AT&T Intellectual Property II, L.P. v. robert cassede
Claim Number: FA1512001653803
Complainant is AT&T Intellectual Property II, L.P. (“Complainant”), represented by Rob LeBlanc of Haynes and Boone, LLP, Texas, USA. Respondent is robert cassede (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <attfreeofferswireless.com> ('the Domain Name'), registered with Register.com, Inc.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2015; the Forum received payment on December 23, 2015.
On December 23, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the Domain Name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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@attfreeofferswireless.com. Also, on December 28, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 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 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 is the owner of the famous and distinct marks AT&T, ATT.NET and the AT&T globe logo (the Globe Logo) and owns registrations across the world for these marks including in the USA or Canada. Complainant is America's second largest provider of voice, television and high speed internet access services. It uses, inter alia, att.com and has about 3200 other ATT formative domains. It has used the AT&T mark since at least as early as 1983 and applied to register att.com in 1995.
The Domain Name was registered in 2015. Users accessing the Domain Name arrive at a landing page featuring AT&T's distinctive orange banner at the top of the page and the Globe Logo is contained within the banner. This is similar to the orange banner and globe logo featured on Complainant's web site at att.com. The web site attached to the Domain Name appears virtually identical to AT&T's own legitimate web pages replicating Complainant's iconic blue and orange color scheme and overall look and feel of Complainant's sites. Respondent's web site features an 'Access Your Account' log in box, which allows the user to insert their User ID and password and claims that by inserting his or her confidential account details the user will get 30% off their next bill. The next screen asks the user to insert pin codes. The site also features a copyright notice reading '(c) 2015 AT&T Intellectual Property'.
The Domain Name incorporates Complainant’s well-known and distinctive registered AT&T and ATT marks in their entirety. The addition of non-distinct terms such as 'free', 'offers’ ‘wireless' and the gTLD “.com” does not change the likelihood of confusion particularly where, as here, the content of Respondent's corresponding website leaves no question that the term 'ATT' in the Domain Name refers to Complainant’s marks and the non-distinctive terms refer to aspects of Complainant’s services.
Complainant’s mark contains an ampersand which cannot be reproduced in a domain name. Panels have consistently held that deletion of an ampersand from the mark is nonetheless confusingly similar to the mark.
Just as consumers correctly expect to reach the real Complainant’s services via other att-formative domains there is no question that consumers will be confused into believing that the Domain Name is also owned and operated by Complainant. The Domain Name is identical or confusingly similar to Complainant’s mark.
Respondent lacks rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name and does not own trade mark registrations for ATT. Complainant is not affiliated with Respondent and Complainant has not authorised Respondent to use its marks in any manner. Respondent has only used the Domain Name to confuse the public into believing that the Domain Name is associated with Complainant. Respondent has operated a phishing scheme using the Domain Name. This is not a legitimate or fair use of the Domain Name. The Domain is being used to obtain confidential information. The Domain Name is not made up of generic terms. The Domain Name has not been used in connection with a bona fide offering of goods or services.
Use of a domain Name for a phishing scheme establishes bad faith. Such usage is designed to disrupt Complainant’s business, to create confusion with the Complainant's marks and to divert customers for commercial gain. Respondent has actual and constructive notice of the Complainant's rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trade mark registrations for AT&T, ATT.NET and the AT&T globe logo (the Globe Logo) across the world including in the USA or Canada for, inter alia, its telecommunications services.
The Domain Name was registered in 2015. It is attached to a web site which is similar to Complainant’s web site, uses Complainant’s marks and has been used in a phishing scheme to obtain user’s confidential information.
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(f), 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.”).
Identical/Confusing Similarity
The Domain Name consists of the domain name equivalent of Complainant's AT&T registered trade mark without the ampersand, namely ATT, the generic terms 'free’, ‘offers’ and ‘wireless' and the gTLD “.com.” Complainant also has registered trademarks for att.net and arguably has common law rights in ATT due to its use of ATT in its domain name.
Prior panels have found that adding generic terms does little to remove confusing similarity from a disputed mark. See Disney Enters. Inc v McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding disneyvacationvillas.com to be confusingly similar to the Complainant’s DISNEY mark because it incorporated the Complainant's mark in its entirety and merely added two terms to it.).
The gTLD “.com” does not serve to distinguish the Domain Name from the ATT mark, the domain name equivalent of Complainant’s AT&T mark which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights. This is compounded by the fact that the generic element of the Domain Name refers to services that Complainant provides.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Respondent has not filed a Response, does not appear to have any trademarks associated with the name ATT or AT&T. There is no evidence that it is commonly known by this name and it does not have any consent from Complainant to use this name. It does not appear to have used the Domain Name for any bona fide offering of services of its own. In fact, on the evidence, Complainant has successfully shown that Respondent has sought to pass itself off as Complainant in order to gather information by means of a misleading website mimicking the genuine web site of Complainant offering similar services. See Juno Online Servs, Inc. v Nelson, FA 241972 (Nat Arb Forum Mar. 29 2004) (finding that using a domain name in a fraudulent scheme to deceive internet users into providing their personal information is not a bona fide offering of goods and services nor a legitimate non-commercial or fair use). The act of 'phishing' as such practices are known does not constitute bona fide use. Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4(b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on‑line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
Reviewing the evidence that Respondent has mimicked Complainant’s genuine site to obtain personal information and pin codes from Internet users, the Panelist finds that Respondent has attempted to cause confusion amongst Internet users between Complainant’s marks and the Domain Name for commercial gain. Past panels have held that phishing for information for financial information through a disputed domain name indicates disruption and bad faith. See 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 act fraudulently to acquire financial information of the Complainant’s customers.). As such the Panelist finds that the Complainant has made out its case under para 4(b)(iii) and (iv) of the Policy.
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <attfreeofferswireless.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne >>, Panelist
Dated: <<February 4, 2015>>
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