AT&T Corp. v. Tianfu Guo

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Tianfu Guo

Case No. D2004-0294

1. The Parties

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

America, represented by Sidley Austin Brown & Wood LLP, United States of

America.

The Respondent is Tianfu Guo, Cerritos, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <attone.com> is registered with Melbourne IT

trading as Internet Name Worldwide.

3. Procedural History

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

on April 23, 2004. On April 26, 2004, the Center transmitted by email to Melbourne

IT trading as Internet Name Worldwide a request for registrar verification in

connection with the domain name at issue. On April 27, 2004, Melbourne IT trading

as Internet Name Worldwide 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 April

29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response

was May 19, 2004. A Response was filed with the Center on May 19,

2004.

The Center appointed Nels T. Lippert as the sole panelist in this matter on

June 10, 2004. 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 June 24, 2004, the Panel decided to receive and consider the supplemental

filing the Complainant submitted to the Center on June 3, 2004, and issued an

Administrative Order allowing the Respondent to submit a response by July 1,

2004. The Respondent did not submit a response. In accordance with paragraph

10(c) of the Rules, the date by which the Panel was required to submit the decision

to the Center was extended to August 8, 2004.

4. Factual Background

Complainant AT&T Corp. is a large, internationally well-known telecommunications

corporation and Internet service provider. It has numerous federal registrations

for the mark "AT&T" from as early as 1984. Complainant also owns

registered marks consisting of "AT&T", the word "one",

and at least one other word, such as "AT&T One Rate", "AT&T

One Rate Online", "AT&T One Rate Connections", and "AT&T

One Rate USA." Furthermore, Complainant owns registered marks consisting

of "ATT" without the ampersand in combination with other words and

phrases, such as "1 800 CALL ATT", "CAMP ATT", "1 800

ATT-GIFT", "ATT.COM" and "ATT.NET."

Complainant has been the registrant of the domain names <att.com> since

1986, and <att.net> since 1993. Complainant’s primary corporate website

is located at <att.com>. Complainant conveys its "AT&T"

mark in the domain name <att.com> without the ampersand because the use

of an ampersand character in a domain name is not permitted.

On November 26, 2002, Respondent registered the domain name in dispute, <attone.com>.

The disputed domain name <attone.com> initially resolved to a website

that displayed an image of a globe and the phrases "The World @Tone,"

and "@Tone here to help you," with no other words, logos, graphics,

links to other web pages, or any indication of the owner of the web page.

Complainant sent cease and desist letters to the Respondent as early as July

2, 2003. On or around February 9, 2004, the domain name <attone.com> began

to resolve to a web page that offered, among other things, links to various

websites offering gift ideas and gift services. The new web page did not make

any reference to "@Tone", but purported to be part of the "eLuxury

Affiliate Program," which pays a seven percent commission on every product

sold through the use of the <attone.com> domain name. On June 22, 2004,

the Panel reviewed the website to which the domain name <attone.com> resolves,

and found that it continues to purport to be part of the eLuxury Affiliate Program,

but now refers to itself as "@Tone Gift Store."

On June 2, 2003, Complainant filed a United States intent-to-use application

for the service mark "AT&T ONE" for use in connection with telecommunications

services and "providing multiple-user access to a worldwide global computer

network." Complainant describes its "AT&T One" plan as a

telephone plan providing customers with special telephone rates on both their

home and their cellular phones. Complainant has provided copies of advertisements

for the AT&T One plan dated as early as July 7, 2003.

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent registered and is using the domain name

<attone.com> in bad faith to confuse AT&T’s customers and to exploit

and tarnish AT&T’s trademarks. In particular, Complainant contends that

<attone.com> is confusingly similar to, for example, its federally registered

"AT&T" and "AT&T ONE RATE" marks, the service mark

"AT&T ONE" in which it has common law rights, and the mark "ATT"

in which it has common law trademark rights.

Complainant also contends that Respondent misappropriated its "ATT"

trademark by adding the common term "one" to the end of it, creating

a domain name that is confusingly similar to the "ATT" trademark.

Complainant additionally contends that Respondent has no rights or legitimate

interests in the domain name <attone.com>, and that Respondent has not

used and is not using the domain name in any bona fide trade or business. Specifically,

Complainant contends that "@Tone" is a meaningless phrase, the domain

name <attone.com> is currently being used to divert unsuspecting Internet

traffic from AT&T, and that Respondent is profiting from this misuse by

earning commissions through its affiliation with eLuxury.

Finally, Complainant contends that Respondent’s registration of the domain

name <attone.com> is sufficient, in and of itself, to demonstrate Respondent’s

bad faith because it is confusingly similar to Complainant’s trademarks and

the Respondent has no legitimate interest in the domain name. Moreover, Respondent’s

bad faith is evident from the fact that the domain name initially resolved to

a one-page website with an image of a globe and "a few nonsense phrases"

mentioning @Tone, which was effectively the same as an inactive site. Furthermore,

Complainant contends that Respondent’s subsequent use of the domain name to

divert Internet traffic for profit and his failure to respond to correspondence

from the Complainant regarding the domain name demonstrates bad faith.

B. Respondent

Respondent contends that the domain name is not confusingly similar to Complainant’s

marks because there are over 13,700 active sites that begin with "att".

Respondent also notes that "tone" is a generic word, and "at"

is commonly indicated by the symbol "@", citing AtHome Corporation

v. Metro.Net and The Innovation Group, Inc., a/k/a "Metro.Net.",

WIPO Case No. D2000-0422 (October 23,

2000) (noting that the "@" symbol is commonly used to denote the word

"at").

Originally, Respondent contended that the site was non-commercial, "there

is no intent for commercial gain to mislead or divert customers or to tarnish

the trademark of service mark "at issue,"" and it has not received

any royalties from eLuxury or any other companies. Respondent goes on to explain

that it intends to use the domain name to set up an online gift store, "with

an appeal on the tone. We are going to offer special gifts to our customers

with customized tone on their gifts,"… "again we [sic] just going

to set up an online gifts store for the use of customized tone approached."

In response to Complainant’s bad faith argument, Respondent contends that it

registered the domain name <attone.com> as a combination of "at"

and "tone," and not for the purpose of selling, renting, or otherwise

transferring the domain name to the Complainant. Furthermore, Respondent contends

that it did not have bad faith in its registration and use of <attone.com>

because it is not a competitor of AT&T.

C. Complainant’s Supplemental Filing

In a supplemental filing, the Complainant asserts that the Response was filed

with procedural deficiencies and should not be considered. The Complainant also

contends that the Respondent’s bad faith is demonstrated by a change in the

Respondent’s web site after the Complaint was filed, to include a disclaimer

that "@Tone" is not associated with other companies in any way. The

Complainant further contends that the Respondent has no legitimate interests

in the disputed domain name because the Respondent’s use of the domain name

to provide links to web sites that make online sales is contrary to its assertion

that it is making a non-commercial use of the domain name. To rebut the Respondent’s

assertion that a search on Google.com for "attone" produces no results

relating to AT&T, the Complainant provides annexes showing that a search

on Google.com for "ATT One" and "AT&T One" results in

a listing of numerous websites about AT&T and its services, including AT&T’s

own websites. Finally, the Complainant contends that bad faith registration

and use is evident because "the registered domain name does not contain

the @ symbol", despite the Respondent’s explanation that it chose the disputed

domain name because its business is called "@Tone".

6. Discussion and Findings

As a preliminary matter, the Complainant’s assertion that there are procedural

deficiencies in the Respondent’s Response has been considered by the Panel.

Although the Response did not comply with the procedural and technical requirements

of paragraphs 2(h) and 5(b) of the Rules, in an effort to treat the Parties

with equality in accordance with paragraph 10 of the Rules, the Panel has considered

the Response, for what it is worth, as well as Complainant’s Supplemental Filing.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with

respect to the disputed domain name, all three of the following elements:

(i) The domain name is identical or confusingly similar to a trademark in

which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative,

circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be

evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any

one of which, if proved by the Respondent, would demonstrate the Respondent’s

rights or legitimate interests in the domain name for purposes of Paragraph

4(a)(ii).

A. Identical or Confusingly Similar

Combining a generic word with a trademark to make a domain name may result

in a domain name that is confusingly similar to the trademark, in circumstances

where a distinctive trademark is still clearly recognizable as such in the combined

domain name. The Complainant has the burden of showing that the domain name

in question is confusingly similar to its trademarks. The evidence submitted

by Complainant clearly substantiates its contention that the AT&T marks,

with and without an ampersand, are extremely well known and have been since

well before registration of the disputed domain name. The Panel concurs with

prior panelists that the AT&T and ATT marks have achieved a high degree

of consumer recognition and fame. See, AT&T Corp. v. Ondonk Partners,

WIPO Case No. D2000-1723 (April 26, 2001).

In this case, the disputed domain name <attone.com> wholly incorporates

the ATT trademark.

As for the Complainant’s contention that <attone.com> is confusingly

similar to the service mark "AT&T ONE," in which it has common

law rights, the Panel notes that the Complainant has filed an intent to use

application in the U.S. for the service mark "AT&T ONE," and registration

is still pending. While a trademark application alone is not sufficient to establish

that a Complainant has rights in a trademark, Rodale, Inc. v. Christianne

Schelling, WIPO Case No. DBIZ2002-00130

(June 30, 2002), the Complainant has provided exhibits that demonstrate its

use of the mark. The fact the disputed domain name was registered and used by

the Respondent before the Complainant’s application for registration

and use of the "AT&T One" mark is of no moment. "The issue

under the first factor is whether the Complainant has rights as of the time

of the Complainant." Document Technologies, Inc. v. International Electronic

Communications Inc., WIPO Case No. D2000-0270

(June 8, 2000). The Panel finds that at the time of the Complaint, the Complainant

had and currently has trademark rights in the mark "AT&T ONE";

and but for the addition of the generic top-level domain, the disputed domain

name is identical to Complainant’s service mark.

Furthermore, the disputed domain name differs from the Complainant’s service

mark rights in AT&T only by the addition of the common word "one",

the deletion of the "&", and the addition of a generic top-level

domain name. It is well established that the addition of a generic top-level

domain such as ".com" is not relevant when determining whether a disputed

domain name is confusingly similar to a protected mark. Universal City Studios,

Inc. v. G.A.B. Enterprises, WIPO Case

No. D2000-0416 (June 29, 2000). More specifically, the addition of a top-level

generic domain does not create a new trademark or avoid confusion. America

Online, Inc., v. Yeteck Communication, Inc., WIPO

Case No. D2001-0055 (April 23, 2001). Moreover, it is well established that

a common term or a number preceding or following a trademark does not create

a new or different mark in which the Respondent has rights. See Microsoft

Corporation v. J. Holiday Co., WIPO Case

No. D2000-1493 (February 20, 2000). Here, the Complainant has demonstrated

it has rights in a variety of marks including "ATT" as well as "AT&T

ONE". Disregarding the top-level domain, and common terms, the disputed

domain name is identical to Complainant’s marks.

Accordingly, the Panel finds that this disputed domain name is identical or

confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, a Respondent may demonstrate it

has rights or legitimate interests in a domain name if (i) before any notice

of the dispute, it used or made demonstrable preparations to use, the domain

name in connection with a bona fide offering of goods or services; or (ii) it

has been commonly known by the domain name; or (iii) it is making a legitimate

non-commercial or fair use of the domain name, without intent for commercial

gain to misleadingly divert consumers or to tarnish the mark at issue.

The Respondent has not shown that he was commonly known by "@Tone"

or "AtTone," for purposes of Paragraph 4(c)(ii) of the Policy. Nor

does the Respondent contend that it was (or is) making a legitimate non-commercial

or fair use of the domain name according to Paragraph 4(c) (iii) of the Policy.

However, in effect, the Respondent contends that before any notice of the dispute

it had made preparations to use the domain name in connection with a bona fide

offering of goods and services. Yet, the Respondent has offered no evidence

supporting its contention that it was making such preparations. The record is

clear that when the Respondent registered the domain name in question, it resolved

only to a page displaying an image of a globe along with "@Tone. It was

only after notification of Complainant’s rights and the forwarding of cease

and desist letters from the Complainant’s counsel that the disputed domain name

resolved to a site which offered goods and services through links. Even at that,

where no legitimate business has been established, the use of the disputed domain

name, as here, to link to other sites does not establish rights or legitimate

interests. AT&T Corp. v. Azim Hemani, WIPO

Case No. D2003-0634 (October 25, 2003). The Respondent has not refuted the

Complainant’s contentions with any credible evidence. Therefore, the Panel finds

that the Respondent has no rights or legitimate interests in the disputed domain

name.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, the Complainant must show that

the Respondent registered the domain name in bad faith AND used the domain name

in bad faith.

Complainant’s marks are indisputably highly recognized and famous. It is inconceivable

that Respondent did not know of Complainant’s rights prior to registering the

disputed domain name. Here the Respondent wholly incorporated the ATT mark as

the predominant and recognizable portion of the domain name. Bad faith is shown

where the Respondent knew or should have known of the registration and use of

the Complainant’s mark prior to registering the domain name. Sony Kabushiki

Kaisha v. Inja, Kil, WIPO Case No. D2000-1409

(December 13, 2000). While the Respondent may not have known of Complainant’s

AT&T ONE service mark at the time of registering the disputed domain name,

it must have known of Complainant’s well-recognized ATT and AT&T marks.

Accordingly, the Panel finds that the disputed domain name was registered in

bad faith.

Under paragraph 4(b)(iv) of the Policy, the Respondent’s bad faith use of the

domain name is indicated by its intentional use of the disputed domain name

to attract, for commercial gain, Internet users to its website by creating a

likelihood of confusion with the Complainant’s mark. Casio Keisanki Kabushiki

Kaisha v. Jongchan Kim, WIPO Case No.

D2003-0400 (July 15, 2003). Here, the disputed domain name originally resolved

to a website displaying only an image of a globe and the phrases "The World

@Tone" and "@Tone Here to Help You" with no other words or any

indication of ownership of the webpage. After receipt of warning letters from

Complainant the disputed domain name began to resolve to a web page that offered

products for sale under an affiliate program. Respondent has not disputed Complainant’s

contention that the Respondent has no legitimate interests in the disputed domain

name because the Respondent’s use of the domain name to provide links to websites

that make online sales is contrary to its assertion that it is making a non-commercial

use of the domain name. Furthermore, it is clear that the Respondent now seeks

to profit from the illegitimate use of the disputed domain name by advertising

and linking to suppliers of products for a fee. Using the disputed domain name

to divert Internet users to Respondent’s website is a bad faith commercial use.

Accordingly, the Panel finds that the disputed domain name is used by Respondent

in bad faith.

7. Decision

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

and 15 of the Rules, the Panel orders that the domain name <attone.com>

be transferred to the Complainant.

Nels T. Lippert

Sole Panelist

Dated: August 8, 2004

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