Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Journal Newspapers, Inc., Alexandria, VA, USA ("Complainant"). Aaron S. Book, Esq., Reed Smith Hazel & Thomas, Suite 1400, Falls Church, Virginia, 22042, appeared by written submissions on behalf of Complainant. The Respondent is HI5 Information Services, Inc., Falls Church, VA, USA ("Respondent"). There was no appearance on behalf of Respondent.

The domain name at issue is "FAIRFAXJOURNAL.COM", registered with Namesecure.com.

I, Walter A. Bowser, the Panelist herein, certify that prior to his selection as panelist in this proceeding, he conducted a search to determine if he had any known conflicts in this proceeding. Having discovered none and on September 15, 2000, he advised the National Arbitration Forum (The Forum) that he had no known conflicts in serving as a panelist in this proceeding. I also certify that I have acted independently and impartially in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/08/2000; The Forum received a hard copy of the Complaint on 08/16/2000.

On 08/17/2000, Namesecure.com confirmed by e-mail to The Forum that the domain name "FAIRFAXJOURNAL.COM" is registered with Namesecure.com and that the Respondent is the current registrant of the name.

On 08/17/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/06/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@fairfaxjournal.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On September 15, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Walter A. Bowser as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

Complainant contends that the Respondent has registered a domain name that is, aside from the word ‘the,’ identical to the name used by Complainant. Further, Complainant alleges that Respondent has no legitimate interest in the registered domain name other than to sell the name for profit. The domain name is not indicative of, and cannot be legitimately connected with any of Respondent’s services, nor is it a name that consumers could rationally associate with Respondent’s service.

Furthermore, there is no indication that Respondent is making any legitimate noncommercial use of the domain name. Instead, Respondent is in the business of selling Internet domain names for profit and has acquired the domain name in issue primarily for the purpose of selling or otherwise transferring the domain name for valuable consideration in excess of Respondent’s out-of-pocket expenses for registration of the name. Therefore, according to ICANN Policy ¶ 4(b)(i), Respondent’s registration and use of the domain name at issue was done in bad faith.

B. Respondent

Respondent submitted no Response in this matter. Because Respondent failed to submit a Response and no exceptional circumstances were established, I drew such reasonable inferences therefrom as I considered appropriate. ICANN Rule 14(b).

Complainant, The Journal Newspaper Inc., publishes six daily newspapers serving the Washington D.C. metropolitan area, particularly in the cities of Alexandria and Arlington, and the counties of Fairfax, Montgomery, Prince Georges, and Prince William. One of Complainant’s newspapers, The Fairfax Journal, has been in publication for over 27 years. It primarily serves the citizens and businesses of Fairfax County, Virginia, and having done so for over 27 years, it has built up a substantial amount of goodwill.

Respondent’s business is located in Falls Church, Virginia. Part of Respondent’s business is the registration and offering for sale of various domain names. The domain names it offers for sale range in price from $1,250 to $187,500. Respondent has registered the domain name "FAIRFAXJOURNAL.COM, but has not yet offered the name for sale on its website, nor has it made any legitimate noncommercial use of the domain name.

Complainant sent Respondent a written demand for transfer or cancellation of the domain name "FAIRFAXJOURNAL.COM," but received no response from Respondent.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The evidence presented indicated Complainant had not registered the name "The Fairfax Journal" as a trademark or service mark with the PTO. However this name has been extensively used in commerce in the Washington D.C. area and surrounding Northern Virginia communities for more than 27 years. Federal registration is not required to state a claim under the Uniform Domain Name Resolution Dispute Resolution Policy (UDRP). A showing of common law rights to a name may be sufficient. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights). Complainant’s long and extensive use of the name "The Fairfax Journal" for one of its newspapers and the resulting goodwill generated from this use demonstrate Complainant has common law rights to that name.

The evidence presented also makes it patently obvious the domain name in question "fairfaxjournal.com" is identical to or confusingly similar to Complainant’s newspaper "The Fairfax Journal". The only differences between the two are the words "The" in at the beginning of the name of Complainant’s newspaper and the ".com" at the end of Respondent’s domain name. Such differences are minor and do nothing to cause any real distinction between the names and prevent confusion. The only reasonable inference that can be drawn from Respondent’s choice of this domain name was to attempt to benefit from the 27 years of goodwill created by one of Complainant’s newspapers.

Therefore, Complainant that it has a protected common law trademark or service mark in "The Fairfax Journal" under the UDRP, and that the domain name "fairfaxjournal.com" is identical or confusingly similar to this trademark or service mark." See ICANN Policy ¶ 4(a)(i)

The name "fairfaxjournal" is not generic or descriptive. If it were, Respondent and others would be entitled to its use and registration. (See Fifty Plus Media Corp. v. Digital Income, Inc. FA94924, Nat. Ar. Forum, July 17, 2000 for discussion on generic and descriptive names). Additionally, Respondent has not made a legitimate noncommercial use of the domain name. Nor has Respondent been known by or connected to the name"fairfaxjournal.com". Nothing exists which would tie the name "fairfaxjournal.com" to any of Respondent’s name or noncommercial businesses other than the domain name "fairfaxjournal.com" being one of many domain names registered by Respondent for sale. Respondent submitted absolutely nothing to rebut Complainant’s evidence that Respondent had no legitimate interest in the domain name and this failure permits a reasonable inference therefrom that Respondent does not have rights or any legitimate interests in this domain name. See ICANN Rule 14 (b ) and Parfumes Christian Dior v. QTR Corp., No. D2000-0023 (WIPO Mar. 9, 2000).

Respondent knew or should have known of the Complainant’s usage of the mark "The Fairfax Journal" prior to Respondent’s registration of the domain name since the Respondent is a business located within potential circulation area of Complainant’s newspaper and since Complainant’s "The Fairfax Journal" had been prominently circulated in the Washington D.C. and northern Virginia communities for more than 27 years.. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is "so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith).

Respondent’s registration and use of the domain name "fairfaxjournal.com" was an attempt by Respondent to benefit from the years of goodwill built up by Complainant’s "The Fairfax Journal". Additionally, the only reasonable inference drawn from the evidence is that Respondent’s practice of registering numerous domain names with seemingly no relationship to Respondent’s name or noncommercial businesses, but instead seemingly with relationships to the names of others indicate Respondent registered and used the domain name "fairfaxjournal.com" for the purpose of selling it to Complainant or one of its competitors for a price in access of the cost Respondent incurred in registering same.

Therefore, Complainant has proved that Respondent registered and used the domain name "fairfaxjournal.co" in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, it is ordered that the domain name, "FAIRFAXJOURNAL.COM" be transferred from the Respondent to the Complainant.