[Indexed as: AT&T Corp. v. WorldclassMedia.com]
[Indexed as: ATTMEXICO.com
and ATT-LATINAMERICA.com]
Case No: Case No. D2000-0553
Commenced: June 13, 2000
Judgment: July 28, 2000
Presiding Panelist: Philip N. Argy
Domain name - Domain name dispute resolution policy - U.S. Trademark - Confusingly similar - Ampersand (&) - Letters fundamental to Complainant’s trademark - Geographic qualifier.
Complainant was the registrant of United States trademark AT&T and variants. The trademark is also registered in other countries including Mexico and Latin American countries. Respondent provides free travel tips and information regarding Latin America on the web site at ATT-LATINAMERICA.COM. The Respondent asserts the website for ATTMEXICO.COM is still being designed and developed but does not indicate the kind of activity to which it will relate.
Held, Names Transferred to Complainant.
ATT is confusingly similar to Complainant’s trademark because: (1) the letters ATT are fundamental to Complainants trademark, (2) an ampersand is not a valid character in a domain name and its absence is not sufficient to prevent the domain names in dispute from being confusingly similar, and, (3) the Complainant is a well known provider of telecommunications services with trademark registrations in Mexico and Latin American countries. Each of the domain names in dispute comprises a portion identical to a mark (ATT) in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s mark ATT or Complainant’s Marks.
Respondent has not shown that it has rights or legitimate interests in the domain names. Respondent has not provided any evidence of legitimate noncommercial or fair use of the disputed domain names but rather has merely asserted its intention. Nor has Respondent suggested that it has been commonly known by either of the disputed domain names.
Respondent offered to sell the
domain name ATT-LATINAMERICA.COM, and therefore demonstrates bad faith
registration and use of the name. Since Respondent has a pattern
of selling domain names for commercial gain, the Panel concluded that ATTMEXICO.COM
was also registered in bad faith.
While Complainant’s evidence
of bad faith registration and use of attmexico.com may not have been sufficient
to obtain relief the absence of a Response, Respondent has had the opportunity
to show that its registration and use of the mark is bona fides but has
not provided any such evidence and has, as noted above, actually disavowed
any intention to use that domain name itself.
Policies Referred to
Uniform Domain Name Dispute Resolution
Policy, adopted August 26, 1999
Cases Referred to
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Panel Decisions Referred to
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Argy, Panelist: -
1. The Parties
1.1 The Complainant is AT&T
Corp., a company incorporated under the laws of New York, United States
of America.
1.2 The Respondent is WorldclassMedia.com,
of Postfach 458, Graz, Steiermark 8011, Austria.
2. The Domain Names and Registrar
The domain names upon which this
complaint is based are attmexico.com and att-latinamerica.com. The registrar
of the domain name as at the date of the Complaint is Network Solutions
Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant
to the Uniform Domain Name Dispute Resolution Policy approved by the Internet
Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999
(the "Policy") in accordance with the Rules for Uniform Domain Name Dispute
Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules")
and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by
the WIPO Arbitration and Mediation Center (the "Centre") by email on June
5, 2000 and in hard copy on June 8, 2000. The Complaint states that the
fees were paid by check payable to WIPO. The Complaint stated that a copy
of the Complaint was sent to the Respondent by post and by email, and that
a copy had been sent to Network Solutions Inc. by courier and email.
3.3 Upon receipt of the email copy
of the Complaint, the Centre sent the Complainant an "Acknowledgment of
Receipt of Complaint" on June 8, 2000 by email, with a copy being sent
to the Respondent by email.
3.4 The Centre sent a Request for
Registrar Verification to NSI on June 8, 2000 by email. NSI responded to
the Centre’s request by email on June 10, verifying (1) Network Solutions
was in receipt of the Complaint, (2) that NSI was the Registrar for the
domain names in dispute, (3) that the Respondent was the current registrant
of the domain names in dispute, (4) the Respondent’s contact details, (5)
that Network Solutions’ 5.0 Service Agreement was in effect in relation
to the domain names, and (6) that attmexico.com and att-latinamerica.com
had ‘hold’ status.
3.5 The Centre sent the Notification
of Complaint and Commencement of Administrative Proceeding on June 13,
2000 to the Respondent by post/courier, facsimile and email, and to the
Complainant by email.
3.6 The Centre received the Response
from the Respondent by email on July 2, 2000 and hardcopy on July 17, 2000.
The Response did not request that the dispute be dealt with by a three
member panel. The Centre sent an Acknowledgment of Receipt (Response) to
both the Respondent and Complainant on July 5, 2000 by email.
3.7 The Centre received a supplemental
filing, in the form of an email dated July 12, 2000 from the Complainant,
which was also sent to the Respondent, attaching a request for consent
to file a supplemental memorandum and the proposed supplemental memorandum.
3.8 The Centre sent a Notification
of Appointment of Administrative Panel and Projected Decision Date to the
Respondent and the Complainant on July 17, 2000 via email. A copy was also
sent to the Panel on the same date by email.
3.9 The Centre dispatched a Transmission
of Case File to the Panel, to the Respondent and to the Complainant on
July 17, 2000. The Panel did not receive this material until 21 July, 2000.
3.10 All other procedural requirements
appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted
as fact by the Complainant and remains uncontested.
The Complainant is a provider of
telecommunications goods and services in the United States and other countries.
4.2 The Complainant’s Trade and
Service Marks
The Complainant has trade mark and
service mark registrations for AT&T in the United States, details of
which are contained in Annex 5 to the Complaint. This mark (the "Principal
Mark") is registered in four classes including telecommunications services.
The evidence shows that the Principal Mark was first registered on September
25, 1984 and remains current.
The Principal Mark is also registered
in Austria, the European Community, Mexico and other countries throughout
Latin America, details of which are contained in Annex 12 to the Complaint.
The Complainant also has a service
mark registration for AT&T WIRELESS SERVICES in the United States,
details of which are contained in Annex 8 to the Complaint. This service
mark (the "Wireless Services Mark") is registered in international class
38. The evidence shows the Wireless Services Mark was first registered
on September 23, 1997 and remains current.
Further, the Complainant has a service
mark registration for 1-800 CALL ATT in the United States, details of which
are contained in Annex 8 to the Complaint. This service mark (the "Call
ATT Mark") is registered in international class 38. The evidence shows
the Call ATT Mark was first registered on May 9, 2000 and remains current.
The Complainant’s above trade and
service marks will be described as the "Complainant’s Marks".
4.3. Activities of the Respondent
The Respondent asserts as fact in
the Response that it provides free travel tips and information for travellers
to Latin American countries, at least in respect of the att-latinamerica.com
domain name. The Response asserts that the website for attmexico.com is
still being designed and developed but does not indicate the kind of activity
to which it will relate.
5. The Complainant’s Contentions
in the Complaint
5.1 The Complaint asserts that each
of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element
described in paragraph 4(a)(i) of the Policy, the Complaint asserts that
the domain names in dispute are confusingly similar to the Complainant’s
Marks.
5.3 In reference to the element
in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent
has no legitimate interest in the domain names. In particular, the Complaint
submits that the Respondent (in regard to paragraph 4(c) of the Policy):
- Is not Complainant’s licensee
in respect of the Complainant’s Marks;
- Does not own any registered or
common law marks containing the terms "AT&T" or "ATT";
- Is not commonly known by either
disputed domain name; and
- Is not making legitimate non-commercial
or fair use of either disputed domain names without intent for commercial
gain.
5.4 In reference to the requirement
of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent
has registered and is using the disputed domain names in bad faith, in
that they were registered primarily for the purpose of selling or otherwise
transferring it to the Complainant or to a third party, for valuable consideration
in excess of the out-of-pocket expenses related directly to them (as referred
to in paragraph 4(b)(i) of the Policy). Further, the Complainant asserts
that the Respondent has registered the disputed domain names in order to
prevent the Complainant from reflecting its marks in a corresponding domain
name and has engaged in a pattern of such conduct (as referred to in paragraph
4(b)(ii) of the Policy).
5.5 In support of this allegation
the Complaint refers to the fact that on January 19, 2000 <att-latinamerica.com>
resolved to a site stating "This Domain Name is FOR SALE!", as reflected
in Annex 2 to the Complaint. Further, the Complainant refers to the fact
that, as of May 22, 2000, <attmexico.com> resolved to a place-holder
"under construction" site, as reflected in Annex 1.
The Complainant also asserts that
many domain names registered by the Respondent (or closely associated entity)
are for sale, indicating an intent to sell the disputed domain names as
part of a larger pattern.
6. The Respondent’s Contentions
in the Response
6.1 The Response refutes the allegation
in the Complaint that the domain names in dispute are confusingly similar
to the Complainant’s Marks.
6.2 In relation to the allegation
in the Complaint that the Respondent has no legitimate interest in the
domain names in dispute, the Response submits that the Respondent is using
the disputed domain names in a legitimate non-commercial and fair manner.
The Response states that:
"On the website for <att-latinamerica.com>
we are providing free travel tips and information for travellers to latin
american countries….
The fact that the website for <attmexico.com>
currently resolves to a place-holder "Este sitio esta bajo construccion.
Favor de regresar mas tarde." by Agencia de Transacciones Tecnicas de Mexico
does not imply that the holder of the domain name does not have a legitimate
interest or right to the domain name. Our client is still in the process
of designing and developing the website.."
6.3 In answer to the allegation
in the Complaint that the domain names in dispute were registered and are
being used in bad faith, the Response submits that the domain names could
not be said to have been acquired by the Respondent for any of the purposes
described in paragraph 4(b) of the Policy. In support of this contention,
the Response cites the following:
(i) Both domain names were registered
on March 3, 2000 and there is no evidence to suggest they were registered
for the purpose of transferring them to the Complainant or one its competitors
for valuable consideration far in excess of the Respondent’s out of pocket
expenses directly related to the domain names;
(ii) the print-out of the website
for <att-latinamerica.com> in Annex 2 of the Complaint is dated January
19, 2000 and not associated with the current registrant or registration
dated March 3, 2000;
(iii) the disputed domain names
were not registered in order to prevent Complainant from reflecting its
marks in a corresponding domain name. Complainant has already reflected
its marks in several domain names, including <attlatinamerica.com>;
and
(iv) other domain names offered
for sale by Respondent or its clients are only for sale because of a change
in business focus. There is no evidence that Respondent has engaged in
a pattern of preventing trademark owners from reflecting their marks in
domain names.
7. Complainant’s request to file
supplemental memorandum and supplemental memorandum in support of Complaint
of July 12, 2000
7.1 The Complainant submitted to
the Panel a request to file supplemental memorandum in support of Complaint.
Complainant sought to justify the filing of a supplemental memorandum on
the basis of "dubious new facts and legal arguments" asserted in the Response
and because "new, pertinent facts" had come to light since the filing of
the Complaint. Complainant’s supplemental points relate to the relationship
between Respondent and Worldclass Media Inc and the parties’ respective
rights to the marks AT&T and ATT.
7.2 Respondent did not make any
submissions in respect of Complainant’s request to file the supplemental
memorandum.
7.3 In the Panel’s view, the points
raised in the supplemental memorandum are sufficiently articulated in the
Complaint and accordingly the Panel refuses consent to file the supplemental
memorandum and will have no regard to it.
8. Discussion and Panel Findings
8.1 This section is structured by
reference to the elements required by paragraph 4(a) of the Policy. In
order to be successful, the Complainant has the burden of proving, on the
balance of probabilities, that all three elements are present.
8.2 Domain Names identical or confusingly
similar to Complainant’s Marks
The domain names in dispute are
attmexico.com and att-latinamerica.com. The Marks owned by the Complainant
are AT&T, AT&T WIRELESS SERVICES and 1800 CALL ATT. The Panel has
come to the view that the "att" portion of the domain names in dispute
is confusingly similar to a trademark in which the Complainant has an interest
for the following reasons:
(i) the letters ATT are a fundamental
feature of the Complainant’s Marks and the Complainant has proven that
it uses "ATT" as a synonym for "AT & T" and, although somewhat curiously
the Complainant did not explicitly assert that Complainant had common law
rights in "ATT" as an unregistered mark, the evidence adduced by Complainant
is certainly to that effect. The Panel also notes the Complainant’s registrations
of att.com, attlatinamerica.com and attla.com.
(ii) an ampersand is not a valid
character in a domain name and its absence is not sufficient to prevent
the domain names in dispute from being confusingly similar to the Complainant’s
Marks; and
(iii) the Complainant is a well
known provider of telecommunications services with trademark registrations
in Mexico and Latin American countries.
The Panel is of the view that ATT
is a trade mark of the Complainant and that the first three letters of
each of the domain names in dispute is identical to that mark. The balance
of the characters in the domain names in dispute are geographical descriptors.
In the Panel’s view, where a domain name is composed of a trade mark juxtaposed
with a place name, a reader will naturally split them in that way, and
the absence of a space, or the insertion of a dash, underscore, or hyphen
does not prevent that approach. Accordingly, the Panel is of the view that
each of the domain names in dispute comprises a portion identical to a
mark (ATT) in which the Complainant has rights, together with a portion
comprising a geographic qualifier, which is insufficient to prevent the
composite domain name from being confusingly similar to Complainant’s mark
ATT or Complainant’s Marks.
Paragraph 4(a)(i) of the Policy
is plainly satisfied in the view of the Panel.
8.3 The Respondent has no rights
or legitimate interests in the Domain Names
The Respondent has not provided
any evidence of legitimate noncommercial or fair use of the disputed domain
names but rather has merely asserted its intention. And in respect of attmexico.com
Respondent actually disavows its own use, referring to a client rather
than itself preparing to use the domain name. Respondent has not tried
to assert any use of the domain names or names corresponding to the domain
names in connection with a bona fide offering of goods and services before
notification of the dispute (paragraph 4(c)(i) of the Policy). Nor has
the Respondent suggested that it has been commonly known by either of the
disputed domain names (paragraph 4(c)(ii) of the Policy). Accordingly,
the Panel accepts the Complainant’s contentions in respect of the absence
of Respondent’s rights or legitimate in the disputed domain names.
The Panel finds that the Complainant
has proven paragraph 4(a)(ii) of the Policy.
8.4 The Domain Names have been registered
and are being used in bad faith
The Panel notes that paragraph 4(a)(iii)
of the Policy requires both registration in bad faith AND use in bad faith.
Paragraph 4(b) of the Policy provides:
" . . .the following circumstances,
in particular but without limitation, if found by the Panel to be present,
shall be evidence of the registration and use of the domain name in bad
faith: . ." (emphasis added).
In some cases it has been found
that it is unnecessary to consider the two limbs of this provision separately,
as the "use" requirement has been found not to require positive action,
inaction being within the concept. However, although bad faith use can
be found to follow bad faith registration without more, it is still necessary
for the Complainant to prove registration in bad faith.
The Respondent’s contention that
"the domain names were available for registration by complainant or anyone
else prior to March 3, 2000" is not supported by the print-out dated January
19, 2000 at Annex 2 to the Complaint which describes the domain name att-latinamerica.com
as "FOR SALE!". The copyright notice at this site refers to Worldclass
Media, Inc. strongly suggesting that the domain name was registered by
that entity or one closely related to it. The doubt is resolved by the
letter of April 10, 2000 from Robert Heine to Complainant at Annex 16 to
the Complaint. The letter does not seek to diassociate Respondent from
Worldclass Media, Inc. and indeed implicitly confirms the relationship.
The Panel notes and accepts the submission in notes 3 and 4 on page 9 of
the Complaint regarding the relationship between the Respondent, Worldclass
Media, Inc. and Trydex. Accordingly, the Panel finds that the domain name
att-latinamerica.com was registered in bad faith.
Further, the alleged pattern of
offering domain names for sale has not been adequately refuted by the Respondent.
Sale of domain names due to a "change in business focus" does not explain
the offer of domain names such as MISSMALAYSIA.COM for sale. While the
Complainant’s evidence of bad faith registration and use of attmexico.com
may not have been sufficient to obtain relief in the absence of a Response,
the Respondent has had the opportunity to show that its registration and
use of the mark is bona fide but has not provided any such evidence and
has, as noted above, actually disavowed any intention to use that domain
name itself. In the absence of such evidence, and given the pattern of
selling domain names for commercial gain, the Panel concludes that attmexico.com
was registered in bad faith.
The Panel is of the view that the
Complainant has proved paragraph 4(a)(iii) of the Policy.
9. Decision
Having decided that the Complainant
proved all the requirements of paragraph 4(a) of the Policy in respect
of each of the domain names in dispute, the Panel upholds the Complaint
and orders NSI to transfer to the Complainant the domain names attmexico.com
and att-latinamerica.com.
Domain Name Transferred