WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American City Business Journals Inc. v. Jeff Fadness
Case No. D2001-0488
1. The Parties
Complainant is American City Business Journals, Inc., located at 120 West Morehead Street, Suite 400, Charlotte, North Carolina 28202. Complainant is represented by Eric E. Gisolfi, Esq. of the firm Sabin, Bermant & Gould LLP, Four Times Square, New York, NY 10036, USA.
Respondent in this matter is Jeff Fadness, an individual with a contact address of 13873 Park Center Road, Suite 317, Herndon, VA 20171, USA. Respondent is not represented by counsel.
2. The Domain Names and Registrar
The domain names in dispute are , , , and (collectively "the Domain Names"). The Domain Names are all registered with Network Solutions Inc, (NSI), located at 505 Huntmar Park Drive, Herndon, Virginia 20170.
3. Procedural History
This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Rules"), which apply to the Domain Names.
The Complaint was submitted on April 4, 2001, and met all of the formal requirements of the WIPO Arbitration and Mediation Center (WIPO), the Policy and the Rules. The registrar of the Domain Names confirmed that Respondent Jeff Fadness was the owner of the Domain Names. Based on that confirmation, on April 12, 2001, WIPO sent a notification of the complaint to the Respondent advising that Respondent had until May 1, 2001, to respond to the complaint. The notification was sent to Mr. Fadness using the contact information provided to the registrar and was sent by courier, facsimile and email. It is noted that WIPO took all steps necessary to contact Respondent, sending hard copies of the complaint to Mr. Fadness at both the address he provided as the Registrant and the address he provided as the administrative, technical and billing contacts for the Domain Names. Respondent did not submit a response to the complaint and was declared to be in default by notice dated May 2, 2001. The record in this case shows no attempt by Respondent to lift the default or to otherwise respond to the allegations in the complaint.
On May 11, 2001, WIPO appointed Barbara Solomon as panelist.
4. Factual Background
Complainant is a privately owned media company that publishes various business newspapers in a number of markets in the United States. Complainant appears to publish newspapers either under its known name or through wholly owned subsidiaries. Among the journals that are published by Complainant or its wholly owned subsidiary are: Dallas Business Journal, Memphis Business Journal, Boston Business Journal, and St. Louis Business Journal. These publications all were launched in the 1980s and continue to be published to date. Complainant owns a US federally registered trademark for the mark DALLAS BUSINESS JOURNAL, Registration No. 2,420,994 which issued on January 16, 2001, based on use since May 8, 1988. Complainant�s wholly owned subsidiary Mid-South Communications Inc. owns a Tennessee state trademark registration for MEMPHIS BUSINESS JOURNAL which issued on October 3, 1997 based on use since March 26, 1984. Complainant�s wholly owned subsidiary Boston Business Journal, Inc. owns a US federally registered trademark for BOSTON BUSINESS JOURNAL, Reg. No. 1,945,232, which issued on January 2, 1996 based on use since October, 1981. And Complainant�s wholly owned subsidiary St. Louis Business Journal Corp. owns a US federally registered trademark for ST. LOUIS BUSINESS JOURNAL (Stylized), which issued on June 23, 1987 based on use since October 6, 1980.
Respondent registered the Domain Names on December 19, 1999. The Domain Names link to a website although the website does not appear to provide information or services to the general public as shown by Annex K to the complaint.
Complainant contacted Respondent about the registration of the Domain Names by letter dated January 23, 2001. In response to the demand letter, Respondent advised by an email that he would transfer the Domain Names to Complainant for a payment of $539 per name. Complainant refused to pay this amount although it did offer Respondent reimbursement for Respondent�s costs of registering the Domain Names. Respondent did not reply to that proposal thereby leading to the institution of this action.
5. Parties� Contentions
A. Complainant
Complainant contends that it has legitimate rights and interest in the marks DALLAS BUSINESS JOURNAL, MEMPHIS BUSINESS JOURNAL, BOSTON BUSINESS JOURNAL and ST. LOUIS BUSINESS JOURNAL as a result either of its own use and ownership of registrations for the marks or the use of and registrations for the marks by Complainant�s wholly owned subsidiaries. Complainant further contends that the Domain Names are identical to the marks it uses and owns, that Respondent has no rights or legitimate interest in the Domain Names, and that the Domain Names were registered and are being used in bad faith noting specifically that the Domain Names are being used notwithstanding Complainant�s trademark rights and that Respondent registered and offered to sell the Domain Names in excess of his out-of-pocket costs.
B. Respondent
By failing to file a response, Respondent has not denied Complainant�s contentions.
6. Discussion and Findings
To obtain relief under the Policy, paragraph 4(a) thereof requires Complainant to prove each of the following:
· That the Complainant has rights in its marks; and
· That the Domain Names registered by the Respondent are identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
· That the Respondent has no rights or legitimate interest in the Domain Names; and
· That the Domain Names have been registered and used in bad faith.
A. Rights in the Marks
Complainant has demonstrated prior rights in its various marks based both on use and on registration. As a matter of United States trademark law, all of the rights of Complainant�s subsidiaries in the marks they use, as well as the rights that they have obtained by virtue of any trademark registrations they own, inure to the benefit of Complainant. See 15 U.S.C. �1055.
B. The Domain Names are Confusingly Similar to The Marks In Which Complainant Has Rights
The second level domain names registered by Respondent are identical to Complainant�s marks. Therefore, Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
C. Legitimate Interests
Under the Policy, legitimate interests in the Domain Names may be demonstrated by showing that: (i) before any notice of this dispute Respondent used, or demonstrably prepared to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the Domain Names, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademarks at issue. Policy 4(c). By failing to file a response in this action, Respondent has not demonstrated any legitimate rights or interest in the Domain Names.
The evidence submitted by the Complainant makes it clear that there is no use being made of the Domain Names in connection with either a bona fide offering of goods or services or use in a legitimate non-commercial or fair manner. Furthermore, as set forth in the complaint, Respondent has never been granted the right to use or register any of the names of Complainant�s publications either in connection with domain name registrations, in connection with the bona fide offering of goods or services, or for any other reason.
Further evidence of the lack of any rights or legitimate interests in the Domain Names include the facts that the Domain Names were obtained after the publication names owned by Complainant had been used and the marks had been registered, and that Respondent lacks any legitimate rights to use the Complainant�s publication names as part of domain names since to do so would suggest that the Complainant is or may be authorizing or sponsoring any eventual website connected to these names. Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Bad Faith Registration and Use
The final element that Complainant must prove is that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets forth various types of evidence showing registration and use in bad faith although panel is not limited to those circumstances in finding bad faith use and registration. See e.g., Canada v. eR, WIPO Case No. D2000-0110.
Paragraph 4(b)(i) of the Policy refers to circumstances indicating that the Respondent registered the Domain Names primarily for the purpose of transferring them to the owner of the service mark for valuable consideration in excess of documented out-of-pocket costs. In this case, as shown by Annex N to the complaint, Respondent sought to sell the names to Complainant who is the owner of them and asked for compensation far in excess of his documented out-of-pocket costs. While Respondent stated in his communication that he was seeking "an expense reimbusement," Respondent provided no evidence that in fact his out of pocket expenses equaled, or even approached, the amount he sought to recover. This evidence is strongly suggestive of bad faith registration and use.
Further, paragraph 4(b) of the Policy states that evidence of bad faith use and registration is shown if the Respondent registered Domain Names to prevent the owner of a trademark from reflecting the mark in a corresponding domain name provided that Respondent has engaged in a pattern of such conduct. Here, Respondent has registered the names of four different publications of Complainant. This shows a pattern of conduct targeting Complainant. By taking Complainant�s publication names, Respondent has in fact prevented the Complainant from reflecting its publication names in corresponding domain names. This too establishes bad faith. Accordingly, Complainant has met its burden under Paragraph 4(a)(iii) of the Policy.
7. Decision
Complainant has proved the necessary elements of the Policy to obtain the relief requested. Specifically, Complainant has shown rights in trademarks and service marks, has shown that the Domain Names are identical or confusingly similar to the trademarks and service marks in which Complainant has rights, that Respondent has no rights or legitimate interest in the Domain Names, and that Respondent registered the Domain Names in bad faith and is using them in bad faith. Therefore, Complainant�s request for transfer of the Domain Names , , , and is hereby granted.
Barbara A. Solomon, Esq.
Panelist
Dated: May 17, 2001
Full & Egal Universal Law Academy