WIPO Domain Name Decision D2000-0249 for att2000.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Tala Alamuddin

Case No. D2000-0249

 

1. The Parties

The Complainant is AT&T Corp., United States corporation operating under the laws of the State of New York.

The Respondent is Tala Alamuddin, a British citizen residing at 19 Goodwood Hill, Singapore 258913.

 

2. The Domain Name and Registrar

The domain name at issue is . The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

 

3. Procedural History

The Complaint submitted by AT&T Inc. was received on April 6, 2000 (electronic version) and April 3, 2000 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On or about April 7, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:

(a) Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

(b) Confirm that the domain name at issue is registered with NSI.

(c) Confirm that the person identified as the Respondent is the current registrant of the domain name.

(d) Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in NSI�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

(e) Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

(f) Indicate the current status of the domain name.

By email dated April 7, 2000, NSI advised WIPO Center as follows:

(a) NSI had received a copy of the Complaint from the Complainant.

(b) NSI is the Registrar of the domain name registration .

(c) Tala Alamuddin is the current registrant of the said domain name. Relevant WHOIS information is as follows:

Registrant:Tala Alamuddin
4 Park Avenue, 17B
New York, NY 10016
USA

Administrative, Technical, Zone and Billing Contact:OZNIC.COM dom-tech@OZNIC.COM
PO Box 761
Sunbury, Victoria 3429, Australia
Ph: +613 9348 2441
Fax: +613 9348 1928

(d) NSI�s 4.0 Service Agreement is in effect.

(e) The domain name registration is in "Active" status.

The Registrar has adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate her agreement with NSI. The Respondent is accordingly bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on April 12, 2000, transmitted by post/courier, facsimile and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent at the addresses shown on the WHOIS database. A copy of the Complaint was also emailed to the Registrar and ICANN. The Respondent claimed that she did not receive the notification from WIPO Center. However, her attorney emailed WIPO Center on April 20, 2000 and was advised that a Response was to be filed by May 1, 2000.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.

On May 2, 2000, the Respondent, through her attorney in Long Beach, California, USA, filed a Response to the Complaint.

On May 4, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On May 4, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On May 5, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on May 15, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by May 19, 2000.

On May 8, 2000, the Panelist advised WIPO Center pursuant to Rule 12 that he required from the Complainant a Reply to the Response by May 10, 2000. This reply was received by the Panelist on May 10, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is engaged in the creation, provision, distribution, advertising and sale of a wide variety of telecommunications and related services and products, both within the United States and in other countries. The Complainant also provides Internet access, email and web hosting services.

The Complainant has provided telecommunications services for over a century under its name "AT&T Corp." or "AT&T". It owns various United States trademarks for "AT&T" and for other marks which use the words ATT, such as "1 800 Call ATT" for example. It has registered domain names, including , and . It has invested large sums and effort in advertising and promoting the AT&T trade name and its various marks which incorporate "AT&T" or "ATT".

The Respondent registered the domain name in November 1998 and thereafter maintained a web site located at the domain name which stated: "This URL is for sale. Please contact Tala Hamiyeh at 65-96780017 or email to tala@". In communications with the Complainant dated April 27, 2000, the Respondent�s then lawyer stated, inter alia: if the Complainant wanted the domain name, it would have to compensate the Respondent, otherwise "do your worst"; and Respondent was not in the habit of transferring her personal assets to large corporations for free, but would transfer the domain name "as part of an acceptable cash settlement".

 

5. Parties� Contentions

The Complainant submits that the domain name is confusingly similar to its world-famous mark. It cannot use the ampersand on a domain name and claims that the running together of a name which normally contains an ampersand is not unusual in a domain name. The fact there are no word breaks does not lessen the significance of individual words in a domain name.

The Complainant further submits: The expression "2000" suggests that the domain name identifies with the "latest" from AT&T. Bad faith is shown by the Respondent in her attempt to sell the name to the Complainant and in maintaining a general offer to sell on the website. The Respondent registered the domain name in bad faith in that she does not reside at the address listed in the registration agreement.

In her Response, the Respondent submits: That the Complainant has very limited rights in respect of ATT as distinct from AT&T. The Complainant has registered ATT as a mark in international class 021 for shoe brushes, glasses, mugs etc., which cannot be confused with telecommunications. The mark "ATT" is primarily owned by DT Industries Inc. and not by the Complainant. ATT is a "weak" mark which can easily be modified and rendered distinguishable by, say, generic numbers, e.g., 1 800 CALL ATT. AT&T is strong only in the United States.

The Respondent provided a declaration, apparently in a form used in Singapore. It was not witnessed by some official or a notary, which is usual in formal declarations in most jurisdictions. She stated that she chose the name ATT2000 because it represented in part her given name (Tala) and in part the new millennium.

She registered the domain name on November 3, 1998 under her maiden name of Tala Alamuddin. She had lived in New York since 1996 and then became engaged to be married. Her future husband was already living in Singapore when she registered the domain name. She was unsure of employment after she had moved to Singapore and planned to establish her own Internet business as a contingency plan. Having experience in advertising and marketing, she chose "a catchy domain name for my on-line business". In her choice of name, in addition to finding something catchy and easy to remember, she wanted to incorporate some features which would render the name readily identifiable to herself. According to her, ATT signifies T(ala). The figures 2000 were inspired by the upcoming millennium.

She did not acquire the name for the purposes of paragraph 4(b) of the Policy. She contacted suppliers and purchased cloth for a business which she claimed was evidence of demonstrable preparation to use the domain name in connection with the bona fide offering of goods and services. The business was to sell and promote Asian garments, curios and the like relating to millennium fashions. No evidence of purchase of cloth was provided.

When she moved to Singapore in April 1999, although she had allegedly purchased fabrics and established connections with local designers, she abandoned the venture when she secured full-time employment. It did not occur to her to amend her registration details to reflect her residence in another country.

She advertised the domain name for sale on the Internet in May or June 1999, but she did not offer it to AT&T. She had no idea that AT&T had any trademark rights. Nor did she ever imagine that she might attract traffic destined for AT&T.

The offer by her previous lawyer to sell the name "was made in a good faith attempt to settle a legitimate dispute".

The Respondent claims legitimate rights to the domain name at issue. She has neither misled nor attempted to mislead anyone, let alone divert customers or tarnish the trademarks of the Complainant.

In its Reply, counsel for the Complainant provided a detailed refutation of the Response which can be summarised as follows: is confusingly similar to AT&T because it is well-known that ampersands are not permitted for use in domain names and therefore a domain name registrant should not be able to replicate a famous mark in a domain name just because of the lack of an ampersand. Because telephone key pads also do not recognise an ampersand, the expression ATT is used in marks which indicate a toll-free telephone number. The Complainant owns numerous mark registrations and pending registrations using the expression ATT in categories other than Class 21. Many of the registrations and pending registrations are for Class 38, which includes the maintenance of a website. The United States District Court for the Northern District of Illinois held in AT&T Corp. v. Synet, Inc., (1977) WL 89228, that the public associates the mark ATT with AT&T. DT�s rights to the mark ATT for spare and automotive products have not been determined and are being opposed by the Complainant. United States case law prohibits a jus tertii defence and therefore prohibits the Respondent from asserting any rights of a third party. is confusingly similar to the Complainant�s family of AT&T and ATT marks. The Respondent�s contention that she is a British citizen living in Singapore is irrelevant. She registered the .com domain name with NSI in the USA. She did not register in the United Kingdom or Singapore. The Respondent has not shown that she has made demonstrable preparations to use the domain name in connection with the bona fide offering of goods and services. The Complainant cites Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case D2000-0003 in support. The Respondent�s claim that she is incorporating her own name, like the rest of her claim, defies credibility.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name.

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

In determining whether the domain name is confusingly similar to the Complainant�s mark, the Panel has regard to various tests in trademark law as to when a mark may not be registered where "the use of which would be likely to deceive or cause confusion �". (These words cited, or similar, are to be found in the trademark statutes in several jurisdictions). Out of many cases, the following principles relevant to the present situation emerge:

Where there is a worldwide association of ideas in connection with a particular name or figure, a mark in whatever category will not be allowed which incorporates that particular name or figure. See Radio Corporation Pty Ltd v Disney (1937), 57 CLR 448, where the High Court of Australia upheld a Registrar�s refusal of the marks "Mickey Mouse" and "Minnie Mouse" for radio receiving kits and sets.

All surrounding circumstances have to be taken into account, including the circumstances where the applicant� s mark is likely to be used, the relevant market and the character of those involved in the market. See Polaroid Corporation v Hannaford and Burton Ltd [1975] 1 NZLR 566 and Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50.

The word "deceive" implies the creation of an incorrect belief and "causing confusion" may go no further than mixing up or perplexing the minds of the purchasing public: New Zealand Breweries Ltd v Heineken [1964] NZLR 115. Where deception or confusion is alleged as to the source of the goods, "deceived" is equivalent to being misled into thinking that the goods bearing the applicant�s mark come from some other source and "confused" indicates being caused to wonder whether that may not be the case (Hi-Bred Corn case).

Although the marks must be compared as a whole in determining confusion, when each mark has a common feature, greater attention needs to be focused on the remaining parts of the marks: re Broadhead�s Application (1950), 67 RPC 209, 215.

Allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech (re Rysta�s Application (1943), 60 RPC 87, 188-9; Polaroid (supra) at 571).

The overall test is one of impression of confusion in the mind of the person making the decision: General Electric Co. v General Electric Co. Ltd [1972] 1 WLR 729, 738: [1973] RPC 297.

Where an application is to be rejected on the ground of confusion, the Court (or Panel) must be satisfied that there is a real danger of confusion (Berlei (UK) Ltd v Bali Brassiere Co Inc. [1969] 1 WLR 1306: [1969] RPC 472).

In the light of the above principles, the Panel concludes:

The name "AT&T" and "ATT" is well-known internationally as being associated with a very large telephone communications company in the USA. Persons who have had dealings with AT&T � which would be most persons in the United States and most visitors to that country � could be confused into thinking that was some millennium promotion by AT&T. Focusing on the expressions in marks where ATT is used and even when AT&T is used, confusion with another name using ATT plus the numerals 2000 is likely. The Panel�s overall impression � deciding it as a "jury question" is of a real danger of confusion. Accordingly, the Panel decides that the Respondent�s domain name is confusingly similar to the Complainant�s mark.

Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain name at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.

"(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."

The Panel finds no evidence that the Respondent, before receiving notice of the dispute, used or demonstrably prepared to use the domain name in connection with a bona fide offering of services without intent for commercial gain. The Respondent claims that she had purchased stock and made contacts, yet she has provided no supporting documents. She no longer wishes to conduct an Internet mail-order business in Asian clothing and curios. She wants to retain the name, but gives no reason why. There is no evidence that she is known by the domain name. The submission that ATT somehow reflects her given name of Tala is pathetic. The Panel therefore decides that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(b)(iii) and (iv) of the ICANN policy document, on which the Complainant relies, states:

"the following circumstances � shall be evidence of the registration and use of the domain name in bad faith:

(iii) You have registered the domain name primarily for disrupting the business of a competitor.

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."

The Internet is a worldwide institution and persons accessing any website can come from any country. It must be assumed that some hits on the Respondent�s website could come from persons living in countries where there is a registered AT&T mark (which include the United Kingdom). These persons could easily have had dealings with the Complainant or its websites or else have encountered AT&T, which is inevitable for anyone who has lived in the United States, even as a visitor. They could easily conclude that the domain site had something to do with the Complainant�s operations in the year 2000. Geographical destinations can be irrelevant to users of the Internet.

There is evidence that the Respondent offered to sell the domain name to the Complainant "as part of an acceptable cash settlement". Many cases decided by WIPO Center panels have concluded that such behaviour constitutes use of the Complainant�s mark in bad faith. See, for example, World Wrestling Federation Entertainment Inc. v. Bosman, Case D2000-0001. The excuse given for not advising her change of domicile to the Registrar is not particularly convincing.

The Panel accordingly determines that the Respondent has registered and used the Complainant�s mark in bad faith.

 

7. Principles of Law Applicable

It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent appears to be domiciled in Singapore, any legal action might have to be taken against her in that country. The Panel has not had cited to it decisions of Superior Courts in Singapore. Principles of law set out in decisions of Courts in the United States and the United Kingdom in similar cases could easily be of assistance to Singaporean courts. The law protecting intellectual property, whilst admitting of local differences, is often similar, given the various international treaties on intellectual property.

The legal position in England on domain names of confusingly similar wording to registered trademarks was discussed by the Court of Appeal in British Telecommunications Plc and Others v One in a Million Ltd and Others [1999] 1 WLR 903. The Court there was dealing with domain names identical or confusingly similar to registered trademarks where the domain name holders had tried to sell the names to the trademark owners. This is the situation envisaged by paragraph 4(a)(i) of the Rules. The Court upheld the grant of injunctions against the domain name registrants.

The English position is similar to that taken in the United States in cases noted by Panelists in other WIPO Center decisions, such as Panavision International LP v Toeppen 141 F.3d. 1315 (9th Cir. 1998).

The Panel has determined that, under the Policy, the Complainant has proved its case. Accordingly, the Complainant is entitled to the limited relief which this Panel is empowered to give. The Panel�s decision is based primarily on the terms of the Policy cited earlier.

 

8. Decision

For the foregoing reasons, the Panel decides:that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;that the Respondent has no rights or legitimate interests in respect of the domain name; and the Respondent�s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.

Hon Sir Ian Barker QC
Presiding Panelist

Date: May 18, 2000

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