DECISION

Transpark LLC v. Network Administrator

Claim Number: FA0212000135602

PARTIES

Complainant is Transpark LLC, Boston, MA (“Complainant”) represented by Jeffrey J. Upton, of Hanify & King P.C.  Respondent is Network Administrator, Chapel Hill, NC (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <transpark.com>, registered with Bulkregister.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2002; the Forum received a hard copy of the Complaint on December 6, 2002.

On December 4, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <transpark.com> is registered with Bulkregister and that Respondent is the current registrant of the name.  Bulkregister has verified that Respondent is bound by the Bulkregister 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 December 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2002 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@transpark.com by e-mail.

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 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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

The <transpark.com> domain name is identical to Complainant’s TRANSPARK service mark.

Respondent has no rights or legitimate interests in the <transpark.com> domain name.

Respondent registered and used the <transpark.com> domain name in bad faith.

B. Respondent

Respondent has failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a registered service mark for TRANSPARK with the United States Patent and Trademark Office (“USPTO”).  The TRANSPARK service mark was registered on June 11, 2002 with the date of first use in commerce July 5, 2000.  Complainant contends that it “uses its service mark as the name of its business, in its signage, advertising, and business documents.”  The TRANSPARK service mark registration information, which states the mark is used for car parking services, is the only evidence that indicates Complainant’s business operations. 

Respondent registered the <transpark.com> domain name on December 7, 1998.  Respondent uses the domain name to link Internet users to a set of click-through advertisements with a notification that a website is planned for development. 

Complainant notes that after it sent a letter to Respondent on October 16, 2002 requesting a transfer of the <transpark.com> domain name, the Registrant was changed on the WHOIS information page.  Respondent never responded to Complainant’s demand letter.  A closer look at the WHOIS information that Complainant supplied shows that the <transpark.com> domain name registration was due to expire on December 6, 2002 and that the record was updated on November 27, 2002.  Complainant notes that the Registrant changed from Jonathan Kimball to Network Administrator, but the Administrative Contact remains Jon Kimball.  In addition, the new Registrant address is identical to the prior Administrative Contact address. 

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 the 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.

Paragraph 4(a) of the Policy requires that the 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

In order to bring a claim under Policy ¶ 4(a)(i) Complainant has the initial burden to prove with credible, relevant and admissible evidence that the domain name at issue is identical or confusingly similar to a mark in which it has rights.  See Crystalfontz Am. Inc. v. Tharn Lago, FA 115081 (finding Complainant has the burden to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights). 

Complainant has alleged service mark rights in TRANSPARK along with providing a registration number issued by the USPTO, Reg. No. 2,577,788.  Complainant provides no documentation of the registered service mark, but in the absence of a Response challenging the validity of the Complaint the Panel accepts Complainant’s allegations as true.  See 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”).  Therefore, the Panel concludes that Complainant’s service mark is credible evidence and finds that Complainant holds valid rights in the TRANSPARK service mark.

However, without establishing rights in a mark that predates a disputed domain name registration the outcome would allow junior trademark users to contest a prior domain name registration. Such an outcome is contrary to the Policy, which was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations.  Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate Respondent’s domain name registration, which numerous, previous decisions have held.  See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the Complainant’s rights predate the Respondent’s registration…of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).   

At present, the only evidence of Complainant’s vested rights in the TRANSPARK service mark is the registration date and date of first use of said mark, which Complainant supplied.  The TRANSPARK service mark was registered with the USPTO on June 11, 2002 with the date of first use in commerce denoted as July 5, 2000.  Respondent’s <transpark.com> domain name was registered on December 7, 1998, as indicated by the WHOIS information supplied in the Complaint.  Hence, Respondent’s <transpark.com> domain name registration predates Complainant’s rights in the TRANSPARK service mark by nearly two years.  Therefore, Complainant has not established valid rights in a mark that precedes the Respondent’s <transpark.com> domain name registration, and the Panel finds that Policy ¶ 4(a)(i) is not satisfied.  See Chum Ltd. v. Kashchum Café and Much Erendezvous/Kasra Meshkin, AF-0984 (eResolution Oct. 26, 2001) (finding that Complainant’s registration date for its trademark was more than two years after the domain name registration and thus Complainant does not have enforceable rights under the UDRP). 

Furthermore, Complainant failed to provide any evidence that would indicate vested common law rights in the TRANSPARK mark prior to Respondent’s December 7, 1998 domain name registration date.  The earliest evidence of vested rights in the TRANSPARK mark is the date of first use, July 5, 2000.  Therefore, without either a registered trademark or evidence of established common law rights prior to the <transpark.com> domain name registration the Compliant fails for want of enforceable rights in a mark identical or confusingly similar to the domain name.  See Bus. Architecture Group, Inc. v. Reflex Publishing, FA 97051 (Nat. Arb. Forum June 5, 2001) (Complainant did not adequately demonstrate common law rights that predate the domain name registration). 

The Panel concludes that no further analysis of the Policy need be undertaken because Complainant failed to satisfy Policy ¶ 4(a)(i).  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having failed to establish Policy ¶ 4(a)(i) the Panel determines that the Compliant should be DISMISSED.  Therefore, the requested relief shall be DENIED. 

Judge Harold Kalina (Ret.), Panelist

Dated:  January 21, 2003

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