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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).