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Generic Top Level Domain Name (gTLD) Decisions |
AJC International v. None aka Cox
Holdings
Claim Number: FA0204000109367
PARTIES
Complainant
is AJC International, Atlanta, GA,
USA (“Complainant”) represented by Brian
Denton. Respondent is Cox Holdings, Atlanta, GA, USA
(“Respondent”) represented by Mitchell H.
Stabbe, of Dow, Lohnes &
Albertson.
The
domain name at issue is <ajc.biz>,
registered with Corporate Domains, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 8, 2002; the Forum
received a hard copy of the Complaint on
April 12, 2002.
On
April 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 18,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 7, 2002.
On May 28, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr., as
the single Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
AJC
International, Inc.(“AJC”) is a global food trading and distribution company
based in Atlanta, Georgia. AJC has been
in business for 30 years and registered “AJC” as a service mark in 1996. Complainant is known by all of its customers
and suppliers worldwide as “AJC”.
Complainant
has offices in Atlanta, Georgia; Chattanooga, Tennessee; San Juan, Puerto Rico;
Buenos Aires, Argentina; Maastricht, The
Netherlands; Copenhagen, Denmark; Hong
Kong; and Shanghai, China.
Respondent
has no legitimate interests in respect to the domain name <ajc.biz>
because it is not their company name; and their domain name <ajc.com> is
mis-used as a redirect link to <accessatlanta.com>. Respondent, The Atlanta Journal-Constitution
Newspapers (Cox Holdings) refers to themselves as “the ajc” as an advertising
tool, not
as the representative name of their organization.
The
domain name was registered in bad faith because they have demonstrated in the
past their only interest in the “ajc” domain names
is to direct individuals to
the Complainant’s web page at <accessatlanta.com>.
B.
Respondent
Cox
Holdings, Inc. is a wholly owned subsidiary of Cox Enterprises, Inc. Cox Enterprises, Inc. is the owner and
publisher of the Atlanta Journal-Constitution newspaper. Cox Enterprises, Inc. as the parent company
of Cox Holdings and the owner of the newspaper is the real party in interest in
this proceeding. Respondent refers to
both Cox Holdings, Inc and Cox Enterprises, Inc. collectively.
On
March 27, 2002, Respondent registered the domain name, <ajc.biz>.
Respondent owns and publishes the Atlanta
Journal-Constitution, the largest newspaper south of Washington, D.C. and east
of Houston,
Texas.
Respondent
has used the mark THE ATLANTA JOURNAL-CONSTITUTION in connection with its
newspaper since at least as early as September
18, 1976. Respondent owns a federal trademark
registration for THE ATLANTA JOURNAL-CONSTITUTION mark.
AJC
is the acronym for THE ATLANTA JOURNAL-CONSTITUTION. Respondent often uses the
acronym when referring to the newspaper especially
when the full name or mark
is too long to be practical to use. For
example, Respondent uses the domain name <ajc.com> in connection with its
website.
Respondent
uses AJC.COM in connection with its website and own a federal registration for
this mark.
Respondent has a legitimate interest in the disputed
domain name because it is the equivalent of the AJC.COM mark.
Respondent
points <ajc.com> domain name to its website located at
<accessatlanta.com/ajc> (the “AJC Site”). The AJC Site is branded with both the AJC.COM and THE ATLANTA
JOURNAL-CONSTITUTION marks. There is a legitimate rationale between
the
registration of the domain name and the AJC Site.
In
addition to using the AJC.COM mark for its website, since 1994 Respondent has
used the mark AJC to promote and refer to THE ATLANTA
JOURNAL-CONSTITUTION
newspaper. Respondent uses a family of
marks containing the word AJC, including AJCCLASSIFIEDS.COM, AJCJOBS,
AJCJOBSTV, and AJCCONNECT. Respondent
owns federal service mark registrations for the AJCMAIL mark and the
AJCCLASSIFIEDS mark. Respondent has
filed applications to register AJCJOBS.COM, AJCJOBS and AJCJOBSTV marks.
Respondent
repeatedly refers to itself and its newspaper as the AJC. Such references are sufficient to create
trademark rights for Respondent in the AJC mark even though AJC is not
Respondent’s corporate
name or name of the newspaper.
Third
parties commonly refer to the newspaper as “the AJC.”
Respondent
registered <ajc.biz> to use in connection with its own website
that is related to THE ATLANTA JOURNAL-CONSTITUTION, a publication that both
Respondent
and the general public refer to as the AJC.
No
evidence of bad faith registrations is alleged or proved by Complainant.
1. Complainant is a food trading and
distribution company based in Atlanta, Georgia.
2. Respondent is the owner of THE ATLANTA
JOURNAL-CONSTITUTION newspaper located in Atlanta, Georgia.
3. Complainant owns a registration with the
United States Patent and Trademark Office, Service Mark Principal Register, for
the mark,
AJC, with registration date of July 29, 1997.
4. Respondent owns a registration with the
United States Patent and Trademark Office, Trademark Principal Register, for
the mark THE
ATLANTA JOURNAL-CONSTITUTION, with registration date of August 21,
2001; and on the Service Mark Principal Register for the mark
AJC.COM, with
registration date of February 26, 2001.
5. AJC is an acronym for THE ATLANTA
JOURNAL-CONSTITUTION newspaper.
Respondent and others refer to THE ATLANTA JOURNAL-CONSTITUTION as the
AJC. This is demonstrated by Respondent’s
use of the website, AJC.COM.
6. Complainant fails to prove that
Respondent has no rights or interests in the domain name <ajc.biz>.
7. Complainant fails to prove that the
domain name, <ajc.biz> was registered or used by Respondent in bad
faith.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has rights in the mark AJC by reason of its service mark registration of the
mark with the United States Patent and Trademark
Office.
The Complainant must prove that
Respondent has no rights or legitimate interests in respect of the disputed
domain name. See Rule 4, Start-up Trademark Opposition Policy and Rules for
.biz.
Complainant is required to describe the
grounds on which the Complaint is made, including in particular, “why the
Respondent should
be considered as having no rights or legitimate interests in
respect of the domain name(s) that is/are the subject of the complaint.
See
Rule 3(c)(ix) of the Rules For Start-Up Trademark Opposition Policy.
The grounds advanced by Complainant are
that the domain name <ajc.biz> is not Respondent’s company name
and that Respondent’s domain name <ajc.com> is mis-used as a redirect
link to <accessatlanta.com>,
and finally that Respondent refers to
themselves as “the ajc” as an advertising tool, not as the representative name
of their organization.
Complainant offers no evidence or
citation of authority to support these propositions.
Respondent may demonstrate its rights and
legitimate interests in the domain name in responding to the Complaint in any
of the ways
set out in Paragraph 4(c) of the STOP Policy. Respondent proves all three of the methods
set out in Paragraph 4(c). The first
method is that Respondent is “the owner or beneficiary of a trade or service
mark that is identical to the domain name.”
Respondent is owner of the service mark AJC.COM. Respondent points out that the United
States Patent and Trademark Office has stated that a top level domain (“TLD”),
such as “.com.”
has no source-indicating significance and it does not consider
the addition of a TLD to a mark to be a material alteration of the
mark that
would transform it into a different mark. Respondent cites Examination Guide
No 2-99, “Marks Composed, in Whole or in Part, of Domain Names” (USPTO,
September 29, 1999). This rule is
uniformly applied in domain name dispute cases. See Pomellato S.P.A. v.
Tonetti, D2000-0493 (WIPO July 7, 2000) holding that pomellato.com is
identical to Pomellato because the generic top-level domain (gTLD) “.com”
after
the name Pomellato is not relevant. See
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000). The effect of the addition of .biz to a name
is of the same effect as adding .com to a name. See Danzas Holding AG et al
v. Euro Plus Cargo SLU, DBIZ 2002-00003 (WIPO April 8, 2002).
For the purposes of domain name disputes AJC
and AJC.COM are the same. So
are AJC and <AJC.BIZ>.
Respondent owned AJC.COM at the
time that it registered <AJC.BIZ>.
Respondent has proved that it was the owner of a service mark
identical to the domain name.
The second method Respondent may show its
rights and interests is set out in Paragraph 4(c)(ii). That is that before any notice to Respondent
of the dispute, Respondent’s use of a name corresponding to the disputed domain
name
in connection with a bona fide offering of goods or services is
shown. Respondent shows without dispute
that it has and does utilize the domain name <AJC.COM> as a
website to disseminate newspaper information.
<AJC.COM> is a name corresponding to <AJC.BIZ>, under
the authorities cited above. Respondent
proves the elements of Paragraph 4(c)(ii).
The third method Respondent may show its
legitimate rights and interests is to demonstrate that Respondent has been
commonly known
by the domain name, even if it has acquired no trademark or
service mark rights. Respondent refers
to itself as AJC. Respondent
attaches to the Response a considerable amount of material, which illustrates
that third parties refer to Respondent’s
newspaper as the AJC. Complainant admits that Respondent refers to
its newspaper as the AJC as an “advertising tool.” The evidence presented by Respondent is sufficient to prove the
elements of Paragraph 4(c)(iii).
Complainant’s contention that
<ajc.com> is mis-used as a redirect link to accessatlanta.com, is
misplaced. Using a disputed domain name
as a mere link to other unrelated sites can be evidence of lack of legitimate
rights and interests under
certain circumstances. see Del Labs, Inc. v. NETT
Corp. FA104555 (Nat. Arb. Forum Mar. 26, 2002); Primedia Magazine Fin.,
Inc. v. Manzo, D2001-1258 (WIPO Dec. 13, 2001); Playboy Enter. v. Movie
Name Co., D2001-1201 (WIPO Feb. 26, 20002); Delta Air Lines, Inc. v.
Stonybrook Invs. Ltd, D2000-1686 (WIPO Jan. 22. 2001); Microsoft Corp.
v. ManKind, D2001-0193 (WIPO Apr. 20, 2001); Gen. Elec. Co. v. Momm Amed
la, D2000-1727 (WIPO Mar. 21, 2001).
But the Panel can find nothing wrong with
Respondent directing users of <AJC.COM> to a website which clearly
states that it is the <AJC.COM> website and deals with materials
directly related to Respondent’s activities.
The fact that the <AJC.COM> website is associated with
<accessatlanta.com> at the website can make no difference in the Panel’s
decision.
Complainant fails to prove that
Respondent is without rights and interests in the disputed domain name.
The Policy places the burden of
proving bad faith registration or bad faith use on Complainant. Complainant’s sole contention of bad faith
is “because they have demonstrated in the past their only interest in the “ajc”
domain
names is to redirect individuals to the Atlanta Journal Constitution web
page at accessatlanta.com.”
Respondent contends that the website
is operated by Cox Interactive Media, Inc.(“CIM”) a wholly owned subsidiary of
Respondent. Because CIM personnel are
experienced with developing, hosting and maintaining websites, CIM assists with
the operation of web sites
for various newspapers, televisions stations and
radio stations owned by Respondent and its subsidiaries. The AJC Site is located at <accessatlanta.com/ajc> because CIM
operates a website about Atlanta and CIM and Respondent agreed to have the AJC
Site reside at that address for reasons
of efficiency. Such a partnership is entirely proper
Respondent argues.
The Panel examined the website at
<AJC.COM> and noted that the website is clearly listed as the
<AJC.COM> site. The website carries an initial title page at the
top of which is listed The Atlanta Journal-Constitution and <AJC.COM>. The title page lists various news
stories carried in The Atlanta Journal-Constitution newspaper. The fact that
<AJC.COM> and <accessatlanta.com> are associated together in
a joint website, and are both operated by a wholly owned subsidiary of
Respondent,
does not suggest bad faith registration of <AJC.BIZ> or
the use in bad faith of either <AJC.COM> or <AJC.BIZ>.
None of the circumstances that might
illustrate registration or use in bad faith under Paragraph 4(b) of the Policy
are alleged or
proved. It is clear that
Respondent has no intention of selling <AJC.BIZ>. Complainant and Respondent are not
competitors.
Respondent prevails on this issue.
Reverse Domain Name Hijacking.
Respondent contends that since counsel
for Respondent called Complainant and explained why Respondent registered the
disputed domain
name and gave a reasonable explanation of Respondent’s actions,
that Complainant’s refusal thereafter to dismiss the Complainant
constitutes an
attempt at Reverse Domain Name Hijacking.
Respondent cites K2r Produkte AG v. Trigano, D2000-0622 (WIPO
Aug. 23, 2000) for the proposition that reverse domain name hijacking should be
found where Complainant filed a
Complaint even though Respondent provided
Complainant with a reasonable explanation for why Respondent registered the
domain name.
“If after considering the submissions the Panel finds that the
complaint was brought in an attempt at Reverse Domain Name Hijacking
the Panel
shall state its findings to this effect in the decision.” Rule 15(d) of the
Rules For Start-Up Trademark Opposition Policy. The Panel has considerable discretion in deciding this issue.
In the K2r Produkte Ag v. Trigano case, the facts were that the
Complaint was filed after the Complainant knew that Respondent had legitimate
rights and interests
in the domain name in question. Not withstanding that knowledge the Complainant made a number of
serious and unfounded allegations against Respondent, which the Panel
found to
amount to bad faith. Nothing of that serious nature is involved in this
case. The Complaint was already filed
in this case before Respondent gave any explanation to Complainant. The Complaint contains no completely
unfounded or false allegations. In this
case the Panel, after considering the submissions, does not find compelling
evidence of bad faith on the part of Complainant. Complainant owns a trademark for AJC. Had Complainant registered <AJC.BIZ>
first, it most probably would have prevailed against this Respondent in a
domain name dispute proceeding.
Complainant may have been unrealistic in failing to accept Respondent’s
counsel’s oral representations as sufficient reason to dismiss
the Complaint,
but this Panel finds that the Complaint is merely misconceived on its merits
and was not filed in bad faith. See
Credit Suisse Group o/b/o Bank Leu v. Leu Enters. Unlimited, FA102972 (Nat.
Arb. Forum Feb. 23, 2002). Respondent’s
request for a finding of Reverse Domain Name Hijacking is refused.
DECISION
THE COMPLAINT OF AJC INTERNATIONSL, INC.
AGAINST COX HOLDINGS, IS DISMISSED AND THE REQUEST THAT <AJC.BIZ> BE
TRANSFERRED IS
DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 11, 2002
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