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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. Sure Source
Case No. D2002-1179
1. The Parties
The Complainant is AT&T Corp. of Bedminster, New Jersey, United States of America, represented by Sidley Austin Brown & Wood, United States of America.
The Respondent is Sure Source of Trumbull, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name <atandt-store.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 31, 2002. On December 31, 2002, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On December 31, 2002, Register.com transmitted by email to the Center its verification response confirming that the Respondent "Sure Source" is listed as the registrant and providing contact details for the administrative and technical contact, but stating that it could not confirm receipt of a copy of the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2003. The Response was filed with the Center on January 22, 2003.
On January 24, 2003, the Complainant resubmitted the Complaint to the Registrar. On the same date, the Complainant also filed a Request for Leave to File a Reply to the Response.
The Center appointed the undersigned as the sole Panelist in this matter on February 4, 2003. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant has been selling telecommunications goods and services under the name "AT&T" and phrases that combine "AT&T" or "ATT" with other words for many years. It has rights in several registered trademarks and service marks. In the United States, it holds registrations with the Patent and Trademark Office for the mark "AT&T," see, e.g., No. 1,293,305 registered September 4, 1984, and No. 1,298,084 registered September 25, 1984, at Complaint, Annex 9.
Complainant has not authorized Sure Source to use <atandt-store.com>.
Respondent describes itself as "the nation’s leading provider of outsourcing solutions for consumer sales," helping "manufacturers improve their performance with the retail distribution of their finished goods, parts and accessories" (Response at 1). It states that "SureSource will build and maintain a full line web store featuring a Client’s products" (id.).
Respondent maintains an active website at "www.suresource.com" that indicates the company acts as a distributor of name-brand suppliers by providing an integrated website for sales and distribution. See also Adaptec, Inc. v. Sure Source, WIPO Case No. D2000-1488 (January 29, 2001). The website states that the company offers "Full Line Web Stores" for its clients:
"With a SureSource Full-Line Web Store, you can provide your consumers with convenient access to your full product line without the cost or complication of maintaining a consumer-direct operation. At no cost to you, SureSource will build and maintain a state-of-the-art Web Store features your full line exclusively. SureSource will buy and stock your products, ship orders within one business day, and handle all consumer service. In addition to helping you shed costs and increase efficiency, SureSource can help you grow product sales with a variety of complementary marketing solutions."
The company also offers "Parts & Accessories Web Stores:"
"With a SureSource Parts & Accessories Web Store, you can provide your consumers with convenient access to your full parts and accessories line without gumming up your distribution center with a consumer-direct operation. At no cost to you, SureSource will build and maintain a state-of-the-art Web Store features your parts and accessories exclusively. SureSource will buy and stock your full line, ship orders within one business day, and handle all consumer service. In addition to helping you avoid retailer deductions and the other hidden costs resulting from warehouse inefficiency, SureSource can help you grow parts and accessories sales with a variety of complementary marketing solutions."
Respondent registered <atandt-store.com> on May 18, 2000. Respondent has not used the disputed domain name to identify an active website.
On November 13, 2002, the Complainant sent a cease and desist letter to Respondent via email. As of December 27, 2002, the letter had not been answered.
5. Parties’ Contentions
AT&T contends that the disputed domain name is confusingly similar to AT&T’s "official, legal and world famous names and registered marks" because it consists of Complainant’s own name with the addition of "store" and replacement of the ampersand by the word "and" (Complaint at 8). The company states that it has invested hundreds of millions of dollars to promote "AT&T" and "ATT" among consumers, and that as a result these words are well known worldwide. It asserts the addition of "store" does not change AT&T’s rights in the name. It contends it does create confusion because Complainant maintains a web page entitled "AT&T Store." Even if Respondent does not use the domain name, AT&T argues it is deprived of it and must be concerned about the possibility of a confusing site in the future.
AT&T asserts that Sure Source has no rights or legitimate interests in the contested domain name. Sure Source is not Complainant’s licensee in any respect, nor authorized to use its marks. Sure Source has not been commonly known by the contested domain name, nor run any business known by it. AT&T argues that since Sure Source does not have an agreement to sell its products, nor did it seek one, Respondent cannot conduct a bona fide business using the disputed domain name. AT&T contends that as a result Sure Source has no legitimate basis to use the protected mark.
AT&T further argues that Sure Source has satisfied the criteria of "bad faith" by passive holding of the disputed domain name. Because it has no rights to <atandt-store.com>, and neither makes use of the name nor plans to, there can be no reason other than one reflecting bad faith to explain why Sure Source holds the domain name. AT&T contends that Sure Source has established a pattern of cyber squatting that provides further confirmation of its bad faith.
AT&T concludes that it has satisfied the legal burden of proving why the domain name should be transferred. Since AT&T never licensed or otherwise authorized Sure Source to use <atandt-store.com> in any way, it contends the only reasonable inference is that the Respondent registered <atandt-store.com> unlawfully in order to extract money from AT&T, divert Internet traffic to its own website, dilute AT&T’s famous marks, or disrupt AT&T’s business by confusing its customers.
Respondent does not respond specifically to the statements and allegations contained in the Complaint. It contends that "SureSource has no intention at this time to link the disputed domain name to their website." It attaches a copy of Briggs & Stratton v. Suresource, WIPO Case No. D2000-1582 (March 29, 2001), without explanation or argumentation.
6. Discussion and Findings
The Panel finds that it was properly constituted.
The Panel has reviewed Complainant’s Request for Leave to File a Reply to the Response. Given the importance the Policy places on prompt resolution of disputes, documents other than the Complaint and Response should only be admitted in limited circumstances, such as when necessary to bring new facts or authorities to the attention of a panel. See e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001). The Panel finds that no such circumstances exist here. Accordingly, the request is denied.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Response fails to satisfy the requirements of paragraph 5(b)(i) of the Rules. It does not "respond specifically to the statements and allegations contained in the Complaint." Instead, it merely describes the nature of the Respondent’s business and attaches a copy of the Briggs decision.
The Response further fails to comply with the requirements of paragraph 5(b)(viii), which requires that it conclude with the following sentence:
"Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
In accordance with paragraph 14(b) of the Rules, the Panel is authorized to draw such inferences as it considers appropriate from Respondent’s failure to comply with the requirements of paragraphs 5(b)(i) and 5(b)(viii).
A. Identical or Confusingly Similar
It is not disputed that Complainant is the holder of a trademark and service mark registration for the term "AT&T" in the United States and is using that mark in commerce. It is clear that these rights arose before the Respondent registered <atandt-store.com> on May 18, 2000.
Respondent’s registration of the domain name <atandt-store.com> (1) incorporates Complainant’s "AT&T" mark; (2) spells out the ampersand; (3) adds a hyphen and the word "store"; and (4) adds the generic top-level domain (gTLD) ".com." As noted in Briggs and elsewhere, the addition of the gTLD is without legal or factual significance.
Adding the word "store" after "atandt" also does not create a new or different mark in which Respondent could have legitimate rights. On the contrary, because "store" commonly denotes a place where goods and services may be purchased, its use connotes a location on the Internet where one would expect to find the Complainant’s products offered for sale. Accord, Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000). In fact, the Complainant operates "The Store @ ATT&T" on the Internet to sell its own consumer electronics and communications products (see "www.att.com/store").
Respondent’s registration is distinguished only by addition of a hyphen between "atandt" and "store." The hyphen does little to avoid confusion between a website operated or authorized by AT&T, and one that is not. See Briggs,supra.
Spelling out the ampersand does not change this analysis. On the Internet it is not possible to use the symbol "&" in a domain name. Customers of AT&T would therefore look for its products on the Web under "att" or "atandt." Accord, PRIMEDIA Magazine Finance, Inc. v. Richard Manzo, WIPO Case No. 2001-1258 (December 13, 2001) (finding the term "and" and an ampersand essentially equivalent).
The Panel concludes that the disputed domain name <atandt-store.com> is therefore confusingly similar to the Complainant’s mark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in the disputed domain name. They are:
(i) before any notice of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has failed to present any evidence suggesting that it was ever using, or preparing to use, <atandt-store.com> in connection with a bona fide offering of goods or services. It has also failed to present any evidence that it has been commonly known by "atandt," or that it is making legitimate noncommercial, or fair use, of the domain name. While these three elements are not intended to be exhaustive - the Policy states that they are "in particular but without limitation" - the Panel is unable to infer any evidence that would support an argument that Sure Source has rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," shall constitute evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] 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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of [the Complainant]; or
(iv) by using the domain name, [the 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 the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on [the] web site or location.
The Panel finds several grounds upon which to conclude that the element of bad faith is present.
First, the facts support a finding that Respondent has registered the domain name to prevent the Complainant from reflecting its trademark or service mark in a domain name that corresponds to such mark, and that the Respondent has engaged in a pattern of such conduct. The Respondent is not using the domain name. It has expressed no intention to use it. It has no authorization from the Complainant to use it. It has also failed to offer a reasonable explanation – in fact, any explanation – why it is holding the registration. The Panel therefore finds sufficient evidence to conclude that Respondent registered the domain name to prevent Complainant from using it.
The Respondent has engaged in a pattern of registering domain names that correspond to trademarks or service marks that are owned by others. In addition to registering <atandt-store.com>, Respondent has registered <adaptec-store.com> and <briggsandstratton-store.com>. See Adaptec and Briggs, supra. Although the panels in Adaptec and Briggs reached different conclusions about whether the disputed domain name should be transferred, they did find that "Adaptec" and "Briggs & Stratton," respectively, were the subject of trademark and service mark registrations by entities other than Sure Source, and that Sure Source had no rights or legitimate interests in the disputed domain names. See id. The criteria set forth in paragraph 4(b)(ii) of the Policy are therefore satisfied.
Second, passive registration, coupled with no legitimate interests in the disputed domain name, has been found to constitute bad faith, see AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723 (April 26, 2001). See also Bloomberg L.P. v. Mybloomberg.com a/k/a Kim Juhyoung, Claim No. 97777 (NAF July 27, 2001), (passive holding supports a finding of bad faith, particularly when Respondent had constructive knowledge of Complainant’s marks) and Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), (inaction, or passive holding, by Respondent can constitute bad faith). Passive holding in the instant case, in combination with Respondent’s lack of rights or legitimate interests in <atandt-store.com> and its constructive knowledge of AT&T’s marks at the time it registered the disputed domain name, is sufficient to conclude that bad faith is present.
Finally, Paragraph 4(b) of the Policy makes clear that the three criteria mentioned are illustrative of bad faith, rather than exhaustive. In other words, other circumstances can be evidence of bad faith. See Adaptec and Telstra, supra. In this case, as in Sure Source’s registration of <adaptec-store.com>, the Respondent has registered a domain name that reflects Complainant’s distinctive mark and combines it with the word "store" to make it difficult, if not impossible, for a consumer to distinguish it from the name used by the Complainant. The potential for legitimate use by the Respondent appears remote, and Sure Source has offered no explanation for its registration. It is therefore reasonable for the Panel to infer that Respondent registered <atandt-store.com> in bad faith, possibly to resell it to AT&T at a profit or to hold open the option of using it to divert Internet traffic to its own website, which advertises the sales of products, parts and accessories of name-brand suppliers.
Respondent has failed to put forward any evidence that would suggest it registered the disputed domain name in good faith. Respondent states only that it "has no intention at this time to link the disputed domain name to their website." The only argument concerning evaluation of bad faith that the Respondent puts forward is to cite the Briggs case, although without explaining its relevance to the facts of this case.
In Briggs, the panel found that the element of bad faith had not been established. Briggs, however, is distinguishable from the present case. The panel in Briggs based its decision on a conclusion that the Complaint had failed to explain why registration of a domain name that is similar to a famous mark is proof of bad faith registration. The Briggs panel also faulted the Complaint for failing to clearly articulate support for the proposition that the passive holding of a domain name could constitute bad faith, or how the facts in Briggs could support such a finding. In the present case, Complainant has described in detail why registration of a domain name that is confusingly similar to its mark, and in which Respondent has no rights or legitimate interests, can support a finding of bad faith. As the Briggs panel made clear, the context of each case can be quite different.
A finding of bad faith in this case is therefore supported by Respondent’s pattern of registering domain names that correspond to marks that are owned by others and by the passive holding of a name in which it has no rights. Moreover, Respondent has offered no explanation for its registration, and the potential for legitimate use appears remote.
Accordingly, the Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <atandt-store.com> be transferred to the Complainant.
Dated: February 18, 2003