AT&T Intellectual Property II, L.P. v. Peter Younan
Claim Number: FA1302001487604
Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is Peter Younan (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <attarabia.net>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2013; the National Arbitration Forum received payment on February 27, 2013.
On February 28, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <attarabia.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 February 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2013 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@attarabia.net. Also on February 28, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant’s parent company, AT&T Inc., is the largest communications holding company by revenue in the United States and worldwide. Through its world-class networks, it provides a full range of voice, broadcast, data, networking and e-business services, and it serves more than 50 million access lines nationwide. Complainant and its affiliates advertise their offerings on websites at att.com, att.net, att.biz, att.info, and approximately 3,200 other ATT-formative domains
Complainant and its parent, subsidiaries, and affiliates own numerous trademark registrations in Egypt and throughout the world that incorporate the AT&T and ATT marks for use in connection with telecommunications and related offerings.
Respondent’s <attarabia.net> domain name is confusingly similar to Complainant’s ATT marks because it incorporates the ATT trademark in its entirety and merely adds the geographic identifier “arabia” and the generic top-level domain (“gTLD”) “.net.”
Respondent does not have rights or legitimate interests in the <attarabia.net> domain name. Complainant has not consented to, licensed, or otherwise authorized Respondent’s use of the ATT marks. Respondent uses the disputed domain name to pass itself off as Complainant while offering and selling competing telecommunications services. Respondent’s use of the disputed domain name in such a manner 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).
Given the ATT Marks it would be impossible for Respondent, which registered the at-issue domain name on January 28, 2013, to claim to be “commonly known by” any derivative of the ATT Marks.
Respondent’s history of cybersquatting further demonstrates that Respondent lacks both rights and legitimate interests in the domain name.
Respondent’s use of the disputed domain name to create confusion with the ATT marks and to divert customers from Complainant’s legitimate websites, for Respondent’s own commercial gain, is evidence of bad faith under Policy ¶ 4(b)(iv).
Respondent’s bad faith is further emphasized from its actual and constructive knowledge of Complainant and its rights in the ATT marks.
Respondent’s registration of Complainant’s famous trademark as part of its domain name constitutes “opportunistic bad faith.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous trademark registrations in Egypt and throughout the world that incorporate the AT&T and ATT marks for use in connection with telecommunications and related offerings.
Respondent registered the at-issue domain name subsequent to Complainant acquiring trademark rights in its AT&T and ATT trademarks.
Respondent is not authorized to use Complainant’s trademarks.
The website addressed by the at-issue domain name displays material which is proprietary to Complainant, and associated with, Complainant. Respondent is not authorized to use this material. The website also markets products that directly compete with Complainant’s offerings.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s multiple trademark registrations firmly establish its rights in such marks under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <attarabia.net> domain name is confusingly similar to Complainant’s ATT marks. The domain name incorporates the ATT trademark in its entirety and merely adds the geographic identifier “arabia” and appends the top level domain name “.net.” These inconsistencies are insufficient to differentiate the at-issue domain name from the Complainant mark(s) under Policy ¶ 4(a)(i). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); 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).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the domain name’s registrant as “Peter Younan.” Additionally, there is no evidence that tends to prove that notwithstanding the aforementioned WHOIS record Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <attarabia.net> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) circumstance are also lacking. Respondent uses the at-issue domain name to pass itself off as Complainant while offering and selling competing telecommunications services. The website referenced by the at-issue domain name features the AT&T mark and globe logo, while also displaying a color scheme reminiscent of Complainant’s official website design. Respondent’s use of the disputed domain name in such a manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent’s use of the at-issue domain name to create confusion with the Complainant’s marks and to divert customers from Complainant’s legitimate websites for Respondent’s own commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). As mentioned elsewhere, Respondent uses the AT&T mark on the unauthorized <attarabia.net> website in conjunction Complainant’s color scheme and logo. Furthermore, Respondent’s commercial website offers telecommunications services and products competing with those of Complainant. By Respondent’s design, confused consumers seeking Complainant may instead gravitate to Respondent’s confusingly similar website and believe Complainant is its source or sponsor. Using the <attarabia.net> domain name in this manner demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s bad faith is further evidenced given that Respondent had actual knowledge of Complainant and its rights in the ATT marks at the time it registered the at-issue domain name. Complainant and its trademarks are world renowned making it highly unlikely that Respondent was unaware of Complainant and its trademarks prior to registering the at-issue domain name. Additionally, Respondent’s incorporation of the ATT mark within the at-issue domain name domain name and its use of the AT&T mark and globe logo as well as other trade dress of Complainant on the at-issue website also clearly show that Respondent had prior knowledge of Complainant and its rights in the ATT marks. Respondent’s actual knowledge of Complainant’s rights in the ATT family of marks when it registered the confusingly similar at-issue domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <attarabia.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 3, 2013
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