American City Business Journals, Inc. v. Michael Cornelius

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American City Business Journals, Inc. v. theideaman.com

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 theideaman.com 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: <tampabaybusinessjournal.com> (the "Domain

Name").

The registrar is BulkRegister.com, 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, theideaman.com, 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 theideaman.com, 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 <tampabaybusinessjournal.com> 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 <tampabaybusinessjournal.com> 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.

More cases by this complainant

• American City Business Journals, Inc. — D2019-0875 · Terminated
• American City Business Journals, Inc. v. Whois protection / Hulmiho Ukolen, Poste restante — D2018-0186 · wwwhemmings.com · Transfer · 28 Mar 2018
• American City Business Journals, Inc. v. Jeff Fadness — D2001-0488 · bostonbusinessjournal.com, dallasbusinessjournal.com, memphisbusinessjournal.com · Transfer · 17 May 2001
• American City Business Journals, Inc. — D2000-1045 · Terminated