AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin

Case No. D2001-1503

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 John Zuccarini d/b/a RaveClub Berlin, with address in Cherry

Hill, New Jersey, USA.

2. The Domain Name and Registrar

The disputed domain name is <atttwireless.com>.

The registrar of the disputed domain name is CSL GmbH d/b/a joker.com, with

business address in Dusseldorf, Germany.

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 December 28, 2001, and via courier mail received by WIPO on January 4, 2002.

Payment by Complainant of the requisite filing fees accompanied the courier

mailing. On January 10, 2002, WIPO transmitted a Request for Registrar Verification

to the Registrar, CSL GmbH (with the Registrar’s Response received by WIPO on

January 14, 2002).

(b) On January 16, 2002, WIPO transmitted Notification of the Complaint

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

(c) On February 8, 2002,WIPO transmitted notification to Respondent of its

default in responding to the Complaint via e-mail.

(d) On March 15, 2002, 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 March 17, 2002, the undersigned transmitted by fax

the executed Statement and Declaration to WIPO.

(e) On March 20, 2002, 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 April 3, 2002. The Panel received a hard copy of the file in this matter

by courier mail 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 "AT&T"

and "ATT" used in combination with other terms, including "AT&T

WIRELESS SERVICES" and "AT&T WIRELESS GROUP" (referred to

collectively as the "AT&T marks"). The "AT&T WIRELESS

SERVICES" service mark is registered at the United States Patent and Trademark

Office (USPTO) (reg. No. 2099822, dated September 23, 1997) in International

Class 38, covering, inter alia, wireless voice, data, paging and facsimile

services. (Complaint, para. 11 & Annexes 8-10 & 15)

Complainant AT&T Corp. licenses AT&T Wireless Services, Inc., an independent

enterprise spun off from AT&T Corp., to use the "AT&T WIRELESS

SERVICES" mark. Under the terms of the license agreement, it is the responsibility

of AT&T Corp. to protect the mark such as by filings legal actions against

infringers. (Id., paras. 1 & 11 & Annex 14, at 102-03)

Complainant is registrant of domain names incorporating "attwireless"

in the .com, .org, .info and .biz domains (id., Annex 17). AT&T Wireless,

as licensee of AT&T, maintains an active commercial website at <www.attwireless.com>

(id., para. 11).

According to the Registrar’s Verification Response to WIPO, dated January 14,

2002, "RaveClub Berlin" is the listed Registrant of the domain name

<atttwireless.com>. The address of the registrant is 600 Haddenfield Rd,

Cherry Hill, New Jersey. The record of registration was created on August 14,

2001. "RaveClub Berlin" has been recognized in U.S. federal court

proceedings initiated by the Federal Trade Commission to be a name under which

John Zuccarini does business (FTC v. Zuccarini, Civ. No. 01-CV-4854 (E.D.

Pa. Oct. 18, 2001) (Complaint, Annex 1).

Respondent has used the disputed domain name to redirect Internet users to

a website at Internet address (URL) <www.amateurvideos.nl>. Upon entering

that website, an Internet user is offered information regarding access to pornographic

websites, and advertisements regarding various pornographic websites. (Complainant,

para. 12 & Annexes 21-25)

Complainant has attempted to contact Respondent regarding the disputed domain

name without success (id., para.12).

Respondent has been determined in numerous prior administrative proceedings

under the Policy to have engaged in abusive domain name registration and use

in circumstances similar to those presented here. This sole panelist has made

determinations against Respondent in at least two such proceedings. See NIHC,

Inc. and Nordstrom, Inc. v. John Zuccarini, WIPO

Case No. D2001-1260, decided December 31, 2001, and; America Online,

Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger,

The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident,

WIPO Case No. D2000-1495, decided January

22, 2001.

The Service Agreement in effect between Respondent and CSL GmbH subjects Respondent

to CSL GmbH’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 service mark "AT&T WIRELESS

SERVICES" and other "AT & T"-formative marks (see

Factual Background, supra). Complainant states that the disputed domain

name <atttwireless.com> is identical or confusingly similar to its mark.

Complainant indicates that the disputed domain name, by eliminating the term

"services", uses its mark in a form easily recognized by consumers

and Internet users as associated with it. The only distinguishing element of

the disputed domain name is an additional letter "t".

Complainant alleges that Respondent has no rights or legitimate interests in

the disputed domain name.

Complainant asserts that Respondent registered and is using the disputed domain

name in bad faith because it is intentionally attempting to attract for commercial

gain Internet users to websites unaffiliated with Complainant by creating confusion

based on a common misspelling of Complainant’s mark.

Complainant requests the Panel 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.

As a preliminary matter, the Panel is satisfied that under the terms of the

license agreement between Complainant and its licensee, AT&T Wireless Services,

Inc., Complainant is authorized to initiate this proceeding to protect its rights

in the AT&T marks, including "AT&T WIRELESS SERVICES", as

to which Complainant remains the holder of the relevant trademark registrations

at the USPTO. As holder and licensor of the AT&T marks, Complainant is entitled

to request and accept transfer of the disputed domain name should the Panel

make a determination against Respondent. As used herein, the term Complainant

refers both to AT&T Corp. and AT&T Wireless Services, Inc., except as

the context indicates otherwise.

As a preliminary matter, the Panel is satisfied that RaveClub Berlin is controlled

by John Zuccarini. The term "Respondent" is used in this decision

to refer both to RaveClub Berlin and John Zuccarini.

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 use, 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 a service mark registration for the term "AT&T

WIRELESS SERVICES" in the United States and, through its licensee, is using

that mark in commerce (see Factual Background, supra). Complainant’s

registration of the "AT&T WIRELESS SERVICES" mark on the Principal

Register at the USPTO establishes a presumption of its validity in U.S. law.[1]

The Panel determines that Complainant has rights in the service mark "AT&T

WIRELESS SERVICES".[2] Complainant’s

rights in this mark arose prior to Respondent’s registration of the disputed

domain name.

Complainant’s "AT&T WIRELESS SERVICES" mark is well known among

consumers of wireless voice and data services (including Internet users) in

the United States.

The disputed domain name <atttwireless.com> is the same as Complainant’s

"AT&T WIRELESS SERVICES" mark, but for the addition in the domain

name of a third "t" to the term AT&T, the elimination of the word

"SERVICES" and the ampersand, and the addition of the generic top

level domain (gTLD) ".com".

The elimination of the word "SERVICES" from Complainant’s mark in

the domain name reflects an expected means of shortening the reference to Complainant

and its services, and is the same short reference used by Complainant in its

advertising materials and domain names. Consumers and Internet users will readily

recognize "AT&T WIRELESS" and "attwireless" as references

to Complainant and its services.

The use of the gTLD ".com" is without legal significance from the

standpoint of comparing the disputed domain name to Complainant’s’ mark since

use of a gTLD is required of domain name registrants and, in the context of

this proceeding, ".com" does not serve to identify a specific enterprise

as a source of goods or services.[3] The

absence of an ampersand ("&") in the disputed domain name is dictated

by the fact that this character may not presently be included in domain names,

and Internet users expect domain names to exclude that character.

The disputed domain name is very similar to the mark in its visual impression.[4]

An Internet user or consumer viewing the disputed domain name is likely to confuse

it with Complainant’s mark. Complainant’s mark is distinctive and well known.[5]

Respondent appears to have employed a minor misspelling of Complainant’s mark

to take advantage of a typographical error that may be made by Internet users

while attempting to enter Complainant’s mark as its logical Internet address

in their web browsers. Bad faith in selecting a domain name may contribute to

a finding of confusing similarity.[6]

The Panel determines that the disputed domain name <atttwireless.com>

is confusingly similar to "AT&T WIRELESS SERVICES" in the sense

of paragraph 4(a) (i) of the Policy.

Respondent’s only demonstrated use of the disputed domain name has been in

connection with directing Internet users to websites unrelated to Complainant.

Such use is hereinafter determined to be in bad faith. Bad faith use of a domain

name does not establish rights or legitimate interests in the name in the sense

of paragraph 4(a) (ii) of the Policy.

Respondent has failed to establish rights or legitimate interests in the disputed

domain name. Thus, Complainant has established the second element necessary

to prevail on theirits claim that Respondent has engaged in abusive domain name

registration and use.

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

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

Among these circumstances are 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., paragraph 4(b)(iv)).

Respondent has registered a domain name that Internet users are likely to employ

inadvertently as they misspell Complainant’s mark when attempting to locate

Complainant’s website using its logical address identifier (that is, "attwireless"

combined with the gTLD ".com"). Upon entering the disputed domain

name, Internet users have been directed to websites that advertise services

that are not sponsored or endorsed by, or affiliated with, Complainant. Respondent’s

provision of redirection services is presumably undertaken for commercial purposes.

The Panel determines that Respondent has used Complainant’s’ mark in the disputed

domain name for commercial gain by creating a likelihood of confusion regarding

Complainant’s sponsorship, affiliation or endorsement of his or third party

websites. This constitutes bad faith within the meaning of paragraph 4(b)(iv)

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

<atttwireless.com> to the Complainant.

7. Decision

Based on its finding that the Respondent, John Zuccarini d/b/a RaveClub Berlin,

has engaged in abusive registration and use of the domain name <atttwireless.com>

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

domain name <atttwireless.com> be transferred to the Complainant, AT&T

Corp.

Frederick M. Abbott

Sole Panelist

Dated: April 3, 2002

1.15 USCS § 1057(b). See, e.g., Avery

Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

2. For purposes of deciding this proceeding,

the Panel need not consider the legal significance of Complainant's other AT&T

marks.

3. 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).

4. This sole panelist has rendered a number

of prior determinations involving minor misspellings of marks. See, e.g., Microsoft

Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, decided

July 21, 2000; InfoSpace, Inc. v. Double Down Magazine, WIPO Case No. D2000-1474,

decided January 18, 2001; involving Respondent in this case, America Online,

Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The

Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO

Case No. D2000-1495, decided January 22, 2001, and: NIHC, Inc. and Nordstrom,

Inc. v. John Zuccarini, WIPO Case No. D2001-1260, decided December 31, 2001.

5. See Brookfield, id., 174 F.3d 1036, 1053-61

(9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.

1979).

6. Brookfield, id. at 1059 (9th Cir. 1999).

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