WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSX Corporation v. Computer Service Exchange
Case No. D2003-0875
1. The Parties
The Complainant is CSX Corporation, Jacksonville, Florida, United States of America, represented by Karen Koster Burr of Atlantic Beach Law, P.A., United States of America.
The Respondent is Computer Service Exchange, Long Island City, New York, United States of America; and/or, Beverly Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <csx.net>, is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2003, listing WXN as the Respondent/domain name registrant. On November 5, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 13, 2003, a search of eNomís WhoIs database revealed that Computer Service Exchange was the listed domain name registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint on November 7, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2003. In accordance with the Rules, Paragraph 5(a), the due date for a Response was December 3, 2003. The Respondent did not submit any response. Accordingly, the Center issued a Notice of the Respondentís default on December 5, 2003.
After clearing potential conflicts of interest, the Center appointed Jonathan Hudis as the Sole Panelist in this matter on December 29, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
Complainant, CSX Corporation, is a Virginia corporation having its principal place of business in Jacksonville, Florida. Complainant states that "CSX" is, in essence, its corporate name, and this letter string is incorporated into the names of almost all of Complainantís major subsidiaries. Complainant asserts that it is the owner, directly or through subsidiaries, of twenty-four (24) current registrations issued by the U.S. Patent and Trademark Office for the mark CSX or marks incorporating this letter string into other marks. Complainant attached to the Complaint a copy of U.S. Service Mark Registration No. 2,543,728 for the mark CSX for consulting services in the field of transportation and freight distribution and storage, namely consulting in the selection of freight transportation, storage, manufacturing and distribution sites. Complainant also attached to its Complaint a database printout from the U.S. Patent and Trademark Office for the mark CSX TECHNOLOGY (U.S. Service Mark Registration No. 2,387,525). However, the registration appears to be owned by a different entity from Complainant, CSX Technology, Inc. Complainant does not state the relationship of CSX Technology, Inc. to Complainant. Finally, Complainant attached to its Complaint a database printout from the U.S. Patent and Trademark Office of U.S. Service Mark Registration No. 1,230,400 for a highly stylized version of the letters "CSX" for railroad freight transportation services. This registration appears to have been issued in the name of Complainant. Complainant also asserts that it owns registrations for the CSX mark in Europe, Canada and Mexico. However, no copies of registrations from those countries were attached to the Complaint.
According to attachments to the Complaint, at least as of August 7, 2003, the administrative contact for the contested domain name was "Domain Admin." On this date, Complainantís counsel wrote to the e-mail address associated with the contested domain name and asked for information regarding the purchase of the domain name. Also on August 7, 2003, a response was received by Complainantís counsel from "WXN" stating "Thank you for contacting us. The desirable, easy to remember three-letter domain <csx.net> is available for US$3,800. If you wish to proceed with the purchase, please reply to this e-mail." On August 27, 2003, Complainantís counsel wrote to the sender of the foregoing message accusing the sender of cybersquatting and demanding the transfer of the <csx.net> domain name for "the standard original sale price, not to exceed US$100." There was no response to the reply e-mail from the Complainantís counsel, nor to the follow-up e-mail sent on August 22, 2003.
As of September 18, 2003, a separate Who-Is search, a copy of which is attached to the Complaint, shows that the listed domain name registrant was Computer Service Exchange.
The Complaint also alleges that, at some time in the past, Respondentís website, resolving to the URL "http://www.csx.net," bore a notice stating that "the website" was for sale and that it had a link for inquiry. No evidence of such website content was attached to the Complaint. Complainant also alleges that, after receiving notice of Complainantís rights, Respondent placed the words "Computer Service Exchange" as the only content resolving to the website. Complainant alleges that the website resolving to the domain name is devoid of any other content. The Panel confirmed this by visiting the "www.csx.net" website while this matter was pending for decision.
5. Partiesí Contentions
Complainant asserts that the contested domain name is identical or confusingly similar to the CSX service mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the domain name; and that the contested domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Transfer of the contested domain name will be ordered if Complainant has shown that the following three elements are present (Paragraph 4(a) of the Policy):
(i) The contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) The contested domain name has been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present.
A non-exhaustive list of circumstances, if found by the Panel to be present, which may be considered as evidence of the registration and use of a domain name in bad faith, may be found at Paragraph 4(b) of the Policy. On the other hand, a non-exhaustive list of circumstances, if found by the Panel to be proved based upon its evaluation of all the evidence presented, demonstrating the Respondentís rights or legitimate interests in the domain name, may be found at Paragraph 4(c) of the Policy.
Respondent had the opportunity to respond and present evidence that it has rights or legitimate interests in respect of the contested domain name. It chose not to do so. Complainant is not entitled to relief simply by reason of the default. However, the Panel can and does draw evidentiary inferences from the failure to respond. See, Cyberguard Corporation v. Cyber Surveillance Group, WIPO Case No. D2001-0972 (October 25, 2001).
For example, Paragraph 14 of the Rules provides that:
(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a party, in the absence of exceptional circumstances does not comply with any provision of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
Thus, the Complainantís rights in the service mark CSX are demonstrated by its United States federal registration for this mark, and the use made of the mark on Complainantís website, located at the URL "http://www.csx.com."
The Panel also finds that the contested domain name is identical to and/or is confusingly similar to a service mark in which Complainant has rights under Paragraph 4(a)(i) of the Policy. The presence or absence of the top-level domain ".net" is of no consequence when establishing the identity or confusing similarity of the disputed domain name to Complainantís mark. See, AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289 (April 24, 2001).
B. Rights or Legitimate Interests
Respondent has not come forward with evidence or argument in an effort to show that it has any rights or legitimate interests in respect of the contested domain name (Paragraph 4(c) of the Policy). The web page that resolves to a URL associated with the contested domain name contains nothing more than the words "Computer Service Exchange." The textual material appearing on the web page does not per se demonstrate that the Respondent has rights or legitimate interests in respect of the domain name. The Panel, therefore, finds that Respondent does not have any demonstrated rights or legitimate interests in respect of the contested domain name under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel now must decide whether the Complainant has come forward with sufficient evidence to show that the contested domain name has been registered and is being used in bad faith. The Panel finds that such circumstances have been shown. One of the stated examples of registration and use of a domain name in bad faith is "circumstances indicating that the Respondent registered or 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondentís] documented out-of-pocket costs directly related to the domain name." (Paragraph 4(b) of the Policy). Complainant having inquired of the price for transferring the domain name, it appears that a representative of Respondent offered to transfer the domain name to the Complainant for $3,800, which is well in excess of Respondentís out-of-pocket costs to register the domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000).
Complainant asserts, as additional circumstances of bad faith, that Respondent hid its identity, provided incomplete information to the domain name registrar when the domain name was registered and/or shifted the domain name to another entity after receiving "Notice of Infringement." Complainant also cites, as further evidence of bad faith, the lack of a reply from Respondent to any "Notices of Infringement" or a request to purchase the domain name at the original $100 purchase price. The Panel agrees that these facts constitute additional instances of bad faith use and registration of the domain name.
The Panel therefore finds that Respondent registered and used the contested <csx.net> domain name in bad faith under Paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <csx.net> be transferred to the Complainant.
Dated: January 12, 2004