AT&T Intellectual Property II, L.P. v. CARIBEINFORMATICA
Claim Number: FA1005001322665
Complainant is AT&T
Intellectual Property II, L.P. (“Complainant”), represented by David A. Bell, of Haynes and Boone, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <attuverseonline.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2010.
On May 4, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <attuverseonline.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2010 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@attuverseonline.com. Also on May 6, 2010, 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 July 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <attuverseonline.com> domain name is confusingly similar to Complainant’s AT&T U-VERSE marks.
2. Respondent does not have any rights or legitimate interests in the <attuverseonline.com> domain name.
3. Respondent registered and used the <attuverseonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AT&T Intellectual Property II, L.P., holds a trademark registration for its AT&T U-VERSE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,694,262 filed April 19, 2006; issued October 6, 2009). Complainant uses the AT&T U-VERSE mark in connection with communications services, including telephony services, internet services and wireless electronic, digital or IP transmission of voice, messages, graphics, images, data and information. Complainant prominently advertises its mark on its many official websites, including <attuverse.com>. Complainant also owns and operates active websites at <attuverseonline.net>, <attu-verseonline.net>, and <attu-verseonline.com>.
Respondent, CARIBEINFORMATICA S.A., registered the disputed domain name on November 4, 2008. The disputed domain name resolves to a “link farm” with links to telecommunications related companies, including Complainant’s direct 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 its AT&T U-VERSE mark based on its trademark registration of the mark with the USPTO (Reg. No. 3,694,262 filed April 19, 2006; issued October 6, 2009). The Panel finds that Complainant’s registration of its AT&T U-VERSE mark with the USPTO is sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant asserts that Respondent’s disputed domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name merely eliminates the ampersand, hyphen, and the space between the terms in Complainant’s mark and adds the generic term “online” and the generic top-level domain (“gTLD”) “.com” to the dominant features of Complainant’s mark. The Panel finds that the removal of the ampersand, hyphen, and spaces do not sufficiently distinguish the disputed domain name from Complainant’s mark. See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
The Panel also finds that the addition of a generic term
does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum
Apr. 23, 2001) (finding the <broadcomonline.com> domain name is
confusingly similar to the complainant’s BROADCOM mark). Additionally, the Panel finds that the addition
of a gTLD to a domain name is irrelevant for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is
irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <attuverseonline.com>
domain name is confusingly similar
to Complainant’s AT&T U-VERSE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Nevertheless, the Panel will examine the evidence in the record to determine if Respondent owns any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
There is no evidence in the record establishing that
Respondent is commonly known by the disputed domain name. Moreover, the WHOIS information indicates
that the registrant of the disputed domain name is “CARIBEINFORMATICA
Complainant asserts that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that the disputed domain name resolves to a “link farm” that displays links to telecommunications related businesses, including Complainant’s direct competitors. Complainant presumes that Respondent receives a financial benefit each time an Internet user clicks on a displayed link. The Panel finds that Respondent’s use of the disputed domain name for this purpose is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Although
Respondent’s domain name was registered in 2008, after Complainant applied for
its trademark but before the mark was approved, the Panel accepts Complainant’s
assertion that given the fame and distinctive nature of Complainant’s marks, it
would be impossible for Respondent to claim to have been unaware of these
marks. Regardless of whether Respondent
had actual knowledge of Complainant’s mark, the mark comprises
the dominant part of numerous
Complainant also has established bad faith use. Complainant argues that Respondent’s intent to divert customers from Complainant’s legitimate sites for Respondent’s own commercial gain is evidence of Respondent’s bad faith. Complainant asserts that Respondent uses the disputed domain name to redirect Internet traffic to Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name to redirect Complainant’s potential customers to Respondent’s website is a disruption of Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See 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)); see also 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.
The Panel finds that Respondent’s use of the disputed domain
name to profit from the receipt of click-through fees generated from the
displayed third-party links is evidence of Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting); see also University
of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that 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 <attuverseonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 8, 2010
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