WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Damian Macafee
Case No. D2001-1159
1. The Parties
The Complainant is AT&T Corp., a company incorporated under the laws of New York, United States of America.
The Respondent is Damian Macafee, purportedly of 69 Charlotte Street, London, WIP ILA, UK.
2. The Domain Names and Registrars
The domain name in dispute is . The Registrar of the domain name as at the date of the complaint is BulkR.
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 "Center") by email on September 21, 2001, and in hard copy on September 25, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant.
3.3 The Center sent the Complainant an Acknowledgement of Receipt of Complaint by email on September 26, 2001. The Center sent a request for verification to BulkR on September 27, 2001, by email. The Registrar responded to the Center�s request on October 2, 2001, verifying:
● The Complaint had been received.
● The domain name is registered with BulkR.
● The Respondent is the current registrant of the domain name in dispute.
● Respondent�s contact details.
● The UDRP applies to the domain name.
● The current status of the domain name is Registrar LOCK.
3.4 The Center�s Formal Requirements Compliance Checklist was completed on October 3, 2001.
3.5 The Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by courier (to the one postal address given as the Registrant, Administrative and Technical Contact in the whois database) and by email (to the three addresses given in the whois database) and to the Complainant by email on October 3, 2001.
3.6 The Center received a Returned "Notification of Complaint" from the Respondent�s postal address on October 6, 2001. The Center also received a message from the Mail Delivery Subsystem on October 3, 2001, that one of the email addressed had permanent fatal errors.
3.7 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 Provider�s 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.
3.8 No response was filed.
3.9 The Center sent the Respondent a Notification of Respondent Default on October 25, 2001, by courier and email and to the Complainant by email. The Center received a returned "Notification of Respondent Default" from the Respondent�s postal address on November 1, 2001. Likewise, the Center received a message from the Mail Delivery Subsystem that one of the email addressed had permanent fatal errors in it on October 25, 2001.
3.10 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. Considering the actions undertaken by the Provider, 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 Respondent�s contact particulars in the Whois database being erroneous. Neither the Complainant nor the Provider could take any alternative action.
3.11 The Center sent the parties a Notification of Appointment of Administrative Panel and Projected Decision Date on November 5, 2001.
3.12 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 trademarks
The following information is asserted as a fact in the Complaint and remains uncontested:
"Complainant has been selling telecommunications products and services for over a century under the name "AT&T" and phrases that combine "AT&T" or "ATT" with other words. Complainant has invested at least hundreds of millions of dollars promoting these names among consumers in the United States and other countries around the world, as a result of which these names are famous worldwide. (See Annex 4)"
The Complainant has trademark and service mark registrations for AT&T (the "Principal Mark") in the United States, details of which are contained in Annex 7 to the Complaint. This mark is registered in numerous classes including telecommunications services. The evidence shows that the Principal Mark was first registered on September 25, 1984 and remains current.
"Complainant also owns numerous marks that use "ATT" without an ampersand. For example, Complainant has rights in the U.S.-registered marks: "1 800 CALL ATT;" "CAMP ATT;" "1 800 ATT-GIFT;" and "ATT.NET." (See Annex 9.)" The evidence shows that the "1 800 CALL ATT;" mark was first registered on January 21, 1995.
"Complainant has used "AT&T WORLDNET" in commerce since at least August 1985 and has held a United States registered trademark in the "AT&T WORLDNET" mark since August 5, 1997, under registration number 2086348. In addition, Complainant holds the registered trademark for "AT&T WORLDNET" in several other countries including Canada (registration number TMA505,920 on Dec. 29, 1998), Germany (registration number 39531734 on June 12, 1996), and Taiwan (registration number 98720 on February 16, 1998). (See Annex 15)."
The Complainant�s above trade and service marks will be described as the "Complainants Marks".
4.3 Activities of the Respondent
The Complainant has not made any statements regarding the activities of the Respondent.
5. The Complainant�s Contentions
5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to paragraph 4(a)(i) of the policy, the Complainant asserts that the domain name in dispute, is confusingly similar to the Complainant�s registered marks, including "AT & T Worldnet" and "AT&T". It asserts that:
"Even if AT&T had not registered and used "AT&T WORLDNET" as a separate mark, the mere addition of "worldnet" to an internationally famous mark would cause confusion among consumers".
5.3 In reference to paragraph 4(a)(ii) of the policy, the Complainant asserts that the Respondent has no legitimate interest in the domain name. In particular, it is asserted that the Respondent:
(a) Has not been licensed or otherwise authorised to use any of the Complainants marks; and
(b) Does not own any marks that are similar to the domain name; and
(c) Is not known by the domain name either as an individual or a business; and
(d) Is not making legitimate non-commercial or fair use of the domain name.
5.4 In reference to paragraph 4(a)(iii) of the policy, the Complainant asserts that the domain name has been registered and used in bad faith because:
(a) Incorrect contact details were provided to the whois database. Neither telephone or facsimile contact information was given.
(b) "He has registered and used Complainant�s famous marks to take advantage of internet traffic searching for Complainant and then "click" that traffic through to web site advertisements in exchange for referral payments."
Although not stated with explicit reference to bad faith, the Complainant also asserts:
"AT&T WORLDNET" is an invented phrase that has intelligible meaning only because of AT&T�s commercial usage of its brands. Without AT&T�s branding of this phrase, the phrase would be without value. The reasonable expectations of internet users and AT&T Corp. are frustrated by Respondent�s registration of ."
6. Discussion and Panel Findings
This section is structured by reference to the elements required by paragraph 4 (a) of the Policy. The onus is on the Complainant to make out its case on the balance of probabilities.
6.1 Domain Name is identical or confusingly similar to Complainant�s Mark
The Panel is quite satisfied that the domain name, is confusingly similar to the Complainant�s mark, "AT&T Worldnet". An ampersand is not a valid character in a domain name and its absence is not sufficient to prevent the domain name in dispute from being confusingly similar to the Complainant�s mark. This is consistent with the view previously taken in relation to the use of "att" in WIPO Case No. D2000-0553. Accordingly, the Complainant has proven paragraph 4(a)(i) of the Policy in this case.
Despite the reasoning in WIPO Case No. D2000-0553, the Panel inclines to the view that, absent a trademark that included "worldnet", the Panel would not have found the domain name in dispute identical or confusingly similar to "AT & T" alone.
6.2 The Respondent has no rights or legitimate interests in the domain name
The Complainant�s assertion that the Respondent has no legitimate rights or interest in the domain name is plausible. The website manifests no apparent legitimate connection between the banner and pop-up advertisements that it contains and the domain name itself. Absent any response from the Respondent and any legitimate right or interest apparent on the face of the record or the site itself, the Panel is entitled to regard the Complainant�s submissions as persuasive.
The Panel accordingly finds that the Complainant has proved paragraph 4(a)(ii) of the Policy.
6.3 The domain name has been registered and is being used in bad faith.
Based on the available evidence, the Panel infers that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location. The Panel is thus satisfied that the Respondent�s conduct is within Paragraph 4(b)(iv) of the policy and thus provides evidence of registration and use of the domain name in bad faith (Paragraph 4(b) of the Policy).
Likewise the incorrect contact details in the Whois database suggest bad faith.. The Panel notes that the Center was unable to contact the Respondent using the postal address in the whois database.
The Panel therefore finds that the Complainant has proved paragraph 4(a)(iii) of the Policy.
7. Decision
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, the Panel orders that BulkR transfer to AT & T Corp.
Philip N Argy
Sole Panelist
November 19, 2001
Full & Egal Universal Law Academy