AT&T CORP. v. Azim Hemani

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Azim Hemani

Case No. D2003-0634

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 Azim Hemani, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <attphonecard.net> is registered with Domain

Bank, Inc.

3. Procedural History

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

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

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

name at issue. On August 21, 2003, Domain Bank, 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

22, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was September 11, 2003. The Center’s records of courier and telefax transmission

indicate completed delivery to Respondent. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on September

15, 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.

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

PREPAID PROMOTIONAL CARD" (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 PREPAID

PROMOTIONAL CARD" service mark is registered at the USPTO (reg. No. 1946763,

dated January 9, 1996) in IC 38, covering telecommunications services,

namely prepaid telephone services [1]. (Complaint,

paragraph 8 and Annexes 6 & 7).

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 8 and Annex 9 & 10). At its active commercial website,

Complainant offers for sale the "AT&T PrePaid Phone Card" (id.,

Annex 11). Complainant has advertised its calling card products extensively

over a wide geographic area for personal and business use (id., paragraph

8).

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 (id. paragraph 8 and Annexes

5 & 10-12). The Panel finds that the "AT&T" mark is well known,

at least in the United States.

According to the Registrar’s Verification, Respondent "Azim Hemani"

is the registrant of the disputed domain name <atttphonecard.net>. According

to a DomainBank, Inc. WHOIS database report submitted by Complainant, the record

of registration for the disputed domain name was created on July 11, 2001.

Respondent has not used the disputed domain name in connection with a commercial

website offering his own product line. However, the disputed domain name is

currently used to direct Internet users to a DomainBank form site that recommends

to Internet users that they search for websites in the same field of service

as the disputed domain name, and includes multiple links (such as for "calling

cards", "phone cards" and "prepaid phone cards"). Clicking

on the link "calling card", as example, directs the Internet user

to a website including several "sponsored links" that in turn direct

Internet users to various enterprises offering calling card services in competition

with Complainant (e.g., at "www.pinzoo.com" and "www.talkitg.com").

(Complaint, paragraph 9 and Annex 14, panel visit of October 25, 2003).

Complainant transmitted cease and desist and transfer demands to Respondent.

On one occasion a representative of Complainant spoke by telephone with Respondent

who indicated that he sells phone cards. (Id., paragraph and Annexes

17-21).

The Registration Agreement in effect between Respondent and Domain Bank, 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 name is confusingly similar to

its marks.

Complainant claims that Respondent has no rights or legitimate interests in

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

representative or reseller of its goods or services.

Complainant asserts that Respondent has registered and is using the disputed

domain name in bad faith. Complainant argues that Respondent’s domain name is

currently used to intentionally direct Internet users to the services of Complainant’s

direct competitors for commercial gain. Moreover, even if Respondent were not

currently using the disputed domain name, in light of the well known character

of Complainant’s marks and absence of Respondent’s authorization to use those

marks, the only plausible explanation for Respondent’s registration of the disputed

domain name was to use them in bad faith to divert Internet users for commercial

gain.

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

domain name to it.

B. Respondent

The Respondent did not reply to the 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 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 Panel is satisfied that the Center took all steps reasonably

necessary to notify the Respondent of the filing of the Complaint and initiation

of these proceedings.

The records of the Center indicate completed delivery of the notifications.

The Panel is satisfied that the Respondent had adequate notice of the proceedings.

A. Identical or Confusingly Similar

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

in commerce and as evidenced by registrations (see Factual Background,

supra). Complainant has 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"). 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.

The disputed domain name <attphonecard.net> adds the term "phonecard"

(or "phone card" in its more usual form) to the well known "AT&T"

mark. Telephone calling cards represent a typical service of a telecommunications

service provider such as Complainant. An Internet user and consumer viewing

the term "attphonecard" would likely associate it with a service product

of Complainant. Complainant extensively advertises "AT&T" telephone

calling cards of various types on the Internet and elsewhere, adding to the

likelihood that the disputed domain would cause Internet users to believe that

it is associated with Complainant and its services. Addition of the gTLD ".net"

does not dispel the likelihood of confusion. The Panel finds that the disputed

domain name <attphonecard.net> is confusingly similar to the "AT&T"

service mark.

Complainant has demonstrated that it has rights in the "AT&T"

marks and the disputed domain name is confusingly similar to one or more of

those marks. Complainant has satisfied the first element necessary to establishing

abusive domain name 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)).

There is no evidence that Respondent has been commonly known by the disputed

domain name. Respondent has not replied to the Complaint. There is insufficient

evidence before the Panel to establish a bona fide use of the disputed domain

name prior to notice of a dispute. Complainant has provided prima facie evidence

that Respondent has not made fair use of the disputed domain name. The only

demonstrated use is in connection with a website that diverts Internet users

to competitors of Complainant. Respondent has not attempted to demonstrate a

fair use despite notice of these proceedings and the opportunity to do so. The

Panel finds that Respondent does not have rights or legitimate interests in

the disputed domain name.

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

domain name registration and use.

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 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 not attempted to justify its registration of Complainant’s well-known

service mark in the disputed domain name.

The disputed domain name is currently used to direct Internet users and consumers

to a website which recommends using links provided there to search for services

in the same line of commerce referenced by the disputed domain name. The recommended

searches direct Internet users and consumers to sponsoring websites offering

services directly competing with those of Complainant. While this redirection

service appears to be provided by the Registrar of the disputed domain name,

such activity is possible because Respondent is not actively using the disputed

domain name. Respondent presumably benefits directly or indirectly from its

own non-use and the redirection activities of the Registrar through contribution

to lowering the price of maintaining its domain name registration. In any case,

it is because of Respondent’s registration of the disputed domain name incorporating

Complainant’s well known mark that Internet users are diverted to competitors

of Complainant. Because the Registrar is affirmatively acting in connection

with the disputed domain name, it is not clear that Respondent is literally

acting in a way sufficient to "intentionally … attract, for commercial

gain, Internet users to" a website creating a likelihood of confusion.

However, the text of paragraph 4(b) of the Policy is not exhaustive, and the

Panel may find bad faith based on other factors. The combination of Respondent’s

registration of the well known mark, with the indirect diversion of Internet

users through the actions of the Registrar, harms Complainant just as if Respondent

was actively undertaking the diversion. He has at least actively facilitated

the harm caused to Complainant. The Panel finds that this constitutes bad faith

registration and use of the disputed domain name within the meaning of paragraph

4(a)(iii) of the Policy.

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

registration and use of the disputed domain name.

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

name to it.

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 name, <attphonecard.net>

be transferred to the Complainant.

Frederick M. Abbott

Sole Panelist

Dated: October 25, 2003

Footnote:

1. Complainant alleged that the marks "AT&T

PREPAID CALLING CARD", "AT&T CUSTOM CALLING CARD" and "AT&T

TRY ME! CARD" are registered at the USPTO (Complaint, paragraph 8(e)).

Examination of the documentary evidence submitted by Complainant (USPTO TESS

printouts) indicates that the aforesaid marks each are cancelled (as of July

20, 2002, December 29, 2000 and May 17, 2003, respectively) (id., Annex

7). This is a serious unexplained discrepancy between pleading and evidentiary

support.

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