national arbitration forum

 

DECISION

 

APN Media, LLC v. APN Media LLC c/o Michael Alcamo

Claim Number: FA0702000921327

 

PARTIES

Complainant is APN Media, LLC c/o Joel Saferstein (“Complainant”).  Respondent is APN Media LLC c/o Michael Alcamo (“Respondent”), 272 First Avenue 10F, New York, NY 10009.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <americanparknetwork.com> and <parksurveys.com>, registered with Register.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2007.

 

On February 21, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <americanparknetwork.com> and <parksurveys.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names.  Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On February 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@americanparknetwork.com and postmaster@parksurveys.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 National Arbitration 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant states that Respondent was supposed to transfer the  <americanparknetwork.com> and <parksurveys.com> domain names pursuant to a sale of assets.

 

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

 

FINDINGS

Complainant, APN Media, LLC, is the publisher of American Park Network guides.  In connection with the provision of these goods and services, Complainant registered the AMERICAN PARK NETWORK with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,610,176 issued August 14, 1990).

 

Respondent registered the <americanparknetwork.com> domain name on June 15, 1996 and the <parksurveys.com> domain name on March 24, 2003.

 

 

DISCUSSION

Paragraph 15(a) of the 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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy 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; and

(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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the AMERICAN PARK NETWORK through registration with the USPTO.  The Panel finds that Complainant’s timely registration and subsequent use of the mark is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i).  See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

Respondent’s <americanparknetwork.com> domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a gTLD to an otherwise identical mark is insufficient to establish distinctiveness pursuant to Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).

 

However, Respondent’s <parksurveys.com> domain name and Complainant’s mark merely share the common term “park.”  In light of Complainant’s failure to allege any use of the disputed domain names, the Panel declines to rule on the confusingly similar nature of Respondent’s <parksurveys.com> domain name.

 

Rights or Legitimate Interests/ Registration and Use in Bad Faith

 

Complainant merely states a narrative describing how Respondent has failed to transfer the disputed domain names as it has allegedly indicated it would do.  The Panel finds that without any proof of Respondent’s use, the Panel must deny Complainant’s claim.  See Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Nat. Arb. Forum Apr. 23, 2004) (finding that Complainant failed to meet its burden pursuant to Policy ¶ 4(a)(ii) where Complainant neglected to state how Respondent used the disputed domain name in the Complaint); see also Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Complainant has not alleged any facts related to Respondent's use of the disputed domain name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).”)

 

Furthermore, Complainant’s assertions regarding Respondent’s contractual duty to transfer the <americanparknetwork.com> and <parksurveys.com> domain names indicates a business dispute, outside the purview of the Uniform Domain Name Dispute Resolution Policy.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Sandra J. Franklin, Panelist

Dated:  March 29, 2007

 

 

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