AT&T Corp. v. CME Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. CME Inc

Case No. D2001-1060

1. The Parties

The Complainant is AT&T Corp., a corporation organized in the State of

New York, United States of America (USA), with place of business in Basking

Ridge, New Jersey, USA.

The Respondent is CME Inc, with address in Las Vegas, Nevada, USA.

2. The Domain Name and Registrar

The disputed domain name is <attbusinessinternetservices.com>.

The Registrar of the disputed domain name is Registrars.com, with business

address in Seattle, Washington, USA.

3. Procedural History

The essential procedural history of the Administrative Proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a Complaint via e-mail

received by the WIPO Arbitration and Mediation Center ("WIPO") on

August 23, 2001, and via courier mail received by WIPO on August 28,

2001. Payment by Complainant of the requisite filing fees accompanied the courier

mailing. On August 24, 2001, WIPO transmitted a Request for Registrar Verification

to the Registrar, Registrars.com (with the Registrar’s Response received by

WIPO on August 31, 2001).

(b) On September 3, 2001, WIPO transmitted Notification of the Complaint and

Commencement of the Proceeding to Respondent via e-mail and courier mail. Courier

mail tracking records indicate successful delivery to the address of Respondent

listed in its contact information.

(c) On September 26, 2001,WIPO transmitted notification to Respondent of its

default in responding to the Complaint via e-mail.

(d) On October 1, 2001, WIPO invited the undersigned to serve as Panelist in

this Administrative Proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On October 2, 2001, the undersigned transmitted by fax

the executed Statement and Declaration to WIPO.

(e) On October 3, 2001, Complainant and Respondent were notified by WIPO of

the appointment of the undersigned Sole Panelist as the Administrative Panel

(the "Panel") in this matter. WIPO notified the Panel that, absent

exceptional circumstances, it would be required to forward its decision to WIPO

by October 17, 2001. The Panel received a hard copy of the file in this

matter by courier from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

Complainant is the holder of numerous trademark and service mark registrations

for "AT&T" in the United States and other countries, and for the

term "AT&T" and "ATT" used in combination with other

terms, such as "AT&T WIRELESS SERVICES" and "ATT.NET"

[collectively the "AT&T marks"]. Complainant has been found to

hold valid and subsisting rights in the AT&T marks in a number of earlier

Administrative Panel proceedings (e.g., AT&T Corp. v. Tala Alamuddin,

WIPO Case No. D2000-0249). Complainant’s

U.S. registrations for the "AT&T" mark date back as early as 1984

(Complaint, Annex 8).

The "AT&T" mark is well known throughout the world in connection

with the provision of telephone services. This finding is supported by survey

evidence (Interbrand Annual Survey, Complaint, Annex 5). The "AT&T"

mark has been found to be well known by previous Administrative Panels (e.g.,

AT&T Corp. v. Ondonk Partners, WIPO

Case D2000-1723).

Complainant registered the domain name <att.com> at least as early as

1986, and uses that domain name in an Internet address (URL), <www.att.com>,

identifying an active commercial website (Complaint, Annex 12).

According to the Registrar’s Verification Response to WIPO, dated August 31,

2001, "cme inc" is the listed Registrant of the domain name <attbusinessinternetservices.com>.

The Administrative Contact, at the same address, is "costello, mike".

The disputed domain name was registered on December 28, 1999.

On July 14, 2000, Complainant sent a cease and desist and transfer demand to

Respondent via certified mail. That demand letter was returned as undeliverable.

The disputed domain name identifies a web location that posts only Registrars.com’s

standard form under construction notice (WIPO case file). There is no evidence

on the record of this proceeding of any other use by Respondent of the disputed

domain name.

The Service Agreement in effect between Respondent and Registrars.com subjects

Respondent to Registrars.com’s dispute settlement policy, the Uniform Domain

Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and

with implementing documents approved by ICANN on October 24, 1999. The Uniform

Domain Name Dispute Resolution Policy (the "Policy") requires that

domain name Registrants submit to a mandatory Administrative Proceeding conducted

by an approved dispute resolution service provider, of which WIPO is one, regarding

allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the trademark and service mark "AT&T",

as well as other marks that combine the "AT&T" mark with terms

that identify its business services (see Factual Background, supra).

Complainant asserts that the "AT&T" mark is well known throughout

the world.

Complainant claims that the disputed domain name <attbusinessinternetservices.com>

is confusingly similar to the AT&T marks. Internet users viewing the disputed

domain name would assume that a website using the disputed domain name is associated

with Complainant. Complainant states that since the ampersand ("&")

may not be used in a domain name, the logical way to use its mark in a domain

name is as "att", and this is in fact how Complainant identifies itself

on the Internet. The addition of common terms describing a type of business

service do not distinguish the disputed domain name from the AT&T marks.

Complainant argues that Respondent has no rights or legitimate interests in

the disputed domain name because Respondent is not its licensee and is not authorized

to use its marks, Respondent does not own any registered or common law AT&T

marks, Respondent has not been commonly known by the disputed domain name and

Respondent is not making legitimate non-commercial or fair use of the marks

in the name.

Complainant asserts that Respondent registered and used the disputed domain

name in bad faith because: (1) registration of another’s well known mark in

a name is itself evidence of bad faith, (2) the nature of the name indicates

that Respondent registered it to sell to Complainant or a third party for valuable

consideration in excess of its out of pocket expenses in connection with the

name, (3) previous Panels have found that combining a well known mark with generic

terms to form a domain name is bad faith and (4) the provision of false contact

information is evidence of bad faith.

Complainant requests the Panel to direct the Registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a Respondent have notice

of proceedings that may substantially affect its rights. The Policy, and the

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

establish procedures intended to ensure that Respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the Complaint and initiation of these

proceedings. Courier tracking records indicate successful delivery of the Notification

of Complaint to the address provided in Respondent’s record of registration.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant

relief.

Complainant is the holder of trademark and service mark registrations for the

term "AT&T" in the United States and is using that mark in commerce

(see Factual Background, supra). Complainant is also the holder

of trademark and service mark registrations that combine "AT&T"

with terms more specifically identifying its business services, such as "AT&T

WIRELESS SERVICES" and "ATT.NET" [collectively the "AT&T

marks"]. This Panel hereby adopts and confirms the decisions made by prior

Administrative Panels applying the Policy that (1) Complainant is the holder

of rights in the AT&T marks and (2) the "AT&T" mark is well

known among Internet users and consumers of telephone services. See Factual

Background supra. Complainant’s rights in the "AT&T" mark

arose long prior to Respondent’s registration of the disputed domain name.

Respondent has registered the domain name <attbusinessinternetservices.com>.

This domain name (1) incorporates Complainant’s "AT&T" mark (2)

adds the generic top-level domain (gTLD) ".com", and (3) adds the

terms "businessinternetservices" to Complainant’s mark.

The addition of the generic top-level domain (gTLD) ".com" is without

legal significance from the standpoint of comparing the disputed domain name

to "AT&T" since ".com" does not in the circumstances

of this proceeding serve to identify a specific enterprise as a source of goods

or services [1].

Respondent has added the common descriptive terms "business internet services"

to the "AT&T" mark, leaving out the spaces between terms. Domain

names may not include open spaces, and use of this technically dictated convention

does not result in the creation of a new non-descriptive term. By adding the

terms "business internet services" following "AT&T",

Respondent does not create a new or different mark in which it has rights or

legitimate interests, nor does it alter the underlying mark held by Complainant.

Similarly, the elimination of the ampersand in Complainant’s "AT&T"

mark to create "att" does not serve to distinguish the disputed domain

name from Complainant’s mark, particularly as the ampersand may not presently

be used in a domain name.

Complainant’s mark is well known among consumers and Internet users. It identifies

Complainant as a source of telecommunications goods and services. "[B]usiness

internet services" are common descriptive terms that refer to a type of

services that a telecommunications services provider would offer on the Internet.

When these terms are used with Complainant’s "AT&T" mark in a

domain name and Internet address, consumers and Internet users are likely to

assume that Complainant is associated with the identified website and/or goods

or services offered on that website.

The disputed domain name <attbusinessinternetservices.com> is confusingly

similar to Complainant’s mark within the meaning of paragraph 4(a)(i) of the

Policy.

Complainant has met the burden of proving that Respondent is the Registrant

of a domain name that is confusingly similar to a trademark and service mark

in which Complainant has rights, and it has thus established the first of the

three elements necessary to a finding that Respondent has engaged in abusive

domain name registration and use.

Respondent has made no use of the disputed domain name, and has presented no

evidence of legitimate rights or interests in the name. Registration alone does

not establish rights or legitimate interests for the purposes of paragraph 4(a)(ii)

of the Policy. Complainant has established the second element necessary to prevail

on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but

without limitation", be evidence of bad faith (Policy, para. 4(b)). Among

these circumstances are (1) that the domain name has been registered or acquired

by a Respondent "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 [respondent’s] documented out-of-pocket

costs directly related to the domain name" (Id., para. 4(b)(i));

(2) that a Respondent has registered the domain name "in order to prevent

the owner of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that [the Respondent has] engaged in a pattern of such

conduct" (id., para. 4(b)(ii)), and (3) that a Respondent "by

using the domain name, … [has] intentionally attempted to attract, for commercial

gain, Internet users to [its] web site or other on-line location, by creating

a likelihood of confusion with the complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of [respondent’s] web site or location of a product

or service on [its] web site or location" (id., para. 4(b)(iv)).

In this proceeding Respondent has taken no action other than to register the

disputed domain name. However, the combination of registration of the well-known

mark along with common descriptive terms, failure to use the name, and the absence

of any apparent good faith use that Respondent could make of the name in the

future, leads the Panel to conclude that Respondent has registered and used

the disputed domain name in bad faith.

Because Respondent is not authorized by Complainant to use its well-known mark,

it could not exploit that mark in the disputed domain name for its own commercial

purposes without infringing Complainant’s rights. There is no evidence of any

planned noncommercial or fair use of the mark, and the commercially descriptive

nature of the disputed domain name does not readily lend itself to such use.

In the absence of potential legitimate uses of the disputed domain name, the

Panel must infer that Respondent registered it with the intention of offering

it for sale to Complainant or a third party, or with the intention to use it

to divert Internet users to a website for commercial gain by creating confusion

as to Complainant’s sponsorship of or affiliation with that website. The Panel

finds that the disputed domain name was registered and used in bad faith within

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

Complainant has established the third and final element necessary for a finding

that the Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the Registrar to transfer the domain name

<attbusinessinternetservices.com> to the Complainant.

7. Decision

Based on its finding that the Respondent, CME Inc, has engaged in abusive registration

and use of the domain name <attbusinessinternetservices.com> within the

meaning of paragraph 4(a) of the Policy, the Panel orders that the domain

name <attbusinessinternetservices.com> be transferred to the Complainant,

AT&T Corp.

Frederick M. Abbott

Sole Panelist

Dated: October 17, 2001

Footnotes:

1. See Sporty's Farm v. Sportsman's

Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications

v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).

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