AT&T Corp. v. RaveClub Berlin

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2002-0666

1. The Parties

The Complainant in this proceeding is AT&T Corp. ("Complainant"),

a New York corporation with its principal place of business at Basking Ridge,

New Jersey, United States of America.

The Respondent, RaveClub Berlin ("RaveClub Berlin"), is listed as

the registrant of the domain names in issue with a listed mailing address of

Cherry Hill, New Jersey, United States of America. The Complainant asserts that

the Respondent, John Zuccarini ("Mr. Zuccarini"), is merely using

RaveClub Berlin as a "doing business as" name and has presented significant

evidence to support this assertion. No evidence has been presented to rebut

this assertion. Based upon the Complainant’s assertion and the evidence submitted,

the Panelist is satisfied that Mr. Zuccarini controls the registrations

of the domain names in issue registered to RaveClub Berlin. The Panelist will

hereafter refer to RaveClub Berlin and Mr. Zuccarini, both individually

and collectively, as the "Respondent".

2. The Domain Names and Registrar

The domain names in issue are <atttbroadband.com>, <attbraodband.com>,

<attboradband.com>, <attbroadban.com> and <attbrodband.com>

(collectively hereinafter referred to as the "Domain Names").

The registrar of the Domain Names is Computer Services Langenbach GmbH d/b/a

Joker.com ("Registrar") with a corporate address of Rathausufer 16,

D-40213 Duesseldorf, Germany.

3. Procedural History

On July 17, 2002, the Complainant filed a Complaint with the WIPO Arbitration

and Mediation Center (the "Center") concerning the Domain Names and

paid the required filing fee for appointing a single member panel.

On July 23, 2002, the Center found the Complaint to be in compliance with the

formal requirements of ICANN's Uniform Domain Name Dispute Resolution Policy

("Policy"), ICANN's Rules for Uniform Domain Name Dispute Resolution

Policy ("Rules") and WIPO's Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("Supplemental Rules"). On the same

day, the Center proceeded to send a "Notification of Complaint and Commencement

of Administrative Proceeding" to the Respondent at the postal and e-mail

addresses listed in the domain name registrations. The Center received a notice

of non-delivery from the courier service when the Notification and the Complaint

were sent to the postal address but did not receive error messages when the

Notification and Complaint were sent to the e-mail addresses listed in the domain

name registrations and in the Complaint.

On August 13, 2002, after the twenty-day period had expired as required by

paragraph 5(a) of the Rules and no response from the Respondent was received,

the Center sent a "Notification of Respondent Default" to the Respondent

by e-mail with a copy to the Complainant.

On August 21, 2002, the Panelist, as required, submitted a "Statement

of Acceptance and Declaration of Impartiality and Independence" with the

Center. On August 22, 2002, the Center sent a "Notification of

Appointment of Administrative Panel and Projected Decision Date" by e-mail

to the parties.

Having reviewed the entire record submitted for this proceeding, the Panelist

concurs with the Center’s finding that the Complaint is in compliance with the

Policy, Rules and Supplemental Rules and finds that the panel was properly constituted

and appointed. The Panelist also finds that the Center has fully discharged

its responsibility under paragraph 2(a) of the Rules "to employ reasonably

available means calculated to achieve actual notice to Respondent" of this

proceeding and that the Respondent is in default for failing to file a response

to the Complaint. The Panelist shall therefore draw inferences from the Respondent’s

default as the Panelist considers appropriate based upon paragraph 14(b) of

the Rules and shall issue a decision based on the Complaint, the Policy, Rules

and Supplemental Rules.

4. Factual Background

The Complaint is based on sixteen U.S. federal registrations for AT&T and

AT&T formative marks and four U.S. federal registrations for marks that

use ATT without the ampersand. The registration information for these marks

was provided in Annexes 10 and 11 of the Complaint. In addition, the Complaint

is based on the following U.S. trademark and service applications: AT&T

BROADBAND and Design (Serial No. 76/346,385); AT&T BROADBAND PHONE COMMUNICATOR

(Serial No. 75/744,775); ATTBROADBAND.PRO (Serial No. 78/057,466); ATTBROADBAND.NAME

(Serial No. 78/057,462); and ATTBROADBAND.INFO (Serial No. 78/057,461). The

application information for these marks was provided in Annex 12 of the Complaint.

Based on a search of the U.S. Patent and Trademark Office’s trademark electronic

search system, the Panelist notes that the trademark application for the mark

AT&T BROADBAND PHONE COMMUNICATOR was abandoned by the Complainant after

the filing of the Complaint in this proceeding. Based upon the evidence submitted

and the searching conducted, the Panelist will hereafter referred to the Complainant’s

active marks collectively as "the Complainant’s Marks."

The domain names <att.com> and <attbroadband.com> are registered

to the Complainant, as shown by printouts of the corresponding whois records

for these domain names attached as Annexes 13 and 16, respectively, to the Complaint.

In addition, there are web sites accessible at both domain names and copies

thereof were attached as Annexes 14 and 17, respectively, to the Complaint.

The domain name <atttbroadband.com> was registered on August 6, 2001,

to RaveClub Berlin. The domain names <attbraodband.com>, <attboradband.com>,

<attbroadban.com> and <attbrodband.com> were registered on September

16, 2001, to RaveClub Berlin. Copies of the whois information for these Domain

Names was attached as Annex 3 to the Complaint. The Domain Names currently all

link to the same web page entitled "HANKY PANKY COLLEGE!!!" which

in turn opens multiple browser windows to different advertising/promotional

sites displaying numerous banner advertisements. A copy of this web site was

attached as Annex 19 to the Complaint.

5. Parties’ Contentions

Complainant

The Complainant asserts that it is the owner and has rights in numerous registered

and common law AT&T trademarks and services marks in the United States as

well as many other countries. The Complainant asserts that it also owns numerous

marks that use "ATT" without an ampersand and that it has been the

registrant of the domain name <att.com> since 1986 and operates a primary

corporate web site at this domain name. The Complainant further asserts that

it is in the process of registering numerous AT&T BROADBAND marks, which

already enjoy common law protection, and that it is the registrant of the domain

name <attbroadband.com> since March 2000, and the owner of the web site

at this domain name.

The Complainant asserts that it 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. The Complainant

asserts that it invested hundreds of millions of dollars in promoting its AT&T

brands among consumers in the United States and worldwide. The Complainant asserts

that AT&T Broadband is a unit of the Complainant and is the largest provider

of broadband services in the United States.

The Complainant asserts that the Domain Names are intended to capture visitors

who make common typographical mistakes of either adding a letter, omitting a

letter, or switching the order of letters, when searching for the Complainant’s

web site at <attbroadband.com>. The Complainant asserts that the Domain

Names divert visitors almost instantly to a web site that advertises pornography

and which leads to a page offering "The Secret to Getting Free XXX Passwords

To Top Adult Paysites" and nine advertisements for hard-core pornographic

sites. The Complainant further asserts that the Respondent intentionally configured

the Domain Names to divert members of the public seeking AT&T broadband

products and services for the purpose of generating revenue through Internet

traffic and commissions or referral fees for "trial membership" at

the sites advertised on <www.amaturevideos.nl>.

The Complainant asserts that although the Domain Names are registered in the

name of RaveClub Berlin, this entity has been held to be merely a "doing

business as" name for Mr. Zuccarini. The Complainant asserts the fact that

RaveClub Berlin and Mr. Zuccarini are one and the same was previously established

by the investigation of the United States Federal Trade Commission. The Complainant

provided a copy of a recent decision by the United States District Court for

the Eastern District of Pennsylvania as Annex 1, where the court considered

the Federal Trade Commission’s investigation in its order of injunctive relief

against Mr. Zuccarini and his business entities.

The Complainant asserts that the Domain Names are confusingly similar to the

Complainant’s legal and world famous name, common law marks and registered marks,

including AT&T, ATT.COM, 1 800 CALL ATT, CAMP ATT, 1 800 ATT-GIFT, ATT.NET,

and AT&T marks that combine AT&T and BROADBAND. The Complainant asserts

that the minor alterations do not distinguish the Domain Names in any meaningful

way from the Complainant’s marks. The Complainant further asserts that the Respondent

has combined "att" with variations of "broadband" – a term

that is not only a communications term that would naturally be publicly associated

with the Complainant – but also reflects that name of one of the Complainant’s

largest business units. The Complainant asserts that persons familiar with or

looking for the Complainant’s broadband service will be confused into thinking

that the Domain Names are sites owned, endorsed, sponsored or maintained by

the Complainant to promote broadband telecommunications services.

The Complainant asserts that the Respondent has absolutely no rights or legitimate

interest in the Domain Names. The Complainant asserts that the Respondent is

not the Complainant’s licensee, that the Respondent does not own any registered

or common law marks containing the terms AT&T, ATT, AT&T BROADBAND,

ATTBROADBAND, ATTTBROADBAND, ATTBRAODBAND, ATTBORADBAND, ATTBROADBAN, ATTBRODBAND,

or any similar derivation, that the Respondent has not been commonly known by

the Domain Names and that the Respondent is not making legitimate noncommercial

or fair use of the Domain Names.

The Complainant asserts that the Respondent registered and has been using the

Domain Names in bad faith. The Complainant asserts that the Respondent chose

to register the Domain Names to exploit the Complainant’s marks and goodwill

and to divert Internet traffic to his web site. The Complainant further asserts

that the Respondent entered into referral fee arrangements that provide remuneration

based on each visitor who either sees, clicks on or responds to a given advertisement

to which the Respondent diverts traffic. The Complainant asserts that the Respondent’s

pattern of typosquatting corroborates his bad faith in registering and using

the Domain Names and that the pornographic nature of the advertisements to which

the traffic is misdirected harms the Complainant’s image and further demonstrates

the Respondent’s bad faith.

Based upon the above, the Complainant requests that the Panelist transfer the

Domain Names to it.

Respondent

No response was received from the Respondent with respect to this proceeding.

6. Discussion and Findings

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit

to a mandatory administrative proceeding in the event that a third party complainant

asserts to an ICANN approved dispute resolution service provider that:

(i) the domain name holder’s domain name is identical or confusingly similar

to a trademark or service mark in which the complainant has rights ("Element

(i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect

of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is

being used in bad faith ("Element (iii)").

The Panelist can only rule in a complainant’s favor only after the complainant

has proven that the above-listed elements are present.

Element (i) - Domain Names Identical or Confusingly Similar to the Marks

The Panelist finds that the Complainant has provided sufficient evidence to

show that it is the owner of the Complainant’s Marks. A review of the second-level

domains ("atttbroadband", "attbraodband", "attboradband",

"attbroadban" and "attbrodband") of the Domain Names shows

that each domain comprises the Complainant’s mark AT&T or a slight variation

thereof as a prefix and the word "broadband" or a misspelling thereof,

that corresponds to a term implying communication and that the public would

accordingly associate with the Complainant. The idea suggested by these Domain

Names in view of the Complainant’s federally registered mark AT&T and the

Complainant’s long-time use of the mark AT&T is that any possible goods

or services associated with or sites accessible at these Domain Names are authorized

by the Complainant. The Panelist therefore finds that the Domain Names are confusingly

similar to the Complainant’s mark AT&T. The ampersand in the Complainant’s

mark, while currently not reproducible in a domain name, is not considered a

distinguishing feature in this case sufficient to avoid a finding that the Domain

Names are confusingly similar to the mark AT&T. Nor does the addition or

deletion of a single letter or the transposing of two letters in the Domain

Names prevent the Domain Names from being considered confusingly similar to

the Complainant’s mark AT&T. The Panelist therefore finds the Domain Names

to be confusingly similar to the Complainant’s mark AT&T and that Element(i)

has been satisfied [1].

Element (ii) - Rights or Legitimate Interests in the Domain Names

There is no evidence that the Complainant has at any time ever licensed, sponsored,

endorsed or authorized the Respondent to register or use the mark AT&T in

any manner. In addition, no evidence has been presented that before notice to

the Respondent of the dispute, the Respondent had been using or was making demonstrable

preparations to use the Domain Names in connection with any type of bona fide

offering of goods or services or that the Respondent is commonly known by the

Domain Names, as an individual, business or otherwise. Rather the Complainant

has presented sufficient evidence and the Panelist’s own review of the Respondent’s

use of the Domain Names result in a finding that the Respondent is misleadingly

diverting consumers to pornographic and commercial web sites in an apparent

attempt to profit from referral fees for the Internet traffic misdirected to

these Domain Names. See also, Shields v. Zuccarini, 254 F.3d 476,

486 (3d Cir. 2001) (Respondent testified that "he has more than three thousand

web sites and earns between $800,000 and $1,000,000 a year from their use").

Such use of the Domain Names by the Respondent cannot be considered as being

legitimate noncommercial or fair use of the Domain Names. The Panelist therefore

concludes that the Respondent has no rights or legitimate interests in the Domain

Names and that Element (ii) has been satisfied.

Element (iii) - Domain Names Registered and Used in Bad Faith

As extensively noted by the Complainant, the Respondent has engaged in a pattern

of conduct of registering domain names consisting of misspellings of famous

names and trademarks and has admitted in a court testimony that "he registers

domain names…because they are likely misspellings of famous marks or personal

names" and that "he is in the business of profiting from the public’s

confusion and that he does, in fact profit from this confusion." See Shields

v. Zuccarini, 254 F.3d at 483-487. Furthermore, the Complainant has submitted

evidence of the Respondent having registered and used a domain name incorporating

a misspelling of the Complainant’s mark AT&T in bad faith in another Policy

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

WIPO Case No. D2001-1503 (April 3, 2002)

(<atttwireless.com>). When also considering the Complainant’s mark being

well known and having a strong reputation, as supported in the uncontested evidence

submitted, along with the number of Domain Names registered by the Respondent

in this proceeding that are confusingly similar to the Complainant’s mark AT&T,

it is apparent that the Respondent had actual knowledge of the Complainant’s

mark and its rights therein at the time of registering the Domain Names.

To further support its assertion of bad faith by the Respondent, the Complainant

has provided significant evidence of the Respondent himself or through his various

businesses having been found to have registered and used numerous domain names

consisting of misspellings of trademarks and famous names in bad faith in other

Policy decisions, including one decided by the present Panelist. See,

e.g., AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO

Case No. D2001-1503 (April 3, 2002) (<atttwireless.com>); NCRAS

Management LP v. Cupcake City and John Zuccarini, WIPO

Case No. D2000-1803 (February 26, 2001) (<nationalrentalcar.com>);

At Home Corporation v. John Zuccarini, WIPO

Case No. D2000-1524 (January 30, 2001) (<bluemountian.net>, etc.);

Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO

Case No. D2000-1415 (January 23, 2001) (<nicholekidman.com>, etc.);

Link Clicks Inc. d/b/a/ Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini

d/b/a Cupcake Patrol, WIPO Case No. D2000-1547

(January 12, 2001) (<totalyfreestuff.com>); WebMD Corporation v. Cupcake

Patrol, NAF Case No. FA0011000096106 (January 2, 2001) (<wemd.com>);

United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO

Case No. D2000-1449 (December 29, 2000) (<dillbert.com>); F.A.O.

Schwartz v. John Zuccarini, NAF Case No. FA0010000095828 (December 1, 2000)

(<faoscwartz.com>, etc.); Hewlett-Packard Company v. Cupcake Patrol,

NAF Case No. FA0010000095822 (November 20, 2000) (<hewlettpacker.com>,

etc.); Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc.

v. John Zuccarini d/b/a Cupcake Patrol, WIPO

Case No. D2000-1004 (November 1, 2000) (<abecrombie.com>, etc.);

Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO

Case No. D2000-0578 (August 28, 2000) (<wallstreetjounal.com>, etc.);

Diageo plc v. John Zuccarini, WIPO

Case No. D2000-0541 (August 22, 2000) (<guines.com>). In addition,

the Complainant has submitted sufficient evidence showing that the Domain Names

resolve to sites where the Respondent is using the Complainant’s mark as well

as a slight variation thereof in the Domain Names to intentionally attract and

subject users to pornographic and promotional sites and pop-up windows for apparent

commercial gain. The Respondent’s bad faith registration and use are further

supported by the adult content of the web sites to which the Domain Names have

been and are linked to and by the Respondent’s failure to provide accurate contact

information in the registrations for these Domain Names.

When viewing the findings and evidence submitted in their entirety, the Panelist

concludes that the Respondent has registered and is using the Domain Names in

bad faith for the purpose of creating a likelihood of confusion with the Complainant’s

mark AT&T, as to the source, sponsorship, affiliation or endorsement of

the sites to which the Domain Names redirect users or of the products and services

offered on those sites. The Panelist therefore finds that Element (iii) has

been satisfied.

7. Decision

The Panelist concludes that: (i) the Domain Names are confusingly similar to

the Complainant’s mark; (ii) the Respondent has no rights or legitimate interests

in the Domain Names; and (iii) the Respondent has registered and is using the

Domain Names in bad faith. The Panelist therefore requires that the registration

of the domain names <atttbroadband.com>, <attbraodband.com>, <attboradband.com>,

<attbroadban.com> and <attbrodband.com> be transferred to the Complainant.

Marylee Jenkins

Sole Panelist

Dated: September 5, 2002

Footnote:

1. Based upon the Panelist’s finding that

the Domain Names are confusingly similar to the Complainant’s federally registered

mark AT&T, it is not necessary to make a finding of whether the Complainant

has common law rights in the marks AT&T BROADBAND and AT&T BROADBAND

and Design.

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