AT&T Intellectual Property II, LP v. Domaine Enterprise
Claim Number: FA1103001376347
Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by Lisa N. Congleton of Haynes and Boone, LLP, Texas, USA. Respondent is Domaine Enterprise (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wirelessatt.com>, registered with Fabulous.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2011; the National Arbitration Forum received payment on March 7, 2011.
On March 7, 2011, Fabulous.com confirmed by e-mail to the National Arbitration Forum that the <wirelessatt.com> domain name is registered with Fabulous.com and that Respondent is the current registrant of the name. Fabulous.com has verified that Respondent is bound by the Fabulous.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wirelessatt.com. Also on March 10, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wirelessatt.com> domain name is confusingly similar to Complainant’s AT&T mark.
2. Respondent does not have any rights or legitimate interests in the <wirelessatt.com> domain name.
3. Respondent registered and used the <wirelessatt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AT&T Intellectual Property II, LP, holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AT&T mark (e.g., Reg. No. 1,444,455 issued June 23, 1987). Complainant also holds a trademark registration with the German Patent and Trademark Office (“GPTO”) (e.g., Reg. No. 39,528,431 issued April 10, 1996). Complainant uses the AT&T mark for voice, broadcast, data, networking, and e-business services. Complainant also owns and uses the <attwireless.com> domain name in connection with its business.
Respondent, Domaine Enterprise, registered the <wirelessatt.com> domain name on September 11, 2002. The disputed domain name resolves to a directory website that lists hyperlinks for third-party websites, including links for Complainant’s competitors.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant asserts rights in the AT&T mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,444,455 issued June 23, 1987) as well as the GPTO (e.g., Reg. No. 39,528,431 issued April 10, 1996). The Panel holds these trademark registrations with the USPTO and around the world sufficiently prove Complainant’s rights in the AT&T mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant claims the <wirelessatt.com> domain name is confusingly similar to its AT&T mark. Complainant argues that Respondent incorporates its mark in the disputed domain name and then merely adds the descriptive term “wireless,” which describes Complainant’s services, to the mark. The Panel finds the addition of a descriptive term to a mark does not sufficiently distinguish a domain name from a mark. Furthermore, Complainant argues Respondent’s omission of the ampersand (“&”) and its addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark is irrelevant to the Policy ¶ 4(a)(i) confusingly similar analysis. The Panel agrees. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Accordingly, the Panel holds Respondent’s <wirelessatt.com> domain name is confusingly similar to Complainant’s AT&T mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <wirelessatt.com> domain name pursuant to Policy ¶ 4(a)(ii). The burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name. The Panel may infer from Respondent’s failure to submit a Response that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists “Domaine Enterprise” as the registrant of the disputed domain name, which the Panel finds is not similar to the <wirelessatt.com> domain name. Without evidence to the contrary, the Panel holds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges Respondent’s <wirelessatt.com> domain name resolves to a directory website that provides hyperlinks for, among others, Complainant’s competitors in the telecommunications industry. Complainant submits a screen shot of the resolving website. This image shows a webpage that contains links for third-party websites that are unrelated to Complainant as well as links that resolve to Complainant’s official website. Additionally, the resolving website contains hyperlinks with titles like “Cellular Phone Service,” “Cell Phone Service,” “Wireless Phone Services,” and “Wireless Phone.” The Panel presumes that Respondent profits from its use of the disputed domain name through the receipt of click-through fees. Therefore, the Pane holds Respondent does not use the <wirelessatt.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s <wirelessatt.com> domain name resolves to a website that provides hyperlinks for Complainant’s competitors in the wireless telecommunications industry. Accordingly, the Panel finds Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel also find Respondent registered and uses a domain name that is confusingly similar to Complainant’s AT&T mark in order to profit from click-through fees. As a result, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant mark. Consequently, the Panel finds Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wirelessatt.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 14, 2011
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