and services. Following the merger, AT&T Corp. transferred its trademark rights to AT&T Knowledge Venture II, L.P., the Complainant in this action. Both entities are subsidiaries of the parent company AT&T Inc. The evidence is not refuted by Respondent that Complainant AT&T Knowledge Venture II, L.P., continues to own and use the marks that are at issue in this Complaint.
Following the merger, AT&T registered the domain name <att-sbc.com>, <attsbc.com> and <sbc.com>. Also following the merge AT&T established rights in “SBC” and numerous other marks incorporating SBC.
AT&T has also been the registrant for the domain name <att.com> since at least 1986 and for <att.net> since 1993. The domain name <att.com> resolves to AT&T’s primary corporate website, “www.att.com”, on which AT&T’s products and services are promoted. 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. See AT&T Corp. v. John Zuccarini d/b/a Rave Club-Berlin, WIPO Case No. D2001-1503. Here the Panel held that the absence of an ampersand 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 domain name in dispute <atnt-sbc.com> was registered by Respondent and the evidence is unrefuted that Respondent has no direct or indirect connection to AT&T or SBC.
In November 2006, counsel for AT&T Corp. sent a letter to Respondent asking them to cease and desist use in the future of the domain name in dispute. Respondent did not reply.
Respondent also has not replied to Complainant’s Complaint. Respondent has been advised by the Center of its default and its consequences.
5. Parties’ Contentions
Complainant asserts that Respondent has registered the domain name in dispute in a blatant bad faith attempt to exploit Complainant’s, world famous marks and to profit from the well-publicized merger of two companies AT&T Corp. and SBC Communications Inc.
Complainant further contends that the domain name in dispute <atnt-sbc.com> is virtually identical and confusingly similar to the domain name <att-sbc.com> and <attsbc.com>, both used by AT&T to offer products and services to its telecommunications customers.
Complainant further asserts that Respondent has no rights or legitimate interest in the domain name in dispute. Complainant contends that Respondent is making no legitimate use of the website associated with the domain name and the registration of the domain name in dispute is an example of merger cybersquatting. Complainant contends that such registration and use of the domain name in dispute, is done in bad faith by Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the domain name in dispute is virtually identical and confusingly similar to Complainant’s official, legal and world-famous marks and domain names and that Internet users attempting to locate information regarding AT&T will likely be confused into believing that the web page associated with the domain name in dispute, as well a those pages that link from the web page are sponsored by or connected with AT&T.
United States courts and WIPO panels have recognized that consumers expect to find a company on the Internet at a domain name address comprised of that company’s name or mark. See Panavision International, L.P. v. Toeppen 141 F. 3rd 1316, 1327 (9th Cir. 1998) ame.
Furthermore, a domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base. See AT&T Corp. v. Ray Gilmartin, WIPO Case No. D2002-0237. Here in that case the panel finds that Respondent’s registration and use of the domain name <atnt-sbc.com> is likely to confuse consumers looking for information related to telecommunications products and services offered by the newly-merged company of AT&T and SBC.
The Panel finds that the fact that Respondent has replaced the ampersand in AT&T’s mark with an ”n” does not eliminate the confusing similarity. As Complainant correctly points out on the Internet it is not possible to use the symbol “&” in a domain name. See AT&T Corp. v. Sure Source WIPO Case No. D2002-1179.
WIPO panels have noted that Internet users are aware that the ampersand is not utilized in domain names and expect that symbol to be eliminated or replaced See Bradford & Bingley PLC v. Registrant info@fashionID.com 9876543321, WIPO Case No. D2002-0499. Where the ampersand is not simply dropped from a domain name, it is most often replaced with the work “and” or “n,” a common substitute for “and” This substitution has been found to result in a domain name that is confusingly similar to a trademarked name. See Hexagon AB et al. v. Xspect Solutions Inc., WIPO Case No. D2005-0472 where the panel ordered transferring, inter alia, <bns-comm.com> in and <bnscmm.com> in part based on a finding that the domain names were confusingly similar to Complainant’s mark in “B&S”.
In the present case, the Panel finds that the confusing similarity between AT&T and SBC marks and the domain name in dispute <atnt-sbc.com>, in the Panel’s view cannot be contested. The domain name incorporates AT&T’s mark in its entirety, and incorporates “sbc” in a direct reference to the highly-publicized merger that occurred between the two telecommunications companies. As a result, persons familiar with or looking for information about AT&T’s relationship with SBC, or those generally familiar with Complainant’s world-famous marks, will be confused into thinking that <atnt-sbc.com> is owned, endorsed, sponsored, or maintained by AT&T to promote its products. The fact that Respondent has substituted the letter “n” for the ampersand rather than dropping it entirely does nothing to reduce the confusing similarity of the domain name. Thus, it is the Panel’s opinion that there can be no doubt that the domain name <atnt-sbc.com> is confusingly similar to AT&T’s registered marks.
B. Rights or Legitimate Interests
Respondent is not AT&T’s licensee in any respect, nor is Respondent authorized to use AT&T’s marks. AT&T has not endorsed, sanctioned, or sponsored Respondent’s use of its marks. Respondent does not own any registered or common law marks containing the terms AT&T,ATT,ATNT,SBC, or any similar derivation. Respondent has not been commonly known by the contested domain name, nor does Respondent run any enterprise commonly and legitimately known by the contested domain name.
The Panel concludes that Respondent is not making legitimate noncommercial or fair use of the contested domain name. Respondent’s only demonstrated use of the domain name is to direct Internet traffic to a website with links to unrelated websites. Where Respondent’s only use of a disputed domain name is to link users to unrelated websites, and no legitimate business has been established, such behavior has consistently been found not to establish legitimate rights or interests in the domain name. See AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634 where the panel found no legitimate rights or interests in the <attphonecard.net> domain name where the only demonstrated use was to direct users to a site that recommends searches for other websites and sponsored links. See AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, supra, and Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 where the panel found diversion of traffic from the domain name in dispute to unrelated websites was not a bona fide use of the disputed domain name.
Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.
C. Registered And Used In Bad Faith
The Panel finds that the registration of the disputed domain name <atnt-sbc.com> suggests that Respondent intends to unfairly and illegally exploit that domain name to his advantage at the expense of AT&T. This case is similar to the case of Conoco Inc., Phillips Petroleum Company & Conoco Phillips v. Conocophillips.com, WIPO Case No. D2002-0346 where Respondent had registered the domain names <conocophillips.com> in anticipation of the merger of Conoco Inc. and Phillips Petroleum Company. The Panel in that case recognized the legal rights present when the domain name at issue is the same as the name of a newly-merged global corporation.
The Conocophillips case is part of an extensive line of WIPO decisions condemning merger cybersquatting as potentially confusing to consumers. In AT&T Corp. v. Beomjoon Park, WIPO Case No. D2001-0133, the panel cancelled the registration of <attviacom.com>, recognizing that the combination of AT&T’s mark and Viacom’s mark has a great potential to confuse Internet users into believing that the website is some sort of cooperative venture between the two companies. In AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830, the panel ordered the transfer of the domain name <attmsn.com> after finding it to be confusingly similar to the marks of AT&T and Microsoft. The panel in that case found that the fact that Respondent registered the Domain Name following media reports about possible business deal between MSN and AT&T is some evidence that the Domain Name was intended to be a combination of the two marks and ordered the transfer of the domain name in dispute.
Other examples of WIPO panels ordering the transfer of domain names in dispute involving mergers include Vivendi S.A. et al v. Yu Fu Zhao WIPO Case No. D2000-0717 where the domain name <seagram-vivendi.com> was requested two days after the announcement of the merger of Vivendi and The Seagram Company Ltd., the panel ordered that the domain name must be transferred to the merged entity; Pharmacia & Upjohn AB v. Sol Meyer, WIPO Case No. D2000-0785 where the panel ordered the domain name, which was registered the same day as the announcement of merger talks between Pharmacia and Monsanto Company transferred.
Most recently, this Respondent was the subject of an adverse WIPO decision based upon its attempt to capitalize on the joint venture between AT&T and Yahoo!. See AT&T Corp. v. rnetworld, WIPO Case No. D2006-0569 where the panel ordered the domain <att-yahoo.com> be transferred to AT&T Corp.
Accordingly, the Panel finds that Respondent has registered and is using <atnt-sbc.com> to divert Internet traffic to unrelated websites by exploiting consumer confusion with AT&T’s world famous marks and the recent merger of AT&T and SBC. Internet users who arrive at the contested domain name while looking for a site to obtain information about AT&T’s telecommunications products and services will believe that they have arrived at an official AT&T web site or a site sponsored by or otherwise affiliated with AT&T. This bad faith registration and use tarnishes and dilutes AT&T’s famous marks by confusing customers and potential customers, and interferes with AT&T’s business by frustrating attempts by Internet users to reach AT&T’s actual websites.
The Panel also finds that registration of a famous mark as a domain name, by an entity that has no legitimate relationship to the mark, can be sufficient to demonstrate bad faith. In one case, a WIPO panel found that by virtue of the fame and widespread use of the trademarks AT&T and ATT, the use of the letters “att” in the domain name <attanywhere.com> immediately raises questions as to its bona fides. See AT&T Corp. v. Woppies, WIPO Case No. D2000-1724. See also Europay Int’s S.A. v. Eurocard.com, Inc., WIPO Case No. D2000-0173, where the panel found that where a trademark is famous, it is difficult to imagine any good faith purpose for which Respondents might have registered (the) domain names, and Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221, the panel found that the names are so obviously connected with Complainants, that the “use or registration by anyone other than Complainants suggests opportunistic bad faith”. Thus, registration of a famous mark like “AT&T” or “SBC” as a domain name by an entity that has no legitimate relationship to the mark can be sufficient to demonstrate bad faith in registration and use of a disputed domain name.
Here, Respondent’s registration of the domain name containing the marks of two newly-merged companies, in addition to Respondent’s lack of any connection with the fanciful phrase “atnt-sbc”, demonstrates that one of the Respondent’s reasons for registering and using the contested domain name is to block AT&T’s registration of this domain and/or to extort payment from AT&T to allow such registration. Paragraph 4(b) of the Policy sets out four circumstances, without limitation that demonstrate bad faith including that Respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. As one WIPO panel observed, “cyber-squatting on the back of announced mergers...has consistent been held to show bad faith.” See Shire Biochem Inc., et al v. Syed Hussain, WIPO Case No. D2002-0453.
The Panel finds that Respondent’s use of the domain name to diver Internet traffic to unrelated sites also is evidence of Respondent’s bad faith. Use of a domain name to intentionally direct Internet traffic to websites unaffiliated with AT&T creates a likelihood of a confusion as to AT&T’s endorsement of those websites and constitutes bad faith. See Policy, Paragraph 4(b)(iv). By using the disputed domain name in this manner, Respondent intentionally attempts to attract Internet users to an unrelated location, creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location. The fact that such confusion may be dispelled, and replaced by annoyance or disgust once the nature of the site is revealed, does not negate the fact of initial confusion. Ticketmaster Corporation v. Iskra Service, WIPO Case No. D2002-0165.
As further evidence of Respondent’s bad faith registration and use of <atnt-sbc.com>, Complainant notes that recently Respondent has been ordered by WIPO to transfer a domain name containing AT&T’s mark in combination with the mark of another company, Yahoo!, with which AT&T was associated. See AT&T Corp. v. rnetworld, supra.
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 in dispute <atnt-sbc.com> be transferred to the Complainant.
John E. Kidd
Dated: March 14, 2007