WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp v. rnetworld
Case No. D2006-0569
1. The Parties
The Complainant is AT&T Corp., San Antonio, Texas, United States of America, represented by Sidley & Austin, United States of America.
The Respondent is rnetworld, Mark Dyer, Palermo, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <att-yahoo.com> (the “Domain Name”) is registered with Melbourne IT Ltd, trading as Internet Names Worldwide (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2006. On May 8, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2006 the Registrar 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 and technical contacts. 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 May 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for a Response was June 1, 2006. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on June 2, 2006.
On June 2, 2006, Mark Dyer, who is listed by the Registrar as the administrative contact for the Respondent, sent an email to the Center claiming, “this is a lie we did respond.” The Center informed Mr. Dyer by email on June 6, 2006 that it had received no response. Mr. Dyer replied by email later that day, stating “THE RESPONSE WAS MADE BY ARE [sic] MEMBER firstname.lastname@example.org this was on June 1.” The Center sent Mr. Dyer an email on June 7, 2006 repeating that it had “no trace of any correspondence” from the Respondent and suggesting that Mr. Dyer forward the email purportedly sent by “email@example.com” so that it could be delivered to the Panel for consideration. The Center received no further communications from Mr. Dyer or from any other person on behalf of the Respondent.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 13, 2006. 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 Complainant AT&T Corp. is a subsidiary of AT&T Inc., the largest telecommunications company in the United States and a leading global provider of telecommunications services. According to press releases from the United States Department of Justice, the Federal Communications Commission, and the companies involved, the former AT&T Corp., a publicly traded company, was acquired in November 2005 by US telecommunications provider SBC Communications Inc. SBC promptly changed its name to “AT&T Inc.” Its subsidiary corporation AT&T Corp., the Complainant in this proceeding, continues to own and use the trademarks and service marks at issue here.
The Complainant and its predecessors in interest (originally American Telephone and Telegraph Company) have used AT&T as a trademark and service mark since the 1880s. The Complainant holds several AT&T word marks registered in 1983 and 1984 by the United States Patent and Trademark Office (USPTO), as well as several registered design marks incorporating “AT&T” or “ATT.” In addition, the Complainant holds several USPTO registered marks combining “ATT” (without the ampersand) and other characters, such as ATT.COM (registered in 2002), ATT.NET (registered in 1998) and 1 800 CALL ATT (registered in 1995). The Complainant also holds trademark registrations in many other countries, but the United States registrations are of particular relevance here, since the Respondent is located in the United States. The Complainant has also registered several domain names incorporating “ATT,” including “www.att.com” and “www.att.net.”
The Domain Name registration data for Respondent rnetworld shows the same California address given for Mark Dyer, the administrative contact for the Domain Name who corresponded with the Center as described above. The Panel notes that “www.rnetworld.com” resolves to a website advertising “domain names for sale,” as well as offering “domain name appraisal,” “investments,” and other services. Numerous domain names are listed for sale on the rnetworld website, including many that appear to incorporate trademarks such as CHEVY, TOYOTA, DODGE, HARLEY DAVIDSON, PLAYBOY, and SEATTLE MARINERS. The website does not describe rnetworld itself, but it links to a website at “www.rcopyrights.com,” which displays contact information for rnetworld identical to that shown in the Domain Name registration, adding a telephone number and at least two email addresses in the domain name <sbcglobal.net>.
The Respondent registered the Domain Name on February 17, 2006. The Domain Name currently resolves to a website that is headed, “This site is under construction,” with “Powered by SBC Yahoo! Web Hosting” at the bottom of the page. The page appears to be a “parking site,” filled not with information about the Respondent or its offerings but rather with over one hundred links to pages representing different categories of business that each contain numerous links to websites operated by third parties offering various commercial goods and services. Some of these are in direct competition with the Complainant and its parent corporation, such as several offerings found under the “Cell Phones” and “Web Design” categories.
It is undisputed that on February 18, 2006, the day after the Respondent registered the Domain Name, the Domain Name was offered for sale on the eBay online auction website by “cindyrpalermo” in “Palermo, CA” for a “starting bid” of $99.
The Complainant furnished a printout of the eBay auction listing, and the Respondent has not contested its accuracy. The “description” of the Domain Name offered for sale read as follows:
“at&t and sbc merged and pretty soon this domain name of www.att-yahoo.com will be of great value”
“my investor group has more powerful domains but not like this one it is a one of a kind try it in the search window”
“once you add this to some search engines it can become very profitable”
“need help with site email me thank you and good luck.”
The Complainant discovered the eBay listing and promptly informed eBay that the Domain Name infringed the Complainant’s trademarks. This correspondence resulted in eBay removing the auction listing.
On February 22, 2006, the Complainant sent the Respondent’s administrative contact, Mark Dyer, a letter asserting that the Domain Name infringed the Complainant’s trademarks and asking the Respondent to assign the Domain Name to the Complainant. The Respondent did not reply to this letter.
5. Parties’ Contentions
The Complainant asserts its longstanding rights in numerous AT&T and ATT trademarks and service marks, many of which are registered in the United States and in other countries. The Complainant states that the Domain Name is confusingly similar to these marks and that the Respondent has no permission from the Complainant to use the marks. The Complainant concludes that the Respondent has no rights or legitimate interests in registering and using a Domain Name similar to these marks and that it has done so in bad faith, in an effort to profit from selling the Domain Name. The Complainant also alleges bad faith in the Respondent’s depriving the Complainant of the use of the Domain Name and opportunistically creating a likelihood of confusion with the Complainant.
The Complainant points out that the Domain Name, incorporating both the ATT mark and an apparent reference to the Internet portal and service provider Yahoo! Inc., is especially likely to confuse Internet users. The Complainant’s parent company formerly known as SBC does in fact offer a high-speed DSL Internet access service jointly with Yahoo!, formerly labeled “SBC Yahoo!” and now sold under the name “AT&T Yahoo! High Speed Internet.” Indeed, the website to which the Domain Name resolves is labeled “Powered by SBC Yahoo! Web Hosting.” Thus, the Complainant finds it probable that the Respondent was improperly attempting to exploit the fame of the two companies and their joint venture, especially given the reference to the AT&T / SBC merger in the eBay auction listing the day after the Respondent registered the Domain Name.
The Respondent did not submit a Response. The June 2, 2006 email to the Center from the Respondent’s administrative contact, Mark Dyer, mentioned above, reads as follows in its entirety:
“this is a lie we did respond this also will be held for proff on acts of nazzie like conntrols we want to get a real lawyer and i am writing a book on paper back about of this with pictures of resaults
HOW MUCH MONEY DID ATT GIVE YOU TO MAKE LIES AND TRICKS”
As noted above, the Respondent did not submit a Response thereafter despite encouragement in two subsequent emails from the Center.
The June 2, 2006 email from Mr. Dyer is vague, offensive, and largely incoherent. It makes no specific reply to any of the Complainant’s allegations or arguments, and it advances no explanation for the Respondent’s registration and use of the Domain Name. Therefore, the Panel does not deem this email a belated Response to the Complaint.
6. Discussion and Findings
Under Paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Names has been registered and is being used in bad faith.
As in other cases where a respondent fails to reply substantively to the Complaint, the Panel must still satisfy itself that the Complainant has met its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts supported by documents and statements must provide a sufficient prima facie basis for finding confusing similarity with the Complainant’s mark and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Name and has registered and used it in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
A. Identical or Confusingly Similar
The Complainant indisputably holds numerous United States trademark registrations of long standing for AT&T and for AT&T or ATT combined with other characters, as well as the identical or similar marks registered in many other countries. It is uncontested that these are famous and well-established marks, a proposition supported by media articles furnished by the Complainant placing AT&T, for example, among “America’s most admired companies.” As the Panel observed in AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088, “AT&T has been ranked as one of the most valuable international brands in the world.” The AT&T mark and marks incorporating the ATT mark have been the subject of more than 40 UDRP decisions ordering the transfer of domain names to the Complainant or its predecessor in interest.
Since the ampersand cannot be used in domain names, it is commonly omitted or replaced with “and.” See AT&T Corp. v. Sure Source, WIPO Case No. D2002-1179 (“On the Internet is it not possible to use the symbol ‘&’ in a domain name,” ordering transfer of <atandt-store.com>). Thus, “ATT” appearing without the ampersand in a domain name is confusingly similar to the AT&T mark, and the combination of “ATT” with other words (particularly words relevant to the Complainant’s business) is also confusingly similar to the AT&T mark as well as to the Complainant’s marks incorporating “ATT” without the ampersand.
Other UDRP Panels have concluded that domain names combining “ATT” and other words or characters are confusingly similar to both the AT&T and ATT marks. See, e.g., AT&T Corp. v. Tianfu Guo, WIPO Case No. D2004-0294 (<attone.com>); AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634 (<attphonecard.net>); AT&T Corp. v. Darren Swain, WIPO Case No. D2003-0633 (<atttelephone.com> and <attwirelessretailer.com>); AT&T Corp. v. Yong Li, WIPO Case No. D2002-0960 (<attbroad.com>); AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (<atttwireless.com>); AT&T Corp. v. Caimmi Rappresentanze & Marketing Italia, WIPO Case No. D2001-0541 (<attbusiness.com> and <attbusiness.org>); AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 (<attweb.com>).
Here, the combination of “att” in the Domain Name (followed by a hyphen that serves only to highlight “att” as a separate name) with “yahoo” simply increases the likelihood of confusion. This is because the Complainant and Yahoo! Inc. actually offer a co-branded DSL service currently advertised under the name “AT&T Yahoo! High Speed Internet” (see “www.sbc.com/gen/general?pid=6431”). The UDRP Panel in AT&T Corp. v. Raymond Gilmartin, WIPO Case No. D2002-0237, ordered the transfer of <attcomcast.com>, which similarly linked the Complainant’s mark with the name of an actual or prospective business partner.
The Panel holds, accordingly, that the Domain Name is confusingly similar to the Complainant’s AT&T mark and its marks combining “ATT” with other characters.
B. Rights or Legitimate Interests
The Complainant asserts that it has never authorized the Respondent to use the AT&T and ATT marks in the Domain Name, and the Respondent does not state otherwise. Despite communications with the Center and encouragement to file a Response, the Respondent has not, in fact, offered any reason for registering the Domain Name nor refuted the Complainant’s assertions that the Respondent does not do business under the “ATT” name or make legitimate noncommercial use of the name.
The Panel endorses the reasoning of the UDRP panel in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455:
“Once a complainant has made a prima facie case, a panel may infer from a respondent’s failure to contest a complainant’s allegations that the respondent has no rights or legitimate interests in the domain name at issue.
Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) – especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light (See e.g.: De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005 <deagostini.tv>). Hence, Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the mark. After Complainant has met its initial burden of proof, if Respondent fails to submit a response Complainant will be deemed to have satisfied Paragraph 4 (a) ii of the Policy.”
The Policy, paragraph 4(c), furnishes a non-exhaustive list of instances of rights or legitimate interests in a domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Nothing in the record of this proceeding (or apparent in a visit to the Respondent’s websites) indicates that any of these circumstances apply here. The website to which the Domain Name resolves is used to advertise hundreds of third-party commercial offerings. The Respondent’s own websites concern entirely different businesses, none of them operated under a name, or offering a product, incorporating the name “ATT.”
The Panel concludes that the Complainant has made a prima facie case under the second element of its Complaint and that the Respondent has failed to come forward with any countervailing evidence of rights or legitimate interests to the Domain Name. Thus, the Panel finds that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds persuasive evidence that the Respondent registered and held the Domain Name for the purpose of reselling it at a profit. This is a business activity in which it appears the Respondent is regularly engaged, as reflected on the “www.rnetworld.com” website.
The conclusion that the Respondent intended from the outset to resell this Domain Name for a profit is revealed by the posting of the Domain Name for sale on the eBay online auction website on the day after the Respondent registered the Domain Name. The Respondent is not named as the seller on the eBay posting, but the Domain Name could not be transferred to another without the approval of the Respondent as the registrant. Thus, it must be assumed that the auction listing was made by someone acting on behalf of, or with permission from, the Respondent. The Panel notes that the eBay listing names the seller as “cindyrpalermo” of Palermo, California. The Respondent and its administrative contact, Mark Dyer, are also located in Palermo, California, and a website linked to the Respondent’s website at “www.rnetworld.com” refers to Mark Dyer’s friend and investor “Cindy.”
The “starting bid” of $99 stated on the eBay auction listing appears to exceed the Respondent’s out-of-pocket costs for a two-year registration (which the Registrar advertises on its website for USD $70), and the Respondent obviously hoped to sell the Domain Name for more than this “starting bid.” In any event, despite being served with the Complaint and corresponding with the Center about the proceeding, the Respondent has not denied offering the Domain Name for sale on eBay or registering the Domain Name for the purpose of selling it at a profit.
Evidence of an intent to entice the Complainant or a competitor to purchase the Domain Name at a price in excess of the Respondent’s out-of-pocket costs would implicate Policy paragraph 4(b)(i), as claimed by the Complainant. That is not clear in this case, however, since the Respondent did not directly approach the Complainant or one of its competitors, but rather placed the Domain Name for sale to the general public on the world’s most popular online auction website. It might well be inferred that auctioning the Domain Name would be an effective strategy for attracting the interest of the Complainant or one of its competitors, but without further evidence of an attempt to sell the Domain Name to the Complainant or a competitor, the Panel does not find that Policy, paragraph 4(b)(i) applies.
Nevertheless, the instances of bad faith listed in Policy, paragraph 4(b) are expressly without limitation, and the Panel concludes that the Respondent’s conduct in attempting to sell the Domain Name – confusingly similar to the Complainant’s famous marks (and probably those of Yahoo! Inc. as well) – through an auction website is indicative of bad faith. See Reckitt Benckiser AG v. Nazim Oren, WIPO Case No. D2002-0286 (bad faith in attempting to sell domain names through the domain name auction site <afternic.com> despite knowledge of the complainant’s marks). The description in the eBay listing indicates the Respondent’s actual knowledge of the Complainant’s marks and business:
“at&t and sbc merged and pretty soon this domain name of www.att-yahoo.com will be of great value”.
It is also clear that the Respondent knew of the Yahoo! connection with the Complainant’s new parent corporation, SBC (renamed AT&T Inc. after the merger), since the website to which the Domain Name resolves indicates on its home page that it is “Powered by SBC Yahoo! Web Hosting.”
Moreover, the Panel finds that the circumstances here are congruent with those described in Policy, paragraph 4(b)(iv) – using a domain name confusingly similar to another party’s mark in order to divert Internet traffic for the Respondent’s commercial gain. This is already occurring, to the extent that the Respondent is compensated for the numerous commercial advertising links on the “parking site” to which the Domain Name currently resolves. And the description of the Domain Name on the eBay auction listing suggests that the likelihood of diverting traffic with famous marks is precisely what the Respondent viewed as making the Domain Name peculiarly valuable:
“my investor group has more powerful domains but not like this one it is a one of a kind try it in the search window”
“once you add this to some search engines it can become very profitable”.
It is hard to imagine a good-faith reason for the Respondent’s registration of the Domain Name and attempt to resell it by auction, given the fame of the marks, the Respondent’s actual knowledge of the Complainant, and the Respondent’s explicit recognition of the potential for diverting Internet traffic by creating a likelihood of confusion. The Respondent has certainly not offered such a reason to rebut the inferences drawn by the Complainant and the Panel.
Finally, given the circumstances of this case, the Respondent’s bad faith is also evident in its failure to respond to the Complainant’s letter claiming trademark infringement, as well as its failure to respond substantively to similar allegations in this proceeding. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
The Panel concludes, therefore, that the registration and use of the Domain Name was in bad faith for purposes of Policy, paragraph 4(b).
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, <att-yahoo.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: June 27, 2006