Generic Top Level Domain Name (gTLD) Decisions

Complainant is The Journal Newspapers, Inc., Alexandria, VA, USA ("Complainant"). Aaron S. Book, Esq., Reed Smith Hazel & Thomas, LLP, 3110 Fairview Park Drive, Suite 1400, Falls Church, Virginia 22042 appeared by written submissions on behalf of Complainant. Respondent is DomainForSale 980dollars, Washington, DC, USA ("Respondent"). No Response pursuant to ICANN Rules was submitted on behalf of Respondent.

The domain name at issue is "PRINCEGEORGESJOURNAL.COM", registered with Network Solutions, Inc. ("NSI").

As the selected Panelist, I certify that prior to my selection as the Panelist in this proceeding, I conducted a search to determine if I had any known conflicts in this proceeding. Having discovered none, I notified the National Arbitration Forum (The Forum) on September 15, 2000 that I had no known conflicts in serving as the Panelist in this proceeding.

Additionally, I also certify that after being selected by The Forum as the Panelist in this proceeding, I acted independently and impartially.

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

Respondent submitted e-mails to The Forum expressing an intent or desire to "delete" or "erase" the domain name at issue. It did not submit a Response pursuant to ICANN Rules. Because Respondent failed to submit a Response under ICANN Rules and no exce ptional circumstances were established, reasonable inferences were drawn therefrom as I deemed appropriate. ICANN Rule 14(b).

Complainant publishes six daily newspapers serving the Washington D.C. metropolitan area, particularly in the cities of Alexandria and Arlington, and counties of Fairfax, Montgomery, Prince Georges, and Prince William. One of Complainant's newspape rs, "The Prince Georges Journal", has been in publication for over 25 years. It primarily serves the citizens and businesses of Prince Georges County, Virginia. Over its more than 25 years of publication, "The Prince Georges Journal" has built up a substa ntial amount of goodwill.

Respondent's business is located in Washington D.C. Part of Respondent's business is the registration and offering for sale of various domain names. Respondent registered the domain name "PRINCEGEORGESJOURNAL.COM. Respondent has offered, and continues to offer the domain name for sale for $980.00. Respondent has not made any legitimate noncommercial use of the domain name.

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 "Prince Georges 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 the surrounding P rince George County community for more than 35 years. Federal registration of "The Prince Georges Journal" is not required to state a claim under the Uniform Domain Name Dispute Resolution Policy (UDRP). A showing of common law rights to a name is suffici ent. 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 extens ive use of the name "The Prince Georges Journal" as one of its newspapers and the resulting goodwill generated therefrom demonstrate Complainant has common law rights to that name.

The evidence also makes it very clear the domain name in question "princegeorgesjournal.com" is confusingly similar if not virtually identical to Complainant's newspaper "The Prince Georges Journal". The only differences between the two are: (1) the do main name does not have the word "The" at the beginning; (2) the names in the domain name are merged to produce one name; and (3) the domain name has ".com" at the end. Such differences are minor and do nothing to cause any real distinction between the ne wspaper's common law protected name and Respondent's domain name. The only reasonable inference that can be drawn from Respondent's choice of this domain name was to attempt to confuse the Washington D.C. and Prince George County general public and to att empt to benefit form the more than 25 years of goodwill created by one of Complainant's newspapers.

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

The name "princegeorgesjournal is not generic or descriptive. If it were, Respondent and others would be entitled to its registration and use. (See Fifty Plus Media Corp.v Digital Income, Inc. FA94924, Nat. Arb. Forum, July 17, 2000 for a discussio n 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 "princegeorgesjournal". Nothing exists which ties the name "princegeorg ejournal.com" to Respondent's name or businesses other than the domain name "princegeorgesjournal" being one of many domain names registered by Respondent for sale. Respondent submitted absolutely nothing to rebut Complainant's evidence that Respondent ha d no rights or legitimate interests in the domain name and its 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. Q TR Corp., No. D2000-0023 (WIPO Mar. 9, 2000). Respondent admitted as such when its administrative contact person, Louis Rosenfield, in response to the Complaint, sent The Forum separate e-mails on August 17, 2000, indicating "I went ahead and tried to delete the name. Aaron does not understand what is going on I think", and "Do you know if I can erase the domain name? I'll try to do that because I haven't paid for it and I don't know why it is registered."

Respondent knew or show have known of Complainant's use of the mark "The Prince Georges Journal" prior to Respondent's registration and use of the domain name "princegeorgesjournal.com" since Respondent is a business located within the circulation area of Complainant's newspaper and since Complaint newspaper has been prominently circulated in the Washington D.C. and Prince Georges County communities for more than 25 years. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 200 0) (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).

Further, Respondent has and continues to offer the domain name for sale for $980.00.
Such an offer appears to be for an amount greater than the costs Respondent incurred in registering the domain name and is yet another indication of bad faith. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). Respondent's registration and use of the domain name "princegeorgejournal.com" was an attempt by Respondent to benefit from the year s of goodwill built up by Complainant's newspaper. Additionally, the reasonable inference drawn from the evidence is that Respondent's practice of registering numerous domain names seemingly with no relationship to Respondent's name or legitimate business , but instead seemingly with relationships to the names of others indicate Respondent registered and used the domain name "princegeorgesjournal.com" in order to sell it to Complainant or one of Complainant's competitors for a price greater than respondent 's costs in registering same.

Therefore, Complaint has proved that Respondent registered and used the domain name "princegeorgesjournal.com" 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, for all of the forgoing reasons, it is ordered that the domain name, "PRINCEGEORGESJOURNAL.COM" be transferred from the Respondent to the Complainant.