CyberImprints.com, Inc. v. Mike Alberga
Claim Number: FA0110000100608
Complainant is CyberImprints, San Diego, CA (“Complainant”). Respondent is Mike Alberga, San Diego, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cyberimprints.com>, registered with BulkRegister.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 15, 2001; the Forum received a hard copy of the Complaint on October 26, 2001.
On October 19, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name <cyberimprints.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 October 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 20, 2001 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 firstname.lastname@example.org 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 December 6, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The disputed domain name is identical to a mark in which Complainant holds rights.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has registered and used the disputed domain name in bad faith.
Respondent did not submit a response in this proceeding.
Complainant was incorporated in the state of California with the name CYBERIMPRINTS.COM, INC. on February 23, 2000.
Respondent, then president of Complainant corporation, CYBERIMPRINTS.COM, INC., registered the disputed domain name with Complainant’s credit card but in his own name on November 3, 1999.
Nearly a year later, Respondent apparently resigned as president of Complainant and was removed as a director approximately one year after that. Subsequently, both parties agreed that Respondent would return the domain name to Complainant and correct the registration to reflect Complainant as the owner. These actions were never taken, however, and Respondent re-registered the domain name in his own name. It is alleged that, some time later, Respondent offered, in a telephone conversation, to sell the domain name to Complainant for $15,000. Respondent has been using the domain name to redirect viewers to his own commercial site.
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.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 that by registering its Articles of Incorporation with the State of California, it acquired exclusive rights to the CYBERIMPRINTS.COM mark.
Although the Panel finds the disputed domain name to be identical to the name registered by Complainant with the California Secretary of State, this does not give Complainant exclusive right to the domain name. The Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to “a trademark or service mark in which the complainant has rights.” Policy at ¶ 4(a)(i). Here, Complainant makes no claim that it holds any trademark or service mark rights in CYBERIMPRINTS.
If Complainant claims common law trademark or service mark rights, it is necessary to allege and prove that the mark is used to identify the source or sponsorship of certain goods or services and that there is strong customer identification of the mark as indicating the source of the goods or services in a particular geographical area. There are no such allegations.
While it has previously been held that the Policy does not require “a trademark [to] be registered by a governmental authority for such rights to exist,” Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001), Complainant has not offered any evidence to suggest that its mark is registered in another country, nor that it holds any trademark or service mark rights recognizable at common law.
Because Complainant has failed to allege or prove that it holds trademark or service mark rights in the disputed domain name, the Panel concludes that Policy ¶ 4(a)(i) has not been satisfied. It is not necessary to determine whether Respondent had rights or legitimate interests in respect of the domain name at issue or whether it was registered and is being used in bad faith.
Having failed to establish a necessary element under the ICANN dispute Policy, this Panel concludes that the requested relief should be denied.
Accordingly, it is the decision of this Panel that the domain name at issue, <cyberimprints.com>, not be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 11, 2001
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