AT&T Corp. v. W.N.A.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

AT&T

Corp. v. W.N.A., a/k/a "Worldwide Network of Attornies" Farouk

al Khalifa a/k/a Jaye Rayes and "World of Nettie Atteberry"

Case No.

D2001-1160

1. The Parties

1.1 The Complainant

is AT&T Corp., a United States corporation incorporated under the laws of

the State of New York. Its principal place of business is in Basking Ridge,

New Jersey.

1.2 The Respondent named

in the Complaint is "W.N.A." a.k.a. "Worldwide Network of Attornies"

Manama BAHRAIN.

2. The Domain Name and

Registrar

2.1 The Domain Name,

the subject of this dispute, is

<worldnetatt.net>

2.2 The Domain Name

is registered with ENom.com, 16771 NE 80th Street, Suite #100,

Redmond, WA USA.

3. Procedural History

3.1 The Complaint was

filed electronically on September 21, 2001, and in hard copy on September 25,

2001.

3.2 The Complainant

elected to have the dispute decided by a single-member Administrative Panel.

3.3 No legal proceedings

have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution

Policy ("Rules"), paragraph 3(b)(xi)).

3.4 As required by the

Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00

has been made by check, payable to World Intellectual Property Organization.

3.5 The Complainant

agreed that its claim and remedies concerning the registration of the Domain

Name, the dispute, or the dispute’s resolution shall be solely against the Domain

Name holder and waives all such claims and remedies against (a) the WIPO Arbitration

and Mediation Center and Panelists, except in the case of deliberate wrongdoing,

(b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet

Corporation for Assigned Names and Numbers, as well as their directors, officers,

employees and agents.

3.6 A copy of this Complaint,

together with the cover sheet as prescribed by the Supplemental Rules, has been

sent or transmitted to the Respondent on September 21, 2001, both by electronic

means and by postal service, postage pre-paid and return receipt requested pursuant

to Rules, paragraph 2(b).

3.7 A copy of this Complaint

has been sent electronically and by first class mail to the concerned Registrar

on September 21, 2001.

3.8 On September 27,

2001, the WIPO Arbitration and Mediation Center ("the Center") transmitted

via email to eNom, Inc. a request for registrar verification in connection with

this case and on September 28, 2001, the Center received a verification response

confirming that the domain names are registered with eNom, Inc. and that the

Registrant for the domain names is the Respondent.

3.9 On September 28,

2001, Respondent was sent a Notification of Complaint and Commencement of Administrative

Proceeding from the Center informing the Respondent that an Administrative Proceeding

had been commenced by Complainant in accordance with the Uniform Domain Name

Dispute Resolution Policy, adopted by the Internet Corporation for Assigned

Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN

on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules

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

On October 18, 2001, a Response was received from the Respondent. On October

18, 2001, an e-mail reply from Complainant to Respondent’s Response was filed.

On October 20, 2001, Respondent filed a Reply to Complainant’s e-mail

message

3.10 The named Respondent,

W.N.A. a/k/a "Worldwide Network of Attornies", has not filed a Response

3.11 The single Panel

member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration

of Impartiality and Independence and was duly appointed on October 25, 2001,

in accordance with paragraph 15 of the Rules. The suggested date for the Panel

to forward its decision to the Center was by November 8, 2001. An assertion

was made that the wrong Respondent has been named, which necessitated an extension

of this time.

3.12 The Panel finds

that it was properly constituted and appointed in accordance with the Rules

and the Supplemental Rules.

4. Factual Background

4.1 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 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.

4.2 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."

4.3 Complainant has

been the registrant for the domain name <att.com> since at least 1986.

The domain name <att.com> resolves to AT&T Corp.’s primary corporate

website, <att.com>, on which the AT&T WorldNet service is often advertised.

This domain name shows that Complainant conveys its mark "AT&T"

by using "att" on the web, which does not permit the use of an ampersand character

in a domain name.

4.4 Complainant has

also been the registrant for the domain name <att.net> since at least

1993. The domain name <att.net> resolves to AT&T Corp.’s WorldNet

Internet service provider website, <att.net>. This domain name provides

additional evidence that Complainant conveys its mark "AT&T" by

using "att" on the web, which does not permit the use of an ampersand character

in a domain name.

4.5 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"

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 TMA 505,920 on December

29, 1998), Germany (registration number 39531734 on June 12, 1996),

and Taiwan (registration number 98720 on February 16, 1998).

4.6 Search engines routinely

identify queries for "attworldnet" with the AT&T WorldNet Service.

This stems in large part from a common typographical error arising from the

e-mail address suffix assigned to AT&T WorldNet service users, "@worldnet.att.net."

If a user omits the period after WorldNet, his or her e-mail address is incorrectly

rendered as "@worldnetatt.net" – the name of the site in dispute.

4.7 The site <worldnetatt.net>

returns no data currently.

4.8 Starting sometime

in 1998, the site was set to refer viewers to a series of banner ads. As a result,

AT&T Corp., acting through the solicitors Linklaters, contacted "CRAZYSALe!!!this@worldnetatt.net"

in writing on July 2, 1999. On July 16, 1999, an individual using

the e-mail address of the registrant responded that there was a new registrant,

"ynotgetyourname@DESIREME.com." That party’s site, <desireme.com>,

appears to be a site dedicated to pornographic content. Complainant persisted

in its efforts through counsel with letters on July 19, 1999, and July

24, 1999, in which AT&T Corp.’s trademark rights were explained and transfer

of the domain requested. On August 21, 1999, counsel received an e-mail stating

that the "ynotgetyourname@DESIREME.com" was inoperative, and that

e-mail should be directed now to "fourcharities@hotmail.com." Counsel

requested a mailing address, but the request was ignored. On September 8, 1999,

counsel e-mailed a July 19, 1999, letter to the fourcharities@hotmail.com address.

4.9 At some point, the

site was apparently transferred or the registration updated to the name "YnotBeEziestMemorised4ever

UownTheGreatDoMain4ever"which again used the same room number at the "LaiChingHouse"

in Hong Kong as the prior registrant had used initially. The domain name was

then "transferred" (or "updated") to a registrant listed

as the "Worldwide Network of Attornies," [sic], allegedly in Nairobi,

Kenya, but with telephone and fax numbers having a Hong Kong prefix of 852.

4.10 During April 2001,

Complainant, acting though the solicitors Linklaters placed a series of telephone

calls to the contact numbers for the site. During a telephone call on April

27, 2001, Ms. Au Yeung, an individual who had received a prior letter from the

solicitors for Complainant, spoke with Rebecca Lo, an attorney for Complainant

from Linklaters. During this call, Ms. Yeung proposed to sell the domain name

for $10,000 (it is unclear whether this was intended to be US $10,000 or HK

$10,000). A male associate of Ms. Yeung’s then grabbed the phone and shouted

in a rude and threatening manner at Complainant’s attorney.

4.11 Sometime after

this discussion, the registration was updated again to the name listed for the

registrant, which, as noted above, appears to be an acronym of the aforementioned

"Worldwide Network of Attornies" [sic]. As of June 24, 2001, the contact

for the site was listed as "Jaye Rayes," with a Bahrain address, a

telephone number in the "888" area code, and the e-mail address jrmarketing2000@yahoo.com.

As of July 1, 2001, the contact shifted to "Farouk al Khalifa"

at the same address, but now with a (+973) area code (consistent with Bahrain),

but an e-mail address in the United Kingdom, wna@fmail.co.uk

4.12 On or about October

18, 2001, the Center received an e-mail, purportedly from "Nettie Atteberry",

Nettie@fmail.co.uk attaching what was described as a "Response to Complaint".

This document was not in compliance with Rule 5 of the Rules for Uniform Domain

Name Dispute Resolution Policy (the "Rules") in a number of ways including

not being signed nor certified as required by Rule 5(b)(viii) thereof.

4.13 The document mentioned

above was said to have been submitted on behalf of Nettie_ATTeberry@yahoo.com,

nettie@fmail.co.uk, nettie@worldnetatt.net, http://www.worldnet.att.net, World

of Nettie Atteberry, and NETTIE ATTEBERRY as the other (Nettie_Atteberry@yahoo.com)

and nettie@fmail.co.uk, 5-6 Francis Grove, London, SW19 4DT,GB. All of these

alleged persons, singularly and collectively, will be hereafter referred to

as the "putative respondent". The document alleges that the "WORLD

of NETTIE ATTEBERRY" is the registrant of <worldnetatt.net>, which

had recently been acquired from fourcharities@hotmail.com for $2,500. This "registrant"

is said to be the creator of the "World of Nettie Atteberry" stories

and is not affiliated with the claims of the Complainant with regard to "bad

faith" registration, and did not offer the Domain Name for sale to the

Complainant, nor did it use it any manner to dilute or tarnish the image or

intellectual property of AT&T, nor did it profit or attempt to profit from

any possible similarity of names and is not guilty of any of the three required

violations to justify transferring the Domain Name to Complainant AT&T.

It alleged that the named Respondent "was only an interim escrow contact

and mediator during the procurement of the domain name in August of this year"

and that "Named Respondent above has no rights, ownership, or any other

affiliation with the domain name <worldnetatt.net>". The person who

filed this document will hereinafter be referred to as the "putative respondent".

4.14 The putative respondent

went on to say that the Domain Name in question "was registered to [the

putative respondent] through a transfer of an account at eNom.com that apparently

belonged to the seller. It is possible that the records appeared to be an update,

however, the domain name changed hands completely. The purchase was from an

unknown source resembling World Attorney Network and having a contact e-mail

of ‘fourcharities@hotmail.com’ ".

4.15 The document referred

to above goes on to provide further information under the heading "DETAILS

OF FACTS", which inter alia raises general defences to the Complaint

in respect of certain facts relating to the three elements required to be proved

under para. 4(a) of the Policy, and with regard to others this document purports

to raise defences specific only to the putative respondent. Finally, the putative

respondent "reaffirms that none of its affiliates are associated in any

way to prior registrant’s of <worldnetatt.net> and would like this to

end right here."

Further Submissions

4.16 On October 26,

2001, the Center received a Supplemental Filing on behalf of the Complainant

which included both a Request For Leave To File A Motion To Strike Response

To The Complaint and a Request to Strike Submission Purportedly on Behalf of

Respondent. This exceptional submission is argued to be warranted because the

Registration in question was changed after notice of this action in violation

of UDRP Rule 8(b). In essence, Complainant argued that the "World of Nettie

Atteberry" is a sham, embryonic entity created to conform to the phonetic

elements of the domain name at issue, and that no bona fide transfer

of the name has occurred. The Panel accepts this document.

4.17 As a result of

receiving the above documents, this Administrative Panel issued a Request for

Further Statements pursuant to Rule 12 of the Rules. A copy of this Procedural

Order is annexed as Appendix A to this Decision.

4.18 Both the Complainant

and the putative respondent filed Answers to the Procedural Order.

4.19 The putative respondent,

in its Answer to the Panel’s Request, repeats much of what was filed in its

earlier documentation, adding that the named Respondent, W.N.A., was an interim

agent and contact during the transfer of the domain name from the prior registrant

to the current registrant and has no further authority or relationship to the

domain name in question. Appended to this Response were alleged copies of e-mails

exchanged between the person alleged by the putative respondent to be the transferor

of the domain name in question ("fourcharities@hotmail.com") and the

person described as "(Agent for World of Nettie Atteberry)" relating

to the disputed transfer of the Domain Name in question. In addition, the putative

respondent stated that "The ‘Worldwide Network of Attornies’ has no authority

to adopt the Response to Complaint because it is not the current registrant

nor was it at the time that Complaint was filed." It also contained the

comment "We understand the Complainant’s frustration with the previous

registrant but it was not us."

4.20 The named Respondent

in this proceeding, W.N.A., was notified of the Procedural Order and given an

opportunity to provide its own Response, which it chose not to do.

4.21 The Complainant

in its submission to the Panel Request says that "World of Nettie Atteberry"

is not the proper respondent in this matter because, as of the filing of the

Complaint in this action, the domain name in question was registered to "W.N.A."

rather than "Nettie Atteberry" and that nothing submitted by "Nettie

Atteberry" refutes this fact. In support of its submission that the name

"Nettie Atteberry" is part of an elaborate bad faith shell game, the

Complainant points to the fact that no record whatsoever is submitted of the

actual registration of the domain name with eNom, or any other ICANN-accredited

registrar. Further, serious questions of reliability are asserted in connection

with the e-mail messages tendered by "Nettie Atteberry". Reference

is made to the fact that the various "To" and "From" lines

in the e-mail attachments to "Nettie Atteberry’s" re-submission were

redacted, without disclosure, to disguise the correspondent’s true identity.

This appears to be most obvious in one of the e-mail messages where the type

font for "(Agent for World of Nettie Atteberry)" is Arial, whereas

the remainder of the e-mail message appears to be in Times Roman. Further, it

is argued by the Complainant that "Nettie Atteberry’s" failure to

provide evidence of when it registered the domain name with eNom should be dispositive,

and therefore, for purposes of these proceedings, "W.N.A." is the

proper respondent because it was the registrant when the Complaint was filed.

In this regard, it relies on Wal-Mart Stores, Inc. v. James Cann and Save

Family Businesses Panel, WIPO

Case No. D2000-0830.

4.22 The Complainant

refers to para.8(a) of the Policy and asks this Panel to properly invoke its

right thereunder to cancel the purported transfer of the Domain Name registration

upon which "World of Nettie Atteberry" relies.

4.23 Subsequent to the

above Responses, the Panel received from the putative respondent a further document

on the of November 14, 2001, head "Respondent’s Further Statements".

It contained what was identified as a "Statement of Clarification".

Some of this was a rehash of what had already been said in the two earlier submissions.

Another part contained an attack on the Complainant. It also gave a reason for

altering the e-mail exhibits which it had provided in its earlier Response,

but not a credible one. Despite this being the third written submission made

on its behalf, it once again failed to provide credible documentary evidence

in support of its alleged acquisition of the Domain Name from some still unknown

person. It states: "given time, we guarantee we can prove that we just

obtained this name and paid as stated. This is very serious to us and can be

proved beyond a doubt. We do not even know who the previous registrants are,

other than the names in the e-mail correspondence, ‘Drake’ and ‘Kwanyin’ ".

The putative respondent asks this Administrative Panel is asked to call a telephone

number to verify further information. Quite frankly, the "Statement of

Clarification", rather than supporting the conclusions sought by the author,

tends more to corroborate the allegations of the Complainant.

5. Parties’ Contentions

Confusing Similarity

A. Complainant

5.1 The Complainant

contends that the contested name <worldnetatt.net>, is confusingly similar

to Complainant’s official, legal and world-famous name, and registered marks,

including, "AT&T" and "AT&T WORLDNET." The confusing

similarity between <worldnetatt.net> and Complainant’s top-level brand,

"AT&T," is apparent from simple comparison of the mark with the

contested Domain Name, a combination of the famous "AT&T" mark

and created word, "WorldNet." Complainant has also been the registered

trademark holder of this specific word combination, "AT&T WORLDNET,"

for several years and in several countries, and operates a large and well-known

Internet service provider under the "AT&T WorldNet" name, located

on the web at the site <att.net>. Users of the AT&T WorldNet service

are assigned e-mail addresses that end "@worldnet.att.net." Given

these similarities, the Complainant says that an AT&T WorldNet customer

could easily assume that <worldnetatt.net> was actually an AT&T-sponsored

site.

5.2 Complainant goes

on to assert 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 certainly cause reasonable confusion

among consumers.

5.3 Complainant concludes

that persons familiar with or looking for AT&T Corp.’s "AT&T WorldNet"

service or generally familiar with Complainant’s world-famous marks will be

confused into thinking that <worldnetatt.net> is a site owned, endorsed,

sponsored, or maintained by AT&T to promote telecommunications and internet

products and services.

B. Respondent

5.4 As mentioned in

para. 3.10 above, the named Respondent WNA a/k/a "World Wide Network of

Attornies", Farouk al Khalifa a/k/a Jaye Rayes has not filed a Response

to this proceeding. However, the putative respondent has filed Responses, the

contents of which are summarized above and the effect of which is addressed

below.

Respondent’s Legitimate

Interests in the Domain Name

A. Complainant

5.5 Respondent is not

Complainant’s licensee in any respect, nor has Complainant in any way endorsed,

authorized, or sponsored Respondent’s use of Complainant’s marks.

5.6 Respondent does

not own any registered or common law marks containing the terms "AT&T,"

"ATT," "AT&T WORLDNET," "ATT WORLDNET," "WORLDNET

ATT," "WORLDNETATT," or "ATTWORLDNET" or any similar

derivation.

B. Respondent

5.7 No issue is taken

with the assertions of the Complainant in respect of this element of the Policy

as far as it concerns the Respondent. Rather, it is asserted that the Respondent

in this Administrative Proceeding is not the registrant of <worldnetatt.net>,

claiming that this domain name was recently acquired from fourcharities@hotmail.com

for $2,500, and therefore "is not guilty of any of the three required violations

to justify transferring the domain name to Complainant AT&T. The putative

respondent makes the bare assertion that it "is the creator of the ‘World

of Nettie Atteberry’ stories".

Respondent Has Registered

and Used the Domain Name in Bad Faith

A. Complainant

5.8 Complainant asserts

that Respondent’s conduct in its registration of the domain name and in its

dealings with AT&T Corp. demonstrates its bad faith in registering the contested

domain name, and that mere registration of a trademark or famous mark as a domain

name, by an entity which has no relationship to the mark, is sufficient evidence

of bad faith registration and use.

5.9 Complainant further

asserts bad faith on the part of the Respondent as evidenced by its aggressive

attempts to extort $10,000 from Complainant while refusing to provide its mailing

address, providing insulting and materially misleading contact information,

and "transferring" the registration across the globe after being contacted

by AT&T Corp.’s counsel.

5.10 The Complainant

says that, even if the purported Response of "Nettie Atteberry" were

accepted, it adduces no credible facts or arguments supporting the Respondent’s

legitimate interests of good faith. Further, the Complainant says that the dubious

activity described above, plus "Nettie Atteberry’s" failure to produce

any evidence to support its allegations when called upon to do so "establishes

‘bad faith’ beyond a reasonable doubt."

B. Respondent

5.11 The putative respondent

says that the Respondent is not the registrant of <worldnetatt.net> and

that the current registrant is "WORLD OF NETTIE ATTEBERRY", the creator

of the "World of Nettie Atteberry" stories, and is not affiliated

with the claims of the Complainant "with regards to ‘bad faith’ registration,

and did not offer the domain name for sale to the Complainant, nor use it in

any manner to dilute or tarnish the image or intellectual property of AT&T."

Nor did it "profit or attempt to profit from any possible similarity of

names".

6. Discussion and Findings

6.1 The Complaint was

submitted on the basis of the provisions of a Registration Agreement in effect

between the Respondent and Network Solutions which incorporates by reference,

the Uniform Domain Name Dispute Resolution Policy (the "Policy") in

effect at the time of the dispute. The Policy requires that domain name registrants

such as Respondent agree in writing to submit to a mandatory administrative

proceeding regarding third-party allegations or abuse of domain name registration

(Policy, para. 4(a)). No registration is approved in the absence of such a written

submission.

6.2 Such administrative

proceedings are conducted by ICANN-approved dispute resolution service providers

such as WIPO. The Policy provides an administrative means for resolving disputes

concerning allegations of abuse of domain name registration, subject to referral

of the dispute to a court of competent jurisdiction for independent resolution

(Policy, paragraph 4(a)).

6.3 The Policy, and

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

establish a procedure intended to assure that respondents are given adequate

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

respond (See e.g. paragraph 2(a), Rules).

6.4 Before dealing with

the substantive issues involved with obtaining the relief requested under the

Policy this Panel must decide the effect of the documentation filed on behalf

of the putative respondent. The Complainant has referred to the machinations

of the various pseudo owners of the Domain Name in question since the Complainant

first gave notice that the Domain Name <worldnetatt.net> was identical

or confusingly similar to a trademark or service mark in which it had rights,

as a "shell game". This Panel agrees with that characterization.

6.5 While it must be

accepted that in some cases the transfer of beneficial title may be quite legitimate,

there have been a number of cases involving concurrent "passing off"

of Domain Names after the first cease and desist communication is made. An early

example of this is Quixtar Investments, Inc. v. Scott A. Smithberger and

QUIXTAR-IBO, WIPO

Case No. D2000-0138. In that case, the registration was solely in the name

of QUIXTAR-IBO; however, apparently out of an abundance of caution, the Complainant

also named a Scott A. Smithberger as the Complainant was convinced that there

was no such entity as Quixtar-IBO, thinking it to be a mere alter ego of Mr.

Smithberger. However, as Mr. Smithberger was not the registrant of the

Domain Name and had therefore not entered into any contract or other agreement

in which he personally agreed to arbitrate a dispute over the Domain Name pursuant

to the Policy, the Panel concluded that it lacked jurisdiction over him and

dismissed the claims against him. However, the Panel was able to use the conduct

of Mr. Smithberger in this regard as evidence of bad faith. This issue arose

again in Plaza Operating Partners Ltd. v. POP Data Technologies and Joseph

Pillus, WIPO

Case No. D2000-0166, where, to begin with, it was unclear to the Panel from

the Complaint and the Response, which of three potential owners actually owned

the legal and beneficial title to the Domain Name in question. The registered

owner was named as a Respondent in the Complaint. In the Response, it was alleged

in one part thereof that the Respondent had sold the Domain Name to one of the

other named persons, but in another part it stated that the Respondent had sold

the name to the third person named (one being a corporation and the other an

individual who was the sole shareholder in that corporation). The Panel held

that the Corporation named as Respondent, although claiming that it was not

properly before the Panel because it no longer had an interest in the Domain

Name in question, was a legitimate Respondent and an order could be made against

it, even though it may have signed a document selling its rights in the Domain

Name. The individual not listed as an owner of the Domain Name and who had not

submitted to the Panel a signed copy of the registration agreement consented

to the jurisdiction of ICANN panels, because he had asserted that he was the

owner of the Domain Name and participated in the proceedings, had voluntarily

agreed to subject himself to the Panel’s jurisdiction, and was found to be properly

before the Panel. In Tough Traveler v. Kelty Pack Inc., Mike Scherer and

Inkling Pen Co., WIPO

Case No. D2000-0783, the Panel found a third party, claiming to be the beneficial

owner of the Domain Name, who filed the only Response and participated in the

proceeding as a Respondent, to be deemed to have consented to the jurisdiction

of the Panel.

6.6 Such tactics as

described above have added a new name to our vocabulary -- "cyber-flying".

Under the Policy, a registrant may not transfer a Domain Name registration to

another holder or another registrar during a pending proceeding under the Policy

or for fifteen business days after its conclusion. The Complaint is initiated

by the trademark owner sending a properly constituted Complaint to any provider

provided by ICANN – Rule 3(a). A copy must already have been sent to the Respondent

by the Complainant – Rule 3(b)(xii). The date of commencement of the proceeding

is the date on which the Provider completes its responsibilities in connection

with forwarding a copy of the Complaint to the Respondent (after checking all

the formalities, which can take several days) – Rule 4(c). Quick-witted Respondents

seek to escape the jurisdiction of the Panel by transferring the Domain Name

to a new holder or to a new registrar after receipt of the copy of the Complaint,

but before the formal commencement of the proceeding. Neither a change of registrant

nor even of registrar affects the proceedings. (See British Broadcasting

Corporation v. Data Art Corporation/Stoneybrook, WIPO

Case No. D2000-0683; Kabushiki Kaisha Isetan v. Stars Web International

and Isetan, Inc. WIPO

Case No. D2001-0732.) It is the view of this Panel that an order for transfer

of the Domain Name may be made against both the named Respondent and the putative

respondent "World of Nettie Atteberry" for the transfer of the Domain

Name <worldnetatt.net> to the Complainant, if the requisite elements of

the Policy have been proved on a preponderance of the evidence.

6.7 In addressing the

evidence necessary to prove the substantive aspects of this case, this Panel

adopts what it said in a previous case mentioned above, McClatchy Newspapers,

Inc. v. Moldava S.A. WIPO

Case No. D2001-0304:

"Twenty-five years

before the Sacramento Bee was first published [1857], an English judge Sergeant

Arabin, sitting at the Old Bailey in London concluded of the matter then before

him that ‘if ever there was a case of clearer evidence than this of persons

acting together this case is that case’. While this Panel may not agree with

the syntax of that statement, the same conclusion may readily be adopted to

the circumstances here. It is very much to be doubted that [the string of putative

owners] are separately controlled persons and entities. In any event, there

is sufficient evidence to warrant a finding that their conduct, individually

and in concert, is such as to make the acts of any one of them admissible in

this Panel’s determination that the domain name in question has been registered

and is being used in bad faith. . . . The covert attempts to transfer the domain

name in question through a number of nominees in a variety of countries demonstrate

a transparently nefarious scheme to delay justice and further harm the Complainant."

In order to obtain the

relief requested under the Policy, Complainant must prove in the Administrative

Proceeding that each of the three elements of paragraph 4(a) are present:

(i) that the Domain

Name registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights;

6.8 This factor

contains two elements:

First, does Complainant

have rights in relevant mark, and second, is the Domain Name identical or confusingly

similar to that mark. (Plaza Operating Partners Ltd. v. POP Data Technologies

and Joseph Pillus, WIPO

Case No. D2000-0166). In this case, Complainant asserts only that the Domain

Name is confusingly similar.

6.9 This Panel accepts

that the Complainant is the holder of the registrations for the marks referred

in paras. 4.1 and 4.2 above and has been the registrant of the domain names

referred to in paras. 4.3 and 4.4 above, and has used "AT&T WorldNet"

in commerce and has held United States and other registered trademarks as identified

in para. 4.5 above. This Panel also accepts the facts as set out in para. 4.6

above.

6.10 The test for determining

confusing similarity is one of overall impression of confusion in the mind of

the person making the decision, deciding it as a "jury question",

with the additional requirement that there be a real danger of confusion. (See

AT&T Corp. v. Tala Alamuddin, WIPO

Case No. D2000-0249). This test has, in the opinion of this Panel, been

proved on a balance of probabilities which is the appropriate standard for these

Domain Name disputes.

(ii) that the Respondent

has no rights or legitimate interests in respect of the Domain Name; and

6.11 This Panel accepts

the assertions of the Complainant as found in para. 5.5 and 5.6 above and rejects

the allegations found in the Responses filed on this issue. The Respondent has

provided no credible evidence of the alleged transfer of registration. It is

the responsibility of the parties to these Domain Name disputes pursuant to

the ICANN process to present their evidence in full either in the Complaint

or in the Response. It is of no use for the Respondent to say, as it has done

in its first Response here, "If this panel believes there is any questionable

facts or evidence, "World of Nettie ATTEBERRY", will cooperate in

showing proof of purchase, statements of intent for the use of the domain name,

communication records from the previous registrants, etc. We are a legitimate,

Internet friendly, honest entity. Furthermore, we will be happy to provide confidentially

to this panel our private name, address, and phone number. The information is

not contained in this Response because through our research since receiving

this complaint, it is apparent that AT&T has a reputation of personally

harassing private individuals and using their mega-size and unlimited funds

to intimidate little people. Please respect our privacy and prudence. We acknowledge

e-mail as valid communication and verify receipt of such. Postal service is

unreliable and inconvenient. Thank you." This Panel invited further evidence

in this regard which, on receipt, was found to be doctored and lacking in substance.

And, when this was exposed, rather than supply credible evidence, it repeated

its desire to do so. It is the view of this Panel that the conduct of the Respondents

(by which is meant the Respondent and the "putative respondent") was

nothing more than a prolonged attempt to delay this proceeding and to put off

the inevitable. It was no doubt hoped that another proceeding would have to

be started, during which further similar machinations would take place with

another putative party bearing a name with the acronym "att" being

substituted with equally concealed personal contact information and identity.

Nor has any evidence been presented that the putative respondent has any involvement

in the creation of the "World of Nettie Atteberry" stories other than

the bare assertion made in one of its Responses.

6.12 This Panel finds

that the Respondent has no rights or legitimate interests in respect of the

Domain Name.

(iii) that the Domain

Name has been registered and is being used in bad faith.

6.13 It has been held

in earlier Panel decisions that mere registration of a trademark or famous mark

as a Domain Name, by an entity which has no relationship to the mark, is sufficient

evidence of bad faith registration and use. (See Sony Kabushiki Kaisha a/t

Sony Corp. v. Fujiko Kikuno, WIPO

Case No. D2000-1372; Sigla Sistema Globo de Gravacoes Audio Visuais Ltd.

v. Italo de Barros Nade, WIPO

Case No. D2000-0732, and Pivotal Corp. v. Discovery Street Trading Co.

Ltd., WIPO

Case No. D2000-0648). Further, earlier Panel decisions have held that conduct

demonstrating a deliberate concealment of the true identity of the Respondent

through handing off the Domain Name after it has become aware that proceedings

are likely to be taken, to delay the arbitration process itself, constitutes

bad faith. (See Telstra Corp. Ltd. v. Nuclear Marshmellows, WIPO

Case No. D2000-0003; Geoffrey Inc. v. Babys Russian, WIPO

Case No. D2000-1011, and McClatchy Newspapers, Inc. v. Moldava S.A.,

WIPO

Case No. D2001-0304.) This Panel repeats and affirms what it said in the

McClatchy Newspapers case above.

6.14 This Panel finds

that the Domain Name <worldnetatt.net> has been registered and is being

used in bad faith.

6.15 In light of what has

occurred, the Complainant asked that this Panel invoke its "right to cancel

any transfer of a domain name registration to another holder that is made in

violation of [Rule 8(a)]."

7. Decision

7.1 This Panel finds

and decides:

(a) the Domain Name

is identical or confusingly similar to a trademark or service in which the Complainant

has rights;

(b) the Complainant

has established that Respondent(s) has no rights or legitimate interests in

respect of the Domain Name <worldnetatt.net>;

(c) the Complainant

has established that the Domain Name has been registered, and is being used

in bad faith.

7.2 The ruling of this

Panel is that the registration of the Domain Name <worldnetatt.net> be

transferred from the named Respondent and the putative respondent, as explained

above, to the Complainant.

7.3 The ruling of this

Panel is, further, that pursuant to para. 8(a) of the Policy the purported further

domain name registration to "Nettie Atteberry" which occurred after

the commencement of these proceedings, be cancelled.

8. Reverse Domain Name

Hijacking

8.1 In para. 5.4 above,

mention is made of an allegation on the part of the Respondent that this Complainant

is far-fetched at best and is merely part of ongoing crusade by AT&T to

"reverse domain name hijack". Having found for the Complainant in

the matter, this Panel denies the request of the Respondent in this respect

– if indeed it was a request.

Cecil O.D.

Branson, Q.C.

Sole Panelist

Dated: November

15, 2001

APPENDIX

A

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL REQUEST

PURSUANT

TO RULE 12 OF THE RULES FOR

UNIFORM

DOMAIN NAME DISPUTE RESOLUTION POLICY

AT&T

Corp. W.N.A., a/k/a

295 North

Maple Avenue v. "Worldwide Network of Attornies"

Basking

Ridge, NJ 07920-1002 USA Farouk al Khalifa a/k/a Jaye Rayes

(Complainant) 6

Palace Avenue, Manama BAHRAIN (Respondent)

Case No.

D2001-1160

1. The Complaint in

this Case was filed with the World Intellectual Property Organization ("WIPO")

on September, 21, 2001, naming as Respondent W.N.A., a/k/a "Worldwide Network

of Attornies".

2. An abbreviated copy

of material in connection with this Case was received as an attachment to an

e-mail directed to this Administrative Panel on October 25, 2001.

It contained a copy of the Complaint duly authenticated by the Representative

authorized to act for it in this Administrative Proceeding, pursuant to the

Uniform Dispute Resolution Policy ("the Policy"). The file also contained

a document entitled "Response to Complainant" submitted not by the

named Respondent in this proceeding but rather by an entity describing itself

as "World of Nettie Atteberry", along with its contact information

but without the required statement and signature of this putative Respondent.

It is alleged in this document that the named Respondent in this case is not

the Registrant of <worldnetatt.net>, the Domain Name which is the subject

of this proceeding, and that this Domain Name was "recently" acquired

from an entity described as fourcharities@hotmail.com . It also asserts certain

defences to the Complaint which relate to it, rather than the named Respondent.

3. On October, 26, 2001,

this Panel received two further documents as e-mail attachments from WIPO. Both

of these documents originated from the attorneys of record on behalf of the

Complainant. These documents were a "Request for Leave to File Motion to

Strike Response to Complaint" and a "Request to Strike Submission

Purportedly on Behalf of Respondent". The principal basis for seeking to

strike the Submission in question is the fact that, allegedly contrary to para.

8(b) of the Policy, "[t]he Registration at issue was changed after AT&T

Corp. issued notice of this action on September 21, 2001", in violation

of para. 8(b) thereof.

4. The above-noted documents

raise some new and unusual issues such as to incline this Administrative Panel

to request further statements and documents from the Parties, pursuant to Rule

12 of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules").

The issues foreseen by the Panel are:

4.1 Ought the document

"Response to Complaint", submitted on behalf of the putative entity

"World of Nettie Attebery" to be received as a Response to the Complaint

in this case?

4.2 What are the legal

effects on the position of the named Respondent and the putative Respondent

in this proceeding which will flow from a decision either to receive the Response,

as above, or not to receive it? Please give reasons.

4.3 Ought the Complainant’s

request for leave to file a motion to strike the Response to the Complaint to

be granted, and in that event should the "Response" be struck? Please

give reasons.

4.4 What are the legal

effects that the Parties each say flows from either the success or lack thereof

of the requests referred to in para. 4.3 above, particularly concerning the

decisions which this Administrative Panel would then be entitled to make in

regard to either or both registrations? Please give reasons.

5. This Administrative

Panel would like to deal with the above in an orderly manner, and pursuant to

its General Powers as stated in Rule 10 of the Rules for Uniform Domain Name

Dispute Resolution Policy ("Rules"), which reads as follows:

(a) The Panel shall

conduct the administrative proceeding in such manner as it considers appropriate

in accordance with the Policy and these Rules.

(b) In all cases, the

Panel shall ensure that the Parties are treated with equality and that each

Party is given a fair opportunity to present its case.

(c) The Panel shall

ensure that the administrative proceeding takes place with due expedition. It

may, at the request of a Party or on its own motion, extend, in exceptional

cases, a period of time fixed by these Rules or by the Panel.

(d) The Panel shall

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

(e) A Panel shall decide

a request by a Party to consolidate multiple domain name disputes in accordance

with the Policy and these Rules.

6. This Panel has not

yet received the full record by mail of this case and therefore is under some

handicap in following the precise trail of material events in regard to the

registration of the Domain Name in question. Nor has this Panel received any

specific evidence of any of the assertions made in the document "Response

to Complaint". In regard to both positions, note should be taken by the

parties of the comments made by earlier Administrative Panels concerning the

weight of evidence as between mere assertions on the one hand and documented

or otherwise verified evidence on the other. It is noted that the "Response

to Complaint" submitted does contain a conditional offer of further proof

of the facts which it asserts. The first condition states that the offer is

dependent on whether there "is any questionable fact or evidence".

The answer to this is that all assertions are subject to question by Administrative

Panels. The second condition is that this Panel not reveal some of the information

provided. This Panel is of the opinion that it cannot accept this condition

consistent with its authority in para. 10 of the Rules, as above.

7. In order that this

proceeding not be prolonged unnecessarily, this Panel requests:

7.1 That either or both

"Respondents" provide to this Administrative Panel and the Complainant

(through the WIPO Case Manager) on or before Friday, November 2, 2001,

any further material evidence which they have in support of the assertions made

in the "Response to Complaint".

7.2 That the Complainant,

on or before Friday, November 9, 2001, provide further statements and documents

responsive to the issues posed in para. 4 above, along with any further material

evidence touching upon the issues raised above.

7.3 That either or both

of the "Respondents" on or before November 13, 2001, provide further

statements and documents responsive to the issues posed above in para.4.

8. The named Respondent,

W.N.A. a/k/a "Worldwide Network of Attornies" shall also make it clear

whether it adopts the Response to Complaint filed by "Nettie Attebery",

by Friday, November 2, 2001.

9. It would also be

helpful to this Administrative Panel for it to obtain further evidence from

the Registrar, eNom, Inc. concerning the most recent filing application mentioned

in the "Response to Complaint". This Panel does not think it appropriate

for it to do so directly.

10. This Administrative

Panel deems the delay occasioned by what has occurred and which has precipitated

the above to be "exceptional circumstances" pursuant to Rule 6(f)

of the Rules and therefore extends the date by which its decision will be rendered

until November 20, 2001.

Cecil O.D.

Branson, Q.C.

Sole Panelist

Dated: November

16, 2001

More cases by this complainant

• AT&T Corp. v. Asia Ventures, Inc. — D2005-1012 · attathome.com, atttelephones.com · Transfer · 14 Nov 2005
• AT&T Corp. v. ATandT.net — D2005-1006 · atandt.net · Transfer · 22 Nov 2005
• AT&T Corp. v. Laporte Holdings, Inc. — D2004-1088 · mobileatt.com · Transfer · 25 Feb 2005
• 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