national arbitration forum

 

DECISION

 

AT&T Intellectual Property II, L.P. v. Fatal Technologies / Jackson Hewitt

Claim Number: FA 1355352

 

PARTIES

Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by Leanne Stendell of Hayes and Boone, LLP, Texas, USA.  Respondent is Fatal Technologies / Jackson Hewitt (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <attnetclient.net>, registered with Directi.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2010; the National Arbitration Forum received payment on October 28, 2010.

 

On November 10, 2010, Directi confirmed by e-mail to the National Arbitration Forum that the <attnetclient.net> domain name is registered with Directi and that Respondent is the current registrant of the names.  Directi has verified that Respondent is bound by the Directi 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 November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@attnetclient.net.  Also on November 12, 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 December 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <attnetclient.net> domain name is confusingly similar to Complainant’s ATT.NET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <attnetclient.net> domain name.

 

3.      Respondent registered and used the <attnetclient.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AT&T Intellectual Property II, L.P., is a subsidiary of AT&T Inc. the largest communications holding company by revenue in the world.  Complainant owns both the AT&T (Reg. No. 1,298,084 issued September 25, 1984) and ATT.NET (Reg. No. 2,700,717 filed July 28, 1999; issued March 25, 2010) marks registered with the United State Patent and Trademark Office (“USPTO”) as well as many other registrations of these marks throughout the world.  Complainant uses these marks in connection with its world-wide communications business.

 

Respondent, Fatal Technologies/Jackson Hewitt, registered the disputed domain name on December 1, 2009.  The disputed domain name resolves to a pornographic website showing lewd photos of a female. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established its rights in the AT&T and ATT.NET marks through registration with a federal trademark authority and that the rights date back to the filing dates of the trademark applications.  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also 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 Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).

 

Respondent’s <attnetclient.net> domain name is confusingly similar to its own ATT.NET marks.  The disputed domain name includes the entirety of the ATT.NET mark while adding the descriptive term “client” and removing the period from the mark.  The disputed domain name also adds the generic top-level domain (“gTLD”) “.net.”  The Panel finds that Respondent has failed to differentiate the disputed domain name from Complainant’s ATT.NET mark. 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 SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added); see also 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).

 

The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(i).  

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent.  The burden shifts to the Respondent to prove that it has rights or legitimate interests in the disputed domain name after Complainant meets its prima facie burden.  When a Respondent fails to provide a response to the initial complaint, the Panel may assume that Respondent does not have rights in the mark.  See 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)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel elects to examine all of the evidence on record to determine whether Respondent has rights or legitimate interests in the mark.

 

Complainant alleges Respondent is not commonly known by the <attnetclient.net> domain name.  Respondent has not brought forth any evidence to show that it is known by the disputed domain name.  The WHOIS information does not indicate that Respondent is known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <attnetclient.net> domain name. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant also asserts that Respondent is not using the domain name to engage in any bona fide offering of goods and services or making a legitimate non-commercial or fair use of the <attnetclient.net> domain name.  Respondent uses the domain name to resolve to an adult-oriented website.  It is unclear how or if Respondent receives any revenue for the maintenance or usage of the site.  The Panel finds that the Respondent’s use of the disputed domain name to show pornographic content is not a bona fide offering of goods or services nor is the Respondent making a legitimate non-commercial or fair use of the <attnetclient.net> domain name. See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).       

 

Registration and Use in Bad Faith

 

The Panel infers that Respondent commercially benefits from the adult-oriented website that the disputed domain name resolves to.  Internet users interested in Complainant may become confused as to Complainant’s affiliation with the disputed domain name.  The Panel concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  The Panel finds that the Respondent’s use of the <attnetclient.net> domain name to divert users to a site featuring adult-oriented content also constitutes registration and use in bad faith under Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <attnetclient.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  December 13, 2010

 

 

 

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