AT&T Intellectual Property II, L.P. v. Janelle Churilla / SuncomLLC
Claim Number: FA1103001381381
Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is Janelle Churilla / SuncomLLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <attconfirm.com> and <crmatt.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2011; the National Arbitration Forum received payment on March 31, 2011.
On April 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <attconfirm.com> and <crmatt.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@attconfirm.com and postmaster@crmatt.com. Also on April 6, 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 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <attconfirm.com> and <crmatt.com> domain names are confusingly similar to Complainant’s ATT mark.
2. Respondent does not have any rights or legitimate interests in the <attconfirm.com> and <crmatt.com> domain names.
3. Respondent registered and used the <attconfirm.com> and <crmatt.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AT&T Intellectual Property II, L.P., operating under its parent company, AT&T Inc., is an international communications company providing voice, broadcast, data, networking, and e-business services. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AT&T (e.g., Reg. No. 1,298,084 issued September 25, 1984) and ATT.NET marks (e.g., Reg. No. 2,700,717 issued March 25, 2003). Complainant also owns a trademark registration with the European Union Office for Harmonization in the Internal Market (“OHIM”) for its ATT mark (Reg. No. 2,223,915 issued September 17, 2004).
Respondent, Janelle Churilla / SuncomLLC, registered the <attconfirm.com> and <crmatt.com> domain names on July 16, 2007 and August 7, 2007, respectively. Respondent’s <crmatt.com> domain name resolves to a website which purports to offer “AT&T wireless service” rate quotes as if it were Complainant. Respondent’s <attconfirm.com> domain name has resolved to a website that states “This site is not currently available” since 2009. Prior to 2009 the domain name resolved to a website that featured pay-per-click advertising.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the WHOIS records make it clear that the domain names at issue are owned by a single entity. Complainant contends that while the WHOIS records list different registrant names, the mailing addresses for both Janelle Churilla and SuncomLLC are identical. Further, Complainant contends that Janelle Churilla (who is the listed registrant for <attconfirm.com>) is also the registrant of <suncomllc.com> (second respondent’s website), and that this name also appears in the registrant email address for the <crmatt.com> domain name. Also, Complainant argues that Janelle Churilla is listed as a manager of Suncom LLC along with Steven Saiz, who is the administrative contact for the <crmatt.com> domain name. Lastly, Complainant contends that Churilla is the listed Vice-President for Suncom, Inc. with Saiz as the President. Complainant also notes that Steven Saiz sent an e-mail to the FORUM in which he acknowledged ownership of both of the domain names.The Panel finds that Complainant has presented sufficient evidence indicating that both of the contested domain names are effectively controlled by the same entity. Therefore, the instant proceedings will continue with both Respondent’s being collectively referred to as Respondent throughout the decision below.
The Panel finds that Complainant has presented sufficient evidence to establish rights in its AT&T (e.g., USPTO Reg. No. 1,298,084 issued September 25, 1984), ATT.NET (e.g., USPTO Reg. No. 2,700,717 issued March 25, 2003), and ATT marks (OHIM Reg. No. 2,223,915 issued September 17, 2004) under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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 the <attconfirm.com> and <crmatt.com> domain names are confusingly similar to Complainant’s ATT mark, because the domain names contain its mark entirely. Complainant notes that each domain name also adds the generic terms “confirm” or “crm,” which it claims is an acronym for “customer relationship management.” Complainant argues that the addition of generic terms and the generic top-level domain (“gTLD”) “.com” is not sufficient to render the domain names distinct from Complainant’s mark. The Panel agrees and finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See 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 Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <attconfirm.com> and <crmatt.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. 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 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 will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant further contends that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain names identifies Respondent, “Janelle Churilla / SuncomLLC,” as the registrant of the domain names and there is no further evidence on record showing that Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues that the <crmatt.com> domain name has been used in connection with an unauthorized “AT&T wireless service” rate quote site. Complainant notes that the domain name has at certain times redirected Internet users to a website located at <crmweboffer.com> that invites Internet user to “Start My Quote” by providing personal information about themselves. There is also a “training video” on the website that makes it clear that the “quote” reference on the website is for AT&T wireless services. Complainant contends that upon having one of its employees visit the site and attempt to get a “quote” that its computers were infected with a virus and it never heard back from anyone. Complainant contends that the layout of the website makes it appear as though it is sponsored by Complainant, and that such passing off is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name to pass itself off as Complainant is 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
Complainant also argues that Respondent previously used the <attconfirm.com> domain name to present Internet users a parked webpage that displayed various third-party links to Complainant and its competitors in the communications industry. Complainant contends that Respondent only removed such content pursuant to a trademark claim that Complainant filed with the registrar. The Panel finds that Respondent’s previous use of the domain name is 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
Complainant contends that Respondent is not currently making an active use of the <attconfirm.com> domain name. Complainant submits screen-shot evidence that shows the only content of the resolving website states, “Sorry! This site is not currently available.” Complainant argues that the website has displayed such content since 2009, and that such non-use of the domain name is evidence that Respondent lacks rights and legitimate interests in the domain name. The Panel agrees and finds that Respondent’s current non-use of the disputed domain name is 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has argued and shown that Respondent is using the <crmatt.com> domain name to purportedly offer a rate quote for Complainant’s wireless service. Complainant argues that Respondent has been using the domain name to phish for its potential customers personal information. Further, Complainant contends that Respondent’s attempt to pass itself off as Complainant is evidence of bad faith because such use intercepts Complainant’s customers and disrupts Complainant’s business. The Panel finds that Respondent’s use of the domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant has also shown that Respondent previously used the <attconfirm.com> domain name to display various third-party links to Complainant’s official website as well as to the websites of Complainant’s competitors. The Panel finds that such use of the confusingly similar domain name is evidence that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See 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)(iii) 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); 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 determines that Respondent’s use of the <crmatt.com> domain name to attract Internet users to its website, which at times has resolved to a third-party site purportedly offering a rate quote for Complainant’s wireless services, is further evidence that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). In making its finding the Panel notes that Respondent has not contested these proceedings, thereby allowing a finding that Respondent is presumably profiting from its use of the domain name. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant also argues that Respondent’s previous use of the <attconfirm.com> domain name to operate a link farm that provided links to Complainant and its competitors, presumably for financial gain, is evidence that Respondent registered and used the <attconfirm.com> domain name in bad faith. The Panel agrees and finds that Respondent’s previous use of the <attconfirm.com> domain name is evidence of bad faith registration and use under 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 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).
Complainant further argues that Respondent has been periodically using the
<crmatt.com> domain name to operate a phishing scam in which Respondent asks Internet users for personal information under the guise of providing a quote for Complainant’s wireless services. The Panel finds that such use of the domain name is further evidence that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007)(there is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Lastly, Complainant argues that Respondent does not currently have the <attconfirm.com> domain name connected with an active website. Complainant contends that after it filed a complaint with the registrar of the domain name in 2009, Respondent removed the links from its website and caused the domain name to resolve to an inactive website. The Panel determines that such failure to make an active use of the domain name is further evidence that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <attconfirm.com> and <crmatt.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 30, 2011
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