WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AT&T Corp. v. Ray Gilmartin

Case No. D2002-0237

The Complainant is AT&T Corp., a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at Basking Ridge, New Jersey, United States of America. The Respondent is Ray Gilmartin, a/k/a Raymond Gilmartin, an individual residing in Haverhill, Massachusetts, United States of America.

The domain name at issue is <attcomcast.com>.

The registrar is Register.Com, New York, NY, United States of America ("Register").

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 11, 2002, in electronic form. The hard copy of the Complaint was received by the WIPO Center on March 13, 2002. The WIPO Center acknowledged receipt of the Complaint on March 19, 2002.

On March 20, 2002, Requests for Registrar Verification were transmitted to Register. Register responded on March 20, 2002, confirming the registration details and its receipt of the Complaint from Complainant by certified mail.

A Formal Requirements Compliance Checklist ("Checklist") was initiated by the assigned WIPO Center Case Administrator on March 21, 2002, and a Complaint Deficiency Notification was issued to Complainant by WIPO Center on March 22, 2002. The deficiency related to the failure of Complainant to specify at least one Mutual Jurisdiction as required by Rule 3(b)(xiii). The Deficiency Notification resulted in the filing of the Amended Complaint on March 22, 2002 in electronic form. The hard copy of the Amended Complaint was received by the WIPO Center on March 25, 2002. WIPO Center acknowledged receipt of the Amended Complaint on March 27, 2002.

As amended, the WIPO Case Administrator determined that that the Complainant is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The Panelist has independently reviewed the Requirements and finds that the Complainant is in formal compliance with the requirements of Policy, Rules and the Supplemental Rules.

The required fees for a single-member Panel were paid by the Complainant on time and in the required amount.

No other deficiencies having been noted, on March 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Register and ICANN), setting a deadline of April 16, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address indicated in the Complaint and specified in Whois confirmation received from Register, by post/courier to the indicated postal address and by facsimile to the indicated facsimile number. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."

On April 18, 2002, having received no formal Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.

On April 25, 2002, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in WIPO Case No. D2002-0237 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality and Independence was received on April 26, 2002. On April 29, 2002, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was May 13, 2002.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, and the WIPO Supplemental Rules and without the benefit of any formal Response from Respondent.

Complainant is the owner of record of various U.S. trademarks which it has used in connection with its products and services, including its Internet and telecommunication goods and services, as well as its cable services. Its use of AT&T as a brand has spanned more than a century in the telecommunication business. (Amended Complaint, ¶11)

Comcast Corporation is a large supplier of cable television services. (Amended Complaint, ¶11) Its brand name is well known in the cable television business. On July 8, 2001, Comcast made a formal public offer to acquire Complainant's cable television division. (Amended Complaint, ¶11) A formal merger was announced on December 19, 2001, when the two companies announced the formation of AT&T Comcast Corporation. (Amended Complaint, ¶11; Annex 19, 20)

The Complainant has provided evidence of the registration of the following marks, which have been adopted and used in this regard (see Amended Complaint, ¶11 and Annex 8):

Mark	Reg. No.	Date	Goods and Services
AT&T	1,293,305	9/04/84	Digital network telecommunications services
AT&T	1,298,084	9/25/84	Telecommunications services and transmission of data via satellite and telecommunications links
AT&T	1,314,059	1/08/85	Retail store services-namely, phone centers specializing in telecommunication equipment
AT&T	1,353,769	8/13/85	Telephones
1 800 ATT-GIFT	2,076,093	7/1/97	Telecommunications services, namely the delivery over a telephone line of audio greetings and songs and the ordering of gifts tied to a specific occasion
1 800 CALL ATT	2,348,919	5/9/00	Telephone calling card services
CAMP ATT	2,020,639	12/3/96	Telecommunications services, namely the electronic transmission of voice, facsimile, data, video and information

Additionally, AT&T has registered and used several domain names incorporating "ATT", including <att.com>, <att.net> and <attws.com>, for web sites that offer a variety of goods and services, including Internet services, telecommunications goods and services and retail services. (Amended Complaint, ¶11; Whois Responses).

Comcast has adopted and used a family of registered Comcast marks to identify its broadband cable, commerce and content services on a worldwide basis, including "COMCAST," "COMCAST DIGITAL PCS," and "COMCAST DIRECT LINK." (Amended Complaint, Annexes 14, 15 and 16).

Comcast has been the registrant for the domain name <comcast.com> since August 29, 1995. Comcast also owns other domain names that incorporate its marks, such as <comcast.net>. (Amended Complaint, Annex 17, 18)

The Respondent registered the domain name at issue on August 17, 2001, five weeks after Comcast announced its bid for the cable division of ATT (Amended Complaint, Annex 1). At the time of the submission of the dispute to the Panelist, the domain name registered by Respondent resolved to a website entitled "Welcome to Attcomca Street on the web @ www.AttcomcaST.com!" with a statement that the site was under construction. The domain name <attcomcast.com> appears in the lower left hand corner of the site.

Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

Respondent has not formally contested the allegations of the Complaint.

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain name at issue is either identical (Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA0002000093679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Case No. FA 0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case 0003000094219) to Complainant’s marks.

Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company's name or mark. In Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9^th Cir. 1998) the Ninth Circuit stated that "A customer who is unsure about a company's domain name will often guess that the domain name is also the company's name….[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." That expectation would be frustrated were Respondent permitted to take advantage of its opportunistic cybersquatting.

Complainant has alleged and Respondent has failed to deny that it has no legitimate interests in respect of the domain name at issue. (Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011) Respondent is not commonly known by the domain name at issue, and has not acquired trademark or service mark rights in the domain name. The Panelist finds that Respondent has no rights or legitimate interest in the domain name.

The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The combination of two famous marks by an unrelated third party to create a domain name has been held to be prima facie evidence of bad faith. Compania de Radiocomunicaciones Moviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH", WIPO Case No. D2000-0915. The "merger" of two marks, to control a domain name that combines the marks of two merging companies, has been found to be in bad faith. AT&T Corp. v. Beomjoon Park, WIPO Case No. D2001-0133; AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830; SMS Demag AG v. JMS Demag, Co., Ltd. a/k/a Seung Gon Kim, WIPO Case No. D2000-1434 (Registration shortly after a merger announcement of a name which reflects the projected new entity is opportunistic cybersquatting); Pharmacia & Upjohn AB v. Sol Meyer, WIPO Case No. D2000-0785 ("[t]he fact that the Domain Name was registered on the very day that news was first published of the merger talks between the Complainant and Monsanto Company" led "the Panel irresistibly to the conclusion that it was an opportunistic act by an alert entrepreneur with a view to making a profit").

Respondent offers an implausible explanation for his conduct. (Amended Complaint, ¶12(b); Annex 26) Respondent claims that his domain name refers to "Attcomca St" which "[a]s you will quickly be able to confirm by looking at a phone keypad, the letters 'at-t-co-m-ca' correspond to the numerical series of '28-8-26-6-22.' '28-8-26-6-22' stands for the '28^th day of the 8^th month and the 26^th day of the 6^th month when I was 22 years old. These dates hold special personal significance in my life." (Amended Complaint, Annex 26). This claim is not credible when it is not backed by anything other than a convenient assertion. Comcast Corp. v. John Brandon Hawkins, WIPO Case No. D2001-0953; AT&T Corp. v. W.N.A., WIPO Case No. D2001-1160.

For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and are being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <attcomcast.com> be transferred to the Complainant, to be held in trust for the benefit of AT&T Comcast Corporation.