WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Linux Security Systems
Case No. DRO2002-0002
1. The Parties
The Complainant is AT&T Corp., New Jersey, United States
of America.
The Respondent is Linux Security Systems, Cluj-Napoca,
Romania.
2. The Domain Name and Registrar
The domain name at issue is <att.ro> (hereinafter
referred to as the "Domain Name").
The Registrar for the Domain Name is Romanian National
Computer Network (hereinafter referred to as the "Registrar").
3. Procedural History
On August 15, 2002, Complainant filed a Complaint, drafted in
the English language, with the World Intellectual Property
Organization (hereinafter referred to as the "WIPO")
Arbitration and Mediation Center (hereinafter referred to as the
"Center"). The Complaint was received via e-mail on
August 15, 2002. The hardcopy was received on August 22, 2002.
On August 15, 2002, the Acknowledgement of Receipt of
Complaint was sent to the Complainant. On the same date, the
Center sent the Request for Registrar Verification.
On August 19, 2002, the Registrar provided the Center with
the full contact details available in its WHOIS database for the
Domain Name registrant and further confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Name registration;
- the Respondent is the current registrant of the Domain Name
registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter
referred to as the "Policy") applies to the Domain
Name;
- the Domain Name will remain locked during the pending
administrative proceeding;
- the languages of the Registration Agreement are English and
Romanian;
- the jurisdiction is at the location of the principal office
of the Registrar for court adjudication of disputes concerning
or arising from the use of the Domain Name (Rules, Paragraph 1);
Complainant then communicated to the Center the failure of
the transmission of the Complaint to the Respondent due to
inaccurate email addresses and fax numbers.
The Center proceeded to verify that the Complaint satisfied
the formal requirements of the Rules for Uniform Domain Name
Dispute Resolution Policy (hereinafter referred to as the "Rules")
and the WIPO Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy (hereinafter referred to as the "WIPO
Supplemental Rules"), including the payment of the
requisite fees. The verification of compliance with the formal
requirements was completed in the affirmative on August 23,
2002.
The Panel has reviewed the documentary evidence provided by
the parties and agrees with the Center’s assessment that the
Complaint complies with the formal requirements of the Rules and
the WIPO Supplemental Rules.
On August 23, 2002, the Center informed the Respondent of the
commencement of the proceedings as of August 23, 2002, and of
the necessity of responding to the Complaint within 20 calendar
days, the last day for sending a Response to the Center being
September 12, 2002.
On August 23, 2002, September 6, 2002, and September 9, 2002,
email communications were exchanged between the Respondent and
the Center where the Respondent answered to the Center's email
transferring the Complaint to it that it was waiting for the
hard copies of the Complaint.
In a letter dated September 13, 2002, the Center informed the
Respondent that it was in default pursuant to the Rules and the
WIPO Supplemental Rules and that an Administrative Panel would
be appointed based on the number of panelists designated by the
Complainant.
On October 1, 2002, the Center issued a Notification of the
Appointment of Administrative Panel and of the projected
decision date to the parties and transmitted the Case File.
The Panel is satisfied that it was constituted in compliance
with the Rules and the WIPO Supplemental Rules and has issued a
Statement of Acceptance and Declaration of Impartiality and
Independence.
The Panel has received no further submissions from either
party since its formation.
The Panel is obliged to issue a decision on or prior to
October 15, 2002, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear
from the Complaint or the documents submitted in support thereof:
Complainant is famous around the world for its products and
services including a variety of Internet services, such as
Internet access services, e-mail services and Web hosting
services.
For over a century, Complainant has continuously provided
telecommunications services under the name "AT&T,"
both as an abbreviation of its former corporate name, American
Telephone & Telegraph, and as part of its current corporate
name, AT&T Corp.
Complainant holds rights in many registered "AT&T"
trademarks in the United States and in many other countries
including Romania.
Complainant has used its mark without the ampersand in a
variety of formats, including the mark ATT.COM since 1986 for a
variety of telecommunications services and the marks 1 800
ATT-GIFT, 1 800 CALL ATT, CAMP ATT.
Complainant has registered and owns several Internet domain
names incorporating the "ATT" such as <att.com>,
<att.net> and <attws.com>.
Complainant has invested a substantial amount of money and
effort in advertising and promoting its goods and services under
the aforesaid AT&T name and AT&T and ATT marks. As a
result, the AT&T trademark is well known worldwide.
The AT&T brand name was recognized in the years 2000 and
2001 as one of the ten most valuable brand names in the world as
noted by the September 11, 2000, edition of the U.S. News &
World Report and a 2001 Survey by BusinessWeek in the August 6, 2001
edition.
On January 16, 2002, after discovering Respondent’s
infringing activities, the attorneys for the Complainant sent a
cease and desist letter to Respondent via e-mail. On March 5,
2002, Complainant’s attorneys sent an e-mail message to the
Respondent informing him that, absent a response, Complainant
would initiate legal proceedings.
The Respondent replied by e-mail that same day and promised
that he would set forth his position "in a few days."
The Respondent also responded on June 21, 2002, claiming
that the Domain Name belongs to Respondent under Romanian law
and that "AT&T" was not a registered trademark in
Romania when Respondent registered the Domain Name.
Complainant’s "AT&T" mark and "AT&T
Globe Design" mark are in fact registered or pending in
Romania for several classes of goods, and were so registered as
early as February 19, 1986.
Respondent suggested that he could reach a "deal"
with Complainant, stating, "I am sure that we can reach a
common point on this issue." and "I think I was
cooperative forwarding "www.att.ro" to "www.att.com",
but I see that we can’t reach a common point of view."
Respondent has currently set the Domain Name to resolve to
the Complainant's main website, <att.com>.
5. Parties’ Contentions
Over and above the uncontested and unchallenged factual
background as noted above, which is hereby incorporated herein
by reference, it has been contended by:
A. Complainant
- It has never authorized Respondent to use the Domain Name
in any trade or business that is owned, managed by, or otherwise
related to Complainant.
- Respondent is using the Domain Name unlawfully, for the
exclusive purpose of extracting money from the Complainant.
- Respondent’s decision to link the Domain Name to
Complainant’s own website manifests Respondent’s knowledge
of Complainant’s rights in the "ATT" trademark, and
in domain names comprised of that mark. Respondent is thus fully
aware that it is infringing upon Complainant's trademark.
- The Domain Name is identical to its trademark.
- Respondent has never been known by the Domain Name, nor is
Respondent commonly known by any name whose initials may form
"att" as an acronym.
- Respondent’s decision to direct the Domain Name to
Complainant’s primary corporate website, <att.com>,
demonstrates Respondent’s knowledge that web users would
expect that the Domain Name is owned and controlled by
Complainant. Respondent’s action also makes clear that
Respondent has no independent basis for its use of this
protected mark other than to extract funds from the Complainant.
- Respondent makes no independent use of the Domain Name at
all.
- Any attempt to actively offer products and services using
the Domain Name would amount to unlawful competition with
Complainant through infringement of Complainant’s mark.
- Registration of a trademark or famous mark as a domain name,
by an entity which has no legitimate relationship to the mark,
in and of itself is evidence of bad faith registration and use.
- An offer to sell a contested domain name to the rightful
trademark holder for a profit is prima facie evidence of
bad faith.
- Respondent’s registration of a world-famous mark, its
attempt to extract payment from Complainant for that mark, and
the constant threat Respondent poses by holding the Domain Name
and manipulating the website operated at that Domain Name, all
establish Respondent’s bad faith beyond any doubt.
B. Respondent
The Respondent has either chosen to abstain or has failed to
file a timely Response with the Center.
6. Discussion and Findings
Introduction
Pursuant to the ICANN Policy, the Complainant must convince
the Panel of three elements if it wishes to have the Domain Name
transferred. It is incumbent upon the Complainant to
cumulatively show:
(i) that the Domain Name is identical or confusingly
similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate
interests in the Domain Name; and
(iii) that the Domain Name was registered and used in bad
faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Name
and Complainant’s Trademarks
The Complainant has proved substantial use of both its common
law and registered AT&T trademarks in connection with
various telecommunication services and data processing
programming, and has satisfactorily established that said marks
have become notorious in a great number of countries. The
Complainant has also established its rights in the domain name
<att.com>. The fact that the <att> in the Domain
Name does not include an ampersand does not disrupt the correct
conclusion that <att.ro> is identical or confusingly similar
to Complainant’s AT&T trademark. As previous WIPO panels
have recognized, and which are hereby incorporated by reference
by this Panel, Complainant conveys its "AT&T" mark
on the web by using <att>, as technically the web does not
permit the use of an ampersand character in a domain name. See AT&T
Corp. v. John Zuccarini, WIPO
Case No. D2001-1503:
"The absence of an ampersand (‘&’) in the
disputed domain name is dictated by the fact that this character
may not presently be included in domain names, and Internet
users expect domain names to exclude that character."
Pursuant to the above mentioned reasons, the Panel is
therefore of the opinion that the Complainant has satisfactorily
met its burden of proof as required by paragraph 4(a)(i) of the
Policy.
(ii) Rights or Legitimate Interests in the Domain Name by
Respondent
The Panel finds the Respondent has no rights or legitimate
interests in the Domain Name given there exists no relationship
between Complainant and Respondent that would give rise to any
license, permission or authorization by which Respondent could
own or use the Domain Name. There is no evidence of any
commercial relationship between the Complainant and the
Respondent which would entitle the Respondent to the mark.
Additionally, the Respondent is not making a legitimate
non-commercial or fair use of the Domain Name. According to the
evidence submitted by the Complainant and not rebutted by the
Respondent, the Respondent was willing to make a
"deal" in exchange of the Domain Name. This motivation
establishes Respondent's lack of legitimate rights and
its intent to use the Domain Name for commercial gain. Moreover,
Respondent has not even attempted to explain or rebut the
indications that it has not made any commercial use of the
Domain Name, by which it could have established that it has
rights or legitimate interests in the Domain Name.
Last but not least, the fact that at one point in time, as
established by Complainant, the Respondent chose to direct the
Domain Name to Complainant's corporate website <att.com>
is further confirmation of Respondent's lack of legitimate
interest in the Domain Name. Moreover, the Panel has taken proprio
motu upon himself to verify the site led to by the Domain
Name and has noticed that the site is still under construction.
For these reasons, the Panel concludes that, on a balance of
probabilities, the Complainant has discharged its burden to show
that the Respondent has no rights or legitimate interests in the
Domain Name especially since there has been no explanation or
evidence offered by the Respondent to establish the contrary.
(iii) Bad faith in Registration and Use of the Domain Name by
the Respondent
Most of the time it is quite difficult, if not impossible to
actually show bad faith with concrete evidence, particularly
given the limited scope of the inquiry in these proceedings; one
should not expect to easily find "the smoking gun".
While bad faith cannot be presumed, once Complainant has
presented some evidence pointing in that direction, it is then
incumbent upon Respondent to either respond or explain why its
conduct should not be assimilated to bad faith. Panel’s
understanding of the Policy is that although the initial burden
to prove Respondent’s bad faith in the registration or the use
of the disputed Domain Name relies squarely on the shoulders of
Complainant, such obligation is only to make out a prima
facie case, and once it has done so, as Panel finds it did
in the present case, it is then incumbent upon the Respondent to
either justify or explain its business conduct (if not to
demonstrate the contrary). Failure to do so will, in some
circumstances, enable the Panel to draw a negative inference. In
the case at hand, the Respondent has elected (or failed) not to
put forward any justification for its registration and use of
the Domain Name and, in the circumstances, the Panel does draw a
negative inference out of such omission. See Société Des
Bains De Mer Et Du Cercle Des Étrangers à Monaco v. Iggi
Networks Media Group, WIPO
Case No. D2000-1324 (December 18, 2000), Hebdomag Inc. v.
Illuminaty Marketing, WIPO Case
No. D2001-0206 and InterTrade Systems Corporation v.
Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15,
2002).
This is particularly so, given that Internet users are likely
to be induced to believe that the Domain Name connects to
websites associated with or sponsored by Complainant given
Complainant’s use of the AT&T and Att famous marks.
Further, by using Complainant’s mark in its Domain Name
without any appearance of interest, Respondent is attempting to
ride on the fame of Complainant’s mark and use that fame to
divert consumers to its websites for commercial advantage.
7. Decision
For the foregoing reasons, the Panel finds that:
- The Domain Name registered by the Respondent is confusingly
similar to the common law and registered "AT&T"
trademarks to which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in
respect of the Domain Name; and
- The Domain Name has been registered and is being used by
the Respondent in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the ICANN Policy
and 15 of the ICANN Rules, the Panel orders that the
registration of the Domain Name <att.ro> be
transferred to the Complainant and directs the Registrar,
Romanian National Computer Network, to do so forthwith.
Jacques A. Léger, Q.C.
Sole Panelist
Dated: October 11, 2002