AT&T loses claim for 'attelephone.com'
In AT&T Corp v William Gormally, World Intellectual Property Organization panellist James Grossman has refused to transfer the domain name 'attelephone.com', ruling that it is not confusingly similar to the AT&T trademark. Grossman took the view that internet users would read the name as 'at telephone' rather than 'att elephone'.
In advocating its complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Gormally, AT&T pointed to the substantial worldwide reputation it has built up over 100 years of selling telecommunications goods and services. It emphasized that it represents its registered trademark on the Web as 'att' because ampersands are not permitted as part of domain names. AT&T also pointed to a number of decisions where it had successfully challenged domain names containing 'att'.
In response, Gormally pointed out that:
- 'att' is used in more than 13,700 active domain names;
- 'at' is often used for the '@' symbol; and
- 'telephone' is used as a generic word in more than 3,400 domain names.
Grossman ruled in Gormally's favour, finding that AT&T had not established confusing similarity between its registered trademark and the disputed domain name, as required by Article 4 of the UDRP. Grossman took the view that internet users would read 'attelephone.com' as 'at telephone', not 'att elephone'. Also, having reviewed the underlying website, Grossman found that it is unlikely that visitors would think the site belongs to AT&T.
Despite ruling in favour of Gormally, Grossman indicated that he may have come down in AT&T's favour with respect to the bad-faith element in Article 4 of the UDRP, had it needed to be decided.
Jim Dwyer, Allens Arthur Robinson, Sydney
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