AT&T CORP. v. Darren Swain

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Darren Swain

Case No. D2003-0633

1. The Parties

The Complainant is AT&T Corp., New Jersey, United States of America, represented

by Sidley Austin Brown & Wood, United States of America.

The Respondent is Darren Swain, Bedford, Texas, United States of America.

2. The Domain Names and Registrar

The disputed domain names <atttelephone.com> and <attwirelessretailer.com>

are registered with Network Solutions, Inc.

3. Procedural History

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

on August 13, 2003. On August 14, 2003, the Center transmitted by email to Network

Solutions, Inc. a request for registrar verification in connection with the

domain names at issue. On August 20, 2003, Network Solutions, Inc. 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 August

21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was September 10, 2003. The Response was filed with the Center on September

5, 2003.

The Center appointed Frederick M. Abbott as the sole panelist in this matter

on October 6, 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.

By email of September 17, 2003, Complainant transmitted to the Center and Respondent

a Request for Permission to Submit Additional Clarifying Information in Response

to Submission of Respondent and an Additional Submission. At the Panel’s request,

the Center transmitted to it the Request and Submission for consideration as

to admissibility.

By email of October 15, 2003, Respondent transmitted to the Center, Complainant

and Panel a request for permission to file a supplemental submission in reply

to Complainant’s supplemental submission. The Panel responded with an Administrative

Order indicating its disposition of Complainant’s request (see below),

but giving the Respondent the opportunity to reopen this disposition should

he wish to proceed with a request to file a reply.

On October 20, 2003, the Center advised Complainant and Respondent that on

the basis of exceptional circumstances the Panel had extended the due date for

rendering its decision in this matter until October 27, 2003.

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 term "AT&T",

for example, is registered at the United States Patent and Trademark Office

(USPTO) as a service mark (reg. No. 1,298,084, dated September 25, 1984, in

International Class (IC) 38, covering, inter alia, telecommunications

services). The "AT&T WIRELESS SERVICES" service mark is registered

at the USPTO (reg. No. 2099822, dated September 23, 1997) in IC 38, covering,

inter alia, wireless voice, data, paging and facsimile services. (Complaint,

paragraph 11 and Annexes 6 &10)

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 filing legal actions against

infringers. (Id., paragraph 11 and Annex 11)

Complainant is registrant of the domain name <att.com> since at least

1986, and uses that domain name in connection with an active commercial website

(id., paragraph 11 and Annex 8).

Complainant is registrant of domain names incorporating "attwireless"

in the .com, .org, .info and .biz domains (id., Annex 14). AT&T Wireless,

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

(id., paragraph 11).

Complainant has submitted substantial evidence of long usage, substantial expenditure

on promotion and wide consumer recognition in the United States and other national

markets of the "AT&T" mark. The Panel finds that the "AT&T"

mark is well known, at least in the United States. Respondent has expressly

conceded this fact. (Id., paragraph 11 and Annexes 5, 9 & 11;

Response, paragraph V)

According to the Registrar’s Verification, Respondent is the registrant of

the disputed domain names. According to a Network Solutions WHOIS database report

submitted by Complainant, the record of registration for the disputed domain

name <atttelephone.com> was created on September 19, 2002, and the record

of registration for the disputed domain name <attwirelessretailer.com>

was created on September 19, 2002 (Complaint, Annex 1). Evidence of

correspondence between Complainant and Respondent dated as early as July 2000

(submitted by both parties) suggests that the disputed domain names were registered

by Respondent substantially earlier than the date of record creation at the

current Registrar.

Respondent had previously registered two additional "AT&T"-formative

domain names using ".net" gTLDs, but allowed those registrations to

expire subsequent to receipt of a cease and desist and transfer demand by Complainant

and prior to initiation of these proceedings (Complaint, paragraph 12 &

Annex 16; Response, paragraph V).

Respondent asserts that he "operates one of the oldest retail telecommunications

and telephony product stores in the Dallas/Fort Worth, U.S.A. metroplex."

Respondent has submitted no evidence in support of this assertion. Respondent

asserts that he has refrained from using the disputed domain names in connection

with this business because of Complainant’s threat of legal action against him.

Complainant has sent several cease and desist and transfer demands to Respondent

in connection with the disputed domain names. Prior to the initiation of this

proceeding, Respondent offered to transfer the disputed domain name <atttelephone.com>

in exchange for Complainant’s recognition of his right to use the domain name

<attwirelessretailer.com>. Complainant has rejected this proposal.

The Registration Agreement in effect between Respondent and Network Solutions,

Inc., subjects Respondent to dispute settlement under the Policy. The Policy

requires that domain name registrants submit to a mandatory Administrative Proceeding

conducted by an approved dispute resolution service provider, of which the Center

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 "AT&T" marks based

on use in commerce in the United States and other countries, and as evidenced

by numerous registrations in the United States and other countries (see

Factual Background supra). Complainant asserts that the "AT&T"

marks are well known.

Complainant alleges that the disputed domain names are confusingly similar

to its marks.

Complainant claims that Respondent has no rights or legitimate interests in

the disputed domain names. Complainant denies that Respondent is an authorized

representative or reseller of its goods or services. Even if Respondent were

an authorized representative or reseller, it would be prohibited by contract

from registering or using the disputed domain names.

Complainant asserts that Respondent has registered and is using the disputed

domain names in bad faith. Although Respondent has not yet made use of the names,

he has indicated his intention to do so in a manner that would misleadingly

divert Internet users for commercial gain. In addition, in the circumstances

of this proceeding Respondent’s "warehousing" or "passive holding"

constitutes bad faith registration and use.

Complainant requests the Panel to direct the Registrar to transfer the disputed

domain names to it.

B. Respondent

Respondent concedes that Complainant has rights in the "AT&T"

marks and that they are well known throughout the world.

Respondent claims that the disputed domain name <attwirelessretailer.com>

is not confusingly similar to Complainant’s marks because no consumer would

confuse a single independent cell phone store with a multinational corporation,

nor would a reasonable person think that Complainant owned, sponsored or endorsed

a website maintained by Respondent. Respondent makes no such argument in connection

with <atttelephone.com>.

Respondent asserts that he has been prevented from building equity and/or recognition

in the disputed domain names. Respondent states that he has "err[ed] on

the side of caution" by not using the names in connection with his business

because of Complainant’s legal threats. "But for the actions of Complainant,

Respondent would be using the disputed domain names today."

Respondent claims that he did not register the disputed names for the purpose

of selling them to Complainant, and that he has offered a reasonable compromise

in offering to surrender the domain name <atttelephone.com> in exchange

for authorization to use the domain name <attwirelessretailer.com>.

Respondent limits his request to the Panel to denying Complainant’s request

for transfer of the domain name <attwirelessretailer.com>.

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 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., Rules, paragraph 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied

that the Respondent had adequate notice of the proceedings.

Complainant has submitted a request to file a supplemental submission in reply

to Respondent’s Response. While also responding to Respondent’s legal arguments,

the primary purpose of Complainant’s submission is to submit evidence constituting

two federal district court decisions (dated 1997) resulting from earlier litigation

between Complainant and Respondent on an unrelated matter. Appreciating that

Complainant is a large corporate enterprise, there is no persuasive reason why

it did not find or submit this evidence with its initial Complaint. Complainant

notified Respondent of its objection to the disputed domain names as early as

July 2000. The Panel does not accept Complainant’s supplemental submission.

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.

A. Identical or Confusingly Similar

Complainant has established rights in the "AT&T" marks by use

in commerce and as evidenced by registrations. Complainant has also submitted

substantial evidence that the "AT&T" mark is well known (see,

e.g., "The 100 Top Brands", Business Week, August 6, 2001,

at 60, listing "AT&T" tenth among globally recognized "brands").

Respondent has conceded that Complainant has rights in the "AT&T"

marks and that such marks are well known. The Panel finds that that Complainant

has rights in the "AT&T" marks, and that the "AT&T"

mark is well known, at least in the United States.

Respondent does not contest that the disputed domain name <atttelephone.com>

is confusingly similar to the "AT&T" marks, and does not request

that the Panel refuse transfer of that domain name to Complainant. In any event,

the Panel finds that the disputed domain name <atttelephone.com> is confusingly

similar to the "AT&T" marks. The addition of the generic term

"telephone" to Complainant’s marks, thereby also describing a product

sold by Complainant, does not distinguish the domain name from the marks from

the standpoint of the Internet user and consumer. Neither does addition of the

gTLD ".com" distinguish the domain name from the marks.

Complainant’s registered service marks include "AT&T WIRELESS SERVICES"

and "AT&T WIRELESS GROUP", and Complainant has rights in those

marks [1]. Respondent asserts that the disputed

domain name <attwirelessretailer.com> is not confusingly similar to the

"AT&T" marks, including "AT&T WIRELESS SERVICES",

because no reasonable consumer would confuse a retail store reseller of wireless

telephones and services with "AT&T", the multinational corporation.

In the first place, Respondent has provided no evidence beyond mere assertion

that he does in fact operate a retail outlet for "AT&T" products

and services, and Complainant has disputed this fact. Moreover, based on the

direct incorporation of Complainant’s principal identifier ("AT&T")

and the combination term used in connection therewith to identify and distinguish

a substantial part of its licensee’s operations ("WIRELESS"), it is

difficult to see why Internet users and consumers would not be likely to associate

<attwirelessretailer.com> with a business owned, sponsored by or affiliated

by contract with Complainant (or its licensee). Rather, it appears likely that

Internet users and consumers would be likely to believe that a website and "retailer"

identified by Complainant’s marks (that is, an "AT&T Wireless Retailer")

is associated with, sponsored by or authorized by "AT&T" to sell

its trademarked products and services. The Panel determines that the disputed

domain name <attwirelessretailer.com> is confusingly similar to the "AT&T"

marks.

The Panel has determined that Complainant has rights in the "AT&T"

marks, and that the disputed domain names are confusingly similar to those marks.

Complainant has established the first element necessary for a finding of abusive

domain name registration and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration is that the

respondent has no rights or legitimate interests in respect of the domain name

(Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which

a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of paragraph 4(a)(ii):

(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 organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, paragraph 4(c)).

The Respondent does not contend that it has been commonly known by the disputed

domain names.

The Respondent had knowledge of the Complainant’s marks when it registered

the disputed domain names, and should reasonably have foreseen that the Complainant

would object to their use. Respondent has not made preparations to use the marks

in connection with a bona fide offering of goods or services prior to

notice of a dispute.

Respondent has not made use of the disputed domain names, and has indicated

that he does not intend to use the domain name <atttelephone.com>. However,

he argues that but for the threat of legal action by Complainant, he would be

making use of the domain name <attwirelessretailer.com> in connection

with his alleged (but unsupported) retail store business. Paragraph 4(c)(iii)

of the Policy refers to "making" fair use of the domain name, yet

there are circumstances that may constitute making fair use, even if not presently

involving active use [2].

In this proceeding Respondent’s sole alleged reason for failing to actively

use the disputed domain name is a belief that to do so may result in legal action

by Complainant. This is not an acceptable ground for a more than three year

delay in making use of the name. The Panel is disinclined to convert Respondent’s

concerns about whether he was entitled to use the name into a defense for registering

it. The Panel notes that Respondent has offered no evidence of the existence

of the retail business he claims to own and operate, thus diminishing the strength

of any argument concerning what might have happened in the absence of his legal

concerns.

The Panel finds that Complainant has established that Respondent has no rights

or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

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 (1) that the domain name has been registered or

acquired by a respondent "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 [respondent’s] documented out-of-pocket

costs directly related to the domain name" (Id., paragraph 4(b)(i));

(2) that a respondent has 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 [the respondent has] engaged in a pattern of such

conduct" (id., paragraph 4(b)(ii)), and (3) 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 evidenced bad faith in at least two ways. First, he offered

to surrender one of the disputed domain names in exchange for Complainant’s

agreement to authorize him to use the "AT&T" marks in the second

disputed domain name. An authorization by Complainant to use the "AT&T"

marks in a domain name would have a value considerably in excess of Respondent’s

out-of-pocket expenses directly related to the name. Respondent’s effort to

obtain authorization for an otherwise unauthorized use of Complainant’s marks

in a domain name constitutes bad faith registration and use.

Second, Respondent has registered four domain names incorporating Complainant’s

marks, although two registrations were allowed to lapse following a cease and

desist and transfer demand from Complainant. Respondent has by registering the

two disputed domain names at issue in this proceeding prevented Complainant

from registering its marks in those names, and Respondent has evidenced a pattern

of such conduct.

Respondent has not actively used the disputed domain names to intentionally

attract Internet users for commercial gain by creating a likelihood of confusion

as to Complainant’s sponsorship or endorsement of a website. He has, however,

expressly indicated that his intention for registering the disputed domain names

was to establish a commercial website using Complainant’s marks to attract Internet

users. Because the Panel has found that Respondent engaged in bad faith registration

and use in other ways, the Panel need not reach the question whether Complainant’s

conduct in this regard also constitutes bad faith.

Complainant has established that Respondent registered and used the disputed

domain names in bad faith. It has therefore established the third element necessary

for a finding of abusive domain name registration and use under the Policy.

The Panel will direct the Registrar to transfer the disputed domain names to

Complainant.

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 <atttelephone.com>

and <attwirelessretailer.com> be transferred to the Complainant.

Frederick M. Abbott

Sole Panelist

Dated: October 25, 2003

Footnotes:

1. See AT&T Corp. v. John Zuccarini

d/b/a RaveClub Berlin, WIPO Case No. D2001-1503,

decided April 3, 2002 (by this sole panelist).

2. Including (but not limited to) recent

registration of a name intended to be used for an expressive site or registration

of a name with use held in abeyance pending the occurrence of an identified

contingency. See Pfizer Inc v. Van Robichaux, WIPO

Case No. D2003-0399, decided July 16, 2003, and decisions referenced therein.

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