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:
- 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.
The Respondent has either chosen to abstain or has failed to file a timely Response with the Center.
6. Discussion and Findings
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.
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.
Dated: October 11, 2002