Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA

DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION

THE DURHAM HERALD COMPANY
2828 Pickett Road
Durham, North Carolina 27707
USA
Telephone: (919) 419-6500
Fax: (919) 419-6889
E-mail Address: rsr@herald-sun.com

COMPLAINANT,

vs.

ERWIN S
P.O. BOX 7821
ALHAMBRA, CA 91802
USA
Telephone: (626) 458-4229
Fax: Not Given
E-mail Address: domainsale@b\netzero.net

RESPONDENT.

DECISION
Forum File No.: FA0003000094312

________________________________________________________________

The above entitled matter came on for an administrative hearing on

April 14,.2000 before the undersigned on the Complaint of THE DURHAM HERALD COMPANY, hereafter "Complainant", against ERWIN S, hereafter "Respondent". John Bussian, The Law Firm of John A. Bussian, P.A., represents Complainant. Erwin S. responded pro se. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name: heraldsun.com

Domain Name Registrar: register.com

Domain Name Registrant: Erwin S

Monterrey Park, CA 91754

or

P. O. Box 7821

Alhambra, CA 91802

USA

Date of Domain Name Registration: December 15, 1999.

Date Complaint filed: March 14, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a) and Rule 4(c): March 16, 2000

Due date for a Response: April 10, 2000.

Respondent’s Response was filed (dated) March 21, 2000.

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on March 16, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Register.com, the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).

On December 15, 1999, Respondent registered the domain name heraldsun.com with Domain Name Registrar register.com, the entity that is the Registrar of the domain name. On March 18, 2000, the Domain Name Registrar Register.com’s Whois listing showed that ES — Domain 4 sale is the Registrant for the domain name heraldsun.com. By registering its domain name with Register.com, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

The undisputed evidence establishes that:

1. Complainant The Durham Herald Company is a corporation duly organized and existing under the laws of the State of North Carolina, doing business as The Herald Sun, a daily newspaper published and circulated in North Carolina.

2. The Herald-Sun maintains a web site, herald-sun.com and registered herald-sun.com as a domain name October 31, 1994.

3. Complainant has developed and uses the web site www.herald-sun.com to publish "an election guide, classified ads, a calendar of events in the Triangle region of North Carolina, archives of featured series that ran in the print edition of The Herald-Sun, and community partnership web sites, including sites for local chambers of commerce and public radio."

4. Respondent on December 15, 1999 "bought heraldsun.com because I saw great newspaper company from Australia with domain name heraldsun.com.au and I plan to sell this domain name to him."

5. The trademark, The Herald-Sun, is owned exclusively by Complainant.

6. The use of the trademark goes back to the 1940’s.

7. Complainant has used the trademark continuously since 1991.

8. The domain name heraldsun.com is confusingly similar to Complainant’s trademark, differing from Respondent’s domain name only by omission of the hyphen between herald and sun.

9. The confusingly similar domain name is likely to confuse users of The Herald Sun Company’s trademark and website.

10. Respondent has shown no right to use of the Compllainant’s name and trademark.

11. Respondent has shown no development of the mark heraldsun.com.

12. Respondent has offered the mark heraldsun.com for sale for a price of $2.5 million but Respondent has failed to offer proof that the $2.5 million has any relationship to any out-of-pocket costs or expenses incurred by Respondent in obtaining and developing the name.

13. The parties differ as to which of them initiated discussion about the sale of the domain name but is undisputed that Complainant inquired about the purchase without waiver of right and that Respondent offered to sell it for $2.5 million.

14. Respondent filed the domain name heraldsun.com in bad faith in order to pursue a profit by selling it to Complainant or a competitor of Complainant for a consideration in excess of the investment that Respondent had in it.

15. The following is evidence of Respondent’s bad faith in registering the domain name www.heraldsun.com:

a. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i) Respondent wrongfully registered or acquired the domain name heraldsun.com for the stated purpose of selling it to the complainant or to one that he knew had an interest in the name for valuable consideration in excess of any documented out of pocket costs directly related to the domain name that were incurred by Respondent.

b. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(ii) Respondent wrongfully registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Respondent’s domain address shows admits a course of similarly registering other names for sale.

c. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iii) Respondent wrongfully saw a good name that he knew was owned by another and registered a variation of that domain name in his own name. Respondent knew or should have known that the domain name registration by him would disrupt the business of those already using the name in their publishing business and that it would keep them from developing that business to its fullest potentiality.

d. Respondent demanded an outrageous and egregiously high price for a domain name for a trademark that he knew or should have known belonged to others.

Complainant’s prayer for relief requests that the domain name heraldsun.com be transferred from Respondent to Complainant.

CONCLUSIONS

The undersigned certifies that she has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name heraldsun.com registered by Respondent on December 15, 1999, is so close as to be identical or confusingly similar to Complainant’s herald-sun.com mark, to which Complainant has legal right and to which Respondent has failed to show any legitimate right or interest.

2. Respondent acted in bad faith by registering or acquiring the domain name heraldsun.com primarily for the purpose of selling or otherwise transferring the said domain name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of the Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME heraldsun.com REGISTERED BY RESPONDENT ERWIN S BE TRANSFERRED TO COMPLAINANT THE DURHAM HERALD COMPANY.

DATED: April 14, 2000 by Judge Carolyn Marks Johnson (Ret.), Arbitrator.

_______________________________________

Honorable Carolyn Marks Johnson

Assigned District Judge

Arbitrator