WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eNamix, Inc. v. Li Yen Chun
Case No. D2001-1499
1. The Parties
The Complainant in this administrative proceeding is eNamix, Inc., a small business corporation organized under the laws of the State of California, United States of America.
The Respondent in this administrative proceeding is Li Yen Chun, a private individual residing at 4F, No. 6, Lane 79, Chienkwo S. Rd Sec.2, Taipei, Taiwan 106, Province of China.
2. The Domain Name and Registrar
The domain name in dispute is .
The registrar with which the domain name is registered is OnlineNIC, Inc. d/b/a C (hereinafter "the Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center via email on December 27, 2001, and in hard copy on January 4, 2002. The Center acknowledged receipt of the Complaint on December 31, 2001. On January 3, 2002, a Request for Registrar Verification of registration details was made by the Center and on January 16, 2002, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent, who is also the Administrator, Technical and Billing Contact; that the Policy applies to the disputed domain name; that the domain name is active and that the language of the registration agreements of the disputed domain name is Chinese.
On January 16, 2002, the Center satisfied itself that the Complainant had complied with all formal requirements (including payment of the prescribed fee).
On January 16, 2002, the Language of Proceeding was electronically transmitted to the Complainant. In the document, the issue of the language of this administrative proceeding was drawn to the attention of the Complainant. The Complaint has been submitted in English to the Center. Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Chinese. Accordingly, the Center requested the Complainant to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English. In the absence of such an agreement, the Center requested the Complainant to submit the Complaint translated in Chinese. In the event that the Complainant fails to provide the Center with either (a) an agreement with the Respondent to proceed in English or (b) the Complaint in Chinese by February 5, 2002, the Complaint will be deemed withdrawn, without prejudice to the submission of a new Complaint by the Complainant. Copies of the Complaint translated in Chinese dated February 8, 2002, were received in hardcopy by the Center and subsequently on February 11, 2002, the electronic version of the translated Complaint has also been received by the Center. A Request for English as Language of Proceeding has been made by the Complainant on January 21, 2002, to the Center. The Request was duly forwarded by the Center to the Administrative Panel when constituted.
On February 12, 2002, the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint with Transmittal Coversheet in English and Chinese were electronically transmitted to the parties.
On March 6, 2002, the Notification of Respondent Default was electronically dispatched to the parties.
On March 18, 2002, having received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Susanna H.S. Leong ("the Panelist"), the Center notified the parties of the appointment of a single-member panel ("the Panel") consisting of the Panelist. That day, the Center transmitted the case file to the Panel and notified the parties of the Projected Decision Date of April 1, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center�s assessment concerning the Complainant�s compliance with the formal requirements and the administrative Panel was properly constituted.
The Panel decides to accede to the Request by the Complainant to make English the language of the proceedings. The reasons are as follows:
1. The Panel is satisfied that both parties speak and write English. Based on the evidence adduced before the Panel, the Panel finds the Respondent, an individual of Chinese origin, to be proficient in the English language having participated in two prior ICANN domain name proceedings: (a) The British Council v. Li Yen Chun, WIPO Case No. D2001-0997 and (b) Emprise Financial Corp v. Li Yen Chun, eResolution Case No. AF-0890. Accordingly, the use of the English language in the proceedings will not be prejudicial to the interests of the Respondent.
2. The Panel finds that both parties are using the mark in connection with the English language.
The Panel is satisfied that a request had been sent to the Respondent via electronic mail on January 18, 2002, by the Complainant to make English the language of the proceedings but the Respondent had defaulted in his Response.
Accordingly, the Panel, exercising its discretion under Paragraph 11(a) of the Rules, and having regard to the circumstances of this administrative proceeding, chooses English as the language of the proceedings. Therefore, the Panel�s decision shall be delivered in English.
4. Factual Background
The Complainant, eNamix, Inc. ("the Complainant"), is a small business corporation organized under the laws of the State of California, United States of America. Its primary business is to provide technical staffing and software sales services to corporate and individual clients situated throughout the United States of America. The President of the Complainant is one Mr. Jeltema and he has continuously run the business of providing technical staffing services under the eNamix name since that name was adopted in September 1999. In September 1999, Mr. Jeltema, using the email account of his wife and fellow eNamix employee Gerlie Jeltema, registered the domain name . A year later in September 2000, the Complainant launched its website which was accessible via the domain name .
On September 2, 2001, the registration period of elapsed. However, the renewal notice was sent to an inactive email address because the Complainant inadvertently neglected to provide the Registrar with its new email address. Consequently, the Complainant did not timely file a registration renewal for its domain name . The Complainant learned of its mistake on October 9, 2001, when it lost control of the domain name and acted swiftly to rectify the mistake. The Complainant filed a registration application on October 9, 2001, but the Respondent has acted even faster and a registration of the domain name in the Respondent�s name became effective on October 11, 2001. As of October 11, 2001, the domain name accessed the Respondent�s website and it contained a statement that the domain name was for sale.
Thereafter, the parties engaged in a series of negotiation for the transfer of the domain name.
On October 12, 2001, the Complainant offered $200 for the domain name through A, an online domain name broker. The Respondent did not make any direct response to the October 12, 2001, offer. Thereafter, Mr. Jeltema observed that on October 15, 2001, the Respondent�s website no longer stated that the domain name was for sale.
Approximately one month after control of the domain name passed to the Respondent, Mr. Rick Caselli, an individual client of the Complainant, posed as the CFO of eNamix and offered the Respondent $15,000 for the domain name. Mr. Rick Caselli was never an agent, employee or authorized representative of the Complainant but the Respondent did not question his status. During the course of their email correspondence, the Respondent told Mr. Rick Caselli that although he had not originally intended to sell the domain name, he would consider serious offers from him. Finally, the Respondent accepted Mr. Rick Caselli�s offer of $15,000 of the transfer of the domain name. Throughout the negotiations, the Respondent at no point elaborated on his claim that he intended to make use of the domain name or any specific legitimate use intended for the domain name.
As of result of the Respondent�s registration and control of the domain name , the Complainant was compelled to transfer its website to the domain .
5. Parties� Contentions
A. Complainant
The Complainant had developed strong common law rights in its service marks eNamix and . The Complainant contends that the Respondent�s domain name is absolutely identical to the Complainant�s service marks. In the event that the Respondent�s domain name is deemed non-identical to "eNamix", the Complainant contends that the two names are confusingly similar.
The Complainant contends that the Respondent has no rights or legitimate interest in the domain name. Prior to the notice of the present domain name dispute, the Respondent had not used nor made demonstrable preparations to use the domain name or a name corresponding to in connection with a bona fide offering of goods or services. After Respondent appropriated the domain, he associated it with his website, which is no more than a "portal" site providing categorized links to other websites according to the Yahoo model. Absolutely no goods or services are offered for sale on Respondent�s website. As Respondent has made absolutely no commercial use of the domain he appropriated from eNamix, Inc., he has no rights or legitimate interest in that domain. The Respondent has no pending U.S. trademark application for either "eNamix" or "." and he is not commonly known by the name eNamix. The Respondent is not making a legitimate noncommercial or fair use of the domain name and is not making an educational, political, satirical or other use of the domain name that implicates free speech principles, nor does his use fall within any other recognized category of fair use. The Complainant contends that the overwhelming weight of the evidence supports the conclusion that the portal site is a sham adopted to obscure Respondent�s intent to extort payment from the Complainant.
The Complainant contends that the Respondent has registered and is using the domain name in bad faith. All the evidence supports the inference that Respondent registered the domain only for the purpose of forcing eNamix, Inc. to purchase it back at a price in excess of the registration costs.
B. Respondent
The Respondent has failed to submit a Response to the Complaint filed against him.
6. Discussion and Findings
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (Paragraphs 4(a), (b), (c)), the Panel concludes as follows:
(i) Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Panel finds that although the marks "eNamix" and "" are not registered service marks of the Complainant, the Complainant has nevertheless developed strong common law rights in them. This is achieved through extensive usage of the marks by the Complainant and over the years, many corporations that have technical staffing needs and individuals with marketable technical skills in the United States of America have come to associate the name "eNamix" and the domain name "" with the Complainant�s business. Several cases under the Policy have decided that the Policy affords protection not only to those having rights in registered trademarks but also to those having common law rights in their trade or service marks [1]. As such, the Panel finds that the Complainant has rights in the service marks "eNamix" and "" concerned.
The Panel also finds that the Respondent�s domain name is identical to the Complainant�s service marks "eNamix" and "". The Respondent�s domain name is absolutely identical to the Complainant�s domain name both visually and phonetically. With regard to the Complainant�s service mark "eNamix", the Panel finds that the Respondent�s domain name is identical to it. The use of the lower case in the letter "N" in the Respondent�s domain name does not render it visually or phonetically different from the Complainant�s service mark "eNamix". Similarly, the attachment of the suffix ".com" in the Respondent�s domain name also does not render it visually or phonetically different from the Complainant�s service mark [2].
(ii) Whether the Respondent has no rights or legitimate interests in respect of the domain name
The Panel finds that no evidence has been adduced to show that prior to the notice of the present domain name dispute, the Respondent had used nor made demonstrable preparations to use the domain name or a name corresponding to in connection with a bona fide offering of goods or services. The Panel further finds that after the Respondent had appropriated the domain, he associated it with his website, a "portal" site providing categorized links to other websites according to the Yahoo model. There was absolutely no goods or services offered for sale on Respondent�s website. In fact, the Respondent�s portal site is accessible not only through the domain, but also through at least six other domain names such as and . In each case the website is essentially identical to the website, differing only in the domain name listed at the top of the page and the addition of the words "For Sale" under the domain name. In the opinion of the Panel, this clearly showed that the Respondent had no intentions to use his portal page in a bona fide manner to establish consumer goodwill or trademark rights in the domain name or any of the other domain names.
In addition, the Panel also finds that the Respondent has no pending U.S. trademark application for either "eNamix" or , and he is not commonly known by the name eNamix.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name and is making an educational, political, satirical or other use of the domain name that implicates free speech principles, or any other recognized category of fair use.
The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain names. In accordance to the Rules, Paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to adduce evidence to show cause that he has rights or legitimate interests to the said domain names.
The Panel thus finds that the Respondent does not have any rights or legitimate interests in the domain name in question.
(iii) Whether the domain name was registered and was being used in bad faith
It is clear from the evidence adduced before the Panel that the Respondent had no business reason for the registration of the domain name . Nevertheless, the Respondent acted very swiftly to secure registration shortly after the Complainant�s registration expired and in the days immediately after the Respondent had secured registration, the Respondent�s website indicated that the domain name was for sale. The Respondent had also registered at least six other domain names that are confusingly similar to other trade names of existing businesses. The portal page that the Respondent associates with all these domain names contains only information that may be easily copied from other sites and clearly generates no revenue or consumer goodwill for him. This is a strong indication that the Respondent did not register the domain name in question for bona fide commercial purposes to establish consumer goodwill or trademark rights in the name. The only logical inference to be drawn from the Respondent�s acts is that the sole or primary purpose of the Respondent�s registration of the domain name in question is to sell the domain name to the Complainant or his representatives and to extract a price from the Complainant for the disputed domain name in excess of the Respondent�s costs.
On the basis of the evidence submitted by the Complainant, in particular Annex 3 and Annex 16, the Panel finds that the Respondent did intend to sell the domain name and in fact, agreed to sell it to one Mr. Rick Caselli for the price of $15,000. In accordance to the Policy, Paragraph 4(b), this fact together with all the evidence adduced before the Panel indicates that the Respondent�s real purpose for registering the domain name is to sell or otherwise transfer the domain name registration to the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the said domain name.
Accordingly, the Panel finds that the domain name is registered and retained by the Respondent in bad faith.
The Panel notes that the Complainant has, through its own inadvertence and neglect, failed to make timely renewal of its registration in the domain name . This failure to do so must necessarily deprive the Complainant of its right to challenge the bona fide registration of a party possessing legitimate rights or interests in the name "eNamix" or names similar to it. However, the Panel finds that in the present administrative proceeding, the Respondent is not such a party possessing legitimate rights or interests in the domain name concerned. Furthermore, the Panel has concluded that the domain name was registered and retained by the Respondent in bad faith. As such, the Complainant retains its rights to challenge the Respondent�s registration in the said domain name .
7. Decision
In accordance to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name in dispute, , be transferred to the Complainant.
Susanna H. S. Leong
Sole Panelist
Dated: March 27, 2002
Footnotes:
1. Bennett Coleman & Co. Ltd v Steven S. Lafwani (WIPO Case No. D2000-0014); SeekAmerica Networks Inc. v Tariq Masood and Solo Signs (WIPO Case No. D2000-0131); Cedar Trade Associates, Inc. v Gregg Ricks (NAF93633); and Passion Group Inc. v Usearch Inc. (AF-0250).
2. Refer Alloys Rods Global, Inc. v Nancy Williams (WIPO Case No. D2000-1392).
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