American City Business Journals, Inc. v. Jeff Fadness

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 <bostonbusinessjournal.com>, <dallasbusinessjournal.com>,

<memphisbusinessjournal.com>, and <stlouisbusinessjournal.com>

(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. eResolution.com, 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 <bostonbusinessjournal.com>,

<dallasbusinessjournal.com>, <memphisbusinessjournal.com>, and

<stlouisbusinessjournal.com> is hereby granted.

Barbara A. Solomon, Esq.

Panelist

Dated: May 17, 2001

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