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WIPO Domain Name Decisions D2002-0741

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WIPO Domain Name Decisions D2002-0741 ...

    WIPO Arbitration and Mediation Center

    ADMINISTRATIVE PANEL DECISION

    AT&T Corp v All Time Talk Cellular and All Over Land

    Case No. D20020741

    1. The Parties

    The Complainant in this administrative proceeding is AT&T Corp., a United States corporation incorporated under the laws of the State of New York, whose principal place of business is in Basking Ridge, New Jersey, United States of America (“USA”), represented by Alan Charles Raul, of Sidley Austin Brown & Wood LLP, 1501 K Street, N.W., Washington, D.C. 20005, United States of America. The Respondents are All Time Talk Cellular of Bouar, Karam Karam Blg., Jounieh, Keserwan 613435, Lebanon and All Over Land of Dekwaneh, Beirut, Lebanon.

    2. The Domain Names and Registrars

    (a) The domain names in issue are , ,

    , , , ,

     and (the “Domain Names”);

    (b) The registrar with which the domain names , ,

     and are registered is iHoldings.com, Inc. D/B/A thDotRegistrar.com of 13205 SW 137 Avenue, Suite #133, Miami, FL 33186,

    United States of America;

    (c) The registrar with which the domain names ,

    , and are registered is Domain thBank, Inc., of 23 West 4 Street, Bethlehem, PA 18015-1603, United States of

    America.

    3. Procedural History

The WIPO Arbitration and Mediation Center (the “Center”) received on

    August 6, 2002, an electronic version of the Complaint and on August 15, 2002, a hard copy of the same and accompanying documents. On August 6, 2002, the Complainant’s Attorney also lodged with the Center a Consolidation Petition, seeking

    page 1

    to consolidate this administrative proceeding with WIPO Case Nos. D2002-0569 and D2002-0606. That petition was denied by the Center on the grounds that those two earlier cases (which had been consolidated) had already proceeded too far (these proceedings were decided on September 13, 2002.)

    On August 8, 2002, the Complainant sought leave to amend the Complaint by including the four “attcredit” and “attmobile” domain names listed above to the original group of the first four “attvideophone” and “attphone” domain names. Leave was granted on

    August 9, and on August 12, 2002, an Amended Complaint was filed (this is referred to hereafter simply as the “Complaint”). The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Complainant made the required payment to the Center. On August 20, 2002, the Center formally notified the Respondents that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

    The Center has transmitted via e-mail requests for registrar verification in connection with this case in relation to all the Domain Names. The respective Registrars confirmed that they are the Registrars of the domain names listed in paragraph 2 above and that the Administrative, Billing and Technical Contacts are:

    (i) in the case of the four .biz domain names All Time Talk Cellular, of the address

    given in paragraph 1; and

    (ii) in the case of the four .info domain names All Over Land, at its above-stated

    address.

    No Response has been filed by either Respondent. The Center sent notification of the Complaint to the Respondents by FedEx courier, and by e-mail (and by fax to an inoperative fax number given for All Over Land).

    On September 13, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by September 27, 2002.

    4. Factual Background

    (a) The Complainant is the registered proprietor of the trade mark AT&T in a large

    number of countries. To satisfy the requirements of the Policy, it is sufficient to

    record that it owns United States Trade Mark No. 1,342,197, issued on

    June 18, 1985 (the “Trade Mark”).

    (b) The Complainant has been the registrant of the domain name

    since 1986.

    (c) The Domain Names were all registered on December 1, 2001. The four .biz

    domain names were registered over the space of about 8 seconds, and the

    four .info names some 24 minutes later over a similar space of time.

    (d) The Complainant initially filed WIPO Case No. D2002-0569 against the

    Respondent All Time Talk Cellular and another respondent May Halabi. The

    Complainant then filed a second, related complaint (WIPO Case No. D2002-0606)

    page 2

    against All Time Talk Cellular and, based on the Complainant’s firm belief that All Time Talk Cellular and Halabi are acting in concert, petitioned the Center for consolidation of the second matter with the first. After filing its second complaint, the Complainant learned that All Time Talk Cellular owns additional infringing domain names, and that it is likely acting in concert with yet a third party, All Over Land. The Complainant thus filed a third complaint in this case before the Panel, naming All Time Talk Cellular and All Over Land as Respondents. Having filed its third complaint, the Complainant again discovered additional infringing domain names. The Complainant consequently filed the present (amended) Complaint to incorporate these additional names.

    5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:-

    (a) The 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. The Complainant has invested at least hundreds of millions of dollars promoting its brand among consumers in the United States and other countries around the world. As a result, the Trade Mark is well-known worldwide.

    (b) A WIPO Panel has confirmed the worldwide recognition of the great value in AT&T’s brand name. The Panel stated:

    “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.”

AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723

    (c) The Complainant is the registrant of the domain name . The name .com> resolves to AT&T’s primary corporate website, . Thus,

    the Complainant conveys the Trade Mark by using on the web, which does not permit the use of an ampersand character in a domain name.

    (d) Numerous WIPO panels have already found that domain names combining the Trade Mark with another term create confusing similarity, and have transferred these names to AT&T. See, e.g.:

- AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790

    ( is confusingly similar to AT&T’s extensive family of

    trademarks, and the generic term “web” does not detract from the

    similarity);

- AT&T Corp. v. Woppies, WIPO Case No. D2000-1724 (given AT&T’s

    substantial use of “AT&T” and “ATT,” and AT&T’s strong rights in these

    marks, causes confusing similarity);

    page 3

- AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249 (transferring

    );

    - AT&T Wireless Services, Inc and AT&T Corp. v. Phone Center, Mark

    Hentrich, WIPO Case No. D2000-0678 (transferring

    after finding confusing similarity);

- AT&T Corp. v. Shenzhen Zhidong Computer Co. Ltd., WIPO Case No.

    D2000-1574 (transferring );

- AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553

    ( and are confusingly similar to

    AT&T’s trademark);

- AT&T Corp. v. Caimmi Rappresentanze & Marketing Italia, WIPO Case

    No. D2001-0541 (deciding in favour of AT&T after rejecting the argument

    that “attbusiness” designated a company called “Attention Business”).

    (e) At the time the Complainant filed its initial complaint against All Time Talk Cellular and May Halabi, the domain names , , , and resolved to a single, inoperative website labelled “Attention DSL”. Though that site is clearly designed to appear as though it is that of a business offering DSL services, the site in fact does not function at all. Internet users cannot click on any portion of the site, including the headings, graphics, or ostensible “links”. No contact information for the “business” is provided. The website therefore consists of a single screen that offers no access to products or services and no information about the purported business. After receiving the Complainant’s initial complaint, Halabi disclaimed ownership of

    . AT&T’s attorneys then received an e-mail from All Time Talk

    Cellular stating that it had deactivated the link between and the “Attention DSL” website. The > name now resolves to a generic

    screen stating “The page cannot be found”. The domain names , and still resolve to the “Attention DSL” site. Significantly, despite Halabi’s attempt to disclaim any connection with All Time

    Talk Cellular, the latter’s and domain names, which are contested here, do resolve to the “Attention DSL” site.

    (f) The contested domain names , , and e.info> resolve to a generic page stating: “Your

    account is currently not active on DomainRedirect.com”. The contested names and resolve to a blank page.

    (g) The Domain Names have never been used in any bona fide trade or business. Rather, by registering these names, the Respondents intended to divert and confuse Internet users seeking the Complainant’s products and services for the purpose of exploiting AT&T’s famous mark and improperly diverting users to another website.

    (g) It cannot be contended that the numerous links between Halabi, All Time Talk Cellular and All Over Land are merely the product of coincidence. The evidence that these parties are acting together is abundant.

    B. Respondent

    page 4

As noted above, no Response has been filed.

    6. Discussion

    The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:

    (i) the domain name is identical or confusingly similar to a trade mark or service

    mark 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 domain name has been registered and is being used in bad faith.

As to element (i), the Trade Mark is “AT&T”, and is without doubt internationally

    famous in the field of communications. In the context of the Internet the Trade Mark is reduced to “att”, and has been extensively used by the Complainant in that form. Here, the Respondents have combined “att” with the words “videophone”, “phone”, “mobile” and “credit”. All four words describe products or services provided by the Complainant. A member of the public seeing any of the Domain Names would inevitably conclude that this was a domain name emanating from the Complainant and reflecting some aspect of its famous business. The Panelist has no hesitation in concluding that each of the Domain Names is confusingly similar to the trade mark AT&T.

    As to element (ii) of paragraph 4(a) of the Policy, the Respondents have done nothing to demonstrate that they have any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the Policy apply (ie before notice of the dispute preparation to use the Domain Names, being commonly known by the Domain Names or making a legitimate non-commercial or fair use of the Domain Names). In the absence of any justification from the Respondents of their activities in relation to the Domain Names, the Panelist concludes that the Complainants have established element (ii).

    So far as element (iii) is concerned the Respondents’ conduct is redolent of bad faith. The following are matters that the Panelist has particularly noted:-

    (a) On the evidence assembled by the Complainant, spanning 6 pages of the

    Complaint, the Panelist is satisfied that the Respondents and May Halabi

    have been acting in concert to register a string of domain names beginning

    with the letters “att”, i.e. this is a plain case of cybersquatting.

    (b) It is in the Panelist’s opinion no coincidence that the initial letters of the

    Respondents’ names happen to be A.T.T. and A.O.L., and that this suggests

    an intention to operate other than in good faith.

    (c) The virtually simultaneous registration of the four .biz Domain Names by

    one Respondent with one registrar and the four .info Domain Names by the

    other Respondent with another registrar.

    (d) It is a matter of speculation as to how the Respondents might intend to use

    the Domain Names. Given the fame of the Complainant and the Trade

    page 5

    Mark, the attempts by the Respondents (and indeed many other parties see

    paragraph 5A.(d) above) to register domain names in which “att” is

    prominent, and the absence of any attempt by the Respondents to explain

    their conduct, the inference that the Respondents have been acting in bad

    faith is irresistible.

    In all the circumstances, therefore the Panelist finds that the Complainant has established element (iii) of paragraph 4(a) of the Policy.

    7. Decision

    In the light of the findings in paragraph 6 above, the Panelist concludes that:-

    - the domain names , , ,

    , , , and

     are confusingly similar to the trade mark AT&T of the

    Complainant;

    - the Respondents have no rights or legitimate interests in the domain names;

    - the domain names have been registered and are being used in bad faith.

    Accordingly, the Panelist orders that the domain names , , , , , , and be transferred to the Complainant, AT&T Corp.

    _______________________________________

    Christopher Tootal

    Sole Panelist

    Dated: September 20, 2002

    page 6

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