WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. WAP S.A.

Case No. D2003-0497

 

1. The Parties

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

The Respondent is WAP S.A., of Opolska, Katowice, Poland.

 

2. The Domain Names and Registrar

The disputed domain names <worldnetattnet.com>, <worldnetattnet.net> and <wwwworldnetatt.net> are registered with eNom.

 

3. Procedural History

3.1 Issuance of Complaint

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2003. The hard copy of the Complaint with Exhibits was subsequently received by the Center on June 27, 2003.

3.2 Confirmation of Registration Details

On June 26, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On July 2, 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 contacts.

3.3 Notification to the Respondent

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 by courier (to the postal address given as the Registrant, Administrative and Technical Contact in the Whois database) and by email, and the proceedings commenced on July 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2003.

The Center received a returned "Notification of Complaint" from the Respondentís postal address on July 16, 2003. The Center also received a message from the Mail Delivery Subsystem on July 9, 2003, that the email sent to Respondentís address had permanent fatal errors.

The postal address was the address specified in the Whois database and, in accordance with Rule 2(a)(i), the attempt is sufficient to discharge the Providerís responsibility. Similarly, the attempts made by email are not accompanied by any evidence of receipt, but the requirements of paragraph 2(a)(ii) of the Rules have been met.

The Respondent did not submit any response. Accordingly, the Center sent the Respondent a Notification of Respondent Default on July 30, 2003.

In cases where no response has been filed, the Panel is particularly concerned to ensure that the requirement of paragraph 10(b) of the Rules, that the parties are treated with equality and that each party is given a fair opportunity to present its case, is fulfilled. The Policy and the Rules are set to establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., par. 2(a), Rules). Considering the actions undertaken by the Center, the Panel is of the view that in the present case, if the Respondent has not received actual notice of the proceedings, it is attributable solely to the Respondentís contact particulars in the Whois database being erroneous. Neither the Complainant nor the Center could take any alternative action.

Therefore this Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

3.4 Constitution of Administrative Panel

The Center appointed Nicoletta Colombo as the sole panelist in this matter on August 6, 2003. The undersigned Panel submitted Statements of Acceptance and Declarations of Impartiality and Independence. The Panel is satisfied that the Administrative Panel was properly constituted. The language of the proceeding is English. The date scheduled for the issuance of the Panelís decision is August 20, 2003.

3.5 Compliance with the formalities of the Policy and the Rules

Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the Center that all requirements of the Policy and the Rules have been satisfied.

No further submissions were presented to the Panel and the Center.

4. Factual Background

The following uncontested facts are found by the Panel and established as true.

The Complainant AT&T (American Telephone and Telegraph Corporation) is a corporation incorporated under the laws of the State of New York. It provides goods and services to large and small businesses, consumers and government entities in the field of telecommunications, providing also Internet access, email and web hosting services, both within the United States and in other countries.

The Complainant has provided telecommunications services and products for over a century under its name "AT&T Corp." or "AT&T" as well under phrases that combine "AT&T" or "ATT" with other words.

It has right in numerous registered trademarks and service marks in the United States, as well as many other countries for "AT&T" and "AT&T with device" (see Annex 9).

The Complainant has used "AT&T WORLDNET" in commerce since at least August 1995, and has registered it as trademark in United States since August 1997, with No. 2086348. It owns registered trademark for "AT&T WORLDNET" in other countries such as Canada, Germany and Taiwan (see Annex 10).

The AT&Tís WorldNet Internet service is recognized worldwide.

Moreover the Complainant owns numerous marks which use "ATT" without an ampersand and in combination with other words and phrases as "1800 CALL ATT", "CAMP ATT", "18000 ATT-GIFT", "ATT.COM", and "ATT.NET" (see Annex 12).

Complainant is also the owner of several domain names containing the letters "ATT".

The disputed domain names are <worldnetattnet.com>, <worldnetattnet.net> and <wwwworldnetatt.net>, registered in the name of the Respondent.

According to Complainant, at the time of filing the Complaint a person accessing the domain names in dispute would be diverted to a website containing an internet search engine, as well as links to several other web pages, including advertisements for providers of different services.

Complainant states that Respondent is not a licensee of Complainant nor is it authorized to use Complainantís marks.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name subject of this dispute.

In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain names are confusingly similar to his registered trade marks. The domain names in dispute are simply variations of the famous "AT&T" mark and the created word, "WorldNet". The Complainant owns registered trademarks with the specific word combination "AT&T WORLDNET" for several years and in several countries and has used this combination since August 5, 1985.

AT&T operates a large and well-known Internet service provider under the "AT&T WorldNet" name, and users of the AT&T WorldNet Internet service are assigned e-mail addresses that end with "@worldnet.att.net".

Moreover, even if AT&T had not registered and used "AT&T WORLDNET" as a separate mark, the mere addition of the word "worldnet" to an internationally famous mark would certainly cause reasonable confusion among consumers.

The Complainant states that the confusing similarity between AT&Tís trademarks and the domain names in dispute is manifest. Persons familiar with or looking for AT&T Corp.ís "AT&T WORLDNET" service, or those generally familiar with Complainantís world-famous marks, will be confused into thinking that the domain names are owned, endorsed, sponsored, or maintained by AT&T, to promote its telecommunications and Internet products and services.

In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain names. Respondent in fact is not AT&Tís licensee in any respect, nor is Respondent authorized to use AT&Tís marks.

Complainant states that Respondent does not own any registered or common law trade mark containing the terms "AT&T" or "ATT" or any similar derivation. Moreover Respondent has not been commonly or legitimately known by the contested domain names.

Respondent is not making legitimate noncommercial or fair use of the contested Domain Names; in fact Respondent uses the domain names in dispute simply to divert unsuspecting traffic to another commercial site, preventing also the consumers and other members of the public from finding AT&T easily.

In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.

The Respondent has registered and is using the domain names to divert Internet traffic by trading on consumer confusion with AT&Tís world famous mark. Internet users who type "worldnetatt.com", "worldnettattnet.com" or "wwwworldnetatt.net" in an attempt to access AT&Tís Internet Service, or looking to contact an individual with an AT&T Worldnet account, will undoubtedly believe that they have arrived at a domain operated by AT&T. Moreover they are diverted to websites containing an internet search engine, as well links to several other web pages such as advertisements for providers spam, radio stations, web hosting, and even a service provided by a "prestigious Delaware corporation".

This bad faith use tarnishes and dilutes Complainantís well-known marks by confusing customers and potential ones.

With its behavior, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations. Moreover, the contact information changed from the State of Florida to Poland after receiving the warning letter, which clearly establishes the Respondentís bad faith.

Complainant requests the Panel to transfer the disputed domain names to it.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following three elements:

A) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

B) the respondent has no rights or legitimate interests in respect of the domain name; and

C) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The present dispute pertains to domain names <worldnetattnet.com>, <worldnetattnet.net> and <wwwworldnetatt.net>.

The Complainant is the registered owner of the trademarks "AT&T" and "AT&T WORLDNET" in U.S.A. and other countries, that are distinctive and world well known trademarks. The Complainant has been using the trademark "AT&T WORLDNET" since August 1995. The trademark is included in its entirety into the domain names under dispute. An exhaustive history of previous cases states that the incorporation in a domain name of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant registered trademark, nor does changes in the orders of the terms or the addition of other terms or suffices in the domain name affects such statement (Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095, Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101, Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 Ė moreover the Complainant cites several prior decisions in support of its contention that such behavior demonstrates confusing similarity i.e. AT&T Corp., v. Damian Macafee, WIPO Case No. D2001-1159, AT&T Corp., v. All Time Talk Cellular and All Over Land, WIPO Case No. D2002-0741). The circumstance that in the domain names under dispute the word "WORLDNET" is positioned before the word "ATT" and also that the ampersand "&" is missing is irrelevant. In particular the ampersand is of necessity omitted, since it is not a permissible integer for use in a domain name.

The elaborations made by the Respondent do not make the domain names in any way different from the trademarks of the Complainant. An Internet user or consumer viewing the disputed domain names is likely to confuse them with Complainantís marks.

There is no doubt that the domain names <worldnetattnet.com>, <worldnetattnet.net> and <wwwworldnetatt.net> are confusingly similar to the trademarks of the Complainant. Therefore the Panel finds that Complainant has satisfied the first element in demonstrating abusive domain name registration and use.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this case. There is no prima facie indication of any rights or legitimate interests on the part of the Respondent in the domain names.

Moreover, "AT&T" is the registered trademark of the Complainant and the Complainant has used "AT&T WORLDNET" in commerce since at least August 1995, and has registered it as a trademark in United States since August 1997 (No. 2086348) and also in other countries.

Further, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademarks or service marks or to apply for or to use the domain names incorporating the said words. Nobody may use the words "AT&T", "ATT", and "AT&T WORLDNET" unless licensed or permitted to by the Complainant.

The Respondentís domain names, incorporating the Complainantís trademarks, are used simply to divert unsuspecting traffic to other commercial sites.

Under these circumstances, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the domain names, and therefore it has been satisfied by the Complainant the second element in demonstrating abusive domain name registration and use.

C. Registered and Used in Bad Faith

"AT&T", and "AT&T WORLDNET" trade marks unquestionably are well known international marks and, in the opinion of the Panel, the Respondent was clearly aware thereof, also because the Complainant advertises its products and services in Poland.

The domain names are used intentionally by the Respondent to attract internet users and divert them to websites containing an internet search engine, as well links to several other web pages such as an advertisement for spam providers, a radio station, web hosting, and even a service that sets up "prestigious Delaware corporations".

The Panel is of the opinion that the Respondent has registered the disputed domain names with the intent to benefit from the reputation of the famous trademarks contained in its domain names (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002, Nokia Corporation v. Nick Holmes t/a Etype Media, WIPO Case No. D2002-0001, Nokia Corporation v. David Wills, WIPO Case No. DWS2001-0004, Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413). Moreover the Complainant cites several prior decisions in support of its contention that such behavior demonstrates bad faith i.e. AT&T Corp., v. Peter Carrington/Party Night Inc, WIPO Case No. D2002-0931, and therefore this Panel believes that the Complainant has satisfied the third element in demonstrating abusive domain name registration and use.

 

7. Decision

In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel finds that the Complainant has met its burden of proof; in fact the domain names <worldnetattnet.com>, <worldnetattnet.net> and <wwwworldnetatt.net> are confusingly similar to trademarks owned by the Complainant, the Respondent lacks a legitimate interest in those domain names and has registered and used the domain names in bad faith. Accordingly, the Panel grants Complainantís request that the domain names <worldnetattnet.com>, <worldnetattnet.net> and <wwwworldnetatt.net> be transferred to the Complainant.

 


 

Nicoletta Colombo
Sole Panelist

Dated: August 15, 2003