AT&T Corp. v. Randy Thompson/For Sale

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Randy Thompson

Case No. D2001-0830

1. The Parties

Complainant is AT&T Corp. ("AT&T"), 295 North Maple Avenue,

Basking Ridge, NJ 07920-1002, USA.

Respondent is Randy Thompson ("Thompson"), 88 Perry Street #502,

San Francisco, CA 94107, USA.

2. Domain Name and Registrar

The domain name in issue is: <attmsn.com> (the "Domain Name").

The registrar is Register.com (the "Registrar"), 575 8th

Avenue – 11th Floor, New York, NY 10018, USA.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

AT&T’s Complaint by e-mail on June 26, 2001, and in hard copy on June 28,

2001. The Center verified that the Complaint satisfies the formal requirements

of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"). Complainant made the required payment

to the Center.

On June 28, 2001, the Center transmitted via e-mail to the Registrar a request

for registrar verification in connection with this case. On June 28, 2001, the

Registrar transmitted via e-mail to the Center its response, confirming that

(1) a copy of the Complaint was sent to it by Complainant as required by Supplemental

Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent

is the current registrant of the Domain Name; (4) the Organization and Administrative

Contact for the Domain Name is "Randy Thompson/For Sale," and the

Technical and Zone Contact for the Domain Name is the Registrar [1];

(5) the Policy applies to the Domain Name; and (6) the Domain Name is active.

On June 29, 2001, the Center transmitted the Notification of Complaint and

Commencement of Administrative Proceeding, together with a copy of the Complaint,

via e-mail with copy by courier (FedEx) to Respondent and to the Registrar [2].

The Center advised that Respondent’s Response was due by July 18, 2001, pointed

out that the Response should be in accordance with the Rules and the Supplemental

Rules, and described the consequences of a default if the Response was not sent

by the due date. The Center also noted that the Complainant had elected for

a single member panel to decide this matter.

The requirements of Rule 2(a) having been satisfied, the formal date of the

commencement of this administrative proceeding, pursuant to Rule 4(c), is June 29, 2001.

On June 30, 2001, Respondent served, through his attorney, a Request for Preparatory

Conference, a Request for Hearing, and Interrogatories, on counsel for Complainant.

No Response was received from Respondent by the July 18, 2001, deadline. On

July 20, 2001, the Center transmitted to Respondent, via e-mail and courier

(FedEx), a Notification of Respondent Default. The Center advised Respondent

that (a) Respondent had failed to comply with the deadline for submission

of its Response and (b) the consequences of default, including (1) appointment

of a single member panel (per the Complainant’s request); (2) the Panel would

be informed of Respondent’s default and would decide in its sole discretion

whether to consider a Response if submitted later; and (3) notwithstanding the

default, the Center would continue to send all case-related materials to Respondent.

On July 21, 2001, Respondent notified the Center that he believed a Response

had been submitted by his attorney, and requesting consideration by the Panel.

On July 23, 2001, the Center notified Respondent that no Response (or other

correspondence) had been received from Respondent or his attorney by the deadline

of July 18, 2001, and that his message would be forwarded to the Panel. On July 25, 2001,

Attorney Cliff Capdevielle notified the Center that he would be representing

Respondent in this matter, represented that he had not received a copy of the

Notification of Complaint from the Center, and requested that the Center extend

the deadline for a Response until August 18, 2001. In its discretion pursuant

to Rule 5(d), the Center declined, on July 26, 2001, to grant the

requested extension. The Center notified Respondent that any Response submitted

nevertheless could be considered by the Panel in the Panel’s discretion.

On or about July 25, 2001, Respondent (through his attorney) submitted a Response.

On July 26, 2001, Complainant objected to consideration of the Response as untimely

filed, and to Respondent’s Request for Preparatory Conference, Request for Hearing,

and Interrogatories, as improper under the applicable rules [3].

On August 3, 2001, Respondent’s attorney replied to Complainant’s objection,

representing that although he had received an unofficial copy of the Complaint

from Complainant’s counsel in a timely fashion, he did not receive an official

copy from the Center until after receiving the Notification of Respondent Default.

Respondent’s attorney also stated that Respondent did not provide him with the

official Complaint because he (Respondent) assumed an official Complaint would

be sent directly to the attorney.

On August 1, 2001, the Center advised the parties, in accordance with Rule

6(f), of the appointment of Michael Albert, the undersigned, as the Panelist

in this case. Pursuant to Rule 15(b), the Center further informed the parties

that, absent exceptional circumstances, the Panel would forward a decision to

the Center by August 15, 2001.

On August 1, 2001, the Center transmitted the case file to the Panel.

4. Factual Background; Parties’ Contentions

a. The Trademark

The Complaint is based on Complainant’s alleged ownership of rights to the

mark AT&T, which Complainant claims to have used for telecommunications

goods and services for over a century.

Complainant owns numerous federal registrations for the AT&T mark and other

marks containing the term AT&T, as well as the term ATT (without an ampersand).

Complainant provided the Panel with copies of a number of its Certificates of

Registration for AT&T as a trademark or service mark, including Registration

Nos. 2,076,846, 1,293,305, 1,298,084, 1,314,059, 1,353,769, 1,542,937,

1,550,818, 1,688,845, 2,049,544, 1,331,847, 1,342,197, 1,367,469, 1,493,970,

1,699,744, and 1,970,579. Complainant also provided the Panel with copies of

its Certificates of Registration and/or printouts from the U.S. Trademark Electronic

Search System ("TESS") of the United States Patent and Trademark Office

("USPTO"), for numerous other marks including 1 800 CALL ATT, CAMP

ATT, 1 800 ATT-GIFT, and ATT.NET.

The earliest of these registrations, U.S. Reg. No. 1,293,305, is for the word

mark AT&T in block letters. A block-letter registration is the broadest

claim to a word mark, in that it is "not … restricted to any particular

form or type." Exxon Corp. v. National Foodline Corp., 579

F.2d 1244, 1247 (C.C.P.A. 1978). This registration issued in 1984 for digital

network telecommunications services, and claims a date of first use in September,

1983.

Other registrations owned by Complainant for the AT&T or ATT marks or variants

thereof cover other telecommunications products and services, including products

and services related to the Internet.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction

to decide the dispute. A copy of the Registrar’s Services Agreement, which incorporates

the Policy by reference, is appended as Annex 2 to the Complaint

[4].

In Paragraph 10 of its Complaint, Complainant avers that each of the three

requirements of Paragraph 4(a) of the Policy have been satisfied.

c. The Complaint

Complainant asserts as follows:

- That Complainant has been selling telecommunications goods and services for

over a century under the marks AT&T and ATT, and phrases that combine AT&T

or ATT with other words.

- That the AT&T brand has substantial commercial value.

- That Complainant owns and operates a large Internet Service Provider ("ISP")

at the web address <www.att.net> serving nearly two million customers

in the United States.

- That Complainant has rights in the marks AT&T, ATT, and phrases combining

AT&T or ATT with other words.

- That Microsoft Corporation ("Microsoft") has rights in the mark

MSN and related marks, and operates the Microsoft Network (also known as MSN),

serving over three million subscribers.

- That in January, 1999, media reports indicated that Complainant was allegedly

in discussions with Microsoft to buy all or part of the Microsoft Network.

- That the Domain Name is confusingly similar to Complainant’s and Microsoft’s

marks, including AT&T, ATT.NET and MSN.

- That Respondent combined Complainant’s mark with Microsoft’s mark (and registered

the combined mark as the Domain Name) "in bad faith for the purpose of

capitalizing on the presumed relationship between the two companies, and speculating

on the possibility of a business combination between the two companies."

- That Respondent has no legitimate interest in the Domain Name because (1) Respondent

is not authorized to use Complainant’s mark or Microsoft’s mark; (2) Respondent

does not own rights in marks comprising AT&T, ATT, MSN or ATTMSN.COM; (3)

Respondent has not been commonly known by the Domain Name and does not run any

enterprise commonly known by the Domain Name; and (4) Respondent is not making

legitimate non-commercial or fair use of the Domain Name.

- That Respondent’s intent in registering the Domain Name was to divert Internet

traffic to his web site; or to sell it for substantial profit; or to "lock

it up" based on speculation that Complainant might purchase all or part

of the MSN.

d. The Response

As noted above, the Respondent is in default pursuant to Rule 5(e), Rule 14

and Supplemental Rule 7(c) because no Response was received from Respondent

by the July 18, 2001, deadline.

The Center’s denial of Respondent’s request for an extension to file a Response

in this proceeding was a proper exercise of the Center’s discretion pursuant

to Rule 5(d).

In the event of a belated Response, the Panel’s default course of action, pursuant

to Rule 14(a), is to proceed to decision based only on the Complaint. The Panel

may, in its discretion, consider the Response if "exceptional circumstances"

exist. In addition, the Panel has broad general powers under Rule 10 (a) to

"conduct the administrative proceeding in such manner as it considers appropriate

in accordance with" the Policy and the Rules. Specifically, the Panel is

required under Rule 10(b) to ensure "that each Party is given a fair opportunity

to present its case." Under Rule 10(d) the Panel is empowered to "determine

the admissibility, relevance, materiality and weight of the evidence."

On review of the record in this proceeding, the Panel is not convinced that

Respondent demonstrated "exceptional circumstances" warranting an

extension of time to file a Response pursuant to Rule 14(a) [5].

(Indeed, the Respondent does not even contend, in any of his submissions, that

exceptional circumstances exist here.)

Although the Panel declines to find exceptional circumstances in this case,

however, it will nevertheless consider Respondent’s Response brief pursuant

to the general powers and responsibilities set out in Rule 10. Denial of an

opportunity for response would be a rather drastic step which, in the Panel’s

opinion, should be undertaken with great care in view of the exhortation of

Rule 10(b) that each party be "given a fair opportunity to present its

case." [6]

In his Response, Respondent asserts as follows:

- That the Complaint does not set out sufficient evidence that Respondent’s

registration of the Domain Name was carried out in bad faith. Specifically,

the Complaint does not show that the Respondent (1) intended to divert the Complainant’s

customers to the Respondent’s web site; (2) used any false contact information

or aliases; or (3) has a history of selling domain names containing the Complainant’s

registered marks.

- That the Domain Name is unlikely to be confused with trademarks owned by

Complainant because there are approximately 11,000 registered domain names beginning

with the letters ATT.

- That the Complainant is not the owner of a registration for the mark ATT

(i.e., without an ampersand) [7], is not the

owner of any business or service named ATTMSN, has no rights to the mark ATTMSN,

and has no rights to the mark MSN.

- That this Panel lacks jurisdiction over this dispute because Microsoft is

an "indispensable party."

- That the factors set out by the Ninth Circuit Court of Appeals (United States)

for consideration in determining the likelihood of confusion between two trademarks

favor a finding that confusion is unlikely. Specifically, that (1) Strength

of mark. Complainant’s mark ATT (to the extent Complainant has rights in

said mark) is weak; (2) Use of mark. Complainant does not use the marks

ATT, MSN or ATTMSN; (3) Similarity of marks. Complainant’s mark ATT is

not similar to the Domain Name ATTMSN which is "a much longer six-syllable

word"; (4) Actual confusion. Complainant has not alleged actual

confusion in the marketplace; (5) Knowing adoption. Respondent did not

knowingly adopt Complainant’s mark; (6) Distribution channels. Respondent

does not sell goods or services in competition with those of Registrant; and

(7) Market factors and product lines. Complainant and Respondent "are

in entirely different businesses" and do not "compete."

5. Discussion and Findings

a. Motions and Interrogatories

As noted above, on June 30, 2001, Respondent served a Request for Preparatory

Conference, a Request for Hearing, and Interrogatories. Complainant filed a

Motion for Leave to Oppose Respondent’s Requests and Interrogatories, together

with an Opposition brief, on July 5. Complainant reiterated the substance of

its Opposition in a communication with the Center on July 26, 2001.

Aside from the Complaint and the Response, additional submissions to the Panel

are not contemplated by the Rules, except when specifically requested by the

Panel pursuant to Rule 12. While the Panel presumably has the power to consider

such additional submissions pursuant to Rule 10(a), at most such consideration

is discretionary.

Respondent has requested a Preparatory Conference and a Hearing. In-person

hearings are to be denied pursuant to Rule 13 unless the Panel, in its discretion,

finds that exceptional circumstances exist warranting such a procedure. In this

case, the Panel finds that the Complaint and the Response provide sufficient

information from which the Panel may render its decision [8].

To the extent that Respondent seeks an order from the Panel convening such a

conference or hearing, the request is denied.

The Panel also finds that Respondent’s service of Interrogatories or other

discovery requests is improper under the Rules, which make no provision for

discovery.

In view of the Panel’s findings with respect to Respondent’s Motions and Interrogatories,

an opposition brief from Complainant is unnecessary, and Complainant’s Motion

for Leave to Oppose is accordingly denied as moot.

b. Regulations Applicable to Consideration of the Merits

Having disposed of the procedural issues raised by the parties, the Panel now

proceeds to consider this matter on the merits in light of the Complaint, the

Response, the Policy, the Rules, the Supplemental Rules, and other applicable

legal authority, pursuant to Rule 15(a). In the Panel’s view, given that this

dispute involves a domain name registered in the United States and given that

both parties appear to be based in the United States, applicable authority shall

include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect

to the Domain Name, each of the following:

(i) The Domain Name is identical or confusingly similar to a trademark in which

Complainant has rights; and

(ii) 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.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative,

circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be

evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any

one of which, if proved by Respondent, would demonstrate Respondent’s rights

or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).

c. Complainant’s Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant has proven that it is the owner of trademark rights in the mark

AT&T, going back at common law for many decades, and continuing through

the date of the Complaint, and also has many federal registrations, which have

become incontestable pursuant to the provisions of 15 U.S.C. § 1065. Complainant’s

registrations of its trademarks on the Principal Register of the USPTO establish

a presumption of validity of the marks under United States law. See 15

U.S.C. § 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868

(9th Cir. 1999). Additionally, the registrations constitute constructive notice

to all other parties of Complainant’s ownership of the marks. See 15 U.S.C.

§ 1072.

Complainant has also proven that it owns trademark rights in the mark ATT (without

an ampersand), particularly for goods and services related to telecommunications

and/or the Internet. In particular, as noted above, Complainant has registered

several marks containing the term ATT in combination with other words, phrases

or numbers. Among these is the mark ATT.NET (for, inter alia, electronic

mail and providing multiple user access to global computer networks).

While the Panel acknowledges Respondent’s argument that the Complainant’s claims

to ATT (without an ampersand) are weaker than its claims to AT&T (with an

ampersand), the Panel agrees with the distinguished panel in AT&T Corp.

v. WorldclassMedia.com, WIPO Case No.

D2000-0553 (WIPO, July 28, 2000), that "an ampersand is not a valid

character in a domain name and its absence is not sufficient to prevent the

[domain name] in dispute from being confusingly similar to Complainant’s marks."

In comparing Complainant’s mark(s) to the Domain Name, it is well established

that the generic top-level domain, in this case ".com," must be excluded

from consideration as being a generic or functional component of the Domain

Name. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d

Cir. 2000).

While the remaining terms, ATT and ATTMSN, are not identical, the Panel finds

that they are confusingly similar. The Panel is persuaded that the combination

of the mark ATT with the mark MSN is likely to compound rather than obviate

confusion, because MSN and AT&T provide similar services from their respective

web sites. Indeed, the fact that Respondent registered the Domain Name following

media reports about a 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

[9].

This Panel also agrees with its predecessor panels that simply combining one

trademark with another does not obviate a likelihood of confusion. See,

e.g., Time Warner, Inc. and EMI Group, PLC v. CPIC Net, WIPO

Case No. D2000-0433 (WIPO, September 15, 2000). This is particularly

true where (as here) the two marks are used for similar products and both have

a strong connection to the Internet [10].

The Panel disagrees with much of Respondent’s analysis of the Ninth Circuit’s

factors [11] (except that portion of Respondent’s

analysis that is based on a lack of use of the Domain Name):

(1) Strength of mark. Complainant’s mark ATT is quite strong, in light

of Complainant’s evidence that includes length of use, number of users (in the

millions), substantial investment in the mark, and other considerations; (2)

Use of Mark. Complainant’s mark and the Domain Name are both used or

intended for use on the Internet; (3) Similarity of marks. There is a

strong similarity between Complainant’s mark and the Domain Name. Indeed, the

Domain Name appears to be the concatenation of Complainant’s mark with the mark

of another company with whom Complainant has been closely associated in press

coverage; (4) Actual confusion. On this factor, the Panel agrees with

Respondent that no actual confusion has been shown. U.S. courts have noted,

however, when deciding trademark cases, that actual confusion is unlikely to

be found, and its absence therefore should not be deemed significant, where

(as here) the contested usage is comparatively recent or of limited scope; (5)

Knowing adoption. Complainant’s federal registrations constitute constructive

notice of its marks to all; and Respondent has not denied that it was familiar

with the ATT and MSN marks and the companies that own those marks; (6) Distribution

channels. While Respondent may be right that there is at present no apparent

overlap in distribution channels, absent evidence of what Respondent’s business

consists of or how it operates, any use of the Domain Name would occur on the

Internet, which overlaps with the channels of distribution of Complainant’s

goods and services, particularly through its <att.net> domain name; (7)

Market factors and product lines. Inasmuch as neither party has brought

to the Panel’s attention any evidence of what Respondent’s product lines or

market consists of, there is no evidence of overlap.

In the Panel’s view, a balancing of the above factors would favor a finding

of a likelihood of confusion to the extent any use is made of the Domain Name.

(ii) Whether Respondent Has Rights or Legitimate Interests in the Domain Name

The Respondent was unable to point to any evidence of his rights in the Domain

Name. Respondent offered no evidence that he uses the Domain Name, nor that

he has ever used the mark ATTMSN in connection with any bona fide offering of

goods or services, or for any other purpose. It does not appear than any use

is being made of the Domain Name - no web site exists at that address and Respondent

has not claimed or shown that it makes any other use of the Domain Name [12].

See Paragraph 4(c)(i) of the Policy. Respondent also does not appear

to be known by the name ATTMSN. See id. at Paragraph 4(c)(ii).

Finally, Respondent does not claim to be making a legitimate non-commercial

or fair use of the Domain name. See id. at Paragraph 4(c)(iii).

Accordingly, the Panel concludes that Respondent has no rights or legitimate

interests in the Domain Name.

(iii) Registration and Use in Bad Faith

Complainant’s third hurdle is to establish that Respondent has registered and

used the Domain Name in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the

registration and use of a domain name in bad faith. The first is acquisition

of 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 [registrant’s] documented out-of-pocket

costs directly related to the domain name."

In this case, the Panel finds evidence of this type of bad faith. First, the

fact that Respondent lists his contact information in the Registrar’s WHOIS

database as "Randy Thompson/For Sale" strongly suggests that the Domain

Name (which is not used by Thompson) is indeed "for sale." Respondent

declined to address this issue in his Response. Respondent’s silence on this

issue suggests that an adverse inference may be appropriate. While no evidence

directly establishes the amount for which Respondent sought to sell the Domain

Name, it is a fair inference from the fact that he listed it "for sale"

simultaneously with his registration of it that his intent was to obtain consideration

in excess of his registration costs.

That this usage was Respondent’s "primary" purpose follows from the

fact that he does not appear to have had any other purpose — he is making no

legitimate use of the Domain Name, and has not established any specific intent

to do so. Taken together with the fact that he undoubtedly had actual knowledge

(a fact he does not deny), and at a minimum had constructive knowledge (as a

result of the registrations), of the famous marks contained in the Domain Name,

it is difficult to infer any other purpose than that of selling it to Respondent

or other holders of rights in the said marks (or possibly establishing a domain

name designed to divert business from them, which would be another type of bad

faith). "Actual or constructive knowledge of the Complainant’s rights in

trademarks is a factor supporting bad faith." Ticketmaster Corp. v.

Spider Web Design, Inc., Case No. D2000-1551

(WIPO, February 4, 2001).

Second, the fact that Respondent has made no use of the Domain Name himself

further supports an inference of bad-faith registration on the facts of this

case. Had he intended to make some good-faith use of the mark, one would expect

him to have done so, or at least explained the failure to do so in his Response.

See Telstra Corp. v. Nuclear Marshmallows, Case

No. D2000-0003 (WIPO, February 18, 2000) (registration together with "inaction"

can constitute bad faith). Numerous panels have followed this decision. See

Ticketmaster (citing eight such cases). While this Panel is not prepared

to conclude that nonuse of a domain name will automatically constitute bad faith,

it is, on the facts of this case, a factor adding to the weight of the evidence

of bad faith with respect to this Domain Name, particularly given the fame of

the mark and Respondent’s failure to offer any plausible explanation or evidence

of any good-faith use.

Additionally, as noted above, see supra note 9, the fact that

Respondent registered the Domain Name following media reports about a possible

business deal between MSN and AT&T is some evidence that Respondent intended

to profit from the Domain Name by selling it to either AT&T or MSN, or both.

In short, based on the record before the Panel, Respondent does not appear

to have made any use of the Domain Name other than to offer it for sale. Accordingly,

the Panel finds bad faith of the form illustrated by the first example in Paragraph

4(b) of the Policy.

The second illustration of bad faith in the Policy occurs when the registrant

registers the domain name to prevent the trademark owner from reflecting the

mark in a corresponding domain name, particularly when Respondent has engaged

in a pattern of such conduct. Complainant has made no allegation that it has

been unable to use the trademark in a domain name (other than the Domain Name

at issue). Nor does Complainant allege any pattern of improper registrations

by Respondent. Accordingly, the Panel does not find this illustration applicable

here.

The third illustration of bad faith is registration "primarily for the

purpose of disrupting the business of a competitor." On the facts of this

case, there is no evidence that Respondent is a competitor of Complainant, and

Respondent’s registration of the Domain Name does not appear to have disrupted

Complainant’s business. Accordingly, the Panel does not find this illustration

applicable either.

The fourth illustration, use of the domain name in an effort to attract, for

commercial gain, Internet users to another web site, does not appear to be applicable

here, there being no active web site located at the Domain Name, and no evidence

of intent to create one.

In sum, the Panel concludes that Respondent has registered and used the Domain

Name in bad faith, as exemplified by illustration (i) in Paragraph 4(b) of the

Policy.

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that

Complainant has met its burden of proving: (1) the Domain Name is confusingly

similar to Complainant’s trademark(s); (2) Respondent has no rights and no legitimate

interests in respect of the Domain Name; and (3) the Domain Name has been registered

and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel

requires that the Domain Name be transferred to Complainant.

Michael A. Albert

Sole Panelist

Dated: August 15, 2001

Footnotes:

1. The Registrar provided a printout of the

information contained in its WHOIS database for the Domain Name, including the

Respondent’s postal address, telephone number and e-mail address.

2. The Center also sent the same items to

the required e-mail addresses as set out in Rule 2(a).

3. Complainant also filed a more formal Opposition

to Respondent’s Request for Preparatory Conference, Request for Hearing, and

Special Interrogatories on July 5, 2001.

4. In Section IV of his Response, Respondent

argues that the Panel lacks jurisdiction to decide this matter because the Panel

"may not make a ruling regarding the rights of Microsoft Corporation with

regard to the disputed domain name unless Microsoft Corporation is a party to

this dispute." Because disposition of this matter does not require an adjudication

of any rights of Microsoft Corporation in the Domain Name, Respondent’s argument

is moot and poses no obstacle to the Panel’s jurisdiction. Should Microsoft

Corporation choose to contest any registration or use of the Domain Name that

may hereafter be made by Complainant, Microsoft would be free to do so, and

nothing herein is intended to prejudge how any such dispute might be resolved.

5. The Panel is confused by Respondent’s

argument that his attorney did not receive timely notice of this administrative

proceeding. First, Rule 2 requires that the Center "employ reasonably available

means calculated to achieve actual notice to the Respondent" (not the Respondent’s

attorney). The Center complied fully with Rule 2 on June 29, 2001. Respondent’s

attorney first made his representation of Respondent known to the Center on

July 25, 2001. After that time, the Center addressed its communications to Respondent’s

attorney as requested. Before that time Respondent’s attorney was not known

to the Center (his name did not appear in the WHOIS database entry for the Domain

Name) and he therefore could not reasonably expect to receive notifications

from the Center. In any event, the Respondent’s attorney admitted that he had

received an "unofficial copy" of the Complaint in a timely fashion

from the Complainant. Although the Rules do not require notice to a Respondent’s

representative, in this case the Respondent’s attorney did receive such notice.

The Respondent’s notice argument is unconvincing.

6. The Panel additionally notes that, under

Rule 14(b), the Panel is entitled to "draw such inferences … as it considers

appropriate" from Respondent’s failure to comply with the deadline set

forth in Rule 5(a). In the exercise of its discretion, however, the Panel declines

to draw inferences from Respondent’s tardiness.

7. Respondent provided the Panel with TESS

printouts for a number of ATT marks owned by parties other than Complainant

for various goods and services (but not for telecommunications).

8. Indeed, as noted above, the Panel is not

obligated to consider the Response, but does so out of a sense of caution and

fairness to Respondent.

9. Mitigating the weight of this evidence

is the fact that Respondent did not register the Domain Name until January 10,

2000, approximately a year after Complainant contends the media began to report

on a potential business deal between AT&T and MSN. On the other hand, Respondent

offered no explanation in his Response to rebut the inference made by Complainant

of a relationship between those media reports and Respondent’s registration

of the Domain Name. Respondent similarly offered no reason why he chose the

Domain Name to the exclusion of other possible words or phrases. In its discretion

pursuant to Rule 10(d), the Panel finds it appropriate to accord some evidentiary

weight to the timing of Respondent’s registration of the Domain Name (i.e.,

after the media reports referred to by Complainant).

10. The Panel is unpersuaded by Respondent’s

argument that confusion is unlikely because there are many registered domain

names beginning with the letters ATT. It is not the mere presence of the letters

ATT in the Domain Name that makes confusion likely. Rather, it is the fact that

the letters ATT stand together with another well-known mark, and both marks

are identified with the Internet (and with one another pursuant to a possible

business deal). Domain names consisting of words or phrases beginning with the

letters ATT (such as <www.attitude.com> or <www.attest.com>) are

far less likely to create confusion than <www.attmsn.com>.

11. Nothing herein is meant to imply that

Ninth Circuit law necessarily applies to this case; however, the law of other

U.S. circuits sets forth substantially similar multi-factor tests to be used

in analyzing likelihood of confusion for purposes of determining trademark infringement.

12. Respondent did claim to have a "proposed

use of the mark," but did not choose to disclose to the Panel what that

proposed use was. Respondent also stated that "AT&T and Respondent

… are in entirely different businesses," but declined to specify Respondent’s

business. Respondent’s vague and conclusory allegations of use or intended use

do not support a finding that it has any legitimate interest in the Domain Name.

More cases by this complainant

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• AT&T Corp. — D2004-0877 · Terminated
• AT&T Corp. v. Tianfu Guo — D2004-0294 · attone.com · Transfer · 08 Aug 2004
• AT&T Corp. v. Byeong Deog Im — D2004-0026 · www-att.com · Transfer · 02 Apr 2004