Ceyx Technologies v. Ceyx.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ceyx Technologies v. Ceyx.Com

Case No. D2001-0681

1. The Parties

The Complainant is CEYX TECHNOLOGIES, a California corporation, having its

principal place of business at 11808 Rancho Bernardo Road, Suites 123-33, San

Diego, California, USA.

The Respondent is CEYX.COM, with an address at Ave. Principal 264, San Jose,

na 00000 Costa Rica.

2. The Domain Name and Registrar

The domain name at issue is <ceyx.com>. The registrar of the disputed

domain name is Network Solutions, Inc. (NSI) of Herndon, Virginia, USA.

3. Procedural History

Complainant filed its Complaint with the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") which was received

by email on May 22, 2001, and in hard copy on May 28, 2001.

On May 25, 2001, the Center acknowledged receipt of the said Complaint.

On May 25, 2001, the Center transmitted a request for registrar verification

to Network Solutions, Inc., in connection with this case.

On May 29, 2001, Network Solutions, Inc. sent via email to the Center a verification

response confirming that it is the Registrar of the disputed domain name r <ceyx.com>,

that the Registrant is CEYX.COM, that the Administrative Contact, Technical

Contact and Billing Contact is Hostmaster, Admn (AH12744).

On May 30, 2001, the Center verified that the Complaint satisfies the formal

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the

"Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy(the "Supplemental Rules").

On May 30, 2001, the Center formally commenced this proceeding and notified

Respondent that its response would be due by June 18, 2001. The notification

was sent to the Respondent by courier and by email. The e-mail appears to have

been transferred without receipt of any "undeliverable" notice. The

courier service provider informed several times to the Center that the address

comprised in the Shipment Airwaybill (which in turn is based on the information

comprised in Respondent’s registration) was incomplete, and eventually returned

the shipment to the Center.

The Respondent did not submit any response by the June 18, 2001 deadline.

Therefore, on June 19, 2001, the Center notified the Respondent via e-mail

that it was in Default. The e-mail appears to have been transferred without

receipt of any "undeliverable" notice. The Center then proceeded to

appoint a single panelist to conform the Administrative Panel.

On June 26, 2001, after having received the Panelist’s Statement of Acceptance

and Declaration of Impartiality and Independence, the Center notified the Parties

of the appointment of Kiyoshi TSURU as sole panelist and set July 9, 2001 as

the deadline for issuance of a decision.

4. Factual Background

Due to the fact that Respondent failed to submit an answer to the Complaint,

the following facts are undisputed:

Complainant has provided evidence of the following CTM Trademark registration:

- Community Trademark No. 001082502 "CEYX", issued by the Office

for Harmonization in the Internal Market (OHIM) on April 25, 2000, to cover:

"ELECTRONIC INSTRUMENTATION AND RELATED DEVICES".

Complainant has also provided evidence of the existence of the following U.S.

federal trademark applications:

- Trademark application Serial Number 75/534923 "CEYX", filed before

the United States Patent and Trademark Office (USPTO) on December 8, 1998 for:

"ELECTRONIC INSTRUMENTATION, NAMELY ELECTRONIC TEST AND MEASUREMENT SYSTEMS

AND RELATED DEVICES, NAMELY ELECTRONIC COMMUNICATION AND CONTROL SYSTEMS"

- Trademark application Serial Number 78/060394 "CEYX", filed before

the United States Patent and Trademark Office (USPTO) on April 21, 2001 for:

"PRODUCT RESEARCH AND DEVELOPMENT"

On February 28, 2000, the Respondent registered the domain name <ceyx.com>

with NSI. The printout of the NSI WHOIS database, attached to the Complaint

by Complainant, shows Respondent’s contact information, along with the other

information that Respondent provided to NSI.

Complainant’s investigation and evidence show that at the time when the said

investigation was conducted, the DNS Host name resolution failed, i.e., there

was an error that resulted in the impossibility for the domain name to resolve

to a certain website. The panel has independently confirmed that this situation

is still a reality as of the date of rendering of the present decision.

On August 15, 2000, Complainant’s attorneys sent a cease and desist letter

to Respondent, advising Respondent of Complainant’s "legitimate proprietary

rights in this name…", and its intention to resolve this dispute. The letter

was returned to Complainant’s counsel, with the following phrases in Spanish:

"Le daremos mejor servicio si Ud. coopera indicando claramente la Dirección"

"DEVUELTO AL REMITENTE". The English translation of theses phrases

would be: "We will provide you with a better service if you indicate the

address clearly" "RETURNED TO SENDER".

On October 17, 2001, a very similar letter was sent to the same address. No

answer was received.

On February 1, 2001, Complainant’s attorneys received a message from

Mr. Victor Alonso, wherein he stated that the domain name was not in use and

that the idea of selling this domain name would depend on receiving a good offer.

This message was a reply to an e-mail sent by Complainant’s attorneys to ceyx.com@mg.nu,

asking for information relating to <ceyx.com>. At that time, said attorneys

did not identify themselves acting in their capacity of legal counsel for Complainant.

Complainant’s attorneys sent another e-mail, this time identifying themselves

in their legal capacities. The message comprised a USD $ 500.00 offer to purchase

the domain name <ceyx.com>. On February 8, 2001, Mr. Alonso responded:

"Sorry, not interested. Please get another domain". No further contact

could be established with Mr. Alonso and/or Respondent.

On February 9, 2001, Registrant modified its record at NSI to reflect a change

in Administrative, Technical and Billing Contact to a new address in Honduras.

5. Parties’ Contentions

Complainant makes the following allegations. The factual elements of Complainant’s

allegations are generally accepted as true in the circumstances of this case

in light of its supporting documents. The legal issues are discussed in the

next section of this decision.

I. COMPLAINANT.

A. Similarity of the Domain Name and Trademark.

In respect of the domain name being identical or confusingly similar to a trademark

or service mark in which the Complainant has rights, Complainant states:

"Complainant’s mark is CEYX. Respondent has registered the domain name

CEYX.COM. The only difference is the .com, which has no trademark significance,

being, by definition, a generic top level domain name. Therefore, the Respondent’s

domain name is identical with Complainant’s trademark."

B. Respondent’s Rights and Legitimate Interests.

Complainant contends that the Respondent has no rights or legitimate interests

in the domain name on the basis of the following elements:

"1.- The Registrant has made no known use of the domain name, despite

having owned the registration since at least February 29, 2000. 2.-

Entering <www.ceyx.com> into an Internet browser results in an error message

and does not resolve to a viable web site…3.- The Registrant neither offers

goods nor services that would legitimize its registration of the Complainant's

mark as a domain name. 4.- The Registrant is not associated with Complainant

Ceyx Technologies in any way, and is not authorized or licensed to use the CEYX

mark in any form, or sell any products under the CEYX mark.. 5.- Further, investigation

by Complainant has turned up no evidence that Registrant is, or has ever been,

know as ceyx.com. 6.- In its investigation, Complainant discovered no entity

in Costa Rica or Honduras under the name of Ceyx. 7.- Respondent is not making,

and has never made, a legitimate, noncommercial, or fair use of the domain name."

[numeration added]

C. Bad Faith Registration and Use.

Complainant claims that the domain name was registered and used in bad faith

by the Respondent and relies on the following elements:

"1.- In attempting to resolve this matter, Complainant made multiple attempts

to contact the Registrant at the address and phone number given to Network Solutions,

and all attempts have failed. 2.- Registered mail and a FedEx package sent to

the address in Costa Rica were returned unopened with an indication that the

address is non-existent. 3.- The phone number listed with the contact information

is a Canadian number that is disconnected. 4.- Email sent to ceyx.com@MG.NU

resulted in a response by Mr. Victor Alonzo. Mr. Alonzo confirmed that no use

is being made of the domain name, and intimated that the domain was for sale

if the right offer was made. 5.- Alonzo suddenly lost interest in selling the

Domain Name, despite the fact that $500 is significantly more than the Registrant's

out-of-pocket expenses. 6.- Interestingly, shortly after Complainant initiated

the contact through its attorneys, the record at NSI was changed by the Registrant

to reflect a change in administrative, technical and billing contact to a new

address in Honduras. 7.Complainant believes this is also a false address, which

further reinforces the Respondent's bad faith as it shows a continuing pattern

of false addresses and misinformation designed to keep the Complainant from

acquiring the name, and to keep the Respondent unaccountable for its actions

regarding the bad faith registration of <ceyx.com>.

8.-Moreover, subsequent attempts to contact the Respondent at the victoralonzo4@yahoo.com

and mjis77@yahoo.com have been ignored.

9.-The address in Honduras is strikingly similar to the invalid contact address

in Costa Rica. The Costa Rica Address is Ave (nida) Principal 264. The Honduras

Address is Avenida Principal 6422. The street in Honduras is basically identical

to the one in Costa Rica, and the street number in Honduras appears to be a

transposition of the number in Costa Rica (264 and 6422). 10.- The phone [number

in Honduras] appears to be false information, as there is no area or country

code listed…11.- Complainant asserts that the Registrant is attempting to hide

its identity, and avoid contact with potential litigants, in order to hold on

to this domain and eventually sell it. 12.- The date of Complainant's initial

contact with Alonzo was 1 February 2001. The information for the administrative,

technical and billing contacts was changed on February 9, 2001. Significantly,

the invalid address and phone number listed for the Registrant's contact information

has not been changed, even though it has proven to be false information. 13.-

The use of CEYX.COM as the registrant, and "Hostmaster, Admn" as the administrative,

technical and billing contacts adds additional support that the Respondent has

registered and is using the mark in bad faith. 14.- NSI and other domain registrars

take a dim view of false and/or misleading registrant information, and state

in their policies that providing such can lead to cancellation of a registration.

[CONCLUSION:][…] A)Registrant agreed in an email that it would consider selling

the domain for the right offer. B) Registrant rejected an offer in excess of

out-of-pocket expenses. C) […] Registrant has provided false information to

the Registrar in order to hide its identity and location, and is improperly

"squatting" on the <ceyx.com> domain name. D) Registrant has had ample

opportunity to update its record at NSI to a legitimate address, and instead

added further obfuscation to its contact information by adding the address in

Honduras […]".[numeration and letters added]

II. RESPONDENT:

Respondent did not submit any response.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

(ii) That the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

A. Similarity of the Domain Name and Trademark

Complainant has established its rights in the trademark "CEYX". Complainant

has a Community Trademark Registration and two U.S. Trademark Applications (registration

is pending) relating thereto. The filing dates of the said Registration and

one of the mentioned Applications (U.S. Tm. Appl. Serial Number 75/534923)

are prior to the date of creation of the contested domain name <ceyx.com>.

This Panel finds that < ceyx.com> is identical to the trademark "CEYX"

for said Domain Name consists in exactly the same verbal elements as Complainant’s

protected trademark "CEYX", except for the presence of the gTLD .com.

However, the use of lower case letter format and the addition of the gTLD ".com"

are not significant in determining whether the domain name is identical or confusingly

similar to the mark (see CBS Broadcasting Inc. v. Worldwide Webs, Inc.,

Case No. D2000-0834 WIPO, Sept. 4,2000).

Therefore, the Complainant has satisfied the first requirement.

B. Respondent’s Rights and Legitimate Interests.

Pursuant to paragraph 5 (e) of the Rules, this Panel shall decide the dispute

based on the Complaint. Moreover, there are persuasive precedents holding the

principle that "In the absence of a Response, it is appropriate to accept

as true all allegations of the Complaint (See Home Director, Inc. v. HomeDirector,

WIPO Case No. D2000-0111 , April 11, 2000,

which in turn cites Talk City, Inc v. Robertson, WIPO

Case No. D2000-0009 Feb. 29, 2000).

Considering that Respondent has made no known use of the domain name, that

this name does not resolve to any web site, that Respondent is not related to

Complainant nor it has Complainant’s authorization to use the trademark "CEYX"

to which complainant has exclusive rights, that there is no evidence showing

that Registrant is commonly known as CEYX.COM, that no evidence has been found

with respect to the incorporation and/or existence of any corporate entity in

Costa Rica or Honduras under the name of "CEYX.COM", that the filing

dates of Complainant’s Community Trademark Registration No. 001082502 and U.S.

federal Trademark Application serial number 75/534923 precede that of Respondent’s

domain name registration for <ceyx.com> and that Respondent has not made

a noncommercial or fair use of the foregoing domain name, this Panel finds that

Respondent has no rights or legitimate interests on the said domain name.

Therefore, the Complainant has satisfied the second requirement.

C. Bad Faith Registration and Use.

The determination of bad faith is a delicate issue. To that end, this Panel

considers Telstra Corp. v. Nuclear Marshmallows, WIPO

Case No.D2000-0003 February 18, 2000 to hold an interesting discussion on

the subject, in that "the Administrative Panel must give close attention

to all the circumstances of the Respondent’s behaviour".

After having examined carefully such behaviour, this Panel has found that,

at the time of Registration, Respondent provided incomplete, misleading or false

information. This can be applied to Respondent’s address, because the information

provided by Respondent does not serve the purpose of identifying and successfully

locating such Respondent. The fact that the first cease and desist letter which

Complainant sent to Respondent was returned to Complainant with a phrase stating

that the letter could not be delivered for the address was not clear, and the

fact that the courier service hired by the Center to serve Respondent with the

notification of commencement of this Procedure stated in repeated occasions

that Respondent’s address was "incomplete", leads this Panel to reach

the conclusion comprised in the present paragraph. In addition, the Panel would

like to bring the Parties’ attention to the fact that Respondent’s declared

Zip code is "00000". The Panel considers it very improbable for a

certain country to have a Zip code which numbers are "00000"

Thus, this Panel finds that "the Respondent has taken deliberate steps

to ensure that its true identity cannot be determined and communication with

it cannot be made" (See Telstra Corp. v. Nuclear Marshmallows) and

therefore concludes that Respondent obtained its domain name registration in

bad faith.

On the other hand, the fact that Respondent modified its Administrative, Technical

and Billing Contact information just a few days after having learnt that it

had been exchanging electronic correspondence with Complainant’s attorneys,

apparently moving the address of the said Administrative, Technical and Billing

Contact to Honduras, particularly to a street with the same name as that of

Respondent in Costa Rica and with the same "00000" Zip code, lacking

to provide the minimum information required by NSI (according to NSI’s WHOIS

database there is "info pending" in the contact details), in addition

to the fact that Respondent has not answered any of Complainant’s communications

ever since, knowing that the contended domain name reproduces a trademark on

which Respondent has exclusive rights, leads the Panel to infer that this is

a case of "passive holding".

In support of this conclusion, the Panel would like to point out that: 1.-

There is no evidence in this record showing any actual or contemplated good

faith use by it of the domain name 2.-There is no evidence showing that Respondent

has incorporated a company and/or registered a business name for "CEYX.COM"

in Costa Rica or Honduras 3.- Respondent has actively provided incomplete, misleading

or false contact details, in breach of its registration agreement with NSI,

which means that Respondent has taken active steps to conceal its true identity

(See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO

Case No.D2000-1195, October 26, 2000) and that 4.- The modifications made

to the <ceyx.com> record by Respondent were also made in a deceitful manner.

5.- In light of the foregoing, "it is not possible to conceive of any plausible

actual or contemplated active use of the domain name by the Respondent that

would not be illegitimate, such as by being a passing off, an infringement of

consumer protection legislation, or an infringement of the Complainant’s rights

under trademark law" (See Telstra Corp. v. Nuclear Marshmallows)

It is the opinion of this Panel that Respondent has been ""parking"

the contended domain name with the knowledge that it infringes the trademark

of another", which constitutes evidence of bad faith, according to Little

Six, Inc. d/b/a Mystic Casino Hotel v. Domain For Sale a/k/a Anatoly Polishchuk,

Case No. FA103000096967 NATIONAL ARBITRATION FORUM, April 30, 2001.

Therefore, the Complainant has satisfied the third requirement.

This Panel agrees upon the opinion of other Panels in that "passive holding"

does not constitute bad faith per se, and that each case should be carefully

studied in order to determine whether the Panel is actually in the presence

of bad faith (See Euromarket Designs, Inc. v. Domain For Sale VMI and Telstra

Corp. v. Nuclear Marshmallows).

7. Decision

For the foregoing reasons, the Panel decides that the domain name <ceyx.com>

is identical to Complainant’s trademark "CEYX", that Respondent has

no rights or legitimate interests in respect of the said domain name and that

Respondent has registered and is using such domain name in bad faith. Therefore,

in accordance with Paragraph 4 (i) of the Policy, the Panel requires that the

registration of the domain name <ceyx.com> be transferred to Complainant.

Kiyoshi TSURU

Sole Panelist

Dated: July 9, 2001