WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American City Business Journals, Inc. v.
Case No. D2001-0846
1. The Parties
Complainant is American City Business Journals, Inc. ("ACBJ" or "Complainant"), 120 West Morehead Street, Suite 400, Charlotte, N.C. 28202, USA.
Respondent is whose contact details are c/o Mr. Michael Cornelius, 10460 Roosevelt Blvd., North, St. Petersburg, Florida 33716, USA.
2. Domain Name and Registrar
The domain name at issue is: (the "Domain Name").
The registrar is BulkR, Inc. (the "Registrar"), 7 East Redwood St., Baltimore, MD 21202, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received ACBJ�s Complaint by e-mail on July 2, 2001, and in hard copy on July 4, 2001. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Center.
On July 4, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. Also on July 4, 2001, the Registrar transmitted via e-mail to the Center its response, confirming that (1) a copy of the Complaint was sent to it by Complainant as required by Supplemental Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent is the current registrant of the Domain Name; (4) the Administrative Contact for the Domain Name is Respondent, and the Technical Contact for the Domain Name is Michael Cornelius, , 1460 Roosevelt Blvd., North, St. Petersburg, Florida 33716, US; (5) the Policy applies to the Domain Name; and (6) the current status of the Domain Name is Registrar LOCK.
On July 9, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier (FedEx) to Respondent and to the Registrar [1]. The Center advised that Respondent�s Response was to be submitted by July 28, 2001, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules (requiring both e-mail and hard copies), and described the consequences of a default if the Response was not sent by the due date. The Center also noted that the Complainant had elected for a single panelist to decide this matter.
The requirements of Rule 2(a) having been satisfied, the date of the formal commencement of this administrative proceeding, pursuant to Rule 4(c), is July 9, 2001.
No Response was received from Respondent by the July 28, 2001, deadline. On July 31, 2001, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default. The Center advised Respondent that (a) Respondent had failed to comply with the deadline for submission of its Response and (b) the consequences of default, including (1) appointment of a single panelist (per the Complainant�s request); (2) the Panel would be informed of Respondent�s default and would decide in its sole discretion whether to consider a Response if submitted later; and (3) notwithstanding the default, the Center would continue to send all case-related materials to Respondent.
On August 2, 2001, Respondent�s Response was received by the Center (in hard copy only). The Center acknowledged receipt of the Response on August 6, 2001, and notified Respondent that because the Response was not filed by the deadline, it would be up to the Panel to decide whether or not to consider it.
On August 16, 2001, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by August 30, 2001.
On August 16, 2001, the Center transmitted the case file to the Panel.
4. Factual Background; Parties� Contentions
a) The Trademark
The Complaint is based on Complainant�s alleged ownership of rights to the marks TAMPA BAY BUSINESS and TAMPA BAY BUSINESS JOURNAL, which Complainant claims to have used for communications goods and services since 1971. The Complaint does not disclose when Complainant changed its publication�s name from "Tampa Bay Business" to "Tampa Bay Business Journal." Further, Complainant concedes that it no longer uses either of those names on its publication�s title line, but rather uses the title "The Business Journal Serving Greater Tampa Bay." Complainant states that this last change occurred "most recently," although it does not specify when.
Despite the title change, the publication is still commonly known as the "Tampa Bay Business Journal." Complainant has provided printouts from the NEXIS database confirming this point. Moreover, at the time Respondent registered the Domain Name, in August 2000, the Complainant�s publication was still titled "Tampa Bay Business Journal."
Complainant owns U.S. Trademark Registration No. 1,468,989 for the mark TAMPA BAY BUSINESS, registered in 1987 and claiming a date of first use in 1981. A copy of the registration certificate and a printout showing Complainant to be the current owner of the registration are attached to the Complaint.
b) Jurisdictional Basis
The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. A copy of the Registrar�s registration agreement, which incorporates the Policy by reference, is appended as to the Complaint.
c) The Complaint
Complainant asserts as follows:
- Complainant has been circulating its publication since 1971.
- Respondent, Michael Cornelius d/b/a , registered the Domain Name on August 14, 2000.
- On February 17, 2001, Complainant sent Respondent a letter informing Respondent of Complainant�s trademark rights and requesting that the Domain Name be transferred to Complainant.
- Having obtained no response, Complainant sent a reminder letter to Respondent on March 22, 2001, by mail and on April 3, 2001, by e-mail.
- On April 24, 2001, Complainant�s counsel had a telephone conversation with Mr. Cornelius. In the conversation, Mr. Cornelius stated that he registered the domain name with the intent to start an online publication. Complainant�s counsel advised Mr. Cornelius that any use of the domain in connection with an online publication would be considered a willful infringement of Complainant�s rights. Mr. Cornelius then offered to sell the Domain Name to Complainant for $800. When asked where he came up with the figure he stated that "it just came to mind". Complainant�s counsel then advised Mr. Cornelius that this offer would likely be unacceptable, but that the offer would be relayed to Complainant.
- On May 1, 2001, Complainant�s counsel sent an e-mail to Mr. Cornelius advising him that his offer to sell the domain name to Complainant for $800 was rejected, but that Complainant would be willing to reimburse him $70 for registering the Domain Name in exchange for transferring the name as a way to resolve the dispute. Respondent did not respond to that e-mail.
- Complainant alleges "upon information and belief" that Respondent was aware of Complainant�s publication and trademark at the time he registered the Domain Name.
d) The Response
Respondent is in default pursuant to Rule 5(b) and Rule 14 because it did not file a Response, by e-mail (in addition to the hard copy), by the July 28, 2001, deadline. However, given that a hard copy was received by the Center on August 2, bearing a date of July 28, 2001, it is plausible that, while neglecting to provide the required e-mail, Respondent did send its Response in hard copy by the deadline. Respondent is an individual not represented by counsel, and there is no indication in the record that he had any prior familiarity with the Rules applicable to proceedings under the Policy. It is within the discretion of the Panel whether to consider a Response that is not in formal compliance with the Rules. In this case, the Panel chooses to consider the Response.
Respondent contends as follows:
- Complainant does not own rights to the mark TAMPA BAY BUSINESS JOURNAL but rather solely to TAMPA BAY BUSINESS.
- Other entities own the domain names "tampabaybusiness" under the .com and .net T LDs.
- The change in the name of the publication was not "recent."
- Complainant is not listed in the Tampa, Florida telephone book under Tampa Bay Business Journal.
- The references in the above-mentioned NEXIS search are of third-party uses of the mark TAMPA BAY BUSINESS JOURNAL, not uses by Complainant.
- Respondent admits that he offered to sell the Domain Name for $800 but denies that this figure "simply came to mind." Rather, he contends that he believed it to be "a fair figure for both registering a �good� domain name and altering any business plans which had already been in process."
- Respondent did not register the Domain Name for the "primary purpose" of selling it to Complainant, but rather because he wished to start an online business.
- Respondent "was not aware of any trademark" at the time he registered the Domain Name.
- Respondent was "harassed and bullied" into making some kind of offer for the Domain Name to avoid legal proceedings.
5. Discussion and Findings
a. Regulations Applicable to Consideration of the Merits
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panel�s view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) 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.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent�s rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).
b) Effect of the Default
In this case, as noted above, the Panel will, in its discretion, treat the technical errors in Respondent�s submission as waived, and will consider the Response on the merits as though timely filed in correct form.
c) Complainant�s Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
Complainant has proven that it is the owner of trademark rights in the marks TAMPA BAY BUSINESS and TAMPA BAY BUSINESS JOURNAL.
Complainant�s rights in the mark TAMPA BAY BUSINESS are established by its federal registration of that mark. Complainant�s registrations of its mark on the Principal Register of the U.S. Patent and Trademark Office establish a presumption of validity of the marks under United States law. See 15 U.S.C. � 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainant�s ownership of the marks. See 15 U.S.C. � 1072. Accordingly, Respondent�s denial of knowledge of the trademarks is irrelevant. Moreover, a careful reading of Respondent�s denial indicates that while he denies knowing of "any trademark," he does not deny knowing of the publication by that name. The latter, however, is the equivalent of the former � one need not know that a trademark registration has been applied for or obtained in order to know that the mark functions to identify the source of the product or service in question. That function establishes it as a trademark at common law.
The Domain Name is confusingly similar to Complainant�s registered mark TAMPA BAY BUSINESS, even if Complainant did not separately own rights to the mark TAMPA BAY BUSINESS JOURNAL (which it does, as discussed below). The addition of the generic word "journal" does not avoid confusion, particularly given that Complainant�s product is, indeed, a journal.
Additionally, Complainant has rights in the mark TAMPA BAY BUSINESS JOURNAL, as established both by years of continuous use (though the precise length is unclear) and by the fact that third parties continue to refer to Complainant�s publication by that name, as the record establishes. It is elementary U.S. trademark law that trademark rights are acquired by commercial use, not registration. A publication known for many years under the name in question has plainly established its common-law rights to that mark, at least in the geographic region and in connection with the goods or services for which it uses the mark. Moreover, trademark rights can inhere in an entity as a result of its being known by third parties under the name, even if that is not the name by which it refers to itself. See, e.g., American Stock Exchange v. American Express Co., 207 U.S.P.Q. 356, 364 (TTAB 1980) (even if a company itself has not made use of a term, it may have "a protectable property right in the term" if the public has come to associate the term with the company or its goods or services); cf. Big Blue, Inc. v. IBM, 19 U.S.P.Q.2d 1072 (TTAB 1991).
Here, in any event, Complainant did use the mark in question for many years, in addition to the fact that it continues to be known by that mark.
The thrust of Respondent�s argument appears to be that Complainant has abandoned this mark, as a result of the recent title change to "The Business Journal Serving Greater Tampa Bay." Respondent also points out Complainant�s failure to maintain a telephone listing under the TAMPA BAY BUSINESS JOURNAL name. The short answer to this last point is that trademark law does not require telephone listings as a basis for acquiring or retaining rights. More generally, abandonment of a trademark is difficult to show under U.S. law, requiring an intent to abandon (or not to resume use of) the mark. See McCarthy on Trademarks � 17:11 (2001). Prolonged non-use can give rise to such an inference. Id. The law, however, requires "clear and convincing proof" of abandonment. See id. � 17:12. Because of the forfeiture of rights involved, "the courts are reluctant to find abandonment." Id. at 17-17. On the record before this Panel, Respondent has not established abandonment, either through direct evidence of intent or through sufficiently prolonged non-use, with the clarity necessary to satisfy this Panel that such a conclusion should be drawn.
In any event, Registrant does not deny that, at the time he registered the Domain Name, the publication was still known as "Tampa Bay Business Journal".
Moreover, there might well be a likelihood of confusion with the Domain Name even if Complainant�s only protected trademark rights were in "The Business Journal Serving Greater Tampa Bay". All the words in the Domain Name are contained in that mark, and the meaning is essentially the same.
In sum, the Domain Name is identical to one of Complainant�s trademarks and confusingly similar to others.
(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name
There is no evidence in the record that Respondent has any legitimate interest in the Domain Name.
Respondent does not claim to have used, or made demonstrable preparations to use, the Domain Name prior to notice of the dispute. He speaks vaguely of "business plans which had already been in process" but does not identify what, if any, business plans he actually had or has, and offers no evidence of any (other than the bare assertion that he might start an "online business"). Likewise, Respondent does not claim, or provide evidence to show, that he was commonly known by the Domain Name. Finally, he does not claim to have made any noncommercial or fair use of the Domain Name. Indeed, his passing reference to the possibility of creating some "online business" merely confirms that any intent he may have had to use the Domain Name was commercial in nature.
Accordingly, Respondent has not met any of the criteria under Policy Paragraph 4(c) for showing rights or legitimate interest in the Domain Name.
(iii) Registration and Use in Bad Faith
Complainant�s third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition or registration of 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 [registrant�s] documented out-of-pocket costs directly related to the domain name."
In this case, the Panel finds evidence of this type of bad faith. The only use made of the Domain Name to date, as far as the evidence before the Panel indicates, was to offer it to Complainant, the trademark owner, for the sum of $800, which appears to be in excess of any expenses Respondent incurred in connection with its registration. Respondent admits making the offer. His only explanation is that he considered it a "fair" price for having registered a "good" domain name "and altering any business plans which had already been in process." The failure to identify any such alleged "plans" or even assert unequivocally whether any exist leaves the Panel unmoved by this statement. In any event, this Panel does not sit in judgment of what prices are "fair" or what domain names are "good." Rather, it is charged with inquiring whether Respondent�s primary purpose was the sale of the Domain Name to Complainant for a price in excess of the $70 registration fee that Complaint offered to reimburse Respondent. It was. While admittedly $800 is far less than some registrants have sought for domain names that incorporate others� trademarks, that fact does not justify or eliminate the bad-faith nature of the conduct.
That sale of the Domain Name for a profit was Respondent�s "primary" purpose in registering it follows from the fact that he does not appear to have had any other purpose. Respondent has no web site accessible at the Domain Name, and no evidence of record suggests that he is making any other use of it. Such inaction, particularly absent a plausible explanation or concrete evidence of plans to use, can be indicative of bad faith. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (registration together with "inaction" can constitute bad faith). This inaction, coupled with Respondent�s attempt to sell the Domain Name for $800 is sufficient, in the view of the Panel. Accordingly, the Panel finds bad faith of the form illustrated by Paragraph 4(b)(i) of the Policy. The other illustrations in Paragraph 4(b) need not be considered.
In sum, the Panel concludes that Respondent has registered and used the Domain Name in bad faith, as exemplified by illustration (i) in Paragraph 4(b) of the Policy.
6. Decision
In light of the findings and analysis by the Panel, the Panel decides that Complainant has met its burden of proving: (1) the Domain Name is identical and/or confusingly similar to Complainant�s trademarks; (2) Respondent has no rights and no legitimate interest in respect of the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the Domain Name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: August 30, 2001
Footnotes:
1. The Center also sent the same items to the required e-mail addresses as set out in Rule 2(a). Additionally, the Center attempted to send Respondent a copy of these items by facsimile, but it appears that the facsimile number listed by Respondent with the Registrar may have been inactive. There is no dispute, however, that notice (in at least the other two forms) was actually sent and actually received.
Full & Egal Universal Law Academy