WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Domains by Brian Evans
Case No. D2000-0790
1. The Parties
The Complainant is AT&T Corp., 295 North Maple Avenue, Basking Ridge, New Jersey, U.S.A.
Represented by Scott Havlick, Esq., Holland & Hart, LLP, 1050 Walnut Street, Suite 500, Boulder, Colorado, U.S.A.
The Respondent is Domains by Brian Evans, Brian Evans, 8000 Spring Mountain Road, , Las Vegas, Nevada, U.S.A.
2. The Domain Name and Registrar
The disputed domain name is "attweb.com". The Registrar is Network Solutions, Inc., (NSI) 505 Huntmar Park Drive, Herndon, Virginia, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on July 14, 2000. On July 21, 2000, the Center requested that the Registrar NSI check and report back on the registrant for the domain name "attweb.com". On July 26, 2000, NSI reported to the Center that the registrant was the Respondent: Domains by Brian Evans, 8000 Spring Mountain Road No. 2056, Las Vegas, Nevada, 89117.
On August 4, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this Proceeding officially began. Respondentís Response was received by the Center by e-mail on July 18, 2000. Even though this Response did not comply formally with the Rules, the Panel has decided to give it due consideration in view of Respondentís not being represented by legal counsel.
The Administrative Panel submitted a Declaration of Impartiality and Independence on September 12, 2000, and the Center proceeded to appoint the Panel on September 13, 2000. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by September 27, 2000.
4. Factual Background
Complainant, AT&T Corp., is an international telecommunications company based in New Jersey, U.S.A. Respondent, Domains by Brian Evans, is an entity specializing in the coining and registration of domain names. Respondent states it also owned a company called "At the Web", and that this is how Respondent arrived at the disputed domain name "attweb.com". During 1999, there was an exchange of correspondence between Complainant and Respondent in which Complainant demanded that Respondent turn over the disputed domain name to Complainant. Respondent countered by offering to sell the disputed domain name to Complainant. Complainant now seeks to have the disputed domain name transferred to itself through this ICANN Proceeding.
5. The Partiesí Contentions
Complainant has used the mark "AT&T", alone and in connection with other terms, to identify goods and services in the telecommunications field since at least as early as 1983. It is the record owner of 229 U.S. federal trademark registrations that have "AT&T" as the dominant element identifying a wide range of goods and services throughout the telecommunications industry.
Because the ampersand symbol may not be incorporated into a domain name and is not reflected on a telephone touch-tone key pad, Complainant has used the mark "ATT", without the ampersand, to be the source identifier for its presence on the Internet and in marks consisting of toll-free numbers.
Complainantís use of "ATT" without the ampersand as a source identifier dates back to at least 1986.
Complainant owns over 16 U.S. federal trademark registrations that have "ATT" as the dominant element, including "ATT.NET" (U.S. Reg. No. 2,144,994), and "1-800 CALL ATT" (U.S. Reg. No. 2,322,080).
The contested domain name "attweb.com" is confusingly similar in appearance, sound, and meaning to Complainantís marks "AT&T, ATT, AT&T EASY WORLD WIDE WEB, AT&T BEGINNERWEB, "ATT.NET", "ATT.COM" and 1-800 CALL ATT, within the meaning of Paragraph 4(a)(i) of the Policy.
Respondent has no rights or legitimate interests in the contested domain name "attweb.com". Complainant has at no time authorized Respondent to register and/or use "attweb.com".
Respondentís only claim of right to the domain name is that it originally registered the name for "At the Web", a company Respondent states is no longer in business.
Respondent is using the domain name for commercial gain. Notably, the contested domain name links to a site reading: "The Domain Name That Brought You Here Is For Sale", and has been offered to Complainant for purchase at a price of $8,500, and later $8,000 (Complaint Exhibits L, N).
Respondentís business is registering and selling for a profit domain names that may legitimately be claimed by others. (Exhibit N).
Claimant further contends that Respondent registered the contested domain name to prevent Complainant from reflecting its own marks in a corresponding domain name in violation of paragraph 4(b)(ii) of the Policy.
- Respondent denies that the domain name in dispute "attweb.com" has any association with ATT.
- "Attweb.com" is not a name that is a trademark.
- Respondent is in the business of marketing high profile domain names, with each name vigorously researched in order to avoid conflict.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name "attweb.com" transferred to it, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
Complainant has produced exemplary copies of numerous trademarks using "ATT" registered in the United States (for example, no. 2095806, Complaint Exhibit B). Furthermore, the Panel itself is quite familiar with the notoriety of Complainantís company and its trademarks. The Panel accepts as true Complainantís explanation that, on the Internet, it had to vary from its more usual "AT&T" and that it began doing this as far back as 1983.
The Panel finds that Respondentís disputed domain name, "attweb.com", is confusingly similar to Complainantís family of trademarks. Respondentís adding the generic "web" does not change this. (See AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249).
Respondentís Rights or Legitimate Interests in Respect of the Domain Name
Respondent alleges no license or authorization of any kind from Complainant in respect of the disputed domain name. Rather, Respondent claims that it used the disputed domain name for a company "At the Web" that is now defunct. Respondent does not provide any documentation on the existence of this company that might show what the companyís business was, or how the companyís years of existence, if it ever existed, might mesh with Complainantís trademark claims. Even if Respondent really did have a company called "At the Web", it is highly unlikely Respondent could sustain a right to register the domain name "attweb.com" in the face of Complainantís famous trademarks of long standing.
The Panel finds Respondent has no rights or legitimate interests in the disputed domain name.
The Domain Name was registered and is being used in bad faith
The correspondence between Complainant and Respondent shows that on August 6, 1999 Respondent attempted to sell the disputed domain name to Complainant for $8,500, i.e., far more than Respondent paid for it (approx. $70; Complainant Exhibit L). In addition, Complainant has also produced evidence showing that Respondent registers and sells domain names on a regular basis (Complaint, p.9).
The Panel accepts that Respondent registered the disputed domain name in order to sell it back to Complainant for far more than Respondent paid for it contravening the Policy 4(b)(i); and that Respondent registered the disputed domain name to keep Complainant from registering it and has engaged in a pattern of such conduct in contravention of the Policy 4(b)(ii). Therefore, the Panel also finds Respondent registered and is using the disputed domain name in bad faith.
Pursuant to ICANN Policy paragraph 4(i) and Rule 15, the Panel orders that the disputed domain name "attweb.com" be transferred to Complainant. The disputed domain name is confusingly similar to Complainantís marks built around "ATT", the Respondent has no legitimate rights or interests in the domain name, and Respondent registered and is using the name in bad faith.
Dennis A. Foster
Dated: September 27, 2000