WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Ondonk Partners
Case No. D2000-1723
1. The Parties
The Complainant is AT&T Corp. (Hereinafter "AT&T"), a New York corporation with a principal place of business in Basking Ridge, New Jersey, USA.
The Respondent is Ondonk Partners, with an address at 123 Main Street, New York, New York, USA.
2. The Domain Name and Registrar
The dispute concerns the domain name: , hereinafter the Disputed Domain Name. The Registrar with which this Domain Name is registered is B, 7 East Redwood Street, Third Floor, Baltimore, Maryland 21202, USA.
3. Procedural History
On December 9, 2000, the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint electronically and December 11, 2000 by hard copy for a decision in accordance with 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).
On December 12, 2000, the WIPO Center acknowledged receipt of the said Complaint.
On December 13, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On January 11, 2001, the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Names and also that the current registrant of the said Domain Names was the Respondent.
On January 12, 2001, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as January 12, 2001, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
On January 22, 2001, the parties apparently believed that they had settled the case and Complainant, AT&T, asked that the proceedings be suspended for thirty (30) days. The WIPO Center suspended the case until February 17, 2001. As of February 13, 2001, Complainant indicated that the settlement could not be completed and asked that the proceedings be reinstated. This was done, and a new date for response was set for February 26, 2001.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e., February 26, 2001. On March 13, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondent by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On April 2, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
Complainant, AT&T is a corporation incorporated under the laws of the State of New York, with a principal place of business in Basking Ridge, New Jersey.
AT&T is famous around the world for its products and services including a variety of Internet services, such as Internet access services, e-mail services and Web hosting services.
For over a century, AT&T has continuously provided telecommunications services under the name "AT&T," both as an abbreviation of its former corporate name, American Telephone & Telegraph, and as part of its current corporate name, AT&T Corp.
AT&T has registered its "AT&T" mark in the United States Patent and Trademark Office and owns, among others, the following U.S. registrations for said mark:
MARK
REG. NO.
DATE
GOODS AND SERVICES
AT&T
1,293,305
9/04/84
Digital network telecommunications services
AT&T
1,298,084
9/25/84
Telecommunications services and transmission of data via satellite and telecommunications links
AT&T
1,314,059
1/08/85
Retail store services � namely, phone centers specializing in telecommunication equipment
AT&T
1,353,769
8/13/85
Telephones
These registrations are incontestable and constitute conclusive evidence of AT&T�s exclusive right to use these marks with the above referenced goods or services in commerce in the United States, the validity of these marks, and of AT&T�s ownership of them. 15 U.S.C. �� 1065, 1115 (b).
AT&T has used its mark without the ampersand in a variety of formats, including the mark ATT.COM since 1986 for a variety of telecommunications services, and the following marks registered in the United States Patent and Trademark Office:
MARK
REG. NO.
DATE
GOODS AND SERVICES
1 800 ATT-GIFT
2,076,093
7/1/1997
Telecommunications services, namely the delivery over a telephone line of audio greetings and songs and the ordering of gifts tied to a specific occasion
1 800 CALL ATT
2,348,919
5/9/2000
Telephone calling card services
CAMP ATT
2,020,639
12/3/1996
Telecommunications services, namely the electronic transmission of voice, facsimile, data, video and information
These registrations constitute prima facie evidence of AT&T�s exclusive right to use these marks with the above referenced services in commerce in the United States, of the validity of these marks, and of AT&T�s ownership of them. 15 U.S.C. � 1115 (a).
In addition, AT&T has registered and owns several Internet domain names incorporating the "ATT" including "", "" and "", for bona fide web sites.
Since at least as early as 1994, AT&T has used AT&T PLAZA for the name of an office building it occupies in Oak Brook, Illinois. The AT&T PLAZA building is well known. AT&T PLAZA was the winner of a prestigious 1999-2000 TOBY award for architecture.
AT&T has invested and continues to invest a substantial amount of money and effort in advertising and promoting its goods and services under the aforesaid AT&T name and AT&T and ATT marks.
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 designations of origin of AT&T�s goods and services and symbols of the goodwill and excellent reputation AT&T enjoys.
The AT&T brand name recently has been recognized as one of the ten most valuable brand names in the world, as noted by the article from U.S. News & World Report, September 11, 2000 and the 2000 Interbrand Annual Survey. The AT&T marks are inherently distinctive, famous, and entitled to the widest scope of protection afforded by law, including protection against dilution.
Respondent registered the domain name "" on May 20, 2000, well after AT&T acquired its rights to the AT&T trade name and the AT&T and ATT marks and after AT&T had begun using the name AT&T PLAZA for a building.
Respondent has no rights or legitimate interests to the domain name that is the subject of the Complaint. Respondent owns no trademark registration for AT&T or "att." Neither has AT&T agreed nor consented to Respondent�s use or registration of a domain name comprising the unique, well-known and federally registered AT&T trademark.
The domain name does not resolve to any web site or online presence.
Since Respondent registered the domain name, Respondent has made no legitimate or commercial use of the name.
Respondent has no intellectual property rights in the mark AT&T or colorable imitation thereof.
Respondent�s top-level domain name is substantially identical to Complainant�s well-known trademark.
Respondent has never used the domain name in connection with the bona fide offering of any goods or services.
Respondent has not made and is making no bona fide noncommercial or fair use of the AT&T trademark or any web site associated with the domain name.
5. Parties� Contentions
A. Complainant
Essentially, the contentions of the Complainant are as follows:
1) AT&T has valid, subsisting, and incontestable rights in its registered AT&T trademarks.
2) Respondent has no rights or legitimate interests to the domain name.
3) The Disputed Domain Name was registered and is being used in bad faith.
B. Respondent
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondent�s Default
By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name�"
In the event of a default, under paragraph (14)(b) of the Rules:
"�the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy�s Antiques D2000-0004 (WIPO):
"Respondent�s failure to present any such evidence or to deny complainant�s allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondent�s default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondent�s Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii) the Respondent�s Domain Name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas D2000-0140 (WIPO) notes that under the Policy, even if the respondent is in default,
"�the complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the AT&T marks. It has also shown substantial use. Ownership of these marks is clearly proved by the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Name with the Complainant�s AT&T marks and finds that the second level domains thereof are substantially identical to the Complainant�s marks. The Panel finds that there is such similarity in sound, appearance, and connotation between the AT&T marks and the Disputed Domain Name as to render said Disputed Domain Name confusingly similar to Complainant�s AT&T marks.
6.4 Respondent�s Rights or Legitimate Interests in the Disputed Domain Name
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Name by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Name or a name corresponding to the said Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Disputed Domain Name, even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Name by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, in the absence of any license or permission from Complainant to use its U.S. Trust name and marks or to apply for or use any domain name incorporating those marks, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by Respondent. Guerlain S.A. v. Peikang, D2000-0055 (WIPO).
The Disputed Domain Name does not resolve to any web site or on line presence. Accordingly, confused customers of the Complainant are likely to be frustrated in their efforts to reach the Complainant�s web site. Indeed, Respondent has not undertaken a bona fide offering for sale of goods using the Disputed Domain Name before notice of the dispute, and cannot establish rights or legitimate interests in the Disputed Domain Name, thereby establishing the second element necessary for Complainant to prevail on its claim that Respondent has engaged in abusive domain name registration. The Frozfruit Company v. Maui Bound Media Group, D2000-0851 (WIPO).
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman D1999-0001 (WIPO) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Disputed Domain Name in bad faith in order to establish �bad faith� on the part of the Respondent.
Complainant has averred and the Panel finds that the Disputed Domain Name was registered with false and inaccurate contact information by Respondent to the Registrar. Such false contact information has been held to be evidence of registration in bad faith, and the Panel so finds.
Complainant has further averred that Respondent has not used the Disputed Domain Name to develop a web site. Such a passive use coupled with no other legitimate interest in that Disputed Domain Name is found by the Panel to be a bad faith "use" of that Domain Name within paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15), the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Name, namely, , be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Sole Panelist
Dated: April 26, 2001
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