Creo Products Inc.; Scitex Corporation Ltd. v. Website in Development

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Case No. D2000-0160

Creo Products Inc & anor v. Website in Development

Date of decision: May 1, 2000

Result: In this case the Panel:

(i) has not found all of the necessary elements proven; and

(ii) dismisses the Complaint.

1. The Parties

1.1 Two organisations purport to join together as the Complainant: Creo Products

Inc, a Canadian corporation of 3700 Gilmore Way, Burnaby, British Columbia,

Canada; and Scitex Corporation, an Israeli corporation of 3 Hamada Street, Herzlia,

Israel.

1.2 The Respondent is Website in Development, organisational status unknown,

but with an address at 8635 W. Sahara, Las Vegas, Nevada, in the United States.

2. The Domain Name and Registrar

2.1 The domain name upon which this complaint is based is creo-scitex.com.

The registrar of the domain name as at the date of the Complaint is Network

Solutions Inc ("NSI").

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution

Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999 (the "Policy"), in accordance with the Rules for

Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October

24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the

"Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center

(the "Centre") by email on March 15, 2000, and in hard copy by courier

on March 16, 2000. The hard copy of the Complaint was accompanied by the fees

prescribed under the Supplemental Rules.

3.3 The Centre sent a Request for Registrar Verification to NSI on March 20,

2000, by email. NSI responded to the Centre’s request by email on March 21,

verifying (1) that NSI was the Registrar for the domain name in dispute, (2)

that the Respondent was the current registrant of the domain name in dispute,

and (3) that creo-scitex.com had an ‘active’ status. The Panel notes

that the response from NSI also confirmed that NSI had received a copy of the

Complaint from the Complainant, as required by Supplemental Rules paragraph

4(b).

3.4 Compliance with formal requirements having been satisfied on March 21,

2000, the Centre sent a Notification of Complaint and Commencement of Administrative

Proceeding on March 23, 2000, to the email address of the Respondent as advised

by NSI in its Verification Response (ultradomains@aol.com) as well as

to postmaster@creo-scitex.com. Hard copy documents were also despatched

to the Respondent in Las Vegas, USA and to the Technical Contact shown in NSI’s

whois database, namely, IC, Auto at a Cambridge, Massachusetts, USA address

on the same day by EMS Worldwide courier. The Centre also attempted on March

23 to notify the Respondent’s Technical contact by facsimile transmission. However,

it is clear from the ‘RAPPORT D’ERREUR TX’ document furnished to the Panel that

the facsimile transmission was not successful. The emails to each of ultradomains@aol.com

and autoinc@store.yahoo.com were returned with a 550 error (user

unknown) whilst the email to postmaster@creo-scitex.com was returned

with a host name lookup failure. The Centre subsequently, on April 3, 2000,

successfully emailed the Notification to the Technical Contact’s correct email

address of autonic@store.yahoo.com. The Panel has been furnished with

documentary evidence, in the form of a tracking record, that the EMS couriers

to the Respondent and to the Technical Contact were in fact delivered on March

27 at 9.50 am and 10.05 am respectively in USA. Although the Panel has not been

provided with delivery documentation for other messages, the Panel is thus satisfied

that the Respondent had actual notice of the Complaint as least by the time

of delivery of the hardcopy Notification.

3.5 Although the Notification made specific reference to the 20 calendar day

period within which the Respondent was entitled to submit a response to the

Complaint, the Centre had received no response by April 13, 2000, and, accordingly,

sent a Notification of Respondent Default on that day to the Respondent and

the Complainant via the correct contact details referred to in paragraph 3.4

of this decision. The Centre advised the Complainant’s representative that the

Notification of Default had been delivered by EMS courier (as shown in the relevant

tracking record) to both the Respondent and its Technical Contact on April 17,

2000.

3.6 On April 19, 2000, after the Administrative Panel had been appointed but

before it had commenced its deliberations or received the hard copy case file

from the Centre, the Panel received a copy of an email sent by the Complainant’s

authorised representative to the Centre in the following terms:

"We also have been unable to reach the Respondent with the e-mail address

listed in his domain name registration, namely, "ultradomains@aol.com".

However, our client (Complainant) recently received an e-mail, presumably

from the Respondent, regarding this proceeding. That e-mail originated from

"BEvans8576@aol.com". The e-mail was not signed and did not identify the

referenced WIPO proceeding, but it did mention the domain name at issue,

creo-scitex.com. The e-mail also stated that Respondent had "just sent in

my response...." The e-mail did not include a copy of the response, but was

sent on Tuesday, April 4, 2000, at 2:15 PM.

We have no further information about how to contact the Respondent."

3.7 The Panel, noting that April 4, 2000, was within the 20 day period referred

to in the Rules, and being concerned to apply the requirement of paragraph 10

of the Rules, that each Party be given a fair opportunity to present its case,

directed the Centre to attempt to communicate with the email address BEvans8576@aol.com

to see if any response might be elicited. On April 21, 2000, the Panel was copied

on an email in the following terms from BEvans8576@aol.com to the Centre (which

was also copied to the Complainant’s authorised representative):

3.8 "This shall act as my official response.

The name creo-scitex.com is a domain name that is associated with our

company, which has been for six years. Our post office box can confirm this

to be so by phoning them at (702) 363-4433 who will confirm Creo-Scitex has

been our company, and a company in existence for nearly 6 years that they

have been collecting mail from us addressed to Creo-Scitex. Creo is our

founders last name, and the company is Scitex & Company. Further, we are

in

the process of trademarking this very name.

The fact that this company has decided to rename their company is purely

coincidental, and we should not be the victims of their attempt to play David

& Goliath simply because we intend to use our company name, the same they

have recently decided to name their own.

I do hope this response is adequate, as I am unaware of any other procedure

in making my response known to you.

I did in fact speak directly with this company a few weeks ago or a legal

representative of theirs in Seattle, Washington, and they actually apologised

for this situation to me after the lady I spoke with confirmed what I am

telling you.

Thank you for your attention in this matter.

Regards,

B. Evans

cc: James R. Creo

Scitex & Company

3.9 All other procedural requirements appear to have been satisfied.

4. Factual Background

4.1 Activities of the Complainant

The following information was asserted as fact in the Complaint:

The complainants have entered into agreements by which substantial assets and

subsidiaries of Scitex Corporation are to be transferred to Creo Products Inc.

It is anticipated that the acquired assets and subsidiaries will be operated

under the trade name CREOSCITEX or CREO-SCITEX. Complainant Creo Products Inc.

has adopted the mark CREOSCITEX for use in connection with the products and

services of the new division. The name and mark "SCITEX" will be used by Complainant

Creo Products Inc. under a license from Complainant Scitex Corporation Ltd.

Accordingly, in addition to Complainants' interests in these proceedings resulting

from the inclusion of their individual marks in the offending domain name, Complainants

have a common interest in the domain name because it is identical to the name

and mark selected by Complainants for use with new corporate entities being

formed by Complainant Creo Products Inc.

4.2 The Complainants’ Trade Marks

Complainant Creo Products Inc holds US trade mark and service mark registrations

for CREO in international trademark classes 9 and 42. The Complaint states that

the marks have been in use in commerce since August 1985. Complainant Scitex

Corporation holds a US trade mark registration for SCITEX in international class

9. The Complaint states that the mark has been in use since "at least as

early as May 1972". Details of the two CREO and single SCITEX marks (the

"Marks") are contained in Annex C to the Complaint. The following

extract from the Complaint describes the goods and services for which the Marks

are registered:

Electro-optical scanners for detecting flaws in plastics, electro-optical data

tape readers, and electro-optical non-contact film printers; Direct write heads

for exposing processless films using lasers; laser diode arrays; film recorders,

image recorders, computer programs for diagnosing, operating and interfacing

laser diode rays; film recorders image recorders, direct write heads, photo

plotters and parts therefor; direct write plotters, graphic arts recorders;

Electronic color image processing apparatus.

4.3 In addition to the Marks, the Complaint then describes three pending applications

for US trademarks. These are for CREO (filed on February 18, 2000), CREOSCITEX

(filed on March 7, 2000) and CREO-SCITEX (filed on March 8, 2000). The goods

and services to which the applications relate are much more extensive than those

in respect of which the Marks are presently registered, but cover at least the

digital imaging products for which the Marks are registered.

5. The Complainant’s Contentions

5.1 The Complaint asserts that each of the elements specified in paragraph

4(a) of the Policy have been satisfied.

5.2 In reference to the element described in paragraph 4(a)(i) of the Policy,

the Complaint asserts that the domain names in dispute are, on their face, identical

to the Marks or, in any event, confusingly similar to the Marks.

5.3 The Complaint asserts:

"A second level domain name is identical to a trademark or service mark

if it is made up of identical alphanumeric characters and punctuation marks,

in the identical order. The second level domain name CREO-SCITEX is identical

to Complainant Creo Products Inc.’s mark CREO-SCITEX. The alphanumeric strings

and punctuation are identical. Identical marks and domain names are unquestionably

confusingly similar.

"Closely similar" second level domain names may be divided into

four categories, namely, (1) names that involve changes in punctuation; (2)

names that involve minor changes; (3) names comprising translations and transliterations

of trademarks or service marks; and (4) names that are clearly misleading. Categories

(1) and (4) are applicable under the present circumstances.

Under category (1), a second level domain name is closely similar to a trademark

or service mark if it is made up of identical alphanumerical characters in identical

order, disregarding punctuation marks. Under this standard, Respondent’s second

level domain name CREO-SCITEX is closely similar to Complainant Creo Products

Inc.’s mark CREOSCITEX in that it simply involves a change in punctuation i.e.,

exclusion of the hyphen in Complainant's mark. Complainants’ submit that this

distinction is not sufficient to distinguish the name and mark in the minds

of consumers and that the second level domain name CREO-SCITEX is therefore

confusingly similar to Complainant Creo Products Inc.’s name and mark CREOSCITEX.

The name and mark are confusingly similar in appearance, sound and commercial

impression, since they differ by a hyphen only.

Respondent's domain name CREO-SCITEX.COM is also closely similar to Complainants’

marks CREO and SCITEX under category (4), namely, the offending domain name

is clearly misleading. The name CREO-SCITEX.COM suggests an association or relationship

to Complainants which does not exist and, if used by parties other than Complainants,

will cause confusion in the marketplace.

Complainants’ marks are fanciful and have no specific meaning in the English

language. Accordingly, they are not commonly occurring in domain names or otherwise."

5.4 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint

asserts that the Respondent has no rights or legitimate interests in the domain

names. It submits that there is no relationship between the Complainant and

the Respondent that would give rise to any licence, permission or other right

by which the Respondent could own or use the domain names.

5.5 In reference to the bad faith requirement of paragraph 4(a)(iii) of the

Policy, the Complainant asserts that the domain names have been registered to

sell, rent or otherwise transfer to the Complainant (as referred to in paragraph

4(b)(i) of the Policy).

6. Discussion and Panel Findings

6.1 This section is structured by reference to the elements required by paragraph

4(a) of the Policy.

6.2 Domain Names identical or confusingly similar to Complainant’s Marks

It is apparent from the Complaint that the first complainant’s application

for the second and third of its new trademark applications follows the announcement

of the merger of certain business divisions of the two complainant corporations

which was the subject of some media reports of unconfirmed rumours on December

13 and 23, 1999 and an official press conference on January 19, 2000. Completion

of the merger does not appear to have been officially announced until April

4, 2000 (see http://www.creo.com/00Releases/000404a.html) and the complainants’

new web site makes clear that the new merged organisation did not even commence

its business operations until after the Complaint had been filed (see http://www.creoscitex.com/).

The Panel particularly notes from Annex E to the Complaint that, at the time

of the January 19, 2000, official press conference, the name of the merged group

according to The Jerusalem Post was proposed to be "Scitex/Creo"

and Scitex corporation was to become the largest shareholder in Creo Products

Inc. Although this is the only ‘name’ evidence submitted to the Panel by the

Complainant, the Panel has also noted the following sentence in a January 18,

2000, press release on the first complainant’s web site (see http://www.creo.com/00Releases/000118a.html):

"The new graphic arts group - tentatively named Creo/Scitex - will combine

the prepress operations of Scitex and Creo. It will operate as a division of

Creo Products Inc., which will continue to trade under the name Creo."

The Complaint submits that Respondent's domain name CREO-SCITEX.COM is confusingly

similar to Complainants’ marks CREO, CREOSCITEX and SCITEX, and identical to

Complainant Creo Products Inc.’s mark CREO-SCITEX. However, CREO-SCITEX is the

mark the subject of the application filed only on March 8, 2000. It is not the

mark in use on the merged group’s website where the predominant mark is a stylised

form of "CreoScitex" together with a device mark.

Whilst the domain name in dispute comprises a mark of the first complainant

and a mark of the second complainant, separated only by a hyphen, the Panel

is required to be satisfied for the purposes of paragraph 4(a) of the Rules

that the domain name is identical or confusingly similar to a trade mark or

service mark in which the complainant has rights. The Panel does not believe

that disparate multiple trade mark owners can combine to initiate an administrative

proceeding seeking the transfer to only one of them of a domain name comprising

what might be a combination of the marks of those multiple owners. In the case

of a complaint that seeks a transfer of a domain name (as distinct from a cancellation),

the Rules plainly envisage a Complainant to whom the domain name might be transferred

who must have rights in the mark or marks to which the domain name in dispute

is said to be identical or confusingly similar.

The Panel is not satisfied that the domain name is identical or confusingly

similar to any mark in which complainant Scitex Corporation has rights. However,

the Panel is satisfied that the complainant Creo Products Inc has, albeit very

recently, acquired common law rights in the mark CreoScitex and finds that the

domain name in dispute is confusingly similar to such mark on the basis that

the hyphen between "creo" and "scitex" is not sufficient

to differentiate creo-scitex from creoscitex.

6.3 The Respondent has no rights or legitimate interests in the Domain Names

The Complainant denies, and there is no evidence to the contrary, that there

is any relationship between the Complainant and the Respondent that would give

rise to any licence, permission or other right by which the Respondent could

own or use the domain names. The email from BEvans8576@aol.com that is set out

in paragraph 3.8 above assets that "Creo is our founder’s last name, and

the company is Scitex & Company". The email also asserts that a company

of that name has been receiving mail addressed to "Creo-Scitex" for

some six years. Despite this, and even assuming for the sake of argument that

the email was a timely formal Response to the Complaint, the Panel is unable

to conclude that a Respondent named "Website in Development", with

no explained connection to Scitex & Company, could have any rights or legitimate

interests in respect of the domain name creo-scitex.com, and the Panel

so finds.

6.4 The Domain Names have been registered and are being used in bad faith

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration

in bad faith AND use in bad faith before the Panel can grant the relief claimed.

The Complaint makes only an allegation of registration in bad faith. The basis

for this bare allegation is described as follows

"Respondent registered the domain name presumably primarily for

the purpose of selling it to the Complainants or to a competitor of Complainants’

for consideration in excess of Respondent’s out of pocket costs directly related

to the domain names." (emphasis added).

The Complainant therefore seeks to rely on paragraph 4(b)(i) of the Policy,

which provides:

"circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trade mark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name".

To justify this assertion the Complaint then refers to the January 18, 2000,

pre-merger publicity already noted in this decision, and submits that:

"Israel is approximately 10 hours ahead of Las Vegas, Nevada, where Respondent

is located. Therefore, Respondent conceivably could have read the article

or otherwise learned of the announcement on January 18, 2000. On Tuesday, January

18, 2000, Respondent registered the name CREO-SCITEX.COM" (emphasis

added).

However, as noted above, the Jerusalem Post article foreshadowed the name "Scitex/Creo"

for the new group. It therefore seems unlikely that if the Respondent had seen

that article, and wished to utilise that information for the purpose asserted

by the Complainant, ie to sell it back to them, that the resultant registration

would be for "creo-scitex", rather than "scitex-creo". The

Panel notes that scitex-creo.com remains available, so the Respondent cannot

therefore be said to have regarded creo-scitex as its second choice.

6.5 In this case, despite Complainant’s bald assertions to the contrary, the

evidence is quite inadequate to show that the Respondent registered the domain

name for the primary purpose of selling, renting or otherwise transferring it

to the Complainant or one of its competitors. There is circumstantial evidence

of a chronology of events which, if corroborated by other evidence, might lead

to the conclusion for which the complainant contends. However, no such evidence

has been presented to the Panel.

Paragraph 4(b)(i) of the Policy also requires that the consideration demanded

by the Respondent for the domain name be in excess of the Respondent’s documented

out of pocket costs directly related to the domain names. There is no evidence

that the Respondent has made any approach whatsoever to either of the Complainants,

and there is certainly no evidence of any amount being demanded for the domain

name. On the contrary, if the email already referred to is indeed a submission

by the Respondent, it contains an assertion of entitlement to the domain name

rather than evincing any intention to sell it to either of the complainants.

Accordingly, the Panel finds that the circumstances in paragraph 4(b)(i) of

the Policy do not exist.

6.6 If the Complainant had been able to prove bad faith registration in accordance

with paragraph 4(b)(i) of the Policy, it would also have had to prove bad faith

use. None is alleged. However, paragraph 4(b) of the Policy provides:

" . . .the following circumstances, in particular but without limitation,

if found by the Panel to be present, shall be evidence of the registration and

use of the domain name in bad faith: . ." (emphasis added).

Paragraph 4(b) of the Policy has been interpreted in previous decisions under

the Rules so as to make independent proof of bad faith registration and bad

faith use unnecessary if its provisions are satisfied. For the purposes of this

decision, and in the interests of consistency of interpretation of the Policy,

the Panel proposes to accept the interpretation adopted in earlier decisions.

It is therefore necessary, despite the Panel’s finding that bad faith registration

has not been shown and that bad faith use has not been alleged, to consider

the various provisions of paragraph 4(b), other than 4(b)(i), to see whether

bad faith registration and use might otherwise be found.

6.7 It is apparent to the Panel that the circumstances in paragraph 4(b)(ii)

are not made out, there being no relevant (or any) pattern of conduct on the

part of the Respondent proven by the Complainant. The Panel’s own observation

is that the first complainant since March 24, 2000, has been the owner of the

domain name www.creoscitex.com, a domain name that is identical to the mark

in use on the first complainant’s web site, and identical to one of the marks

the subject of a pending trade mark application by the first complainant. In

those circumstances the Panel is unable to find proven the circumstances referred

to in paragraph 4(b)(ii) of the Policy.

6.8 Given that there is no evidence of the nature of the Respondent’s business,

the circumstances in paragraph 4(b)(iii) of the Policy have not been shown to

exist, and the Complainant has not alleged that the Respondent is a competitor

in business to either of the Complainants.

6.9 Since the domain name in dispute does not appear to have been delegated,

so that a browser directed to the domain name receives only an error message,

there is no scope for the application of paragraph 4(b)(iv) of the Policy since,

without a web presence the Respondent cannot attract or divert Internet users

to its own website or other on-line location, nor create much likelihood of

confusion with the complainant’s mark. Indeed, it seems to the Panel that a

user entering www.creoscitex.com would successfully navigate to the first complainant’s

site and a user entering creo-scitex.com would receive an error message suggesting

that an incorrect address had been entered. The Panel is unable to find the

existence of the circumstances referred to in paragraph 4(b)(iv) of the Policy.

6.10 Having regard to the foregoing, the Complainant has neither directly nor

indirectly shown the existence of facts or circumstances sufficient to demonstrate

either bad faith registration or bad faith use of the domain name by the Respondent.

6.11 Paragraph 4(c) of the Policy prescribes circumstances which, if found

by the Panel to exist, demonstrate the Respondent’s rights or legitimate interests

to the domain name for the purposes of paragraph 4(a)(ii). For good order the

Panel notes that, if the email is to be regarded as the Respondent’s response,

and the Panel is prepared to so treat it purely for the purposes of considering

the application of paragraph 4(c) of the Policy, there appear to exist the circumstances

at least potentially capable of satisfying paragraphs 4(c)(i) or 4(c)(ii) of

the Policy such that the Respondent may be found to have rights or legitimate

interests in the domain name. The email asserts that Scitex & Company has,

by virtue of its founder’s name being Creo, been commonly known as Creo-Scitex

for some six years. That could, if proven with some corroborative evidence,

perhaps from the "post office box" referred to in the email, satisfy

the requirements of paragraph 4(c)(ii) of the Policy. Less convincing, but at

least "conceivable", to use the test proposed by the Complainant in

relation to another point, is that prior to the Respondent’s receipt of notice

of the present dispute it was preparing to use the domain name in connection

with a bona fide offering of goods or services. This could be inferred from

the assertion that "we are in the process of trademarking this very name".

6.12 Despite the potential for paragraph 4(c) to have application to the Respondent,

the Panel nevertheless finds insufficient evidence to enable it to make any

positive findings in that regard, and therefore remains of the view, as stated

in paragraph 6.3 above, that the Respondent has no rights or legitimate interest

in the domain name..

6. 13 Taking into account the entirety of the evidence, the Panel is forced

to conclude that the Complainant has failed to prove that the domain name was

registered or is being used in bad faith by the Respondent.

7. Decision

The Complainant having failed to prove all of the requirements of paragraph

4(a) of the Policy, the Panel formally dismisses the Complaint.

Philip N. Argy

Presiding Panelist

Dated: May 1, 2000

Other cases for this domain

• Creo Products Inc. v. Website in Development — D2000-1490 · creo-scitex.com · Transfer · 19 Jan 2001