WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CUX, Inc. v. DomainNamesAvailable
Case No. D2000-0972
1. The Parties
Complainant is CUX, Inc., a corporation of New York, of 381 Park Avenue South, Ste 713, New York, New York 10016.
Respondent is DomainNamesAvailable of The Oaks, Buckley, CH73JA, Flintshire, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is . The Registrar is Melbourne IT, Ltd., doing business as Internet Names Worldwide.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") has provided documentation showing:
a) The Center received Complainant�s Complaint on August 8, 2000 (electronically) and August 10, 2000 (hard copy).
b) In response to the Center�s request of August 15, 2000 for Registrar�s verification, Internet Names Worldwide, a division of Melbourne IT, Ltd., confirmed on August 16, 2000 that the domain name was registered on January 7, 2000 in the name of DomainNamesAvailable, the current Registrant, and that a copy of the Complaint was sent to the Registrar by Complainant. The Registrar also declared that the administrative and technical contact at DomainNamesAvailable was Caspar Pritchard.
c) On August 17, 2000 Notification of Complaint and Commencement of Administrative Proceeding and also a copy of the Complaint were forwarded by electronic mail to Respondent, with hard copies of same and exhibits to be sent by courier.
d) On September 2, 2000 the Center received Respondent�s Response electronically and on September 4, 2000 by hard copy.
The formal date of the Commencement of the Administrative Proceeding is August 17, 2000.
In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center found that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules, and further that the payment in the required amount to the Center had been made by Complainant.
The Panel accepts the above findings of the Center and further finds:
a) The Complaint was properly notified to Respondent in accordance with the Rules, paragraph 2(a) on August 17, 2000, advising Respondent that the formal date of the commencement of the Administrative Proceeding is August 17, 2000, and that a response must be received by the Center within twenty calendar days, that is by September 5, 2000.
b) A Response from Respondent was forwarded to the Center by electronic mail on September 2, 2000 and a hard copy with exhibits was received by the Center on September 4, 2000. The Response declared a copy had been forwarded to Complainant by electronic mail.
c) Acknowledgement of receipt of the Response was forwarded by the Center to Complainant and to Respondent on September 4, 2000.
d) The Administrative Panel was constituted of Joan Clark, Q.C., who had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
e) The case file was transferred to the Administrative Panel on September 12, 2000.
f) On September 12, 2000 the Presiding Panelist advised the Center that Complainant had attached to the electronically mailed copy of the Complaint, under the title "Annex E Complainant�s Trademark Registration" being an annex to the Complaint, a reference to a web site which the Panelist could not access, and the Panelist asked the Center to request Complainant to supply a copy of its registration.
g) The request for a copy of Annex E Complainant�s Trademark Registration was forwarded by the Center to Complainant, with a copy to Respondent, on September 13, 2000 with a request that a copy of the above document be sent to the Presiding Panelist directly, to the Center and to Respondent.
h) On September 14, 2000 Complainant forwarded to the Administrative Panel, by electronic mail and also by facsimile, a document entitled "Complainant�s Reply Brief" which included a copy of Annex E and copies of other documents, as well as at least two pages of text, which the Presiding Panelist has not read.
By letter of September 18, 2000 forwarded by electronic mail to the Panel and to the Center, Respondent complained of the filing of a Reply Brief by Complainant, and referred to the possible further expenses which this might incur.
On September 19, 2000 the Administrative Panel rendered a decision in Procedural Order No. 1 that it did not accept any part of Complainant�s Reply Brief, with the exception of a copy of Annex E, and stated that the remainder of Complainant�s Reply Brief, both the electronically mailed copy and the copy forwarded by facsimile, had been placed in a sealed envelope which would not form part of the record.
In Procedural Order No. 1 the Administrative Panel stated that the Rules provide for the filing of a Complaint and of a Response and for no other procedures by the Parties, and further stated that the Panel had not requested any further statements or documents from either of the Parties except for a copy of Annex E from Complainant, that Complainant had not requested permission to file additional submissions, and that the Reply Brief was filed outside the scope of the Rules and could only be accepted at the discretion of the Administrative Panel, in which case fairness would dictate that Respondent be given an opportunity to respond to whatever submissions might be contained in Complainant�s Reply Brief. The Administrative Order No. 1 further stated that the Panel is required to ensure that the Administrative Proceeding take place with due expedition.
This dispute has therefore been decided upon the basis of the initial Complaint filed by Complainant including a copy of Annex E Complainant�s Trademark Registration and the Response filed by Respondent.
4. Factual Background and Parties� Contentions
A. The Complaint
Complainant asserts that it has been using the trademark CORPORATE UNIVERSITY XCHANGE in connection with educational services, namely conducting conferences, workshops and seminars in the field of business education for executives, managers and corporate employees and related consulting services, since at least as early as January 1, 1995. Complainant is the owner of the registered trademark CORPORATE UNIVERSITY XCHANGE which, according to the Certificate of Registration, was applied for on June 13, 1997 and the Statement of the first use in commerce was on January 19, 1985. The registration issued January 25, 2000.
Complainant asserts that Respondent�s domain name registration, , apart from the gTLD, is identical to Complainant�s trademark CORPORATE UNIVERSITY XCHANGE.
Complainant further asserts that Respondent has no legitimate rights in and to the name CORPORATE UNIVERSITY XCHANGE for which Complainant owns the trademark and all rights, title and interest thereto. Complainant also asserts that Respondent registered its domain name intending to either i) profit from the sale of the domain name by selling it to Complainant, ii) develop its own web site using Complainant�s trademark with the intent to divert customers away from Complainant, cause confusion in the marketplace or otherwise trade on the goodwill and name of Complainant, and/or iii) prevent Complainant from registering the domain name for its own use in its business.
Complainant further asserts that the domain name was registered by Respondent in bad faith. Complainant states that Respondent has owned the domain name for almost seven months and maintains an active web site to which Respondent acknowledged receiving misdirected hits from people who were presumably searching for Complainant�s web site.
Complainant declares that on or about July 28, 2000 it received an e-mail from Shaqil, acting in his/her official capacity on behalf of Respondent. Complainant declares that, by the e-mail message which Complainant produced as Annex F, Respondent informed the Plaintiff i) that it owned the domain name , ii) that it believed that the domain name includes the whole of Complainant�s "full name" and in fact registered the domain name "after seeing an advert for an exhibition in the U.S.", iii) that it was aware of Complainant�s existence from an advertisement of Complainant�s up-coming exhibition in the U.S., iv) that it had no present plans for developing the web site, v) that it was interested in selling the domain name, vi) that it had received an anonymous offer to purchase the same and vii) that it was aware that the web site already received a few hits "which it believed to be from people who were looking for Complainant�s web site".
The e-mail of July 28, 2000 read as follows:
"Dear Sir/Madam:
We are group of individuals who have various different backgrounds on internet delivery & development and we registered a number of domain names over a year ago with the intention to develop an eLearning portal, one of them being www. which I believe is your full name after seeing an advert for an exhibition in the U.S.
We don�t have any plans on developing this site at present and are possibly interested in selling the domain. We have had a small number of hits which I assume have been generated by people looking for your site. We have also had an anonymous e-mail from someone willing to purchase the domain which has not yet been developed further.
Please let us know if you have interests in the above domain, we will be happy to talk to you via phone or eMail, or if not best of luck with your future developments.
Shaqil"
Complainant refers to the manner of display in its home page on the web of the corporate name, CORPORATE UNIVERSITY XCHANGE, INC. in which the name is displayed with a stylised "X" larger that the rest of the mark. Complainant compares this with Respondent�s web site for which also shows the domain name with an enlarged "X". Complainant further mentions that the home page of Respondent under this domain name shows a number of what appear to be links, but that when a viewer attempts to access the links, the viewer is merely presented with a new page that is visually identical to the home page. Accordingly, Complainant concludes that Respondent�s web site is a single page displaying Complainant�s trademark with a vague description of services that are not accessible by the web site and that there is no bona fide offering of goods or services through the site.
Complainant states that Respondent has offered to sell the domain name to Complainant for an unspecified price, with a tacit implication that the domain name may also be sold to a third party, and that Respondent�s "use" of the domain name is solely a means to effectively hold the name so that Complainant cannot use it. Complainant emphasizes the confusion created by Respondent�s web site, and avers that use of the domain name by Respondent will further create consumers� confusion.
Complainant also refers to Respondent�s name, DomainNamesAvailable, which "implies that Respondent is in the business of securing and reselling domain names". Complainant submits that it has been led to believe that Respondent does not provide educational services of any kind, and more likely is in the business of buying and reselling domain names.
Complainant also asserts that, if Respondent were involved in eLearning and/or related services, Respondent would be well aware of Complainant, and therefore would only register the domain name if it were seeking to trade on the goodwill developed by Complainant in connection with the mark in the field of educational services.
Complainant further states that Respondent has never been known by the name "Corporate University Xchange" or any similar name or term.
Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred from Respondent to Complainant.
B. The Response
In response to the assertion that Complainant�s trademark and Respondent�s domain name are identical or confusingly similar, Respondent asserts that there is a clear distinction between Complainant�s "logo" and Respondent�s "logo", that the style of the letter "X" in each is "distinctly different", and further that the addition of the word "Inc" in Complainant�s incorporation (of Corporate University Xchange, Inc.) creates a "clear distinction". Respondent further asserts that Complainant�s trademark is U.S. based while Respondent�s services were planned to be a complete free global offering, and concludes that there is "no confusing similarity in this situation".
Respondent states that Complainant "offers educational services, including conferences, workshops and seminars in business education for executives, managers and corporate employees, consulting services", whereas Respondent�s offering as taken from its web site is of a web portal set up to assist the viewer in making essential decisions in "this new digital era giving you access and sharing eLearning experience from around the world from authoring to deployment". Respondent claims there is a difference in the services offered, and that the target markets are dissimilar, as Complainant is linked to Corporate Universities as opposed to Respondent which is linked to both Corporate and University sectors.
Respondent asserts that the three words, Corporate, University and Xchange are generic words, used separately for Respondent�s target market and the purpose of its business whereas, according to Respondent, the context of use by Complainant is more focused on "Corporate University".
Respondent admits to receiving hits on Respondent�s web site, stating "it was an assumption made by Respondent that these hits were made for the intention of Complainant but remains uncertain. It is possible that these hits may have been originated from people who know Respondent or from visitors wanting to register a similar domain, as eLearning is a rapidly growing market".
In response to Complainant�s allegation that Respondent has no right or legitimate interests in the domain name, Respondent states that Respondent�s web site is not active with links, but that a considerable amount of work has been carried out on the content development covering the total links displayed.
Respondent asserts that when Respondent registered the domain name on January 7, 2000, Respondent was not aware of Complainant or the services offered by Complainant.
Respondent states that after registration of the domain name, Respondent had drawn up a "complicated and costly plan to develop the site", including proposed links which would be launched with Corporate Xchange and with University Xchange and research into learning portals, learning management systems, the development of target markets and mailing lists as well as Respondent�s presence at various eLearning events in the United Kingdom.
Respondent asserts that before Respondent had any notice of the dispute, Respondent�s use of or demonstrable preparations to use the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods and services.
In response to Complainant�s allegation that the domain name was registered and is being used in bad faith, Respondent states that he is not in the business of selling domain names, and that "�DomainNamesA� is an active domain name selling company but is not associated with Respondent in any way". Respondent reiterates he is not in the business of selling domain names and that this name is a mere statement reflecting a "domain name being available". {The Panel notes that according to information supplied by the Registrar Internet Names Worldwide, a division of Melbourne IT Ltd., the domain name in question is registered in the name of DomainNamesAvailable and that Caspar Pritchard is listed as the technical and administrative contact, and further that the Respondent has expressed the wish, in these proceedings, that the name of the Registrant be changed from DomainNamesAvailable to Caspar Pritchard. It is not known whether such a change were requested of or effected by the Registrar.}
Respondent asserts that Respondent "has not launched the business venture related to the disputed domain name due to economic reasons and decided to put at a standby on the business plans for the development of the at-issue domain name" in order to focus upon opening another internet business.
Respondent does not deny but instead affirms the sending of the e-mail to Complainant, as alleged by Complainant, in which the domain name was offered for sale, and asserts that at the time Respondent would have been willing to sell the domain name at cost price, but is no longer willing to do so, having found economic resources to develop the web site.
Respondent denies that Respondent acted in bad faith by acquiring the domain name and denies having used it in bad faith.
Respondent concludes requesting that the Administrative Panel find for Respondent and deny the remedy requested by Complainant.
5. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:
(i) The domain name in issue is identical or confusingly similar to Complainant�s trademark or service mark, and
(ii) 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondent�s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
a. Identity or confusing similarity of the domain name to a trademark or service mark in which Complainant has rights
The Administrative Panel finds that is virtually identical to Complainant�s registered trademark CORPORATE UNIVERSITY XCHANGE and unregistered trademark CORPORATE UNIVERSITY XCHANGE, INC.. The spacing between the three words in the trademarks, the addition in the domain name of the gTLD and the addition of "Inc." in Complainant�s unregistered trademark do not alter the fact that the domain name is virtually identical to Complainant�s trademarks. Even if the domain name and the marks of Complainant were considered to be only "similar", confusion between the domain name and Complainant�s trademarks has been admitted by Respondent who wrote to Complainant advising that there had been several hits on the domain name web site, which Respondent assumed were intended for Complainant. The Administrative Panel therefore concludes that the domain name and Complainant�s trademarks are virtually identical and confusingly similar.
The requirement of paragraph 4(a)(i) of the Policy is therefore met.
b. Rights or legitimate interests of Respondent in the domain name
Complainant adopted its registered trademark many years before Respondent�s domain name was registered. The burden is on Respondent to demonstrate Respondent�s rights or a legitimate interest in the domain name.
There is no evidence that Respondent is commonly known by the domain name or that Respondent is making a legitimate non-commercial or fair use of same without intent for commercial gain to misleadingly divert customers or tarnish Complainant�s trademark, circumstances which would be indicative of Respondent�s rights or legitimate interests in the domain name as described in paragraph 4(c) of the Policy. The question arises as to whether, before any notice to Respondent of the dispute, Respondent had made use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
Respondent has admitted that Respondent�s "web site is not active with links" and that Respondent "has not launched the business venture related to the disputed domain name due to economic reasons and decided to put at a standby on the business plans for the development of the at-issue domain name." However, Respondent avers to have drawn up a "complicated and costly plan to develop the site", and refers to the link for Corporate Xchange and the link for University Xchange, which seem to be merely future projections, and research into various areas described in a general non-specific manner, such as research into learning portals, research into various learning management systems, and research into development of Respondent�s potential target markets. Respondent has further stated to have been present at various eLearning events in the U.K. and to have obtained mailing lists for direct marketing activities to U.K. universities and to London Small and Medium Size Enterprises. The Panel takes note of the fact that more than seven months have elapsed since the domain name was registered. This delay coupled with Respondent�s offer in the e-mail of July 28, 2000 to sell the domain name to Complainant, as well as the vagueness and generality of Respondent�s alleged preparations for use of the domain name, together with conflicting statements that Respondent has decided to put his business plans on "stand-by" and, as stated in the e-mail of July 28, "we don�t have any plans on developing this site at present and are possibly interested in selling the domain", have led the Panel to the conclusion that whatever preparations were made they were directed to the sale of the domain name, either to Complainant or to a third party. The Panel has concluded that Respondent has failed to prove use of or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, prior to notice to Respondent of the dispute by the commencement of the proceedings on August 17, 2000.
The criterion of paragraph 4(a)(ii) of the Policy has therefore been met.
c. Registration and use of the domain name in bad faith
The Panel is of the view that the Respondent DomainNamesAvailable is in the business of making available, i.e. offering for sale, domain names or, at the very least, the domain name in dispute. Any contrary conclusion to be drawn from the Respondent�s name would be incongruous.
Respondent has asserted that the domain name was registered at a time Respondent was not aware of Complainant (CUX, Inc.) or the services it offered. But Respondent has not denied knowledge, at the time of registration of the domain name, of Complainant�s registered trademark (CORPORATE UNIVERSITY XCHANGE) or Complainant�s unregistered trademark (CORPORATE UNIVERSITY XCHANGE, INC.) as distinct from Complainant�s name, CUX, Inc.
As noted above, the Panel has found a surprising virtual identity and confusing similarity between Complainant�s registered and unregistered trademarks and Respondent�s domain name.
Considering the inherent distinctiveness of Complainant�s registered trademark CORPORATE UNIVERSITY XCHANGE and unregistered trademark CORPORATE UNIVERSITY XCHANGE, INC., consisting of an unusual combination of three words, and the fact that the domain name as it appears on the print-out of Respondent�s web site refers to the same or a related field of activity as the field of services for which Complainant�s trademark is registered, coupled with the fact that there is no specific denial in the Response that Respondent was aware of Complainant�s trademarks (as opposed to Complainant CUX, Inc. or its services), the Panel has reached the conclusion that the domain name in dispute was registered with knowledge of Complainant�s registered and unregistered trademarks for the purpose of making the domain name available and so was registered in bad faith.
There are further grounds for holding that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists, without limitation, four circumstances which, if found to be present "shall be evidence of the registration and use of the domain name in bad faith". Three of the examples refer to the registering of a domain name without reference to its use; the fourth example refers to the use of a domain name without reference to its registration. Since any one of these four examples defines "evidence of the registration and use" of a domain name in bad faith, and since the four listed circumstances are not limitative, the principles of statutory interpretation provide that circumstances of a like nature, if found by the Panel, would also satisfy the requirement of both registration and use of a domain name in bad faith. The examples listed under paragraph 4(b) recognize that a passive holding of a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. The concept of a domain name being used in bad faith is not limited to positive action (see WIPO Case D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).
In the present case Respondent�s continued retention of the domain name, which Respondent has acknowledged attracted Internet users to its web site and created confusion with Complainant, is tantamount to a use of the domain name in bad faith. Notwithstanding the confusion already created, Respondent has admitted to being prepared to sell the domain name to a third party which would increase the confusion.
Furthermore, the Panel has concluded that Respondent�s maintenance under the domain name of an active web site, however incomplete, constitutes a use of the domain name by which Respondent has intentionally attempted to attract for commercial gain internet users to Respondent�s web site, by creating a likelihood of confusion with Complainant�s registered and unregistered trademarks, as described in paragraph 4(b)(iv) of the Policy. The fact that confusion has already taken place and Respondent continues to maintain the web site indicates an intention to continue to attract internet users to Respondent�s web site for a commercial gain which may consist of profits from the eventual sale of the domain name.
While the Response indicates a desire to change Respondent�s name from DomainNamesAvailable to Caspar Pritchard, this option is not available to Respondent as long as the name listed with the Registrar remains DomainNamesAvailable. In any event the Panel has noted that Caspar Pritchard is listed as the technical and administrative contact for the Registrant DomainNamesAvailable, and the Panel is of the view that the inferences to be drawn from the name DomainNamesAvailable would remain valid in the event the name of the Registrant should be changed to that of Caspar Pritchard.
The Panel has therefore concluded that the domain name has been registered and used in bad faith, and the criterion of paragraph 4(a)(iii) of the Policy has been met.
6. Decision
(1) The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, paragraph 4:
that the domain name in dispute is identical and confusingly similar to the registered and unregistered trademarks of Complainant;
that Respondent has no rights or legitimate interests in respect of the domain name; and
that it has been registered and is being used in bad faith.
(2) The Panel accordingly requires that the domain name be transferred forthwith to Complainant.
Joan Clark
Presiding Panelist
Date: September 27, 2000
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