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 Centreís 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 Ďactiveí 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 (email@example.com) as well as to firstname.lastname@example.org. Hard copy documents were also despatched to the Respondent in Las Vegas, USA and to the Technical Contact shown in NSIís 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 Respondentís Technical contact by facsimile transmission. However, it is clear from the ĎRAPPORT DíERREUR TXí document furnished to the Panel that the facsimile transmission was not successful. The emails to each of email@example.com and firstname.lastname@example.org were returned with a 550 error (user unknown) whilst the email to email@example.com was returned with a host name lookup failure. The Centre subsequently, on April 3, 2000, successfully emailed the Notification to the Technical Contactís correct email address of firstname.lastname@example.org. 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 Complainantís 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 Complainantís 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, "email@example.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 Complainantís 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
Thank you for your attention in this matter.
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 Complainantsí 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 Complainantís 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.ís 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, Respondentís second level domain name CREO-SCITEX is closely similar to Complainant Creo Products Inc.ís mark CREOSCITEX in that it simply involves a change in punctuation i.e., exclusion of the hyphen in Complainant's mark. Complainantsí 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.ís 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 Complainantsí 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.
Complainantsí 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 Complainantís Marks
It is apparent from the Complaint that the first complainantís 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 complainantsí 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 Ďnameí 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 complainantís 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 Complainantsí marks CREO, CREOSCITEX and SCITEX, and identical to Complainant Creo Products Inc.ís 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 groupís 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 founderís 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 Complainantsí for consideration in excess of Respondentís 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 Complainantís 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 Respondentís 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 Panelís 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 Panelís 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 complainantís 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 Respondentís 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 complainantís mark. Indeed, it seems to the Panel that a user entering www.creoscitex.com would successfully navigate to the first complainantís 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 Respondentís 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 Respondentís 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 founderís 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 Respondentís 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.
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
Dated: May 1, 2000