WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UITGERVERIJ CRUX v. W. FREDERIC ISLER
Case No. D2000-0575
1. The Parties
Complainant is Uitgeverij Crux, Vliegenstraat 19, Antwerp, Belgium, B-2060.
Respondent is W. Frederic Isler P.O. Box 686, Fort Meade, Maryland, U.S.A., 20755
2. The Domain Name and Registrar
The domain name at issue (the Domain Name) is "crux.net". The registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170, U.S.A.
3. Procedural History
On June 6th, 2000, Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated April 15th, 2000. In a letter dated on the same date the Center informed the registrar, Network Solutions, Inc., that the Complaint had been submitted to the Center regarding the Domain Name.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on August 8th, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated August 8th, 2000, the Center informed the Respondent of the commencement of the proceedings as of August 8th, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
In a letter September 6th, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or Prior to October 11th, 2000, in the English language. The Complainant has indicated that it intended to file a complaint with the courts of first instance in Antwerp although the Panel is unaware of the status of these proceedings or of any others, which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a legal person incorporated under the laws of Belgium and carrying on business under the name of Uitgeverij Crux bvba/Crux Editions bvba since July 1997. The Complainant publishes CD-ROMs and electronic publications applying language technology as well as books and a scientific journal.
Nothing is known as to the activities of the Respondent.
The Complainantís predecessor has had a presence on the Internet since 1996, and perhaps as early as December 1994. The Complainant now operates its website at web address crux.be which it registered in July 1999.
According to the Whois database the Respondent registered the Domain Name on February 26th, 1998.
The Complainant registered the trademark CRUX for use with trade publications, journals, newspapers, books online services and electronic publishing on July 21st, 2000.
In an e-mail dated June 8th, 2000, the Respondent offered to transfer his rights in the Domain Name to the Complainant for US$50,000.00.
5. Partiesí Contentions
At paragraph 12(2) of the Complaint the Complainant maintains that he owns the domain name "crux.be", registered on March 5, 1999, which he had been using as a subdomain since December 1996.
At paragraph 12(3) of the Complaint the Complainant maintains that the Domain Name is confusingly similar to the registered trademark and service marks owned by the Complainant. The Complainant also maintains that the Respondent does not operate a website under the Domain Name and therefore the Respondent has no legitimate right and interest in the Domain Name.
At paragraph 12(4) to the Complaint the Complainant continues by maintaining that the Domain Name differs only from his marks by the addition of the top level domain ".net" and that there is considerable likelihood of confusion given that the Complainant is an established electronic and print publisher working with an international academic and professional audience.
At paragraph 12(5) to the Complaint the Complainant alleges that the Respondent has no legitimate right or interest in the Domain Name.
At paragraph 12(6) to the Complaint the Complainant maintains that the Respondentís offer to transfer the Domain Name to the Complainant for valuable compensation in excess of costs is evidence that the Respondent registered and is using the Domain Name in bad faith.
The Respondent failed to file a response with the Center within the foreseen delays and has failed to file a response since.
6. Discussion and Findings
Referring to paragraph 14 of the ICANN Rules, in the absence of a response to a complainantís allegations by the respondent, the Panel is to consider those claims in the light of the unchallenged evidence submitted by the Complainant. However, the Panel cannot decide in the Complainantís favor solely given the Respondentís default but is entitled to draw, and does, such inferences as it feels just from the Respondentís failure to respond.
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The registration of the Trademark CRUX, filed on July 21, 2000, by the Complainant may not give it the right to be successful regarding a confusing similarity between the aforesaid trademark and the Domain Name. However, the Panel is of the opinion that this is not fatal to the Complaint for the reasons given below.
A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered. Therefore, given that the Complainant has provided evidence to the effect that he has been using the mark CRUX in association with its business for a number of years prior to the Domain Name being registered, the Panel is of the opinion that the Complainant has provided adequate grounds for a finding that he holds rights in the marks "CRUX Editions" and "Uitgeverij CRUX".
In the case of Finter Bank Zurich v. Gianluca Olivieri, Case No. D2000-0091 it was found that the complainant had rights in the mark FINTER notwithstanding that the complainant had registered only the trademark FINTER BANK ZURICH. The panel went on to hold that BANK merely indicated the area of business activity of the complainant and ZURICH the geographic location of the head offices. As a consequence the panel went on to find that "finter.com" and "finter.org" were confusingly similar with FINTER BANK ZURICH. The Panel is of the opinion that a similar approach is to be applied under the circumstances. "Editions" and "Uitgeverij" provide a descriptive element which indicate the area of business within which the Complainant is involved. The Panel has found that the Complainant has rights in the mark "CRUX Editions". Therefore the Panel is of the opinion that the Domain Name is confusingly similar with marks in which the Complainant has rights. The Panel is therefore of the opinion that the Complainant has readily met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
Furthermore, the Complainant maintains that it has been using "crux" as a subdomain since December 1996. In this regard, the Panel is of the opinion that given Respondentís failure to submit a response, the Panel accepts as true all of the allegations of the Complaint (see, for example, Talk City, Inc. v. Michael Robertson, Case No. D2000-0009 at paragraph 5(d) or "Shopping.com" v. Internet Action Consulting, Case No. D2000-0439).
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Names. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
No evidence was provided by the Respondent to dispute the Complainantís contention that the Respondent possesses no rights to the Domain Names. In this regard the Panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(ii) and (iii) in that there is no evidence to support a finding that the Respondent is commonly known by the Domain Names nor is there any evidence that the Respondent has a legitimate non-commercial or fair use of the Domain Names. Additionally, the Panel finds that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark CRUX; the Complainant has prior rights in that mark which precede Respondentís registration of the Domain Names; and the Respondent is not (either as an individual, business or other organization) commonly known by the name CRUX.
The Panel is also of the opinion that the Respondent has no legitimate right or interest under paragraph 4(c)(i), i.e. that by merely offering the Domain Names for sale the Respondent has failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services.
Furthermore, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests he may have in the Domain Names of the type defined in paragraph 4(c) of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) of the ICANN Policy holds that, if the circumstances indicate that the Domain Name was registered for the purpose of selling the Domain Name to the Complainant, that the Complainant is the owner of the trademark and that the consideration sought by the Respondent is in excess of documented out-of-pocket costs directly related to the Domain Name, then this is evidence of bad faith registration and use on behalf of the Respondent.
Given that the evidence supports a finding that on the Respondent offered the Domain Name for sale for US$50,000 to the Complainant, a sum which is obviously greatly in excess of any out-of-pocket expenses the Respondent may have been obliged to pay for registering the Domain Name, the Panel is of the opinion that paragraph 4(b)(i) of the ICANN Policy applies and the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, the Panel concludes that:
- the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, the Panel finds that the complaint should be allowed and the Domain Name "crux.net" be transferred to the Complainant and so directs Network Solutions, Inc., to do so forthwith.
Hugues G. Richard
Dated: October 30th, 2000