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Reba K. Orszag, dba CHI v. Darry Bellman [2004] GENDND 735 (17 June 2004)

1. The Parties

The Complainant is Reba K. Orszag, dba CHI, Princeton, New Jersey, United States of America, represented by Jagtiani + Guttag, United States of America.

The Respondent is Darry Bellman, Ardmore, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <xi.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2004. On April 6, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On that same day Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 April 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2004.

The Center appointed Mark Partridge as the sole panelist in this matter on May 3, 2004. 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.

The Panel issued Order No. 1 on May 14, 2004, requiring Complainant to submit evidence of the nature, extent and manner of its alleged use of XI as a trademark since 1994. Complainant responded on May 21, 2004.

The Panel issued Order No. 2 on June 3, 2004, seeking evidence to support Complainant’s claim that trademark rights in XI were transferred to Complainant after the sale of other business assets to another company. Complainant responded on June 9, 2004.

4. Factual Background

Complainant was the president and majority stockholder of the company Cambridge Hydrodynamics, Inc. (“Cambridge”) from before 1994 to December 31, 2003.

On or about January 1994, Cambridge registered the domain name <xi.com>.

On December 11, 2003, Network Solutions, Inc. sent Complainant a message which thanks the recipient for being a customer since 1994, and provides an account summary for 2003, relating to the domain name <xi.com>.

On December 31, 2003, Cambridge was acquired by another company Tara. Complainant claims the she was the owner of rights in the XI mark after that acquisition. The additional evidence submitted by Complainant includes an “Assignment of Domain Name and Trademarks” dated January 2, 2004, from Cambridge Hydrodynamics, Inc. to Complainant of all right, title and interest in the common law trademark XI, with the goodwill symbolized by the mark.

On March 22, 2004, Complainant filed an application with the United States Trademark Office to register XI as a trademark. The application is filed in the name of Reba K. Orzag (Complainant) and claims first use January 1, 1990, for “scientific research in the fields of fluid dynamics and materials science.”

Respondent acquired the domain name <xi.com> on or about January 22, 2004. Respondent David Chrin worked for Cambridge until May 31, 2001. During that time he was listed as the administrative contact for the domain name. Respondent Chrin has sued Cambridge for violations of employment law seeking damages and received a small award. It appears this dispute is ongoing.

On January 13, 2004, a person claiming to be David Chrin submitted to Network Solutions, Inc. a request to change an email contact for the domain name. Complainant points out that the identification submitted with this change of address is in some respects false and inconsistent with the identity of David Chrin who worked for Cambridge.

On or about January 22, 2004, the domain name registration was transferred from Network Solutions, Inc. to Tucows, and was no longer available for Complainant’s use beginning the following day.

On January 26, 2004, Satoshi Shimoshita became listed as the registrant for the domain name. It appears that Shimoshita intended to purchase the domain name, but withdrew when ownership of the domain name was questioned.

On February 25, 2004, Respondent Chrin provided Complainant’s counsel with a letter stating:

“As per our phone conversation of the past week, this letter is to confirm that as the previously recorded administrative contact for the xi.com domain name, I have not authorized any changes to the registration of this domain since termination of my employment with Cambridge Hydrodynamics, Inc. in 2001.”

The current registration information lists Darry Bellman as the registrant, administrative contact and technical contact.

5. Parties’ Contentions

A. Complainant

Complainant claims that the domain name is identical to a mark owned by Complainant; that the Respondent lacks an legitimate right or interest in the domain name; and that the domain name has been registered and used in bad faith. More specifically, Complainant contends that the domain name was fraudulently transferred from Cambridge to Bellman with the active participation of Chrin, and that Orszag is the proper owner of the domain name.

B. Respondent

Respondent has not responded to the allegations of the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant contends that she owns rights in the mark XI. Since that mark is effectively identical to the disputed domain name, the key question here is whether or not Complainant has met its burden of establishing ownership of trademark rights in XI.

Complainant’s application for trademark registration has not yet resulted in registration and is therefore insufficient to establish any rights in the mark.

To establish common law trademark rights in the XI mark, Complainant has submitted evidence to show that Cambridge used XI in company reports and promotion materials to identify the company in on six occasions in 1995, 1996, 1998, and 2001. There is also a third party email referring to XI in 2003. In Microstrategy, Inc., v. Motorola, Inc., [2001] USCA4 70; 245 F.3d 335 (4^th Cir. 2001), the plaintiff claimed trademark rights in “Intelligence Everywhere.” The phrase appeared in annual reports, press releases, brochures and sales presentations. The court found the evidence presented to be “of limited, sporadic and inconsistent use of the phrase” and denied trademark protection.

Complainant attempts to justify the lack of evidence by stating that it “does not have fully [sic] access to all of Cambridge’s documents and materials which show additional usage of the XI mark” due to the transfer of assets on December 31, 2003. Although the evidence of use is limited, I conclude that it is sufficient to state a prima facie claim of common law rights in the XI mark based on use in commerce during the eight year period prior to the registration and improper transfer of the disputed domain name.

Regarding that transfer, Complainant states that “the assets of [Cambridge] were sold to another company,” on December 31, 2003, but “as a part of the transaction the domain name, <xi.com>, and all rights associated thereto remained with the Complainant, Reba Orzag, dba CHI, including any trademarks.” This transfer of right and goodwill is supported by the assignment document submitted as evidence.

When the respondent defaults, it is appropriate to accept the well-pleaded allegations of the Complaint as true. Nevertheless, Complainant has the burden of establishing ownership of trademark rights to prevail on its Complaint and little weight will be given to conclusory or inconsistent allegations. Here, I find that the allegations of the complaint and the additional evidence submitted in support, is sufficient to demonstrate a prima facie case that Complainant owns valid common law rights in the XI trademark.

Therefore, the Panel concludes that Complainant has met its burden on the first element of its claim.

B. Rights or Legitimate Interests

Complainant alleges and there is no evidence to the contrary that the current registrant lacks any right or legitimate interest in the domain name. Based on the record presented, that appears to be the case. There is no bona fide use of the domain name and the current Registant, Darry Bellman, does not appear to be known by the “XI” name.

C. Registered and Used in Bad Faith

Based on the facts presented, and accepting the allegations of the complaint as true, it appears more likely than not that there was an unauthorized change of registration information. Former Cambridge employee David Chrin was the administrative contact for Cambridge in the original registration of <xi.com>. Someone claiming to be David Chrin changed the email contact information. The Registrant name was then changed to CHI in Princeton NJ with a different administrative contact email address. Eventually, that email address was given in connection with the current registrant Darry Bellman. It is also alleged that Bellman attempted to transfer the domain name for profit to Satoshi Shimoshita.

The record submitted by Complainant includes a denial from Respondent Chrin regarding any improper transfer of the domain name by him. The only facts linking Chrin to the domain name transfer is the submission in his name changing the email address for the registrant and the common email domain <chessfan.net>. Complainant herself presents facts to support the conclusion that Chrin was not actually involved in this transfer. That conclusion is consistent with Chrin’s own denial.

Nevertheless, the conduct alleged and shown by the evidence is highly suspicious. Complainant alleges a fraudulent transfer of the domain name, and her claim is supported by evidence. That fraudulent transfer seems sufficient for a finding of bad faith registration. Complainant also alleges that the registrant has attempted to sell the domain name for profit. Since it appears the domain name was obtained by the registrant through a fraudulent transfer, registrant would not be justified in seeking to sell the domain name for profit. The attempted sale of a fraudulently obtained domain name seems sufficient for a finding of bad faith use.

Based on the record presented, and given the Respondent’s failure to present any rebuttal, the Panel finds that the domain name was registered and used in bad faith.

7. Decision

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, <xi.com> be transferred to the Complainant.

Mark Partridge
Sole Panelist

Dated: June 17, 2004