AT&T Intellectual Property II, L.P. v. Notch Domains
Claim Number: FA1005001322667
Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by David
A. Bell, of Haynes and Boone, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <uverseonline.com> and <u-verseonline.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.
Judge Ralph Yachnin 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 <uverseonline.com> and <u-verseonline.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@uverseonline.com and postmaster@u-verseonline.com. Also on May 5, 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 June 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <uverseonline.com> and <u-verseonline.com> domain names are confusingly similar to Complainant’s U-VERSE mark.
2. Respondent does not have any rights or legitimate interests in the <uverseonline.com> and <u-verseonline.com> domain names.
3. Respondent registered and used the <uverseonline.com> and <u-verseonline.com> domain names 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 with the United
States Patent and Trademark Office (“USPTO”) for its U-VERSE mark (Reg. No.
3,276,598 issued August 7, 2007) in connection with telecommunications services
including Internet or IP telephony services, unified messaging services and
high-speed access to the Internet.
Respondent, Notch Domains, registered the disputed domain names on April 1, 2010. The disputed domain names resolve to websites that feature 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.
Respondent, Notch Domains, registered the disputed domain names on April 1, 2010.
Complainant asserts rights in its U-VERSE mark through its
holding of a trademark registration with the USPTO for the U-VERSE mark (Reg. No. 3,276,598 issued August 7, 2007). The Panel finds that Complainant’s
regsitration of the mark with the USPTO is sufficient evidence of Complainant’s
rights in its U-VERSE mark purusant to 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 Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Complainant argues that
Respondent’s <uverseonline.com> and <u-verseonline.com> domain names are confusingly
similar to Complainant’s U-VERSE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names add the
generic term “online” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a
generic term and a gTLD creates a confusing similarity between the disputed
domain names and Complainant’s mark. 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); see also Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop.
Assocs., FA 916991 (Nat. Arb. Forum
Apr. 10, 2007) (“The mere addition of a generic top-level domain
(“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from
the mark.”). Additionally, Respondent’s <uverseonline.com> domain name deletes the
hyphen from Complainant’s mark. The
Panel finds that the deletion of a hyphen does not distinguish the disputed
domain name from Complainant’s mark. See Nat’l Cable Satellite Corp. v.
Black Sun Surf Co., FA 94738
(Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); 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).
Therefore, the Panel finds that Respondent’s <uverseonline.com> and <u-verseonline.com> domain names are
confusingly similar to Complainant’s U-VERSE mark pursuant to Policy ¶
4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <uverseonline.com> and <u-verseonline.com> domain names. Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case against Respondent and that once established, Respondent has the burden to prove it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has set forth a prima facie case in the Complaint and that Respondent failed to submit a Response to these proceedings. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name sunder Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent is not authorized to use its mark in any way. The WHOIS information for the disputed domain names lists the registrant as “Notch Domains” which Complainant alleges is not similar to the disputed domain names. Without evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain names resolve to websites featuring links to telecommunications related companies, including Complainant’s direct competitors. The Panel finds that Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to redirect Internet users seeking Complainant’s goods and services to its resolving websites featuring links to Complainant’s competitors in the telecommunications industry. After visiting the resolving websites, Internet users may purchase goods and services from one of Complainant’s competitors rather than from Complainant. The Panel finds that Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business and is evidence of bad faith pursuant to 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)).
Respondent’s disputed domain names resolve to websites that feature links to Complainant’s competitors in the telecommunications industry. Complainant alleges, and the Panel infers, that Respondent receives click-through fees from the display of these links. The Panel finds that Respondent’s use of the confusingly similar disputed domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uverseonline.com> and <u-verseonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 7, 2010
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