AJC International v. None aka Cox Holdings
Claim Number: FA0204000109367
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.
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>.
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.
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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