COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

Gruner + Jahr Printing & Publishing Co. v. Affordable Domains For Sale aka Technical Director

Claim Number: FA0212000137168

PARTIES

Complainant is Gruner+ Jahr Printing & Publishing Co., New York, NY, USA (“Complainant”) represented by Lisa Rosenburgh of Salans.  Respondent is Affordable Domains for Sale a/k/a Technical Director, Montreal, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

            The domain name at issue is <fastcompany.biz>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 18, 2002; the Forum received a hard copy of the Complaint December 23, 2002.

On December 19, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <fastcompany.biz> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP”) and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”).

On December 23, 2002, the Forum sent a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of January 13, 2003, by which Respondent could file a Response to the Complaint. The Forum transmitted this notice to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy (the “Rules”).

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 January 24, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum discharged its responsibility under Paragraph 2(a) of the 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 Respondent.

RELIEF SOUGHT

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

PARTIES CONTENTIONS

A. Complainant makes the following allegations:

1. Respondent is not using the <fastcompany.biz> domain name for a bona fide business or commercial purpose.

2. The <fastcompany.biz> domain name is identical to Complainant’s FAST COMPANY mark.

3. Respondent has no rights or legitimate interests in the <fastcompany.biz> domain.

4. Respondent registered the <fastcompany.biz> domain name in bad faith.

            B. Respondent failed to submit a Response in this proceeding.

           

FINDINGS

Complainant has used the FAST COMPANY trademark since 1995 in connection with its Fast Company magazine, which has a monthly circulation in the United States of more than 750,000.  Complainant’s magazine is sold from newsstands and by subscription throughout the United States and internationally, including Canada the Respondent’s domicile. Complainant’s magazine is also available online at Complainant’s website <fastcompany.com>, which provides business-related information. 

Complainant registered its FAST COMPANY mark with the United States Patent and Trademark Office and holds Registration Numbers: 2,001,390; 2,239,424, and 2,001,390).  Complainant also holds a registration for the mark in the European Union (Reg. No. 414,615).

Respondent registered the <fastcompany.biz> domain name on November 9, 2001.  Respondent is using the domain name to redirect Internet users to <dosale.com>, a website devoted to the sale of the <fastcompany.biz> domain name registration.  Respondent also has links to other pages that offer numerous domain name registrations for sale that incorporate other entities’ marks, including <nflreplays.com>, <nflworld.com>, and <nhlreplays.com>.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a Complainant 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 UDRP requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

Paragraph 4(b) of the RDRP defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(1) to exchange goods, services, or property of any kind; or

(2) in the ordinary course of trade or business; or

(3) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

Bona Fide Business or Commercial Use

Complainant established in this proceeding that it has rights in the FAST COMPANY mark through registration with the United States Patent and Trademark Office and by its continuous use of the mark as the title of its Fast Company magazine, since 1995; and the operation of its <fastcompany.com> website, since 1998.

Respondent’s registration of the <fastcompany.biz> domain name is subject to the requirements of the RDRP.  The RDRP requires that the domain name be used in connection with a bona fide business or commercial use.  RDRP paragraph 4(c) provides a list of specific situations that will not be considered a bona fide business or commercial use.  One of the articulated situations excluded from the realm of bona fide business purposes is the selling, trading or leasing of a domain name registration for compensation.  Respondent’s only use of the <fastcompany.biz> domain name has been the attempt to sell the registration at <dosale.com>.  As this type of use is excluded from the realm of bona fide business purposes, the Panel finds that Respondent is not using the disputed domain name for a bona fide business or commercial purpose pursuant to RDRP ¶ 4(c)(i).

Accordingly, the Panel finds that RDRP ¶ 4(b) has been satisfied.  Because Complainant has established rights in the FAST COMPANY mark and satisfied the requirements of the RDRP the Panel does not need to apply the UDRP analysis.

DECISION

Having satisfied RDRP paragraph 4(b) in relation to <fastcompany.biz> and having shown established rights in the FAST COMPANY mark, the Panel concludes that Complainant is entitled to the requested relief and that it shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <fastcompany.biz> be TRANSFERRED from Respondent to Complainant.

                                    Hon. Carolyn Marks Johnson, Panelist

Dated: February 7, 2003.

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