WIPO Arbitration and Mediation Center

The Complainant is Crystallize, Inc., a Michigan corporation with its principal place of business in Ann Arbor, Michigan. Its mailing address is 1410 Woodbridge Avenue, Ann Arbor, Michigan, 48105 USA.

The Respondent is James Eixenberger. His mailing address is 14228 S. 13^th Way, Phoenix, Arizona, 85048 USA.

The domain name at issue is "crystallize.com" (the Domain Name). The registrar with which the Domain Name is registered is Network Solutions, Inc., located in Herndon, Virginia, USA (the Registrar or NSI).

The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint in hardcopy on June 5, 2000. On June 7, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

On June 2, 2000, the Center sent to the Registrar, NSI, a Request for Registrar Verification. On June 6, 2000, NSI transmitted to the Center via e-mail a Registrar Verification Response confirming that the Domain Name is registered with NSI and that the Respondent is the current registrant of the Domain Name. NSI’s Response provided the following contact information for the Respondent:

Registrant, Administrative Contact, Billing Contact:
Eixenberger, James (JE3222)
eixenberger@HOME.COM
James Eixenberger
14228 S. 13^th Way,
Phoenix, AZ, 85048, 602-460-7018

Technical Contact, Zone Contact:
DNS Administrator (DA4745-ORG) domreg@GET-A-NAME.COM
Planet Earth Communications
306N West El Norte Parkway
Escondido, CA 92025
760-781-1555 Fax 760-432-9700

The Center completed a Formalities Compliance Review on June 7, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On June 7, 2000, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of June 26, 2000, by which the Respondent could file a Response to the Complaint.

On June 27, 2000, the Center received Respondent’s Response to the Complaint. On June 29, 2000, the Complainant sent a request, via e-mail, to the Center, for permission to file an answer to Respondent’s Response. On June 30, 2000, the Center acknowledged receipt of the Responses and notified the parties that it would proceed to appoint the Administrative Panel. The Center advised the Complainant that further submissions beyond the complaint and response are generally not accepted, but that the Center would forward the request to the panelist once an appointment was made. On July 5, 2000, Complainant submitted via e-mail an Answer to Respondent’s Response.

In view of the Complainant’s designation of a single panelist and with agreement by the Respondent, the Center invited Dana Haviland to serve as the panelist. On July 19, 2000, after having received Ms. Haviland’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Dana Haviland was formally appointed as the sole panelist. The Projected Decision Date was August 3, 2000. The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

At the request of the Panel, Respondent submitted a Reply to Complainant’s Rebuttal on August 29, 2000. The Decision Date was subsequently extended to September 28, 2000.

On May 12, 1998, the Respondent registered the domain name "crystallize.com" with NSI, over a year before Complainant filed its trademark application. Complaint, Annex A. Respondent registered this domain name for use with his sole proprietorship, Crystalline Concepts, as well as for personal use. Response, ¶ 6. Crystalline Concepts provides training tools and custom encyclopedias for the semiconductor industry. Response,¶ 6. Respondent chose this domestic name after searching for available one-word domain names on the WHOIS database related to "crystal." Response, ¶ 6.

Complainant Crystallize, Inc. is a Michigan corporation with its principal place of business in Ann Arbor, Michigan. Complaint, ¶ 2. Complainant develops business computer software for use in database management. Complaint, ¶ 12 . Complainant has submitted a copy of a filing receipt dated August 10, 1999, for a trademark application for the trademark CRYSTALLIZE from the United States Patent and Trademark Office, along with several letters indicating that applications for foreign trademarks have been filed. Complaint, Annex C.

Complainant claims a "first use" of the trademark "Crystallize" ("trademark") on July 13, 1999. Complaint ¶ 12. Complainant’s August 10, 1999, U.S. trademark application, however, was filed on the basis of "intent to use." Complaint, Annex C.

On January 17, 2000, Complainant sent an offer to Respondent to buy the rights and interests in the "crystallize.com" Domain Name for $1,000. Complaint, Annex D. The letter did not mention the trademark application or claim any right to a trademark CRYSTALLIZE. Respondent replied that he did not wish to sell the Domain Name at that time. Id.

Complainant filed for trademarks in Australia on February 4, 2000, Canada on February 3, 2000, the European Community on February 3, 2000, and Mexico on February 7, 2000. Complaint, Annex C.

On April 16, 2000, Respondent renewed the registration of the Domain Name for one year.

On April 25, 2000 Complainant sent Respondent another request to purchase the Domain Name, offering $2,000. Complaint, Annex E. The Respondent did not reply.

Complainant

The Complainant contends that the Domain Name registered by the Respondent is identical to Complainant’s Crystallize trademark. Complainant further contends that the Respondent has no rights or legitimate interest in the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith.

With respect to Respondent’s lack of rights or legitimate interest in the Domain Name, Complainant asserts that Respondent is not licensed or authorized to use Complainant’s trademark CRYSTALLIZE, has no trademark rights of its own, and has not used or prepared to use the Domain Name in connection with an offering of goods or services.

As evidence of bad faith registration and use, Complainant alleges that Respondent has refused to transfer the Domain Name to the Complainant and has failed to develop the "crystallize.com" website. Complainant further contends that Respondent’s renewal of the registration of the Domain name on April 17, 2000, for only a one-year period is evidence of both bad faith registration and use.

In Complainant’s Answer to Respondent’s Response, Complainant states that in a search of the Arizona business database, it found no registered business under the name Crystalline Concepts.

Respondent

Respondent contends that Complainant has not established actual ownership of the trademark CRYSTALLIZE. Further, Respondent states that he has a legitimate interest in the Domain Name because it is closely related to his business, and because before he received any notice of the dispute, he had made preparations to use the Domain Name in connection with a planned offering of goods and services. Respondent contends that he did not register the name in bad faith but instead undertook a search to find any open, available domain name related to the word "crystal," which has a well-defined meaning in the semiconductor industry where chips are manufactured using crystals of silicon. Respondent further contends that because of full-time work he has not been able to make his website fully functional, and that his site is sometimes inaccessible due to the fault of his facilitator, Get-A-Name. Respondent requests that the Panel not only reject the Complainant’s request for transfer of the Domain Name, but make a finding of attempted reverse domain name hijacking on the part of the Complainant.

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- the Domain Name "crystallize.com" is identical to the trademark CRYSTALLIZE applied for by Complainant, but it is not clear that Complainant has established rights in the trademark; and

- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The Panel finds that the Domain Name "crystallize.com" is identical to the trademark CRYSTALLIZE claimed by the Complainant, but Respondent has raised a question as to the Complainant’s rights in the mark, contending that Complainant has failed to show actual use of the trademark. The Panel need not determine the extent of Complainant’s rights in the trademark CRYSTALLIZE, however, as the Panel finds that even assuming that Complainant has full rights in the CRYSTALLIZE mark, its claim must fail because Complainant has failed to prove the other essential elements of a claim under the Policy.

Complainant alleges that Respondent has no legitimate rights or interests in the Domain Name. In response, Respondent contends that his business, Crystalline Concepts,

"...was created several years ago as a business to provide training tools and custom encyclopedias for the semiconductor industry, an industry where the Respondent has 20 years of experience. The semiconductor industry is built around chips manufactured on crystals of silicon, so Respondent believes the ‘crystalline’ and ‘crystallize’ names were good fits, and logically associated with these business activities...." Response, 6.

Respondent states that"crystalline-concepts.com" was registered as a domain name in 1998 but that he felt a one-word name made better business sense. He contends that "Crystallize!" was a "planned name for a new business to help entrepreneurs launch their own web-based business, for online retail sales of various household products." Id. Respondent has also registered Spanish language equivalents for "crystalline" and "crystallize" as domain names to use for sites to link to the "crystallize.com" site. The fact that Respondent’s business name was not located in a search of a business database website is not determinative.

The Panel finds that the evidence is sufficient to satisfy Paragraph 4(c)(i) of the Policy, which states that the following circumstances may demonstrate a right or legitimate interest in a domain name:

(i) before any notice to you of the rights, your use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Panel thus finds that Complainant has failed to prove that the Respondent has no right or legitimate interest in the Domain Name.

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":

(i) 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 trademark 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; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Panel finds that the Complainant had failed to present evidence sufficient to establish any of the examples of bad faith use pursuant to Paragraph 4(b)(i) of the Policy. As is clear from the language of the Policy, however, the Panel may infer bad faith registration or use from other factors.

The Complainant’s first allegation, that both bad faith use and registration may be inferred from Respondent’s refusal to sell the Domain Name, must fail. It was not bad faith for the Respondent to refuse to sell a domain name that he believed he had a right or legitimate interest in and registered in May 1998, long before Complainant asserted any claim to trademark rights. Neither was it bad faith for the Respondent to re-register the Domain Name on April 16, 2000. The first letter sent by Complainant to Respondent on January 17, 2000, states only the following:

"Dear Mr. Eixenberger:
I am writing to you in regards to the "crystallize.com" domain name that you currently own. On behalf of Crystallize, Inc., I would like to tender to you an offer of $,1000.00 for the purchase of your rights and interests to the "crystallize.com" domain name. Crystallize, Inc. would also be willingly [sic] to pay any fees that might occur do [sic] to the transfer of the domain name. If you are agreeable to our proposal please contact me, at you earliest convenience, so that we can arrange for the transaction to take place. I look forward to hearing from you in this regard.
Sincerely,

Roy E. LaRoche
Crystallize, Inc."

Nothing in this letter informed the Respondent that the Complainant asserted trademark rights to the name crystallize. Complainant did not assert such claim until its April 25, 2000 letter to Respondent.

The Panel is unpersuaded by Complainant’s argument that bad faith is shown by the fact that Respondent renewed the domain name registration for "only" a one-year period. The fact itself does not support an inference of bad faith, and Respondent’s explanation that one year was the only renewal period offered by NSI seems reasonable.

Finally, Complainant contends that both bad faith registration and use are shown by Respondent’s failure to develop a site at the Domain Name. Complainant cites several cases holding that passive holding of a domain name may constitute bad faith registration and use. These cases may be distinguished from the case before this Panel. In Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, ICANN Case No. D2000-0004, the respondent had offered to sell the domain name to the complainant and failed to offer any evidence rebutting the contentions alleged by the complainant. Here, Respondent has made no offer to sell the Domain Name in question and has provided some explanation for the delay in completion of his website.

The other case cited by the Complainant, Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, is not on point. In considering whether passive holding of a domain name may constitute bad faith use, the Telstra panel noted that "the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior" and that a remedy can be determined under the Policy "only if those circumstances show that the Respondent’s passive holding amounts to bad faith." Id. at 7. The panel in Telstra found evidence of bad faith because (a) the complainant’s trademark was well known, (b) the respondent demonstrated no evidence of any actual or contemplated good faith use of the domain name, (c) the respondent took active steps to conceal its identity, and (d) the respondent provided false contact details in breach of its registration agreement. Id. at 7. None of the factors the Telstra panel found relevant in showing bad faith are present here.

In conclusion, the Panel finds that the Complainant has failed to prove registration and use in bad faith by the Respondent.

For the foregoing reasons, it is the decision of the Panel that the Complainant has failed to satisfy its burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, and that the Complainant’s claim for transfer of the Domain Name "crystallize.com" is therefore denied. The Panel denies the Respondent’s request for a finding of reverse domain name hijacking.

Dana Haviland
Panelist

Dated: September 28, 2000