AT&T Wireless Services, Inc. v. GMS Webmedia

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Wireless Services, Inc. v. GMS Webmedia

Case No. D2003-0119

1. The Parties

The Complainant is AT&T Wireless Services, Inc., C/O Kathy Buckley, Redmond, WA of United States of America, represented by Sidley Austin Brown & Wood of United States of America.

The Respondent is GMS Webmedia, Eindhoven, of Netherlands. The Respondent is not represented.

2. The Domain Names and Registrar

The disputed domain names; <mmodeinfo.com>, <mmodelinks.com>, <mmodesex.com>, <mmodestart.com>, and <mmodestartpage.com>

("the mmode Domains")

are registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on February 14, 2003. On February 17, 2003, the Center transmitted

by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar

verification in connection with the domain names at issue. On February 19, 2003,

Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center

its verification response confirming that the Respondent is listed as the registrant

and providing the contact details for the administrative, billing, and technical

contact. The Center verified that the Complaint satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (the "Policy"),

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

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

(the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

March 12, 2003. The Response was filed with the Center on March 13, 2003.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on

March 17, 2003. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

A Supplemental Filing was filed by the Complainant on March 26, 2003.

4. Factual Background

Following its spin-off from AT&T in July 2001, the Complainant AT&T

Wireless (NYSE:AWE) is the largest independently traded wireless carrier in

the United States. AT&T has sold telecommunications goods and services internationally

for over a century.

The Complainant is one of the largest digital wireless networks in the United

States, with approximately 20 million subscribers and revenues exceeding US$13

billion annually. Wireless services offered by the Complainant to consumers

and business, locally and internationally, include voice, data, Internet and

text.

The Complainant undertook a significant marketing campaign during 2002 to generate

interest in a newly-coined term "mLife" with the teaser line "What

is mLife?" This culminated in a 2002 Superbowl advertisement revealing

that "mLife" was the new marketing theme for the Complainant’s services.

The Superbowl is widely accepted to be one of the largest viewing audiences

available in the United States.

The Complainant (via its wholly-owned subsidiary Alphie, Inc which was merged

into the Complainant on June 20, 2002) applied for the following MMODE

trademarks:

United States trademarks applications serial numbers: 7817863, 78178661, 78178659,

78178658, 78178657, 78157021, 76975129, 76975193, 76975191, 76975190, 76975189

and 76353278.

EU trademark application number: 2756088.

Benelux trademark application number: 1013662.

The earliest filing date for such marks is December 28, 2001.

On April 2, 2002, the Complainant introduced its mMode brand in limited markets

as part of its mLife advertising theme, with a major advertising campaign being

launched on April 16, 2002.

mMode is the term used by the Complainant to refer to its wireless GPRS data

services that allow users (amongst other things) to use the Internet, play games,

look up sports scores and find restaurants via their mobile phones.

The Respondent gives no information on the nature of its business (outside

of the Web sites which are the subject of this dispute), although the Respondent

does also appear to run an additional business from the Web site "www.xs4money.com".

On April 22, 2002, the Respondent registered the mmode Domains. Each of the

mmode Domains contains the same mobile telephone related portal service provided

by the Respondent, with the exception of "www.mmodesex.com" which

forwards users to "www.i-modesexlinks.com" (which is the same as the

other portal, but framed with explicit sexual content). The mmode Domains contain

numerous metatags including "mmode", "at&t" and "at&t

wireless".

The Complainant promotes its mMode service through the Web site "www.attwireless.com/mmode"

and via the online magazine at the Web site "www.attwireless.com/mmodemagazine".

These are portal sites that seek to aggregate mMode users to allow focused advertising

and provide information on the mMode service. The Complainant also owns the

domains <mmode.com> and <mmodemagazine.com>. The mMode Magazine

is also published by the Complainant in hard copy.

On December 19, 2002, counsel for the Complainant sent a cease-and-desist letter

to the Respondent notifying the Respondent that the registration and use of

the mmode Domains is unauthorized and infringes upon the Complainant’s trade

marks.

On December 14, 2002, counsel for the Respondent replied and questioned the

Complainant’s claims to the mMode mark.

On January 17, 2003, the Complainant again asked the Respondent to cease-and-desist.

Over January 27-28, 2003, the Complainant’s counsel had several conversations

with Respondent’s counsel in which the sale price of the mMode Domains was discussed,

which fluctuated from US$7,000 to US$12,300.

5. Parties’ Contentions

A. Complainant

The Complainant seeks the transfer of the mmode Domains from the Respondent

to the Complainant in accordance with the Policy, paragraph 4(b)(i). The Complainant

contents that the mmode Domains are confusingly similar to the Complainant’s

trade marks, that the Respondent has no right or legitimate interest in the

mmode Domains and that the mmode Domains are registered and being used in bad

faith. The Complainant seeks the transfer because the contested mmode Domains

"were registered to profit from the mMode branding which [Complainant]

invented, spent tens of millions popularizing, and which [Complainant] actively

uses. Allowing Respondent to retain [the mMode Domains] would result in consumer

confusion, unjust enrichment, and would tarnish [the Complainant’s] mMode brand."

B. Respondent

The Respondent resists the transfer of the domain names on the basis that mmode

is a technology standard and it is using the mmode Domains to aggregate content

for mmode users.

6. Discussion and Findings

The Complainant cites an unusually high number of precedent cases in the Complaint.

The Panel has sought to refer to the most appropriate of those cases when dealing

with the Complainant’s contentions.

Complainants, and, indeed, Respondents are encouraged to provide Panels with

the most appropriate precedents by way of example rather than seek to influence

Panels by sheer volume of precedent.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the mmode

Domains are "identical or confusingly similar to a trademark or service

mark" in which the Complainant has rights.

The Complainant has established its rights in the mMode mark through the trade

mark applications/registrations above and through the extensive use of the mMode

mark in its business, whether through advertising or by providing the mMode

service to its users. (The contention of the Respondent that the Complainant

cannot have rights in the mMode mark whilst held by Alphie, Inc is plainly false

as all rights of Alphie, Inc were merged into the Complainant, thus giving the

Complainant all rights of Alphie, Inc.)

The mmode Domains comprise the mMode mark of the Complainant and the following

appended generic words: "info", "links", "sex",

"start" and "startpage".

Numerous previous decisions (including AT&T Corp v Woppies, WIPO

Case No. D2000-1724 [April 24, 2001]) have been cited by the Complainant

to establish that the addition of a generic word to a complainant’s marks amounts

to confusing similarity under paragraph 4(a)(i) of the Policy.

In addition, the Respondent’s portal contains a disclaimer stating the portal

is not an official site of the Complainant. Numerous previous decisions (including

Madonna Ciccone, p/k/a Madonna v Dan Parisi and "Madonna.com",

WIPO Case No. D2000-0847[October 12, 2000])

are cited by the Complainant to establish that the adding of disclaimer does

not excuse a confusing or similar domain name.

Nothing in the Response is able to rebut the assertions of the Complainant

that the mmode Domains are confusingly similar to the Complainant’s trademark.

Indeed, the admission of the disclaimer leads the Panel to believe that the

Respondent placed the disclaimer on the portal because it was fully aware that

the mmode Domains are confusingly similar.

Therefore, the Panel finds that the mmode Domains are confusingly similar to

the Complainant’s trademark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to show that the

Respondent has "no rights or legitimate interests" in the mmode Domains.

Paragraph 4(c) of the Policy sets out three examples of how, amongst other

things, the Respondent may show its rights or legitimate interests in the mmode

Domains:

"(i) before any notice to you of the dispute, your use of, or demonstrable

preparations to use, the domain name or a name corresponding to the domain name

in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organisation) have been known

by the domain name, even if you have acquired no trademark or service mark rights;

or

(iii) you are making a legitimate non-commercial or fair use of the domain

name, without intent for commercial gain to misleadingly divert customers or

to tarnish the trademark or service mark at issue".

The Complainant contends that the Respondent has no rights or legitimate interests

in the mmode Domains because it is not a licensee or authorized user of the

mMode mark, nor has the Complainant "endorsed, authorized, or sponsored"

the Respondent’s use of the mMode mark.

The Complainant contends that the Respondent does not own any registered or

common-law marks containing the term "mmode", nor has the Respondent

been commonly known as "mmode".

The Complainant contends that the Respondent’s use of the mmode Domains is

solely to "divert unsuspecting traffic to its own site or to prevent the

consumers and other members of the public from finding [the Complainant] easily".

The Complainant contends that the Respondent’s use of the mmode Domains is

not fair use of the mmode Domains because it is a phrase coined entirely by

the Complainant.

The Respondent contends that it is making legitimate use of the mmode Domains

as mmode refers to a generic mobile technology standard used by the Complainant.

The evidence of use of "mmode" by either the Respondent or third parties

as a generic technology standard relating to mobile phones is negligible. Indeed,

the Respondent’s own portal makes widespread use of "i-mode" as the

relevant technology standard and the online ‘Google Glossary’, a well-respected

lexicon of technology phrases and standards, fails to list "mmode".

The evidence of use of "mmode" by one supplier and two other domain

name registrants prior to December 28, 2001, is insufficient to attract

a generic status to the mMode mark in the face of overwhelming use of the mMode

mark by the Complainant.

Therefore, given that mmode is not an accepted technology standard, the Panel

finds that the Respondent has no rights or legitimate interest in the mmode

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

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the

Respondent registered and used the mmode Domains in bad faith.

Paragraph 4(b) of the Policy sets out four examples of how, amongst other things,

the Complainant may show bad faith on the part of the Respondent:

"(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 the competitor; or

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

for commercial gain, Internet users to your Web site or another on-line location,

by creating the likelihood of confusion with the complainant’s mark as to the

source, sponsorship, affiliation, or endorsement of your Web site or location

or of a product or service on your Web site or location."

The Complainant contends:

"Respondent’s egregious conduct makes its bad faith clear. Respondent

chose to register the disputed mMode names in order to profit from the creation

of a dubious portal site based on [the Complainant’s] trade marks. Respondent

has registered and used the Complainant’s mMode mark to profit from Internet

traffic searching for Complainant’s brands … This patent exploitation of consumer

confusion and the strength of the mMode marks demonstrates bad faith".

The Complainant lists numerous elements of bad faith in relation to sub-paragraphs

(i) and (iv), which are outlined below.

Numerous previous decisions (including America Online, Inc v Dolphin @Heart,

WIPO Case No. D2000-0713 [April 24, 2000])

have been cited by the Complainant to contend that the Respondent’s attempts

to sell the mmode Domains to the Complainant for more than the registration

and transfer fees amounts to bad faith.

The Panel notes that a respondent’s documented out-of-pocket expenses are not

limited solely to the registration and transfer fees and may also include other

fees related to the domain such as design fees.

However, given the fluctuating nature of the Respondent’s asking price for

the mmode Domains, and the failure by the Respondent to back up those prices

with any form of reasoned calculation or proof of its out of pocket expenses,

the Panel finds that the Respondent has attempted to sell the mmode Domains

for more than its documented out-of-pocket expenses.

Numerous previous decisions have been cited by the Complainant to contend that

the use of a mark to generate Internet traffic amounts to bad faith.

Diversion of Internet traffic amounts to bad faith because it is an abuse of

the Complainant’s goodwill (Sony Kabushiki a/t/a Sony Corporation v Fujiko

Kikuno WIPO Case No. D2000-1372 [December 27, 2000]).

That Internet traffic is diverted away from the Complainant is demonstrated

by performing a <google.com> search for the mMode mark, where the Respondent’s

mmode Domains achieve a prominent listing. (As stated earlier, the other listings

for mmode are overwhelmingly those of the Complainant.) The diversion is achieved

by the Respondent through its use of metatags, which contain several trade marks

of the Complainant. Use of such metatags to divert traffic also amounts to bad

faith (Microsoft Corp v Montrose Corp, WIPO

Case No. D2000-1568 [January 25, 2001]).

The Complainant contends that the bad faith diversion of Internet traffic away

from its Web sites is further compounded by the diversion to sex-related Web

sites. Numerous previous decisions have upheld this, including Hasbro, Inc v

Internet Entertainment Group, Ltd (40 USPQ 2d 1479) where the use of "candyland"

for an adult Web site diluted the value of the "candyland" trade mark

for a children’s board game and in Nokia corp v Nokiagirls.com a/k/a IBCC,

WIPO Case No. D2000-0102 (April 18, 2000)

where adult material on the target Web site was stated to be "an aggravating

element in the assessment of the bad faith".

The Panel finds that the Respondent has used the mmode Domains to divert Internet

traffic to its site. However, the Panel does not find that the Respondent diverted

traffic solely for the purposes of re-direction to a pornographic Web site as

this occurred only with the <mmodesex.com> domain name.

Therefore, taking into consideration the cumulative effect of the matters cited

by the Complainant and the fact that the mmode Domains were registered only

6 days after the Complainant’s advertising campaign commenced, the Panel finds

that the Respondent has registered and used the mmode Domains in bad faith under

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

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain names be transferred to

the Complainant.

Debrett G Lyons

Sole Panelist

Date: April 4, 2003

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