AT&T Corp. v. John Schwarzschild d/b/a Wireless Web and TV, Inc.
Claim Number: FA0211000128804
Complainant is AT&T Corp., New York, NY (“Complainant”) represented by Alan Charles Raul, of Sidley Austin Brown & Wood LLP. Respondent is John Schwarzschild d/b/a Wireless Web and TV, Inc., Austin, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <attws.us>, registered with Namescout Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 31, 2002; the Forum received a hard copy of the Complaint on November 1, 2002.
On November 1, 2002, Namescout Corp. confirmed by e-mail to the Forum that the domain name <attws.us> is registered with Namescout Corp. and that Respondent is the current registrant of the name. Namescout Corp. has verified that Respondent is bound by the Namescout Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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:
Respondent’s <attws.us> domain name is confusingly similar to Complainant’s registered AT&T family of marks and its common law ATTWS mark.
Respondent does not have any rights or legitimate interests in the <attws.us> domain name.
Respondent registered and used the <attws.us> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant, AT&T Corp., holds a host of incontestable registrations for its AT&T mark, including, inter alia, U.S. Reg. Nos. 1.298,084 and 1,699,744. In addition, Complainant has registered numerous marks that use ATT (without the ampersand) in combination with other words and phrases (e.g. ATT.COM, U.S. Reg. No. 2,529,351). Variations of these marks have been registered worldwide.
Complainant licenses many of these marks to AT&T Wireless Services, Inc. Under its license agreements, Complainant is responsible for filing actions such as usTLD Dispute Resolution Policy complaints to protect its AT&T marks and brand. AT&T Wireless Services, Inc., pursuant to this license plan, operates its main e-commerce website at <attws.com>, and also holds registrations for <attws.org>, <attws.info>, and <attws.biz>.
Complainant has invested hundreds of millions of dollars promoting its AT&T and associated family of marks worldwide. The 2001 World’s Most Valuable Brands Survey ranked AT&T among the top ten most valuable global brands and the third most valuable acronym. A Google search identifies hundreds of web pages referring to “attws” in the context of Complainant and its licensee, and a search for “attws” in the International Abbreviation/Acroym Database returns AT&T Wireless Services, Inc. as its first and only hit. Through these showings and its extensive use of the mark in commerce, Complainant asserts common law rights in the ATTWS mark.
Respondent, John Schwarzschild d/b/a Wireless Web and TV, Inc., registered the <attws.us> domain name on April 24, 2002, and is not licensed or authorized to use Complainant’s registered AT&T family of marks or its ATTWS common law mark for any purpose. Respondent operates a company selling NEXTEL wireless services, in competition with Complainant. In response to a cease and desist letter by Complainant, Respondent offered to sell its registration for the disputed domain name for $5,000, and currently uses the domain name to redirect Internet users to a search engine website at <janglefish.biz>, which has developed a referral plan to compensate individuals for referrals.
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 the 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.
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; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has established rights in its AT&T family of marks through registration on the Principal Register of the United States Patent and Trademark Office and with other governmental agencies worldwide. Complainant has established common law rights in the ATTWS mark via widespread and continuous promotion of the mark worldwide, and the secondary meaning associated with that mark that results.
Respondent’s <attws.us> domain name is confusingly similar to Complainant’s registered AT&T mark. The disputed domain name simply removes the ampersand from the AT&T mark and adds the letters “ws.” As an ampersand is not reproduceble in a Uniform Resource Locator (URL), its deletion does nothing to differentiate a domain name from a mark in which Complainant has rights. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also 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”).
The addition of the letters “ws” also do nothing to alleviate any confusion between Complainant’s mark and the disputed domain name. The dominant feature of the domain name remains Complaint’s mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).
Furthermore, the disputed domain name is identical to Complainant’s common law ATTWS mark. While the domain name includes the top-level domain “.us,” this required element of every domain name is inconsequential when analyzing the identicality of a domain name with a mark in which Complainant has rights. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
Accordingly, Complainant has satisfied Policy ¶ 4(a)(i).
Policy paragraphs 4(c)(i)-(iv) identify four circumstances encompassing situations where Respondent would have rights or legitimate interests in the disputed domain name. As Respondent has failed to respond to the Complaint, a showing by Complainant that none of these four circumstances apply is sufficient for Complainant to meet its burden under the Policy. At that point, the burden shifts to Respondent to rebut Complainant’s allegations. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent’s failure to respond to the Complaint not only results in its failure to meet its burden, but is viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant has successfully shown that Policy paragraphs 4(c)(i)-(iv) are inapplicable to Respondent. Complainant alleges, and Respondent does not rebut, the fact that Respondent is not the “owner or beneficiary of a trade or service mark that is identical to the domain name.” Policy ¶ 4(c)(i) is therefore inapplicable to Respondent. See CDW Computer Centers, Inc. v. The Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name).
Policy ¶ 4(c)(ii) and (iv) state that demonstrable rights and interests in a domain name exist if Respondent uses the domain name in “connection with a bona fide offering of goods or services” or with a “legitimate noncommercial or fair use.” Complainant avers that Respondent is redirecting the infringing domain name to <janglefish.com>, presumably for commercial gain via commissions – an allegation that has gone uncontested by Respondent. As such, the Panel agrees with Complainant, and these facts lead the Panel to conclude that Respondent’s use does not fall under Policy ¶ 4(c)(ii) or (iv). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Respondent goes by the name John Schwarzschild and/or Wireless Web and TV, Inc., and does not appear to be “commonly known by” the name ATTWS or <attws.us>. In light of the strength of Complaint’s marks, it is doubtful that Respondent could ever claim to be “commonly known by” the disputed domain name. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”). Regardless, as Respondent has submitted no evidence contradicting Complainant’s substantiated assertions, the Panel concludes that Respondent does not fall under the ambit of Policy ¶ 4(c)(iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Additionally, the Panel notes that Respondent offered to sell the disputed domain name to Complainant for $5,000 less than two months after its registration. This immediate desire to sell the domain name, considering that it is identical to Complainant’s <attws.com/org/info/biz> family of registrations, evidences a lack of rights or legitimate interests in the domain name. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling it); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant).
Accordingly, Complainant has satisfied Policy ¶ 4(a)(ii).
When the circumstances surrounding the registration of a domain name indicate that Respondent “registered…the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant,” it is evidence of bad faith registration pursuant to Policy ¶ 4(b)(iv). Here, Respondent offered to sell its domain name registration two months after registration. In light of the fact that the disputed domain name is confusingly similar to Complainant’s AT&T mark, is identical to Complainant’s ATTWS mark, and is virtually identical to Complainant’s <attws.com/org/info/biz> domain names, the Panel infers that Respondent registered the <attws.us> domain name primarily with the intent of selling its registration to Complainant. This is bad faith registration under the Policy. See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between Respondent’s registration and the unsolicited offer of sale to Complainant).
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <attws.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 18, 2002
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