WIPO Domain Name Dispute Case No D2007-0035

Document Sample
WIPO Domain Name Dispute Case No D2007-0035 Powered By Docstoc
					                WIPO Arbitration and Mediation Center


                   AT&T Knowledge Venture II, L.P. v. Rnetworld

                                  Case No. D2007-0035

1.   The Parties

     The Complainant is AT&T Knowledge Venture II, L.P., San Antonio, Texas, United
     States of America, represented by Sidley & Austin, United States of America.

     The Respondent is Rnetworld, Palermo, California, United States of America.

2.   The Domain Name and Registrar

     The disputed domain name <atnt-sbc.com> is registered with Melbourne IT trading as
     Internet Names Worldwide.

3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center (the
     “Center”) on January 10, 2007. On January 11, 2007, the Center transmitted by email
     to Melbourne IT trading as Internet Names Worldwide a request for registrar
     verification in connection with the domain name at issue. On January 15, 2007,
     Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center
     its verification response confirming that Respondent is listed as the registrant and
     providing the contact details for the administrative and technical contact. The Center
     verified that 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
     Respondent of the Complaint, and the proceedings commenced on January 22, 2007. In
     accordance with the Rules, paragraph 5 (a), the due date for Response was
     February 11, 2007. Respondent did not submit any response. Accordingly, the Center
     notified Respondent of its default on February 12, 2007.

                                          page 1
     The Center appointed John E. Kidd as the sole Panelist in this matter on
     February 28, 2007. 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

4.   Factual Background

     The AT&T Corp. has been selling telecommunication products and services for more
     than a century under the brand name AT&T and during that time has combined the
     brand name with other words and/or design elements (hereinafter the “AT&T marks”).

     The AT&T Corp. has invested hundreds of millions of dollars promoting its AT&T
     marks in the United States of America and other countries around the world. Many of
     the AT&T marks have also been registered as trademarks and service marks in the
     United States and other countries around the world.

     Over 40 previous WIPO panels have recognized the immense value of the AT&T
     marks. One panel, stated that 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 designation of origin
     of AT&T’s goods and services and symbols of the good will and excellent reputation
     AT&T enjoys@ and thus AT&T’s marks are “entitled to the widest scope of protection
     afforded by law”. See AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723.

     Another WIPO panel has summed up the worldwide recognition of AT&T’s brand
     name by stating simply that the phrase AT&T is a household name the world over. See
     AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276. WIPO panels have
     specifically found that AT&T has established common law trademark rights in the ATT
     mark without the ampersand. See AT&T Corp v. Linux Security Systems, WIPO Case
     No. DRO2002-0002.

     In a previous action against the same Respondent, a WIPO panel recognized that AT&T
     has been ranked as one of the most valuable international brands in the world. See
     AT&T Corp. v. rnetworld, WIPO Case No. D2006-0569.

     AT&T Corp. merged with SBC in 2005. The new company is the principal U.S.
     provider of local and long distance voice services and broadband Digital Subscriber
     Line service and is an industry leader in the provision of Internet Protocol based
     communication and services. Following the merger, AT&T Corp. transferred its
     trademark rights to AT&T Knowledge Venture II, L.P., the Complainant in this action.
     Both entities are subsidiaries of the parent company AT&T Inc. The evidence is not
     refuted by Respondent that Complainant AT&T Knowledge Venture II, L.P., continues
     to own and use the marks that are at issue in this Complaint.

     Following the merger, AT&T registered the domain name <att-sbc.com>, <attsbc.com>
     and <sbc.com>. Also following the merge AT&T established rights in “SBC” and
     numerous other marks incorporating SBC.

     AT&T has also been the registrant for the domain name <att.com> since at least 1986

                                          page 2
     and for <att.net> since 1993. The domain name <att.com> resolves to AT&T’s primary
     corporate website, “www.att.com”, on which AT&T’s products and services are
     promoted. This domain name shows that Complainant conveys its AT&T mark by
     using “att” on the web, which does not permit the use of an ampersand character (“&”)
     in a domain name. See AT&T Corp. v. John Zuccarini d/b/a Rave Club-Berlin, WIPO
     Case No. D2001-1503. Here the Panel held that the absence of an ampersand in the
     disputed domain name is dictated by the fact that this character may not presently be
     included in domain names, and Internet users expect domain names to exclude that

     The domain name in dispute <atnt-sbc.com> was registered by Respondent and the
     evidence is unrefuted that Respondent has no direct or indirect connection to AT&T or

     In November 2006, counsel for AT&T Corp. sent a letter to Respondent asking them to
     cease and desist use in the future of the domain name in dispute. Respondent did not

     Respondent also has not replied to Complainant’s Complaint. Respondent has been
     advised by the Center of its default and its consequences.

5.   Parties’ Contentions

     A.    Complainant

     Complainant asserts that Respondent has registered the domain name in dispute in a
     blatant bad faith attempt to exploit Complainant’s, world famous marks and to profit
     from the well-publicized merger of two companies AT&T Corp. and SBC
     Communications Inc.

     Complainant further contends that the domain name in dispute <atnt-sbc.com> is
     virtually identical and confusingly similar to the domain name <att-sbc.com> and
     <attsbc.com>, both used by AT&T to offer products and services to its
     telecommunications customers.

     Complainant further asserts that Respondent has no rights or legitimate interest in the
     domain name in dispute. Complainant contends that Respondent is making no
     legitimate use of the website associated with the domain name and the registration of
     the domain name in dispute is an example of merger cybersquatting. Complainant
     contends that such registration and use of the domain name in dispute, is done in bad
     faith by Respondent.

     B.       Respondent

     Respondent did not reply to Complainant’s contentions.

6.   Discussion and Findings

     A.    Identical or Confusingly Similar

                                           page 3
The Panel finds that the domain name in dispute is virtually identical and confusingly
similar to Complainant’s official, legal and world-famous marks and domain names and
that Internet users attempting to locate information regarding AT&T will likely be
confused into believing that the web page associated with the domain name in dispute,
as well a those pages that link from the web page are sponsored by or connected with

United States courts and WIPO panels have recognized that consumers expect to find a
company on the Internet at a domain name address comprised of that company’s name
or mark. See Panavision International, L.P. v. Toeppen 141 F. 3rd 1316, 1327 (9th
Cir. 1998) ame.

Furthermore, a domain name mirroring a corporate name may be a valuable corporate
asset, as it facilitates communication with a customer base. See AT&T Corp. v. Ray
Gilmartin, WIPO Case No. D2002-0237. Here in that case the panel finds that
Respondent’s registration and use of the domain name <atnt-sbc.com> is likely to
confuse consumers looking for information related to telecommunications products and
services offered by the newly-merged company of AT&T and SBC.

The Panel finds that the fact that Respondent has replaced the ampersand in AT&T’s
mark with an ”n” does not eliminate the confusing similarity. As Complainant correctly
points out on the Internet it is not possible to use the symbol “&” in a domain name.
See AT&T Corp. v. Sure Source WIPO Case No. D2002-1179.

WIPO panels have noted that Internet users are aware that the ampersand is not utilized
in domain names and expect that symbol to be eliminated or replaced See Bradford &
Bingley PLC v. Registrant info@fashionID.com 9876543321, WIPO Case No. D2002-
0499. Where the ampersand is not simply dropped from a domain name, it is most
often replaced with the work “and” or “n,” a common substitute for “and” This
substitution has been found to result in a domain name that is confusingly similar to a
trademarked name. See Hexagon AB et al. v. Xspect Solutions Inc., WIPO Case No.
D2005-0472 where the panel ordered transferring, inter alia, <bns-comm.com> in and
<bnscmm.com> in part based on a finding that the domain names were confusingly
similar to Complainant’s mark in “B&S”.

In the present case, the Panel finds that the confusing similarity between AT&T and
SBC marks and the domain name in dispute <atnt-sbc.com>, in the Panel’s view
cannot be contested. The domain name incorporates AT&T’s mark in its entirety, and
incorporates “sbc” in a direct reference to the highly-publicized merger that occurred
between the two telecommunications companies. As a result, persons familiar with or
looking for information about AT&T’s relationship with SBC, or those generally
familiar with Complainant’s world-famous marks, will be confused into thinking that
<atnt-sbc.com> is owned, endorsed, sponsored, or maintained by AT&T to promote its
products. The fact that Respondent has substituted the letter “n” for the ampersand
rather than dropping it entirely does nothing to reduce the confusing similarity of the
domain name. Thus, it is the Panel’s opinion that there can be no doubt that the domain
name <atnt-sbc.com> is confusingly similar to AT&T’s registered marks.

B.   Rights or Legitimate Interests

Respondent is not AT&T’s licensee in any respect, nor is Respondent authorized to use
AT&T’s marks. AT&T has not endorsed, sanctioned, or sponsored Respondent’s use

                                      page 4
of its marks. Respondent does not own any registered or common law marks
containing the terms AT&T,ATT,ATNT,SBC, or any similar derivation. Respondent
has not been commonly known by the contested domain name, nor does Respondent
run any enterprise commonly and legitimately known by the contested domain name.

The Panel concludes that Respondent is not making legitimate noncommercial or fair
use of the contested domain name. Respondent’s only demonstrated use of the domain
name is to direct Internet traffic to a website with links to unrelated websites. Where
Respondent’s only use of a disputed domain name is to link users to unrelated websites,
and no legitimate business has been established, such behavior has consistently been
found not to establish legitimate rights or interests in the domain name. See AT&T
Corp. v. Azim Hemani, WIPO Case No. D2003-0634 where the panel found no
legitimate rights or interests in the <attphonecard.net> domain name where the only
demonstrated use was to direct users to a site that recommends searches for other
websites and sponsored links. See AT&T Corp. v. John Zuccarini d/b/a RaveClub
Berlin, supra, and Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500
where the panel found diversion of traffic from the domain name in dispute to unrelated
websites was not a bona fide use of the disputed domain name.

Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate
interests in the domain name in dispute.

C.   Registered And Used In Bad Faith

The Panel finds that the registration of the disputed domain name <atnt-sbc.com>
suggests that Respondent intends to unfairly and illegally exploit that domain name to
his advantage at the expense of AT&T. This case is similar to the case of Conoco Inc.,
Phillips Petroleum Company & Conoco Phillips v. Conocophillips.com, WIPO Case
No. D2002-0346 where Respondent had registered the domain names
<conocophillips.com> in anticipation of the merger of Conoco Inc. and Phillips
Petroleum Company. The Panel in that case recognized the legal rights present when
the domain name at issue is the same as the name of a newly-merged global

The Conocophillips case is part of an extensive line of WIPO decisions condemning
merger cybersquatting as potentially confusing to consumers. In AT&T Corp. v.
Beomjoon Park, WIPO Case No. D2001-0133, the panel cancelled the registration of
<attviacom.com>, recognizing that the combination of AT&T’s mark and Viacom’s
mark has a great potential to confuse Internet users into believing that the website is
some sort of cooperative venture between the two companies. In AT&T Corp. v. Randy
Thompson, WIPO Case No. D2001-0830, the panel ordered the transfer of the domain
name <attmsn.com> after finding it to be confusingly similar to the marks of AT&T
and Microsoft. The panel in that case found that the fact that Respondent registered the
Domain Name following media reports about possible business deal between MSN and
AT&T is some evidence that the Domain Name was intended to be a combination of
the two marks and ordered the transfer of the domain name in dispute.

Other examples of WIPO panels ordering the transfer of domain names in dispute
involving mergers include Vivendi S.A. et al v. Yu Fu Zhao WIPO Case No. D2000-
0717 where the domain name <seagram-vivendi.com> was requested two days after the
announcement of the merger of Vivendi and The Seagram Company Ltd., the panel
ordered that the domain name must be transferred to the merged entity; Pharmacia &

                                      page 5
Upjohn AB v. Sol Meyer, WIPO Case No. D2000-0785 where the panel ordered the
domain name, which was registered the same day as the announcement of merger talks
between Pharmacia and Monsanto Company transferred.

Most recently, this Respondent was the subject of an adverse WIPO decision based
upon its attempt to capitalize on the joint venture between AT&T and Yahoo!. See
AT&T Corp. v. rnetworld, WIPO Case No. D2006-0569 where the panel ordered the
domain <att-yahoo.com> be transferred to AT&T Corp.

Accordingly, the Panel finds that Respondent has registered and is using <atnt-
sbc.com> to divert Internet traffic to unrelated websites by exploiting consumer
confusion with AT&T’s world famous marks and the recent merger of AT&T and SBC.
 Internet users who arrive at the contested domain name while looking for a site to
obtain information about AT&T’s telecommunications products and services will
believe that they have arrived at an official AT&T web site or a site sponsored by or
otherwise affiliated with AT&T. This bad faith registration and use tarnishes and
dilutes AT&T’s famous marks by confusing customers and potential customers, and
interferes with AT&T’s business by frustrating attempts by Internet users to reach
AT&T’s actual websites.

The Panel also finds that registration of a famous mark as a domain name, by an entity
that has no legitimate relationship to the mark, can be sufficient to demonstrate bad
faith. In one case, a WIPO panel found that by virtue of the fame and widespread use of
the trademarks AT&T and ATT, the use of the letters “att” in the domain name
<attanywhere.com> immediately raises questions as to its bona fides. See AT&T Corp.
v. Woppies, WIPO Case No. D2000-1724. See also Europay Int’s S.A. v.
Eurocard.com, Inc., WIPO Case No. D2000-0173, where the panel found that where a
trademark is famous, it is difficult to imagine any good faith purpose for which
Respondents might have registered (the) domain names, and Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., WIPO Case No. D2000-1221, the panel found that the names
are so obviously connected with Complainants, that the “use or registration by anyone
other than Complainants suggests opportunistic bad faith”. Thus, registration of a
famous mark like “AT&T” or “SBC” as a domain name by an entity that has no
legitimate relationship to the mark can be sufficient to demonstrate bad faith in
registration and use of a disputed domain name.

Here, Respondent’s registration of the domain name containing the marks of two
newly-merged companies, in addition to Respondent’s lack of any connection with the
fanciful phrase “atnt-sbc”, demonstrates that one of the Respondent’s reasons for
registering and using the contested domain name is to block AT&T’s registration of this
domain and/or to extort payment from AT&T to allow such registration. Paragraph
4(b) of the Policy sets out four circumstances, without limitation that demonstrate bad
faith including that Respondent registered the domain name in order to prevent the
owner of the trade mark or service mark from reflecting the mark in a corresponding
domain name. As one WIPO panel observed, “cyber-squatting on the back of
announced mergers...has consistent been held to show bad faith.” See Shire Biochem
Inc., et al v. Syed Hussain, WIPO Case No. D2002-0453.

The Panel finds that Respondent’s use of the domain name to diver Internet traffic to
unrelated sites also is evidence of Respondent’s bad faith. Use of a domain name to
intentionally direct Internet traffic to websites unaffiliated with AT&T creates a
likelihood of a confusion as to AT&T’s endorsement of those websites and constitutes

                                     page 6
     bad faith. See Policy, Paragraph 4(b)(iv). By using the disputed domain name in this
     manner, Respondent intentionally attempts to attract Internet users to an unrelated
     location, creating a likelihood of confusion with Complainant’s mark as to the source,
     sponsorship, affiliation, or endorsement of that location. The fact that such confusion
     may be dispelled, and replaced by annoyance or disgust once the nature of the site is
     revealed, does not negate the fact of initial confusion. Ticketmaster Corporation v.
     Iskra Service, WIPO Case No. D2002-0165.

     As further evidence of Respondent’s bad faith registration and use of <atnt-sbc.com>,
     Complainant notes that recently Respondent has been ordered by WIPO to transfer a
     domain name containing AT&T’s mark in combination with the mark of another
     company, Yahoo!, with which AT&T was associated. See AT&T Corp. v. rnetworld,

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 in dispute <atnt-sbc.com> be
     transferred to the Complainant.

                                   John E. Kidd
                                   Sole Panelist

                                  Dated: March 14, 2007

                                           page 7