WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd.
Case No. DCC2004-0001
1. The Parties
The Complainant is AT&T Corp., Bedminster, New Jersey, United States of America, represented by Sidley Austin Brown & Wood, United States of America.
The Respondent is Xinzhiyuan Management Consulting Co., Ltd., Chengdu, si chuan, China.
2. The Domain Name and Registrar
The disputed domain name is registered with WebNIC.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2004. On March 3, 2004, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On March 4, 2004, WebNIC.cc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact, but pointing out that the Respondent has not submitted in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 15, 2004, in which it agrees to submit to the court jurisdiction at the location of the domain holder's address. On the same date the Complainant sent also a notification of non-delivery of the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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").
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 March 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2004.
The Center appointed Nicoletta Colombo as the Sole Panelist in this matter on April 23, 2004. 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.
Having reviewed the case file in this matter, this Administrative Panel concurs with the assessment by the Center that all requirements of the Policy and the Rules have been satisfied.
No further submissions were presented to the Panel and the Center.
4. Factual Background
The following uncontested facts are found by the Panel and established as true.
The Complainant AT&T (American Telephone and Telegraph Corporation) has provided telecommunications services and products for over a century under its name AT&T Corp. or AT&T as well under phrases that combine AT&T or ATT with other words.
It has rights in numerous registered trademarks and service marks in the United States, as well as many other countries for AT&T, ATT without ampersand and in combination with other words or phrases, including those that describe Complainant's services (see Annex 10 and 11). In particular it owns registered trademark for AT&T in Asia including China (see Annex 14).
The Complainant is also the owner of domain names containing the letters ATT such as __ and __ (see Annex 12).
AT&T is a global company with strong presence in China; it has been providing communications services in China for more than 20 years including traditional voice and data services to consumers and business. At the moment AT&T is one of the major high-speed bandwidth providers for China's Internet service providers (see Annex 15).
AT&T has also a strong presence in the Caribbean and Latin America, the Asia / Pacific Region as well in Europe, the Middle East, and Africa (see Annex 16).
The Complainant is also an Internet provider and Internet portal through it's AT&T Worldnet service. Users can access numerous Internet links to, among other things, read news stories from around the world and purchase books or DVD movies and users can have prepaid Internet access with Internet cards (see Annex 17 and 18).
AT&T Worldnet serves as a virtual Internet café for its members, who can personalize their own web pages, access individual AT&T email accounts and contact other members to play games (see Annex 19).
The AT&T Worldnet Internet service has been recognized by independent reviewers of Internet service providers for its wide customer satisfaction, outstanding value, excellent performance and consistent technical merit (see Annex 20).
Internet search engines consistently identify queries for ATT with AT&T Corp. multiple Internet sites and service (see Annex 21).
A search for ATT in the International Abbreviation /Acronym Database returns American Telephone & Telegraph Company - the former corporate name of the Complainant - as its first hit (see Annex 22).
The disputed domain name was registered in the name of the Respondent on July 8, 2002, and renewed on June 26, 2003.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain name in dispute is simply identical or confusingly similar to world-famous AT&T brand, common law marks, and registered marks.
The Respondent has misappropriated Complainant's ATT trademark by using the same naming convention AT&T itself uses when formulating its own domain names and appending to that mark a different TLD.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain name. The Respondent in fact is not AT&T's licensee in any respect, nor is the Respondent authorized to use AT&T's marks.
The Complainant states that the Respondent does not own any registered or common law trademark containing the terms AT&T or ATT or any similar derivation. Moreover the Respondent has not been commonly or legitimately known by the contested domain name.
The Respondent is not making legitimate non-commercial or fair use of the contested domain name; in fact the Respondent uses the domain name in dispute to advertise its Internet café and divert traffic to another commercial site at which the Respondent offers products and services in direct competition with AT&T's Worldnet service.
The circumstance that the Respondent puts on a page the words "At Time Terminal," that has no discernible meaning in English, is an attempt to justify the misappropriation of AT&T's famous brand and trademark.
The Respondent, at the time of the registration of the contested domain name, was surely aware of the trademark of the Complainant which is also registered in China, where the Respondent is located and where the Complainant has extensive operations.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.
The Respondent has registered and is using the domain name to advertise in its website services and products that directly compete with AT&T's business. The Respondent cannot plausibly affirm that it was unaware of AT&T's worldwide famous business and marks when registering the ATT acronym under the TLD ".cc." AT&T is an arbitrary and invented word that has intelligible meaning only because of AT&T's commercial promotion of its brand.
The Respondent uses the contested domain name to divert Internet users to its business and away from AT&T's Internet products and services. In fact Internet users who type __ in an attempt to access AT&T's Internet Service, or looking to contact AT&T, will undoubtedly believe that they have arrived at a domain operated by AT&T, taking into consideration that all or most of the services and the products offered by the Respondent are identical to or competitive with those offered by AT&T's Worldnet service.
The Complainant requests the Panel to transfer the disputed domain name to it.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The present dispute pertains to domain name .
The Complainant is the registered owner of the trademarks AT&T and ATT in U.S.A. and other countries like China where the Respondent is located. The Complainant has proved effective use of both its common law and registered trademarks almost all over the world and also in China in connection with various telecommunication services and data processing programming, and has also proved that its marks are well-known, distinctive and have become notorious in a great number of countries.
The trademark of the Complainant is included in its entirety into the domain name under dispute. An exhaustive history of previous cases states that the incorporation in a domain name of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant registered trademark. The circumstance that in the domain name under dispute the ampersand "&" is missing is irrelevant; the ampersand is of necessity omitted, since the web does not permit the use of an ampersand character in a domain name (see as i.e. AT&T Corp. v. John Zuccarini, d/b/a RaveClub Berlin, WIPO Case No. D2001-1503; AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002; AT&T Corp. v. Swarthmore Associates LLC, WIPO No. DBIZ2002-00077).
The addition of the top level domain extension ".cc" does not render the signs non-identical.
An Internet user or consumer viewing the disputed domain name is likely to confuse it with Complainant's marks.
There is no doubt that the domain name is confusingly similar to the trademarks of the Complainant. Therefore the Panel finds that Complainant has satisfied the first element in demonstrating abusive domain name registration and use.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is no prima facie indication of any rights or legitimate interests on the part of the Respondent in the domain name.
Moreover, AT&T and ATT are the registered and common law trademarks of the Complainant and it is undoubted that these marks are really well world-known also in China where the Respondent is located.
Further, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademarks or service marks or to apply for or to use the domain name incorporating the said marks.
According to the evidence submitted by the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the domain name in dispute as such domain name, incorporating the Complainant's trademark in its entirety, is used simply to advertise a website where all or most of the services and the products offered by the Respondent are identical to or competitive with those offered by AT&T's Worldnet service.
The words "At Time Terminal," that the Respondent indicates on its web page and that have no clear meaning in English, do not justify it's the Respondent's right to use the contested domain name and, on the contrary, appears as an attempt to justify the misappropriation of AT&T's famous brand and trademark.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain name, and therefore the Complainant has satisfied the second element in demonstrating abusive domain name registration and use.
C. Registered and Used in Bad Faith
The AT&T name and trademarks unquestionably are well known internationally and, in the opinion of the Panel, the Respondent was clearly aware thereof when it registered the contested domain name, also because the Complainant advertises and promotes its products and services in China as in almost all the rest of the world. The Respondent has failed to answer in order to explain why it chose to register and use ATT as domain name. This Panel considers that the mere registration of a famous trademark as domain name evidences the bad faith of the Respondent (See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Europay International S.A. v. E, Inc., EuroC, and Chad Folkening., WIPO Case No. D2000-0173).
Furthermore, the domain name is used intentionally by the Respondent to attract Internet users and divert them to its website where the Respondent advertises and sells products and services which are identical to or competitive with those offered by the Complainant.
The Panel is of the opinion that the Respondent has registered the disputed domain name with the intent to benefit from the reputation of the famous trademarks of the Complainant, and therefore this Panel believes that the Complainant has satisfied the third element in demonstrating abusive domain name registration and use.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Dated: May 3, 2004
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