WIPO Domain Name Decision D2009-0131 for att-dish.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AT&T Intellectual Property II, L.P. v. Peter Croughs Case No. D2009-0131 1. The Parties

The Complainant is AT&T Intellectual Property II, L.P. of Reno, Nevada, United States of America, represented by Adorno & Yoss LLC, Atlanta, Georgia, United States of America.

The Respondent is Peter Croughs of Groningen, the Netherlands. 2. The Domain Name and Registrar

The disputed domain name is registered with GoD, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009. On February 2, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2009.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on March 13, 2009. 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 Complaint is uncontested. After review of the Complaint and annexes and the Panel's visiting and viewing the site to which the disputed domain name resolved as at the date of this decision, the following is accepted as fact:

4.1 The Complainant is the owner and manager of the intellectual property assets of AT&T Corp. and its affiliates. AT&T Corp is one of the largest telecommunications companies in the United States and has been selling telecommunications products and services in the United States and internationally for well over a century under the brand name AT&T.

4.2 The Complainant owns numerous trade and service marks that comprise the name “AT&T” and these are registered both in the United States and internationally. These consist of the name “AT&T” and variations of this, such as “ATT”, frequently combined with other words and design elements, and registered with respect to telecommunications products and services.

4.3 For the purposes of the present proceeding, the Complainant has exhibited eight United States, Benelux and CTM registrations for the marks ATT, AT&T, AT&T.ALL, AT&T&Design in respect of telecommunications products and services.

4.4 It seems clear that the Complainant's mark AT&T is well-known, both in the United States and internationally, and that this has been accepted in a significant number of WIPO Panel decisions (over 40) involving proceedings against domain names that have embodied the words “atandt” and “att” with various suffixes and prefixes. In a number of these cases, panels have commented on the fame and inherent distinctiveness of the AT&T marks. While these previous decisions cannot provide primary evidence of the fame of the AT&T mark for the purposes of the present proceeding, their number is striking and points clearly to the fact that the Complainant has been vigilant in protecting its marks in the online environment through the UDRP process and appears to have been generally successful in doing so.

4.5 Relevant for the purposes of the present proceeding is the fact that the Complainant also owns and uses the domain name , among others, in the advertising and sales of its products and services. It appears that it has owned and used this domain name for a considerable period of time (the Complaint states this has been from as early as 1986), and it is noted that, in the domain name context, it is not possible to use the ampersand (“&”), with the consequence that only the three letters “ATT” could be registered as its domain name. As authority for this proposition concerning the ampersand, the Complainant refers to the decision in AT&T Corp v John Zuccarini d/b/a RaveClub Berlin,WIPO Case No. D2001-1503. As this decision is nearly 8 years old, it would have been helpful for the present Panel to have received some confirmation from the Complainant that it remains impossible to include an ampersand in a registered domain name. The Panel sought to check this for himself on the website of God, Inc., but could not find an explicit statement that this is so. However, in the absence of any contrary contention from the Respondent, the Panel will proceed on the basis that this is still the position.

4.6 One further matter in relation to the Complainant's domain name is that this is used as a means of conveying its AT&T marks on the Internet and for advertising its products and services. Among the services provided by the Complainant are co-branded digital satellite television services with the DISH Network which are advertised under the name AT&T / DISH Network. It is not stated by the Complainant when this advertising began, but the “www.” website states that this co-branding arrangement began as of January 1, 2006: “www./gen/general?pid=7581” (viewed by the Panel on March 27, 2009).

4.7 The disputed domain name was registered on 16 May 2006 and expires on 16 May 2009. It resolves to a website that does not provide active links to the Complainant's own website or to the websites of its direct competitors. However, the website at lists various topics that visitors can click on and these topics appear to relate to or discuss services and products offered by the Complainant and its competitors, e.g., “Cable Tv”, “Internet Service”, “Internet Satellite”, “Satellite Tv Systems”, “Digital Tv”, “Cable Tv Deals”. When the Panel visited these on March 27, 2009, clicking on these topics led also to other kinds of services and products, some at least of which appeared to be unrelated to the Complainant's offerings, e.g., in relation to credit cards, flights and car rentals. 5. Parties' Contentions A. Complainant

The Complainant contends that the disputed domain name falls within the criteria for transfer under paragraph 4(a) of the UDRP, namely that:

(a) it is identical or confusingly similar to the AT&T marks. In this regard, the Complainant refers to:

- Previous WIPO Panel decisions acknowledging the value of the AT&T marks;

- The fact that the ampersand cannot be used in a domain name registration: hence, the Complainant's own domain name ;

- Previous WIPO Panel decisions holding that “att” (“AT&T” appearing without the ampersand) in a domain name is confusingly similar to the AT&T marks, noting also that the combination of “att” in a domain name with a hyphen that serves to highlight “att” as a separate name simply increases the likelihood of confusion: see here AT&T Corp v rnetworld,WIPO Case No. D2006-0569 (where the disputed domain name was and the Complainant actually offered a co-branded service with Yahoo! under the name “AT&T Yahoo! High Speed Internet”);

- Previous WIPO Panels have found that the combination in domain names of “att” with other words, especially words relevant to the Complainant's business and business relationships, were confusingly similar: see the following cases: AT&T Corp. v. Ray Gilmartin,WIPO Case No. D2002-0237 (); AT&T Knowledge Venture II, L.P. v. Rnetworld,WIPO Case No. D2007-0035 (); AT&T Corp. v. Tianfu Gou,WIPO Case No. D2004-0294 (); AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634 (); AT&T Corp. v. Darren Swain,WIPO Case No. D2003-0633 ( and ); AT&T Corp. v. Yong Li, WIPO Case No. D2002-0960 (); AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, supra (); AT & T Corp. v. Caimmi Rappresentanze & Marketing Italia, WIPO Case No. D2001-0541 ( and ) and AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 ().

(b) The Respondent has no rights or legitimate interests in the domain name for the following reasons:

- the AT&T marks are uniquely associated with the Complainant and could not be legitimately used by anyone else without the authority or licence of the Complainant;

- the Respondent is not known or identified by the name “AT&T” and has no affiliation or connection with the Complainant;

- the Respondent does not operate business under the name “AT&T”, has no trade or service marks anywhere with respect to that name;

- the Respondent is using the website to divert Internet users away from the Complainant's website and its products and services; and

- is not otherwise making a legitimate non-commercial or fair use of the domain name.

(c) The disputed domain name has been registered and continues to be used in bad faith, referring here to the following:

- The lack of any legitimate non-commercial usage business conducted under the domain name;

- the assertion that the registration was made to prevent the Complainant as owner of the AT&T marks from using its marks in the corresponding domain name;

- the assertion that the registration took place with full knowledge of the rights of the Complainant, as revealed by the kinds of topics listed on the Respondent's website which refer to services and products offered by the Complainant;

- diversion of consumers away from the Complainant's website and disrupting the Complainant's business;

- intentionally seeking to attract customers to its websites by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent's website and products and services with those of the Complainant;

- The Respondent's registration of multiple (over 850) domain names which are “identical or confusingly similar to the marks of others, or dilutive of famous marks of others”.

- The assertion that the use of the Respondent's domain name would be an infringement of the AT&T marks under the Lanham Act and that this is also diluting and weakening the unique and distinctive significance of those marks.

- Other generalised assertions that the Respondent's conduct in registering and using the domain name would violate United States federal laws relating to cyberpiracy and unfair dilution. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

Paragraph 5(e) of the UDRP Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that, if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

It will be clear that there is no identity between the disputed domain name and the Complainant's AT&T and ATT marks. Nonetheless, the Panel concludes that there is confusing similarity between them. In view of the Complainant's registration of the ATT mark, it is not really necessary to have regard to the absence of the ampersand in the disputed domain name, but the Panel takes note of previous WIPO Panel decisions in which the view was taken that confusing similarity arose as between the “AT&T” mark and the use of ATT in a domain name comprising other elements: see, for example, AT&T Corp v. rnetworld, supra and the other decisions referred to be the Complainant and noted above at 5.A(a).

In addition, the Panel takes the view that the addition of a hyphen in the disputed domain together with the word “dish” does nothing to remove the possibility of confusing similarity. In this regard, it accepts the Complainant's contention that the presence of the hyphen tends to highlight the word “att”, while the addition of “dish” simply indicates that this is another service bundled with that of the Complainant (which, in fact, is the case). Above all, the word “att” comes at the start of the disputed domain name and is the first thing that strikes the observer. In this regard, the Panel notes that the many decisions of previous panels cited by the Complainant in which the addition of such words has done nothing to remove the possibility of confusing similarity: see 5.A(a) above. It also almost goes without saying that the “.com” suffix to the end of the domain name does not affect the domain name for the purpose of establishing whether it is identical or confusingly similar: see, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728 and Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202. The Complainant has therefore satisfied this aspect of paragraph 4(a)(i).

The second part of paragraph 4(a)(i) is also satisfied, in that the Complainant has proved that it has “rights” in the AT&T and ATT marks, with the various United States, Benelux and CTM registrations that are cited. It also seems reasonable to conclude, although not necessary for present purposes, that this is a well known mark that would be protected without registration in many countries, such as the United States. B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) which provides that:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you [the Respondent] of the dispute, your [the Respondent's] 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 [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the Respondent] have acquired no trademark or service mark rights; or

(iii) you [the Respondent] 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.

Essentially, these are matters for a Respondent to put forward for the Panel's consideration. In the present case, as noted above, no response has been filed and all that the Complainant can do is to point to any evidence that indicates that none of these circumstances exist.

Thus, there is no evidence that points to either of the matters referred to in paragraph 4(c)(i) or (ii). While the website has lists of various products and services for users to click on, these appear to lead to the websites of other businesses, some of which are not linked to telecommunication services at all, such as credit suppliers and airlines. Where the links do lead to telecommunication services, such as Optus, this is clearly not a service offered by the Respondent. Accordingly, there is nothing that indicates a genuine offering of goods or services under the domain name by the Respondent as required by paragraph 4(c)(i). Likewise, there is nothing to indicate that the Respondent has ever commonly been known by the domain name, as required by paragraph 4(c)(ii). Furthermore, the Respondent is clearly not a licensee, authorized agent of, or in any other way associated with the Complainant.

Finally, there is no indication of a legitimate non-commercial or fair use of the domain name within the meaning of paragraph 4(c)(iii): the various links on the website lead ultimately to other traders and service providers, some of which are clearly competitors of the Complainant in the telecommunications area. It is impossible to characterize these as “noncommercial” or “fair” uses, in the absence of any evidence that might, for example, show that the Respondent is providing these as some kind of public service.

Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) has been made out. C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii), the Complainant must further show that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that 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 a domain name in bad faith:

(i) circumstances indicating that you [the Respondent] have registered or you [the Respondent] 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 [the Respondent] 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 [the Respondent] have engaged in a pattern of such conduct; or

(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the Respondent's] 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 [the Respondent's] web site or location or of a product or service on your [the Respondent's] web site or location.

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869 and E. & J. Gallo Winery v. Hanna Law Firm,WIPO Case No. D2000-0615.

In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw, from such default such inferences, as it considers appropriate.

On the material before it, there is no evidence before the Panel to indicate that the circumstances referred to in paragraph 4(b)(i) of the Policy arise here. However, there is a strong basis for inferring that circumstances referred to in paragraph 4(b)(ii) are present. As the Complainant notes, the Respondent is the registrant of over 850 domain names. This is not, in itself offensive, and it may be that the Complainant attempts to infer too much from the fact in its assertion that all these domain names are “identical or confusingly similar to the marks of others, or dilutive of famous marks of others.” A close examination of the list with these domain names reveals that many of them are descriptive words that are presumably the fair subject for registration under the existing rules if no one has previously done so, e.g., , , , , , etc. Nonetheless, the Complainant points to at least 15 of these domain names that have a close approximation to those of well known businesses, for example , , , , , , , , , , , , , , and . Others examples are , and and there are undoubtedly others that can be picked out from the list on careful examination. Many of these, if not identical, contain only minor misspellings or additions, and can fairly be characterized as indicating a pattern, on the Respondent's behalf, of registering domain names so as to prevent the owner of a trade or service mark from reflecting this in a corresponding registration. Accordingly, the Panel finds that the registration and continued holding of the domain name comes within paragraph 4(b)(ii) as being registration and use of the domain name in bad faith.

The Respondent's webpage provides further evidence of his bad faith in using the domain name within the meaning of paragraph 4(b)(iv). As noted above, a number of the “topics” listed on the webpage lead ultimately to the websites of competitors of the Complainant for the supply of telecommunications products and services. Hence, Internet users who are attracted to the Respondent's webpage in the belief that this is associated with the Complainant will be diverted to these other websites, and it is difficult to avoid the inference that this has been done with the intention of creating confusion.

The Panel therefore finds that the requirements of paragraph 4(a)(iii) have been satisfied. 7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel finds that the Complaint is made out, and orders that the domain name, be transferred to the Complainant.

Staniforth Ricketson
Sole Panelist

Dated: March 27, 2009

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