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