AT&T Intellectual Property II, L.P. v webmasters411.com

On October 26, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

On November 16, 2009, the Panel issued an order extending the due date for submission of a decision until November 23, 2009.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant AT&T Intellectual Property II, L.P. owns U.S. trademark registrations for the marks ATT and AT&T (collectively referred to as ATT marks) as used, since at least 1983, on or in connection with telecommunications services and telephones.[2] See Complaint, Exhibit B. Complainant also owns a Community Trademark Registration,[3] a German trademark registration,[4] and a UK trademark registration[5] for the ATT mark. See Additional Submission, Exhibit 1.

Complainant’s parent company, AT&T Inc., is the largest communications holding company in the U.S. and worldwide, by revenue. Over the years, Complainant, through its predecessor-in-interest, has invested hundreds of millions of dollars promoting its ATT marks worldwide.

Complainant contends that the disputed domain name, att411.com, is confusingly similar to the ATT marks because it incorporates the distinctive term “att” in its entirety with merely the addition of a generic term “411,” which is commonly used as a synonym for “information.” Moreover, Complainant asserts, “given the internationally well-known nature of Complainant’s ATT Marks, Respondent’s misappropriation of ATT in the Domain Name is likely to cause confusion.”

Complainant maintains that Respondent has no rights or legitimate interests in the domain name att411.com. It notes that Respondent does not own a trademark registration for ATT411, ATT, or AT&T, is not known by the name ATT411, ATT, or AT&T, and is not otherwise authorized to use the ATT marks. Complainant further argues that Respondent has never used, nor made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. The evidence (see Complaint, Exhibit F) indicates that internet users accessing the disputed domain name are redirected to Respondent’s website at <mcdanielcontracting.com>, where Respondent Joseph McDaniel[6] advertises his company’s home contracting services.

With respect to the issue of “bad faith” registration and use, Complainant asserts that Respondent’s own commercial gain, by creating confusion with the ATT marks, constitutes evidence of bad faith registration and use. According to Complainant, “[s]ince Respondent uses the Domain Name – which contains Complainant’s ATT marks – to redirect Internet traffic to Respondent’s website, consumers searching for information concerning Complainant are likely to be confused as to whether Respondent is connected, affiliated or associated with, or sponsored or endorsed by, Complainant. … Presumably, Respondent receives a financial benefit from its diversion of Complainant’s potential customers to Respondent’s site, where Respondent advertises Mr. McDaniel’s contracting services. By creating a likelihood of confusion with the ATT Marks by unlawfully capitalizing on the name recognition and goodwill of the ATT marks to divert Internet traffic to Respondent’s site, Respondent has undoubtedly registered and has been using the Domain Name in bad faith.”

In further support of its contention that the domain name was registered and is being used in bad faith, Complainant contends that, given the fame of its ATT marks, Respondent had constructive knowledge of Complainant’s rights in such marks. Such knowledge, Complainant asserts, also supports a determination that Respondent breached its Registration Agreement with Go Daddy, which requires registrants to warrant that they have no knowledge of the domain name infringing upon or conflicting with the trademark rights of any party. Such a breach is further evidence of bad faith registration and use, Complainant maintains.

Finally, Complainant argues that Respondent’s bad faith registration prevents Complainant from reflecting its marks in a corresponding domain name and that this fact supports a finding of bad faith registration and use.

B. Respondent

Respondent contends that the domain name att411.com is the abbreviation or initials of the domain name AroundTheTrack411.com, which he owns. The domain names att411.com and AroundTheTrack411.com were registered, according to Respondent, so he could set up a website for race fans to share information relating to venues around the race tracks. “This is something I’m looking forward to doing upon retirement. But of course I can’t wait until then to get the domains. Securing the domain name is my preparation for that future venture. This is why I have the domains parked at present. However these facts demonstrate my bona fide interest in the domain name, att411.com.”

Respondent concedes that the disputed domain name has been redirected to his company site, but argues that the only way someone is redirected is if someone types the entire name into the URL bar and that, even if someone is redirected to his company’s site, there are no services offered relating to telephone services.

Respondent contends that, as of October 16, 2009, the domain names att411.net, .org, .us, etc. were available for registration, thus demonstrating that Complainant’s is not concerned with the “att” part of the domain name but only with the “.com” part.

C. Additional Submissions

In its Additional Submission, Complainant contends that Respondent’s reasons for registering the domain name are irrelevant to the issue of confusing similarity and that its argument that Complainant must register each and every available domain name incorporating “att411” to establish rights “is misguided.” Complainant points out that it owns approximately 2,600 domain names incorporating the mark ATT.

Complainant also refutes Respondent’s assertion that “in searching, if att411 is searched it does not show any reference to any of my domains.” Complainant indicates that Respondent’s company site shows up in the search results for the search term “att411” on the search engine Bing. See Additional Submission, Exhibit 3.

With respect to Respondent’s allegation that the disputed domain name is an abbreviation of the domain name AroundTheTrack411.com and that Respondent plans to use the disputed domain name att411.com at some time in the future in connection with a website for race fans, Complainant notes that all Respondent presents in support of such assertion is a copy of a Domain Purchase Page listing both domains. According to Complainant, “t]hese claims, or the evidence presented, do not establish demonstrable preparations to use the Domain Name sufficient to show rights or legitimate interests in the Domain Name.”

Complainant also reiterates that the redirection of a domain name to a site unrelated to a complainant shows bad faith registration and use and that it is “well established that passive holding of a domain name … for almost seven years in violation of third party rights establishes bad faith registration and use.”[7]

In his Additional Submission, Respondent notes that, as of October 27, 2009, att411 with various top-level domains are still available. “This shows AT&T does not have any concerns that att is being used unless the extension .com is included.”

Respondent also refers the Panel to the decision in Struck Corp. v. James B. Strickland, Jr., 162 F.Supp.2d 372 (E.D. Pa. 2001). Respondent quotes as follows from a summary of the decision in the case, as published in “Internet Library of Law and Court Decisions”:

The Court also rejected plaintiff’s claim that defendant’s use caused the necessary dilution by preventing plaintiff from using its mark as a domain name for a website. Noting that other “courts have rejected this theory” the court stated that “it is clear that nothing in trademark law requires that title to domain names that incorporate trademarks … be provided to trademark holder” … trademark law does not support such monopoly.

“Moreover, the Court noted that plaintiff did indeed have a presence on the web at several other domains including stricktrailer.com and strickcorp.com, was easy to find via search engines, and “any inconvenience to an Internet user searching for plaintiff’s website is trivial.”

With respect to the Bing search engine results, Respondent notes that this is the first time he had seen this. “Bing is not my choice of search engines. Why or how Bing picked up a domain that has not had any promotion done is beyond my explanation.” Respondent attached to his Additional Submission several other search engine results, “none of which show any reference to this domain.”

FINDINGS

Upon review of the evidence, the Panel finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights: (2) Respondent has no rights or legitimate interests in respect of the domain name in issue; and (3) the domain name was registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Panel finds that the disputed domain name, att411.com, is confusingly similar to the marks ATT and AT&T. The domain name incorporates the distinctive mark ATT in its entirety and, with respect to the mark AT&T, differs only in that the latter incorporates the ampersand symbol, which cannot be reproduced in a domain name. The fact that the domain name includes the descriptive term “411” (which is understood to refer to information services), as well as the top level domain “.com,” does not support a determination that the domain name is not confusingly similar to the marks in issue. See, e.g. Nextel Communications Inc. v. Richard Grams a/k/a Watch ego, FA 0477174 (Nat. Arb. Forum Jul. 5, 2005) (finding nextel411.net and nexteldirect.net to be confusingly similar to NEXTEL mark).

Moreover, the fact that Respondent does not offer telephone services is not relevant to the issue of confusing similarity under this element of the Policy. Most ICANN panels resolve the issue of confusing similarity through a simple comparison of the mark in issue with the alphanumeric string comprising the domain name. In this regard, the Panel refers to the “WIPO Overview of WIPO Panel Views on Selected UDRP Decisions,” which provides, in part, as follows:

1.2 Is the content of a web site relevant in determining confusing similarity?

Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.

The evidence further establishes that Complainant has rights in the ATT and AT&T marks.

Rights or Legitimate Interests

In support of his assertion that he has rights or legitimate interests in the subject domain name, Respondent asserts that he plans to use the domain name, as well as that of AroundTheTrack411.com, upon his retirement in connection with a website for race fans. However, as noted by Complainant, such an assertion, by itself, does not establish demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(1) of the Policy. See, e.g., Jordan Sparks d/b/a Open Dental Software v. KO, FA 1266265 (Nat. Arb. Forum Aug. 5, 2009) (finding no rights or legitimate interests where respondent merely claimed to have plans for a future website without producing any evidence to support the claim).

The Panel further finds no evidence that Respondent is commonly known by the domain name or that he is making a fair or noncommercial use of the domain name, within the meaning of the Policy.

Registration and Use in Bad Faith

Respondent contends that the disputed domain name, att411.com is an abbreviation of his previously registered domain name AroundTheTrack411.com. That may be so, but such fact is not relevant to the outcome of this proceeding. The application of the Policy is dependent on the particular domain name(s) in issue.

The evidence indicates that Complainant has used its ATT marks since at least 1983 and that the confusingly similar domain name att411.com was not registered until December 2002. The evidence further indicates that the ATT marks are extremely strong, having been heavily advertised and promoted. Under such circumstances, the Panel finds that Respondent must have been aware of Complainant’s ATT marks at the time he registered the disputed domain name.

The evidence further supports a determination that Internet users, upon assessing the att411.net domain name, are redirected to Respondent’s website at <mcdanielcontracting.com>, where Respondent advertises his home repair services. As noted above, Exhibit 3 to Complainant’s Additional Submission indicates that a search for the term “att411” on the Bing search engine reveals Respondent’s contracting business home page.

These facts lead the Panel to conclude that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his site or other on-line location, by creating a likelihood of confusion with Complainant’s ATT marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s att411.com site, within the meaning of paragraph 4(b) (iv) of the Policy. The fact that Respondent’s services are not related to the services or goods offered or sold under the ATT marks does not mean that consumers, upon encountering the att411.com domain name, will not be confused as to the source of the site. This is especially the case given that the term “411” is associated with telephone information services and Complainant offers telephone services under the ATT marks.

The fact that the term “att411” may be registered by Complainant in connection with other top-level domains is irrelevant to the issue to be decided in this case. The Panel has reviewed the decision of the district court in Strick Corp. v. James B. Strickland, Jr. The court’s statement that “[n]othing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders” (emphasis added) was offered in the context of its dismissal of claims under federal and state dilution law where the plaintiff attempted to establish the blurring or tarnishment of its mark by asserting that without the strick.com domain name he is “completely blocked” from the Internet. The Panel does not understand Complainant to be making the same argument in this case. Moreover, the focus of an ICANN proceeding is on whether the evidence establishes an abusive domain name registration, not on whether the distinctiveness of a famous mark has been blurred. While trademark law may not require that title to domain names that incorporate another’s mark be transferred to the trademark owner, upon establishment of each of the elements of the UDRP Policy, such transfer may be ordered.

Respondent’s assertion that he has “parked” his domain names does not defeat a claim of bad faith registration and use. Indeed, ICANN panels have held repeatedly that such passive use supports a determination of bad faith registration and use. See, e.g., Traditional Medicinals, Inc. v. Cimino Bros. Produce, FA 1261774 (Nat. Arb. Forum Jun. 22, 2009); Disney Enters. Inc. v. Meyers, FA 6978818 (Nat Arb. Forum Jun. 26, 2006).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <att411.com> domain name be TRANSFERRED from Respondent to Complainant.

Jeffrey M. Samuels, Panelist
Dated: November 23, 2009