AT&T Corp. v. RealTime Internet.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. RealTime Internet.com Inc.

Case No. D2001-1487

1. The Parties

The Complainant is AT&T Corp., a corporation organized and existing under

the laws of the State of New York, United States of America, having its principal

place of business at Basking Ridge, New Jersey, United States of America. The

Respondent is RealTime Internet.com Inc., an entity of unknown characteristics

having its principal place of business at Fort Wayne, Indiana, United States

of America.

2. The Domain Names and Registrars

The domain names at issue are: <attjobs.com>, <atandtcable.com>,

<anywho.net> and <anyho.com>.

These domain names are registered as follows:

<attjobs.com>Dotster, Inc., Longview, WA ("Dotster")

<atandtcable.com>BulkRegister.com, Inc., Baltimore, MD ("BulkRegister")

<anywho.net>BulkRegister

<anyho.com>Dotster

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration

and Mediation Center (the "WIPO Center") on December 21, 2001,

in electronic form. The WIPO Center received the hard copy of the Complaint

on December 28, 2001. The WIPO Center acknowledged receipt of the

Complaint on December 28, 2001.

On January 3, 2002, Requests for Registrar Verification were transmitted to

Dotster and BulkRegister. Dotster responded on January 4, 200, confirming

the registration details and its receipt of a copy of the Complaint from Complainant

by certified mail. BulkRegister responded on January 21, 2002, confirming

the registration details and its receipt of the Complaint from Complainant by

certified mail.

A Formal Requirements Compliance Checklist was initiated by the assigned WIPO

Center Case Administrator, and completed January 22, 2002. The WIPO

Case Administrator determined that the Complainant is in formal compliance with

the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy

("Rules") and the WIPO Supplemental Rules for Uniform Domain

Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO

Supplemental Rules"). The Panelist has independently reviewed the Requirements

and finds that the Complainant is in formal compliance with the requirements

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

Rules and the Supplemental Rules. The Complainant paid the required fees for

a single-member Panel on time and in the required amount.

No formal deficiencies having been noted, on January 22, 2002, a

Notification of Complaint and Commencement of Administrative Proceeding (the

"Commencement Notification") was transmitted to the Respondent (with

copies to the Complainant, Dotster, BulkRegister and ICANN), setting a deadline

of February 11, 2002, by which the Respondent could file a Response

to the Complaint. The Commencement Notification was transmitted to the Respondent

by e-mail to the e-mail addresses indicated in the Complaint and specified in

Whois confirmations received from Dotster and BulkRegister, by post/courier

to the indicated postal addresses and by facsimile to the indicated facsimile

numbers. Having reviewed the communications records in the case file, the Panelist

finds that the WIPO Center has discharged its responsibility under Paragraph

2(a), Rules, "to employ reasonably available means calculated to achieve

actual notice to Respondent."

On February 13, 2002, having received no formal Response from the designated

Respondent, the WIPO Center transmitted to the parties a Notification of Respondent

Default using the same contact details and methods as were used for the Commencement

Notification.

On April 15, 2002, the WIPO Center invited Richard Allan Horning to serve as

the Sole Panelist in Case No. D2001-1487 and transmitted

to him a Statement of Acceptance and Request for Declaration of Impartiality

and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration

of Impartiality and Independence was received on April 15, 2002. On

April 19, 2002, the WIPO Center transmitted to the parties a Notification

of Appointment of Administrative Panel and Projected Decision Date, in which

Richard Allan Horning was formally appointed as the Sole Panelist. The Projected

Decision Date was May 3, 2002.

The Panelist finds that the Administrative Panel was properly constituted and

appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Policy, the

Rules, and the WIPO Supplemental Rules and without the benefit of any formal

Response from Respondent.

The Panelist has taken note of an e-mail of record transmitted by Respondent

to Counsel for Complainant dated December 21, 2001. In that e-mail

Respondent said, "you can have <attjobs.com> and <atandtcable.com>",

and offered to transfer <anyho.com> in exchange for $2000. Respondent

also conceded that the outcome of the present proceeding in respect of <anywho.net>

was probably a transfer.

The Panelist has further noted Respondent's e-mail dated December 28, 2001

addressed to Counsel for Complainant and the WIPO Case Administrator. In that

e-mail Respondent claimed to have transferred the two ATT domains (presumably

referring to <attjobs.com> and <atandtcable.com>). Respondent also

stated that he did not wish to give up <anywho.net> and <anyho.com>.

The Panelist has also noted an e-mail dated February 21, 2002 from

an attorney representing Respondent in this matter, received one week after

the transmittal of the Notice of Respondent Default. In that letter Counsel

for Respondent offered to voluntarily relinquish the registration of all four

domain names, and requested that the Panelist when appointed terminate the proceedings

and issue an order transferring the four domain names in light of Respondent's

purported voluntary agreement. The Panelist notes that Respondent's Counsel

contended that Respondent could not then accomplish the transfer voluntarily

because the domain names were "locked".

The WIPO Case Administrator, in an e-mail dated February 28, 2002,

inquired of Counsel for Complainant whether Complainant would agree to a suspension

of the proceeding. On May 4, 2002, Complainant stated that it wished

to proceed with the proceeding, expressing doubt about the sincerity of Respondent's

offer of transfer in light of Respondent's purported conduct in other domain

name proceedings in which similar offers were allegedly made and not timely

carried out following suspension.

In an e-mail on May 4, 2002, Counsel for Respondent assured Complainant and

the WIPO Case Administrator of his client's intention to transfer the disputed

domain names promptly upon their being "unlocked". Counsel for Respondent also

objected to Complainant's allegations about Respondent's actions in respect

of other unnamed domain names.

The Panelist has also noted an e-mail dated March 4, 2002, from Respondent's

Counsel, in which Respondent identified the domain names involved in the other

proceeding concerning Respondent. Counsel for Respondent noted that Counsel

for the Complainant here also represented the Complainant in those other proceedings.

The Panelist also notes an e-mail dated March 5, 2002 in which Counsel

for Respondent contended that his client did attempt to transfer the domain

names and was awaiting the submittal of the appropriate forms which purportedly

had been tendered for execution by another member of the law firm representing

Complainant.

The Panelist also notes that on March 5, 2002, Counsel for Complainant

confirmed its desire to proceed with the proceedings it had initiated in December, 2001,

against Respondent and requested the appointment of a Panelist. This request

was repeated in an e-mail dated April 2, 2002 addressed to the WIPO

Case Administrator.

4. Factual Background

Complainant is the owner of record of various U.S. trademarks which it has

used in connection with its products and services, including its Internet and

telecommunication goods and services, as well as its cable services. Its use

of AT&T as a brand has spanned more than a century in the telecommunication

business.

The Complainant has provided evidence of the registration of the following

marks, which have been adopted and used in this regard:

Registered Marks:

Mark

Reg. No.

Date

Goods and Services

AT&T

1,293,305

9/04/84

Digital network telecommunications services

AT&T

1,298,084

9/25/84

Telecommunications services and transmission of data via satellite and

telecommunications links

AT&T

1,314,059

1/08/85

Retail store services-namely, phone centers specializing in telecommunication

equipment

AT&T

1,353,769

8/13/85

Telephones

1 800 ATT-GIFT

2,076,093

7/1/97

Telecommunications services, namely the delivery over a telephone line

of audio greetings and songs and the ordering of gifts tied to a specific

occasion

1 800 CALL ATT

2,348,919

5/9/00

Telephone calling card services

CAMP ATT

2,020,639

12/3/96

Telecommunications services, namely the electronic transmission of voice,

facsimile, data, video and information

AT&T has registered and used several domain names incorporating "ATT",

including <att.com>, <att.net> and <attws.com>, for web sites

that offer a variety of goods and services, including Internet services, telecommunications

goods and services and retail services.

Since 1997, AT&T has offered Internet directory services to the general

public and to business customers under the mark ANYWHO. AT&T registered

its ANYWHO mark in the United States Patent and Trademark Office (Reg. No. 2,298,647,

December 7, 1999). AT&T registered the domain name <anywho.com>

for its on-line directory services on July 7, 1997.

The Respondent registered the domain names at issue in the summer of 2001.

(Complaint, Annex A).

At the time of the submission of the dispute to the Panelist, each of the domain

names resolved to a virtually identical site; the only material difference noted

was the change in the domain name at the top of the home page, <atandtcable.com>,

etc. The website is entitled "Looking for Something?" and offers links

to various informational websites and websites where products and services are

sold, including the products and services of Complainant and Complainant's competitors.

On the <attjobs.com> site the phrase ATTJOBS.COM had the TM symbol superscripted

after ATTJOBS and before the .COM, signifying a purported claim of common

law trademark. On the <anywho.net> site the phrase ANYWHO.NET, found at

the top of the homepage, has the TM symbol superscripted after ANYWHO and before

the .NET. On the <anyho.com> and <atandtcable.com> sites,

the same phenomenon is observed; the ANYHO and ATANDTCABLE are presented with

a superscripted TM. The owner of the common law trademarks is never specifically

identified.

At the time the Complaint was filed the website which was linked with the domain

name was slightly different. The website was still entitled "Looking for

Something?" and offered links to various informational websites and websites

where products and services are sold, including the products and services of

Complainant and Complainant's competitors. At the time of filing, however, there

was a claim of copyright by "Infostart.com," and the website owner claimed no

common law trademark. (Complaint, Annex M).

The comparison of the website at the time of filing, with the website at the

time of Panelist appointment, indicates that Respondent altered the websites

after the Complaint was initiated.

The Complainant wrote to Respondent by letters dated September 4, 2001,

October 15, 2001 and November 21, 2001 concerning <anywho.net>

and <atandtcable.com>, advising Respondent that, in its view, Respondent’s

registration violated Complainant’s trademark rights and Complainant’s goodwill

(Complaint, Annex S, T).

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered domain names which are

nearly identical to and confusingly similar to the service marks and trademarks

registered and used by Complainant, that Respondent has no rights or legitimate

interests in respect to the domain names at issue, and that Respondent has registered

and is using the domain names at issue in bad faith.

B. Respondent

Respondent has not formally contested the allegations of the Complaint.

6. Discussion and Findings

The Panelist will decide the case on the merits, despite Respondent's purported

offer to transfer some of the domain names to the Complainant. See The State

of the Netherlands v. Gold Names Inc., WIPO Case

No. D2001-0520. The Panelist finds the offer of transfer to be disingenuous.

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the

Panelist is to use in determining the dispute: "A Panel shall decide a

complaint on the basis of the statements and documents submitted in accordance

with the Policy, these Rules and any rules and principles of law that it deems

applicable."

Paragraph 4(a) of the Policy directs that the Complainant must

prove each of the following:

1) 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;

and,

2) that the Respondent has no legitimate interests in respect of the domain

name; and,

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain names at issue are either identical (Hewlett-Packard

Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online,

Inc. v. Avrasya Yayincilik Danismanlik Ltd, NAF Case No. FA0002000093679)

or confusingly similar (Marriott International, Inc. v. John

Marriot, NAF Case No. FA 0002000094737; Identigene, Inc. v.

Genetest Laboratories, WIPO Case No. D2000-1100;

Seiko Epson Corporation v. Distribution Purchasing & Logistics

Corp., NAF Case No. FA0003000094219) to Complainant’s marks. As the Panelist

held in AT&T Corp. v. WorldclassMedia.com, WIPO

Case No. D2000-0553, "the letters AT&T are a fundamental feature of

Complainant's marks and the Complainant has proven that it uses "ATT" as a synonym

for "AT&T"". Thus the use of the AND in <atandtcable.com> offers no

meaningful distinction from the group of ATT Marks registered and owned by Complainant.

Likewise, the addition of the word JOBS after ATT in <attjobs.com> does

not meaningful distinguish the domain name from the registered group of ATT

marks; indeed, it suggests some affiliation with ATT in connection with job

offerings of that multi-national corporation. See America Online, Inc. v.

East Coast Exotics, WIPO Case No. D2001-0661.

The Panelist finds that the domain names <anywho.net> and <anyho.com>

are likewise either identical or confusingly similar to Complainant's registered

ANYWHO mark. AT&T Corp. v. CME Inc., WIPO

Case No. D2001-1060 and Microsoft Corporation v. Global Net 2000, Inc.,

WIPO Case No. D-2000-0554.

Complainant has alleged and Respondent has failed to deny that it has no legitimate

interests in respect of the domain names at issue. Alcoholics Anonymous World

Services, Inc. v. Raymond, WIPO Case No.

D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO

Case No. D2000-0011. Respondent is not commonly known by the domain names

at issue, and has not acquired trademark or service mark rights in the domain

names. The Panelist finds that Respondent has no rights or legitimate interest

in the domain names.

The question thus arises whether the domain names at issue have been registered

and are being used in bad faith. Paragraph 4.b of the Policy sets forth "in

particular but without limitation" circumstances which "shall be evidence

of registration and use of a domain name in bad faith." Those circumstances

are:

(i) circumstances indicating that you have registered or you have acquired

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 your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your website 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 your website or location

or of a product or service on your website or location.

Complainant has alleged and the Panelist finds that Respondent’s use of the

domain names at issue, to resolve to a website entitled "Looking for Something?",

constitutes bad faith registration and use under the Policy.

Among the services offered at the sites to which the domain names at issue

resolve are AT&T's products and services and the services of others who

compete with AT&T. The use of domain names to sell Complainant's goods and

services without Complainant's authority, as well as promoting the sale of other

goods and services of other entities that compete with Complainant, is bad faith

use of a confusingly similar domain name. Koppers Chocolate Specialty Co.,

Inc. v. Seymour Leonard, WIPO Case No. D2001-0822;

Chanel, Inc. v. Cologne Zone, WIPO

Case No. D2000-1809; National Collegiate Athletic Association and March

Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center

Entertainment, WIPO Case No. D2000-0700.

The Panelist further finds that Respondent's post-Complaint alteration of the

website, to asserts claims of common law trademark to the domain name roots,

is further evidence of bad faith registration and use.

ANYHO and ANYWHO.NET is a common misspelling or misidentification of Complainant’s

registered trademark ANYWHO and its ANYWHO.COM website. Misspellings such as

this, without an explanation from Respondent, have been previously held to be

"typosquatting" and in bad faith. General Electric Company v. Fisher

Zuieli, A/K/A Zuieli Fisher, WIPO

Case No. D2000-0377. See Pig Improvement Company, Inc. v. Platinum Net,

Inc., WIPO Case No. D2000-1594; Microsoft

Corp. v. Global Net 2000, Inc., WIPO Case

No. D2000-0554; Reuters Limited v. Global Net 2000, Inc.,

WIPO Case No. D2000-0441; and News Group Newspapers Limited and News

Network Limited v. Momm Amed la, WIPO

Case No. D2000-1623.

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain names

registered by Respondent are identical or confusingly similar to the trademarks

and service marks in which the Complainant has rights, that Respondent has no

rights or legitimate interests in respect of the domain names, and that the

Respondent’s domain names have been registered and are being used in bad faith.

Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires

that the registration of the following domain names: <attjobs.com>, <atandtcable.com>,

<anywho.net>, <anyho.com>, be transferred to the Complainant.

Richard Allan Horning

Sole Panelist

Dated: May 1, 2002

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