AT&T Corp. v. Caimmi Rappresentanze & Marketing Italia

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT & T Corp. v. Caimmi Rappresentanze & Marketing Italia

Case No. D2001-0541

1. The Parties

The Complainant is AT & T Corp., a corporation incorporated under the laws

of the State of New York, with a principal place of business in Basking Ridge,

New Jersey.

The Respondent is Caimmi Rappresentanze & Marketing Italia, VSD Acquisto

10 S. Maria A. Assisi, 06088, Italy.

2. The Domain Name and Registrar

The domain names in issue are <attbusiness.com> and <attbusiness.org>

("the Domain Names"). The Registrar is Network Solutions, Inc.

3. Procedural History

3.1 The Complaint was dated April 12, 2001, and received by the WIPO Arbitration

& Mediation Center, ("the Center") on April 13, 2001, and in hard

copy on April 18, 2001. The Center acknowledged receipt of the Complaint on

April 18, 2001.

3.2 On April 18, 2001, a request for Registrar Verification was transmitted

by the Center to Network Solutions requesting it to:

- confirm that a copy of the Complaint had been sent to it by the Complainant,

as required WIPO Supplemental Rules for Uniform Dispute Resolution Policy (the

"Supplemental Rules"), paragraph 4(b);

- confirm that the Domain Names were registered with it;

- confirm that the person identified as the Respondent was the current registrant

of the Domain Names;

- provide full contact details (i.e. postal addresses, telephone numbers, facsimile

numbers, e-mail addresses which were available in its WHOIS database for the

domain name registrant, the technical contact and administration contact and

billing contact for the Domain Names;

- confirm that the Uniform Domain Name Dispute Resolution Policy ("the

Policy") applies to the Domain Names;

- indicate the current status of the Domain Names.

3.3 On April 23, 2001, Network Solutions sent an e-mail to the Center indicating

as follows:-

- the Domain Names were registered with it;

- Caimmi Rappresentanze & Marketing Italia (of the above address) is shown

as the registrant of the Domain Names. Pietro Caimmi of Caimmi Rappresentanze

& Marketing Italia is the administrative and billing contact for the Domain

Names;

- confirmation that full contact details in relation to the Domain Names;

- confirmation that Network Solutions’ 5 Service Agreement is in effect;

- the domain name registrations status is "active".

3.4 By e-mail dated April 19, 2001, the Respondent indicated that he wished

to reply to the dispute in Italian. The Center replied by e-mail of the same

date recommending that he hire a translator to submit a Response on receipt

of the official Notification of the Complaint. This was in accordance with paragraph

11(a) of the Rules which states that proceedings will be in the language of

the Registration Agreement unless the parties have agreed otherwise. The Registration

Agreement with Network Solutions Inc is in English.

3.5 Having verified that the Complainant satisfied the requirements of the

Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("the

Rules"), the Center, on April 25, 2001, transmitted by courier and by e-mail

a Notification of the Complaint and Commencement of Administrative Proceedings

and the Complaint to the Respondent. This was also copied to ICANN.

3.6 On May 2, 2001, the Center received an e-mail from the Respondent. This

was copied to a Mr. Stephen H. Sturgeon (his role is unclear to the Panel) and

sought to describe the history of the Domain Names in broken English. The Center

also received a Response from the Respondent dated May 3, 2001. This took the

form of the standard form response with few amendments made to it.

3.7 On May 3, 2001, the Center sent to the Respondent a Response Deficiency

Notification and requested a final response by May 14, 2001. This indicated

the following deficiencies:

- the response was not submitted in electronic format as required by the Rules,

paragraph 5(b);

- the response was not submitted in one original and 4 copies, as required

by the Rules, paragraph 5(b) and the Supplemental Rules, paragraph 3(c);

- the response did not specify a preferred address for case related communications

to the Respondent or its authorised representative as required by the Rules,

paragraph 5(b)(ii). It stated that until such time as WIPO was provided with

this information, it would chose which contact details to use when sending the

case-related communications to the Respondent;

- the response did not specify a preferred method of communication for case-related

communications to the Respondent or its authorised representative as required

by the Rules, paragraph 5(b)(iii). It then stated that until such time as WIPO

was provided with this information, it would chose the method by which it would

communicate case-related communications to the Respondent;

- the response did not state that a copy of the Response had been sent or transmitted

to the Complainant in accordance with the Rules, paragraph 2(b), as required

by Rules paragraph 5(b)(vii);

- the response did not contain the full statement specified in Rules, paragraph

5(b)(ix);

- the response had not been signed by the Respondent or its authorised representative,

as required by Rules, paragraph 5(b)(ix);

- the response did not contain a response to the Statements and Allegations

Made in Complaint.

Finally, it stated that upon expiry of the May 14, 2001, deadline, regardless

of whether the Center had received the information requested, it would proceed

to appoint the Administrative Panel in accordance with the Rules and the Administrative

Panel would be informed of any deficiencies which were not remedied.

3.8 By e-mail dated May 4, 2001, the Respondent sent his Response to the Center,

stating that he had sent by DHL 4 copies and one original. He then stated "To

legal support I defend me I wish to decision of President Commission".

By e-mail dated May 9, 2001, the Respondent wrote to the Center stating "OK.

Now I hope have understand what I must to do now. I accept your rules and conditions

of Uniform Domain Name Policy adopted August 26, 1999 implementation documents

approved October 24, 1999 and sent to you my adhesion, Marketing Italia di caimmi

"Pietro Caimmi Rappr. & Marketing Italia"……I accept and

adhesion these conditions with confidence your decision, because I have establish

and are using domain name in good faith and I not want, not are infringing any

trade mark right the complainant may have in the domain name". And

at the end of a copy of the Policy he stated "I approve".

3.9 The Center then forwarded the same to the Complainant by e-mail dated May

10, 2001, stating "here is the Respondent’s response".

3.10 The Complainant elected to have the dispute decided by a single member.

Accordingly, on June 1, 2001, the Center notified the parties that an Administrative

Panel, composed of a single member, Nick Gardner, had been appointed. A statement

of acceptance and declaration of impartiality and independence has been filed

by the Panelist.

3.11 No further submissions were received by the Center or the Panel. Therefore,

the Administrative Panel was scheduled to forward its decision to the Center

by June 14, 2001.

4. Factual Background

4.1 The Complainant owns various trade marks which it has listed in the Complaint.

These include US Registrations, Community Trade Mark ("CTM") registrations

and Italian Registrations. Some marks include "&" in the name

and others do not. Some examples are set out below:

US Registration

MARK

REG. NO.

DATE

Class of Goods or Services

AT&T

1,293,305

September 4, 1984

38

1 800 ATT-GIFT

2,076,093

July 1, 1997

38

Community Trade Mark Registration

MARK

REG. NO.

DATE

Class of Goods or Services

AT&T

000064428

April 1, 1996

9 and 38

Italian Registration

MARK

REG. NO.

DATE

Class of Goods or Services

AT&T

415712

August 11, 1983

9

4.2 The Complainant is famous around the world for its products and services,

which include a variety of telecommunications and internet services, such as

long distance telephone services, internet access services, e-mail services,

web hosting services, as well as web sites offering a "myriad" of

other goods and services. It submits that for over a century it has continuously

provided telecommunications services under the name "AT&T", both

as an abbreviation of its former corporate name, and American Telephone &

Telegraph, and as part of its current corporate name, AT&T Corp.

4.3 The Complainant states that since 1988, it has continuously operated companies

in Italy under the AT&T name to sell its goods and services (as set out

in the Italian registrations of the mark), including "AT&T S.P.A",

incorporated in Italy on October 24th, 1988 and "AT&T Communications

Services Italia S.P.A.", incorporated in Italy on October 26, 1992. It

currently operates a company in Italy under the name of "AT&T Global

Network Services Italia S.R.L.", incorporated in Italy on January 21, 2000.

4.4 The Complainant owns the following domain names:

<attbusiness.net> (since October 1, 1999 owned through the Complainant’s

wholly owned subsidiary, AT&T Global Network Services)

<att.com>

<att.net>

<attws.com>

These domain names are for web sites that are accessible in Italy and offer

a variety of goods and services.

4.5 The Complainant states that it has invested and continues to invest a substantial

amount of money and effort in advertising and promoting its goods and services

under the name AT&T and AT&T and ATT marks. Evidence is adduced of brand

recognition, use, advertising, and promotion of the names and marks as an exclusive

designation of origin of the Complainant’s goods and services and as symbols

of the goodwill and reputation that it enjoys worldwide.

4.6 The Complainant provides details of the web site accessible through the

domain names in issue. These state "work in progress", contain (1)

information on how to obtain an e-mail account under that web site, (2) rotating

banner advertisements for a variety of web sites and (3) links to these web

sites. These links include links to adult entertainment web sites, a gambling

web site, a web site offering internet and telecommunications services (including

the sale of telephones and a web site that advertises cellular telephones).

4.7 In response to a letter sent by the Complainant’s Counsel, the Respondent

in an e-mail dated January 3, 2001, stated that its name was "attbusiness.com"

and "not att only" and referred to the address htt://communities.msn.it/attbusiness

which the Respondent indicated was "builded since 01.01.00".

The web site located at this address shows "Att-Business" used as

a mark in connection with consultancy, marketing support and the research services

for people who sell the "Gabriella Carlucci" brand of wedding apparel,

handbags and shoes. It contains rotating banner advertisements and links to

a site called "MSN Shopping" which sells a variety of goods and services

and another site called "1 Telefona gratis" concerning telephones.

However, the Respondent does not explain why it uses "Att-Business"

as a mark and name in circumstances where its brand appears to be "Gabriella

Carlucci". The relevance of this site is not clear, other than it is a

site operating under a name "attbusiness", although not a top level

domain.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are set out at length in the Complaint but may

be summarised as follows:

(1) The Domain Names at issue are confusingly similar to its trade name, service

marks and trademarks because the domain name incorporates its mark without the

"&", the absence of which is of little import. It states that

the designation ATT means AT&T and the word "business" in the

Domain Names suggests business services.

It submits that as a consequence of its worldwide reputation in telecommunications

services and provision of goods and services through its web site, consumers

are likely to believe the designation "attbusiness" refers to its

business services, especially because it owns the "attbusiness.net"

web site on which it offers a variety of business services under the mark "AT&T

BUSINESS INTERNET SERVICES".

(2) The Respondent has no rights or legitimate interests with respect to the

domain names in issue or "ATT-BUSINESS".

- The Complainant submits that the Respondent registered the domain names in

issue well after the Complainant had acquired its rights to the AT&T name

and marks and ATT marks in Italy and throughout the world, and after the Complainant

had registered and used its domain name "attbusiness.net".

- The Respondent has no connection or affiliation with it, neither has the

Respondent received any express or implied licence or authorisation to use its

name, marks and domain names.

- It is not aware of any trademark or service mark registrations owned by the

Respondent for "ATT Business" or "ATT-Business" or any variations

of the same.

- There is no reference to <attbusiness.com>, <attbusiness.org>,

"Att-Business" or "att-business" on the web sites located

at the Domain Names.

- The web site located at the address htt://communities.msn.it/attbusiness

shows "Att-Business" used as a mark in connection with the "Gabriella

Carlucci" brand of wedding apparel, handbags and shoes. However, the Respondent

does not explain why that site uses "Att-Business" as a mark and name

in circumstances where the brand promoted on the site appears to be "Gabriella

Carlucci".

- The alleged use of "Att-Business" at the above web site (even if

it occurred as early as January 1, 2000) is not related to the use of the Domain

Names. If the use began after it received the communication from the Complainant’s

Counsel, this use cannot be a basis for a claim of legitimate use because it

occurred after notice of the dispute.

Even if the Respondent’s claims are correct in relation to such use, registration

of the Domain Names was illegitimate because the Respondent must have had notice

of the Complainant’s use of its famous AT&T name, AT&T and ATT marks

and domain names.

The use of the "attbusiness" designation unfairly trades upon the

Complainant’s goodwill in its name and marks to create profits for the Respondent.

The Respondent’s use of the "ATT-Business" mark and the Domain Names

infringes the Complainant’s rights in violation of Italian trade mark law. It

also infringes the Complainant’s US registrations by virtue of its web sites

and has violated its Registration Agreement with Network Solutions.

(3) The Respondent has registered and is using the Domain Names in bad faith

Given the fame of the Complainant’s name and marks, its prior use of the web

site <attbusiness.net> and its registrations in Italy, the Respondent

has registered the Domain Names in bad faith.

The Respondent’s use of the Domain Names for web sites with banner advertising

and links shows an intent to attract Internet users to these web sites for commercial

gain through likelihood of confusion with the Complainant’s name, marks and

domain name. Users are likely to believe that the Complainant approves or sponsors

the Respondent’s web sites and Internet users are likely to be diverted to the

Respondent’s web sites.

The Complainant’s goodwill in its name is likely to be damaged by the association

with adult entertainment and gambling stemming from the links from the Respondent’s

web sites.

B. Respondent

The Respondent’s contentions are set out in the hard copy of the Response dated

May 8, 2001 and may be summarised as follows:

(1) In relation to element (i) of paragraph 4(a) of the Policy, the Respondent

says that "attbusiness" is different from (and therefore not confusingly

similar to) the Complainant’s mark. The Respondent’s e-mail to the Complainants

dated January 3, 2001, stated that its name was <attbusiness.com>

and "not att only".

(2) In relation to element (ii) of paragraph 4(a) of the Policy, the Respondent

says that "attbusiness" in the Domain Names stands for "attention

business" and appears to argue that the Complainant’s trade marks are not

valid under international or Italian law as it is "not possible to consider

a trade mark on word or more words together that are used in popular use, because

these words are part of proprietary language of people".

(3) In relation to element (iii) of paragraph 4(a) of the Policy, the Respondent

says that he registered the Domain Names in good faith and did not know of AT&T

at the time or its sites. Further, he says that according to networksolution.com

the Domain Names were "free" on a WHOIS test.

6. Discussion and Findings

6.1 The Panel has reviewed the Complainant and the Response and the documents

annexed thereto. In the light of this material and matters that are (on the

evidence) not challenged the Panel finds as set out below.

6.2 The domain names <attbusiness.com> and <attbusiness.org> are

confusingly similar to the Complainants’ trade marks and service marks. `

6.3 There is no evidence to suggest that the Respondent has any rights or legitimate

interest in the Domain Names. The Respondent has provided no convincing explanation

for its choice of the "attbusiness" name. It seems unlikely that the

Respondent was not aware of the famous AT&T name. Indeed, although it is

not entirely clear from the wording in the Response, it seems the Respondent

may have searched and thus been an actual notice of the Complainant’s trade

marks. The Respondent includes copies of various trade mark searches at Annex

D of the Response and states in the Response that before he registered the Domain

Names he "searched" and "studied" international and Italian

law "about trade marks".

6.4 The fact that the name appeared to be "free" (i.e. available)

on the networksolutions.com WHOIS search is not, contrary to the Respondent’s

contention, sufficient to found a claim of legitimate interest. `

6.5 There is merely a bare assertion of prior use of the name "Att-Business"

as another subsidiary domain name which is not properly explained and which,

given the fame of the Complainant’s name and mark is not sufficient in showing

prior rights of the Respondent.

6.6 The Respondent’s use of the Domain Names for web sites with banner advertising

and links strongly suggests an intent to attract Internet users to its web sites

for commercial gain through likelihood of confusion with the Complainant’s name,

marks and domain name, particularly those links relating to telephony products

and services. There is no credible evidence that the name of the site is intended

to represent "attention business".

7. Decision

In the light of the above findings the Panel’s decision is as set out below:

The Domain Names are confusingly similar to the Complainant’s trade marks (see

paragraph 4(a)(i) of the Policy).

The Respondent has no rights or legitimate interests in the Domain Names (see

paragraph 4(a)(ii) of the Policy).

The Domain Names were registered and are being used in bad faith (see paragraph

4(a)(iii) of the Policy). In particular, they were registered primarily for

the purpose of attracting Internet users to the Respondent’s web sites (see

paragraph 4 (b) (iv) of the Policy).

The Panel directs that both Domain Names be transferred to the Complainant.

Nick Gardner

Sole Panelist

Dated: June 14, 2001

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