eNamix, Inc. v. Li Yen Chun

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 <enamix.com>.

The registrar with which the domain name is registered is OnlineNIC, Inc. d/b/a

China.com (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 <enamix.com>. A year later

in September 2000, the Complainant launched its website which was accessible

via the domain name <enamix.com>.

On September 2, 2001, the registration period of <enamix.com> 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 <enamix.com>. The Complainant learned of its mistake

on October 9, 2001, when it lost control of the <enamix.com> 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 <enamix.com> in the Respondent’s name

became effective on October 11, 2001. As of October 11, 2001, the

<enamix.com> domain name accessed the Respondent’s website and it contained

a statement that the domain name <enamix.com> 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 <enamix.com>

domain name through Afternic.com, 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 <enamix.com>

website no longer stated that the domain name was for sale.

Approximately one month after control of the <enamix.com> 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 <enamix.com>

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 <enamix.com> 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

<enamix.com>, the Complainant was compelled to transfer its website to

the domain <enamix.net>.

5. Parties’ Contentions

A. Complainant

The Complainant had developed strong common law rights in its service marks

eNamix and <enamix.com>. 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 <enamix.com> or a name corresponding to <enamix.com> in connection

with a bona fide offering of goods or services. After Respondent appropriated

the <enamix.com> 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 <enamix.com > 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 "enamix.com."

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 <enamix.com> 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 "enamix.com"

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 "enamix.com" 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 "enamix.com" concerned.

The Panel also finds that the Respondent’s domain name <enamix.com> is

identical to the Complainant’s service marks "eNamix" and "enamix.com".

The Respondent’s domain name <enamix.com> is absolutely identical to the

Complainant’s domain name <enamix.com> 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 <enamix.com>

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 <enamix.com> or a name

corresponding to <enamix.com> in connection with a bona fide offering

of goods or services. The Panel further finds that after the Respondent had

appropriated the <enamix.com> 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 <enamix.com> website. In fact, the Respondent’s portal

site is accessible not only through the <enamix.com> domain, but also

through at least six other domain names such as <jmart.com> and <ibid.com>.

In each case the website is essentially identical to the <enamix.com>

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 <enamix.com> 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 <enamix.com>, 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 <enamix.com>.

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 <enamix.com> 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 <enamix.com>

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 <enamix.com> 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

<enamix.com>. 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 <enamix.com>.

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, <enamix.com>, 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).