WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cox Enterprises, Inc. d/b/a The Atlanta Journal-Constitution v. MYCITYCCESS
Case No. D2007-1678
1. The Parties
The Complainant is Cox Enterprises, Inc. d/b/a The Atlanta Journal-Constitution, of Atlanta, Georgia, United States of America, represented by Dow Lohnes PLLC, United States of America.
The Respondent is MYCITYCCESS, of San Diego, California, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <myatlantaaccess.com> is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 15, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 15, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 21, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a publicly traded Delaware corporation based in Atlanta, Georgia, United States of America. Among its media properties is The Atlanta Journal-Constitution, the most widely circulated daily newspaper in the region, with 365,000 average daily paid subscribers. The Access Atlanta insert delivered weekly with the newspaper since 1990 includes news, weather reports, listings of community events, advertisements (including classified ads), and information about restaurants, entertainment, real estate, jobs, and recreation relating to the Atlanta, Georgia metropolitan area.
The Complainant reports that it has published an online version of Access Atlanta continuously on its website at “www.accessatlanta.com” since December 1996. The website now logs roughly 115,000,000 page views monthly. The Complainant states that it has spent more than USD $1 million promoting the Access Atlanta print and online versions.
The Complainant’s predecessor in interest obtained United States Trademark Registration No. 1915614 for the mark ACCESS ATLANTA on August 29, 1995, showing first use in commerce on August 26, 1990.
The Domain Name was registered on October 13, 2005 in the name of “mycityccess”, listing a San Diego postal address and a contact person at the same address.
“Mycityccess” does not appear in the online database operated by the California Secretary of State as a registered business entity in California. The Complainant discovered a limited liability company registered in Georgia called My City Access LLC. The contact person listed on the state directory bears the same family name, Schmaltz, that appears in the “Contact Us!” page of the website to which the Domain Name resolves. The company did not respond to a demand letter sent by the Complainant’s counsel to the company’s Atlanta postal address.
It appears likely, then, that the Respondent is either a Georgia limited liability company, with its name slightly misspelled in the WHOIS database, or merely an alias for an unknown party.
In either event, all that is evident concerning the Respondent’s business is the content that appears on the website to which the Domain Name resolves. That website is headed “MYATLANTAACCESS.COM” and displays photographs of Atlanta. It features a navigation bar and “Business Directory” list with categories of links, advertising, and information similar to those found on the Complainant’s website, such as “Events”, “Classifieds”, “Restaurants”, “Music”, and “Jobs”. The website is clearly commercial, expressly soliciting advertising on the website as well as offering assistance with advertising campaigns on the Internet and on radio and public transit systems.
Counsel for the Complainant sent a cease-and-desist letter dated April 6, 2006, to Domains by Proxy, Inc., the domain privacy service that was then listed as the registrant of the Domain Name. Domains by Proxy, Inc. undertook to forward the letter to its client. Domains by Proxy, Inc. subsequently cancelled its proxy registration service with respect to the Domain Name and changed the name of the registrant to the Respondent’s name when it was unable to contact the Respondent. Counsel for the Complainant sent a second letter, addressed to the postal address given for the Respondent’s contact person. The letter was returned unclaimed. Emails to the contact email address in the <yahoo.com> domain elicited an error message indicating that there was no such email account. As noted above, a letter to My City Access LLC also went unanswered.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered and well-known ACCESS ATLANTA mark, which the Respondent is using without permission or other legitimate interest. The Complainant argues that the Respondent registered and used the Domain Name in bad faith, attempting to mislead Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant unquestionably has rights in the registered ACCESS ATLANTA trademark. The Domain Name reverses the order of these words and adds the word “my”. These differences do not materially lessen the likelihood of confusion, particularly since the word “my” is commonly added to domain names, often signaling a personalized version of a website.
The Panel concludes that the Domain Name is confusingly similar to the Complainant’s ACCESS ATLANTA mark for purposes of the first element of the Complaint.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not offered an explanation for the choice of the Domain Name. There is no indication that the Respondent is known by a corresponding name or holds relevant trademark or other rights, and the website to which the Domain Name resolves is chiefly devoted to advertising and marketing services, not noncommercial or fair use of the Domain Name.
Such commercial purposes could in some cases constitute use of the Domain Name “in connection with a bona fide offering of goods or services”, but not if the evidence indicates that the Respondent purposefully engendered confusion to exploit the Complainant’s famous mark for commercial gain. That issue is better addressed below in analyzing the bad-faith element of the Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant’s registered trademark has been used prominently, at least in the Atlanta area, for some seventeen years in association with news and marketing of local businesses and events, as well as classified advertisements. The Respondent’s website similarly concerns businesses, events, and classified advertisements in the Atlanta area. The Respondent’s website effectively competes with the Complainant’s online and print versions of Access Atlanta, and it strains credulity to imagine that the Respondent was unaware of the leading print and online source for such local content. It is telling that the Respondent’s website includes price comparisons with local print advertising rates, because the Complainant’s newspaper and Access Atlanta insert represent two of the largest vehicles for print advertising in the Atlanta area. Thus, the Complainant reasonably infers that the Respondent was well aware of the ACCESS ATLANTA mark and sought to capitalize on its local fame to attract Internet visitors to its own competing website.
The Respondent has not come forward with an explanation or evidence to rebut this inference. Indeed, the Respondent’s failure to maintain correct registration contact information, or to respond to correspondence from the Complainant and the Center, tends to support the inference that the Respondent cannot demonstrate a good-faith reason for registering and using a Domain Name that is confusingly similar to the Complainant’s well-established mark.
The Panel concludes, therefore, that the Complainant has established both the second and third elements of the Complaint.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <myatlantaaccess.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: January 4, 2008