AT&T Intellectual Property II, L.P. v. First Equity Net Inc
Claim Number: FA1112001419196
Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by Lisa A. Garono of Haynes and Boone, LLP, Texas, USA. Respondent is First Equity Net Inc (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <attmifi.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2011; the National Arbitration Forum received payment on December 8, 2011.
On December 9, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <attmifi.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@attmifi.com. Also on December 12, 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 January 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <attmifi.com> domain name is confusingly similar to Complainant’s AT&T mark.
2. Respondent does not have any rights or legitimate interests in the <attmifi.com> domain name.
3. Respondent registered and used the <attmifi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AT&T Intellectual Property II, L.P., uses its AT&T mark to provide communications services worldwide. Complainant holds several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the AT&T mark (e.g., Reg. No. 1,293,305 registered September 4, 1984).
Respondent, First Equity Net Inc, registered the <attmifi.com> domain name on June 19, 2009. Respondent’s domain name resolves to Respondent’s own website located at <wirelessnwifi.com>, which sells competing goods, as well as Complainant’s products without authorization to do so.
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.
The Panel finds that Complainant has presented adequate evidence to establish its rights in the AT&T mark that it holds with the USPTO (e.g., Reg. No. 1,293,305 registered September 4, 1984). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Further, Respondent registered the <attmifi.com> domain name which contains Complainant’s mark, absent the ampersand symbol, while adding the descriptive term “mifi” and the generic top-level domain (“gTLD”) “.com.” Complainant also notes that the term “mifi” is a registered trademark of a third-party, Novatel Wireless, Inc. The Panel finds that such changes to Complainant’s mark are not sufficient to render the domain name distinctive from the mark for the purposes of Policy ¶ 4(a)(i). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors); see also 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has presented arguments and evidence asserting that Respondent does not possess rights or legitimate interests in the <attmifi.com> domain name. Under Policy ¶ 4(a)(ii), a complainant is required to provide the panel with a prima facie case supporting its arguments. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds that Complainant has established a prima facie case to support its assertions. Therefore, the burden shifts to Respondent to come forth with evidence showing that it has rights or legitimate interests in the <attmifi.com> domain name. Since Respondent has failed to present its case, the Panel may presume that the allegations within the Complaint are true unless contradicted by the evidence on record. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Therefore, the Panel will examine the evidence on record in making its determinations under Policy ¶ 4(c).
Complainant first alleges that Respondent is not commonly known by the disputed domain name and has not been authorized to register a domain name containing Complainant’s mark. The WHOIS information identifies “First Equity Net Inc” as the domain name registrant, and Respondent has not come forward with any evidence to support its position. Therefore, the Panel finds that Respondent is not commonly known by the <attmifi.com> domain name under 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 Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Further, Complainant argues that Respondent’s use of the disputed domain name does not confer rights to Respondent in the domain names. Complainant asserts that the <attmifi.com> domain name resolves to a website owned by Respondent located at <wirelessnwifi.com>. Complainant notes that this website originally resolved to a page advertising a product called the “Global Surfer III,” which Respondent proclaimed to be “The Mifi equivalent for AT&T customers.” Complainant claims that it sent a cease and desist letter to Respondent about this use, and Respondent responded by redirecting the domain name to a different page on its website advertising and selling Complainant’s products. The Panel finds that neither use constitutes 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <attmifi.com> domain name to redirect Internet users to a website of its own that is advertising and selling Complainant’s products without authorization as well as other competing products. Complainant contends that such use results in a disruption of its business activities, and the Panel finds this to be true as Internet users are routed to Respondent’s website instead of Complainant’s website and products. Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Complainant alleges that Respondent’s motivation for registering and using the domain name at issue was to commercially profit from its sale of goods through the resolving website. Complainant asserts that since Respondent is using the domain name to “redirect internet traffic to Respondent’s website, consumers seeking an AT&T authorized MIFI device (with an AT&T SIM care) are likely to become confused as to whether Respondent is connected, affiliated or associated with, or sponsored or endorsed by Complainant.” Because of this confusion as to the role of Complainant through the disputed domain name, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Lastly, Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the AT&T mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel here finds that Respondent had actual knowledge of Complainant and its rights in the AT&T mark as evidenced through Respondent’s offering of competing products in the same market as Complainant, as well as offering of Complainant’s branded products. Therefore, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <attmifi.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 16, 2012
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