AT&T Corp. v. Damian Macafee

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

AT&T

Corp. v. Damian Macafee

Case No.

D2001-1159

1. The Parties

The Complainant is AT&T

Corp., a company incorporated under the laws of New York, United States of America.

The Respondent is Damian

Macafee, purportedly of 69 Charlotte Street, London, WIP ILA, UK.

2. The Domain Names

and Registrars

The domain name in dispute

is <attworldnet.com>. The Registrar of the domain name as at the date

of the complaint is BulkRegister.com.

3. Procedural History

3.1 The Complaint was

made pursuant to the Uniform Domain Name Dispute Resolution Policy approved

by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October

24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name

Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was

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

on September 21, 2001, and in hard copy on September 25, 2001. The

fees prescribed under the Supplemental Rules have been paid by the Complainant.

3.3 The Center sent

the Complainant an Acknowledgement of Receipt of Complaint by email on September

26, 2001. The Center sent a request for verification to BulkRegister.com on

September 27, 2001, by email. The Registrar responded to the Center’s request

on October 2, 2001, verifying:

● The Complaint

had been received.

● The domain name

<attworldnet.com> is registered with BulkRegister.com.

● The Respondent

is the current registrant of the domain name in dispute.

● Respondent’s

contact details.

● The UDRP applies

to the domain name.

● The current

status of the domain name is Registrar LOCK.

3.4 The Center’s Formal

Requirements Compliance Checklist was completed on October 3, 2001.

3.5 The Center sent

a Notification of Complaint and Commencement of Administrative Proceeding to

the Respondent by courier (to the one postal address given as the Registrant,

Administrative and Technical Contact in the whois database) and by email (to

the three addresses given in the whois database) and to the Complainant by email

on October 3, 2001.

3.6 The Center received

a Returned "Notification of Complaint" from the Respondent’s postal

address on October 6, 2001. The Center also received a message from the Mail

Delivery Subsystem on October 3, 2001, that one of the email addressed had permanent

fatal errors.

3.7 The postal address

was the address specified in the Whois database and, in accordance with Rule

2(a)(i), the attempt is sufficient to discharge the Provider’s responsibility.

Similarly, the attempts made by email are not accompanied by any evidence of

receipt, but the requirements of paragraph 2(a)(ii) of the Rules have been met.

3.8 No response was

filed.

3.9 The Center sent

the Respondent a Notification of Respondent Default on October 25, 2001,

by courier and email and to the Complainant by email. The Center received a

returned "Notification of Respondent Default" from the Respondent’s

postal address on November 1, 2001. Likewise, the Center received a message

from the Mail Delivery Subsystem that one of the email addressed had permanent

fatal errors in it on October 25, 2001.

3.10 In cases where

no response has been filed, the Panel is particularly concerned to ensure that

the requirement of paragraph 10(b) of the Rules, that the parties are treated

with equality and that each party is given a fair opportunity to present its

case, is fulfilled. Considering the actions undertaken by the Provider, the

Panel is of the view that in the present case, if the Respondent has not received

actual notice of the proceedings, it is attributable solely to the Respondent’s

contact particulars in the Whois database being erroneous. Neither the Complainant

nor the Provider could take any alternative action.

3.11 The Center sent

the parties a Notification of Appointment of Administrative Panel and Projected

Decision Date on November 5, 2001.

3.12 All other procedural

requirements appear to have been satisfied.

4. Factual Background

4.1 Activities of the

Complainant

The following information

was asserted as fact by the Complainant and remains uncontested.

The Complainant is a provider

of telecommunications goods and services in the United States and other countries.

4.2 The Complainant’s

trademarks

The following information

is asserted as a fact in the Complaint and remains uncontested:

"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. Complainant has invested at least hundreds of millions of

dollars promoting these names among consumers in the United States and other

countries around the world, as a result of which these names are famous worldwide.

(See Annex 4)"

The Complainant has trademark

and service mark registrations for AT&T (the "Principal Mark") in the United

States, details of which are contained in Annex 7 to the Complaint. This mark

is registered in numerous classes including telecommunications services. The

evidence shows that the Principal Mark was first registered on September 25,

1984 and remains current.

"Complainant also

owns numerous marks that use "ATT" without an ampersand. For example,

Complainant has rights in the U.S.-registered marks: "1 800 CALL ATT;"

"CAMP ATT;" "1 800 ATT-GIFT;" and "ATT.NET." (See

Annex 9.)" The evidence shows that the "1 800 CALL ATT;"

mark was first registered on January 21, 1995.

"Complainant has used

"AT&T WORLDNET" in commerce since at least August 1985 and has

held a United States registered trademark in the "AT&T WORLDNET"

mark since August 5, 1997, under registration number 2086348. In addition, Complainant

holds the registered trademark for "AT&T WORLDNET" in several

other countries including Canada (registration number TMA505,920 on Dec. 29,

1998), Germany (registration number 39531734 on June 12, 1996), and Taiwan (registration

number 98720 on February 16, 1998). (See Annex 15)."

The Complainant’s above

trade and service marks will be described as the "Complainants Marks".

4.3 Activities of the

Respondent

The Complainant has not

made any statements regarding the activities of the Respondent.

5. The Complainant’s

Contentions

5.1 The Complainant

asserts that each of the elements specified in paragraph 4(a) of the Policy

have been satisfied.

5.2 In reference to

paragraph 4(a)(i) of the policy, the Complainant asserts that the domain name

in dispute, <attworldnet.com> is confusingly similar to the Complainant’s

registered marks, including "AT & T Worldnet" and "AT&T".

It asserts that:

"Even if AT&T

had not registered and used "AT&T WORLDNET" as a separate mark,

the mere addition of "worldnet" to an internationally famous mark

would cause confusion among consumers".

5.3 In reference to

paragraph 4(a)(ii) of the policy, the Complainant asserts that the Respondent

has no legitimate interest in the domain name. In particular, it is asserted

that the Respondent:

(a) Has not been licensed

or otherwise authorised to use any of the Complainants marks; and

(b) Does not own any

marks that are similar to the domain name; and

(c) Is not known by

the domain name either as an individual or a business; and

(d) Is not making legitimate

non-commercial or fair use of the domain name.

5.4 In reference to

paragraph 4(a)(iii) of the policy, the Complainant asserts that the domain name

has been registered and used in bad faith because:

(a) Incorrect contact

details were provided to the whois database. Neither telephone or facsimile

contact information was given.

(b) "He has

registered and used Complainant’s famous marks to take advantage of internet

traffic searching for Complainant and then "click" that traffic through

to web site advertisements in exchange for referral payments."

Although not stated with

explicit reference to bad faith, the Complainant also asserts:

"AT&T WORLDNET"

is an invented phrase that has intelligible meaning only because of AT&T’s

commercial usage of its brands. Without AT&T’s branding of this phrase,

the phrase would be without value. The reasonable expectations of internet users

and AT&T Corp. are frustrated by Respondent’s registration of <www.attworldnet.com>."

6. Discussion and Panel

Findings

This section is structured

by reference to the elements required by paragraph 4 (a) of the Policy. The

onus is on the Complainant to make out its case on the balance of probabilities.

6.1 Domain Name is identical

or confusingly similar to Complainant’s Mark

The Panel is quite satisfied

that the domain name, <attworldnet.com> is confusingly similar to the

Complainant’s mark, "AT&T Worldnet". 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 the Complainant’s mark.

This is consistent with the view previously taken in relation to the use of

"att" in WIPO

Case No. D2000-0553. Accordingly, the Complainant has proven paragraph

4(a)(i) of the Policy in this case.

Despite the reasoning in

WIPO

Case No. D2000-0553, the Panel inclines to the view that, absent a trademark

that included "worldnet", the Panel would not have found the domain

name in dispute identical or confusingly similar to "AT & T" alone.

6.2 The Respondent has

no rights or legitimate interests in the domain name

The Complainant’s assertion

that the Respondent has no legitimate rights or interest in the domain name

is plausible. The <attworldnet.com> website manifests no apparent legitimate

connection between the banner and pop-up advertisements that it contains and

the domain name itself. Absent any response from the Respondent and any legitimate

right or interest apparent on the face of the record or the site itself, the

Panel is entitled to regard the Complainant’s submissions as persuasive.

The Panel accordingly finds

that the Complainant has proved paragraph 4(a)(ii) of the Policy.

6.3 The domain name

has been registered and is being used in bad faith.

Based on the available

evidence, the Panel infers that the Respondent has intentionally attempted to

attract, for commercial gain, Internet users to his website, by creating a likelihood

of confusion with the Complainant’s mark as to the source, sponsorship, affiliation

or endorsement of the website or location or of a product or service on the

website or location. The Panel is thus satisfied that the Respondent’s conduct

is within Paragraph 4(b)(iv) of the policy and thus provides evidence of registration

and use of the domain name in bad faith (Paragraph 4(b) of the Policy).

Likewise the incorrect

contact details in the Whois database suggest bad faith.. The Panel notes that

the Center was unable to contact the Respondent using the postal address in

the whois database.

The Panel therefore finds

that the Complainant has proved paragraph 4(a)(iii) of the Policy.

7. Decision

The Panel has found that

all of the requirements of paragraph 4(a) of the Policy have been proven by

the Complainant. Accordingly, the Panel orders that BulkRegister.com transfer

<attworldnet.com> to AT & T Corp.

Philip N

Argy

Sole Panelist

November

19, 2001

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