Sun Microsystems Inc. v. Aly Ramzan
Claim Number: FA0204000112539
Complainant
is Sun Microsystems Inc., Chicago,
IL, USA (“Complainant”) represented by Mark
Partridge, of Pattishall McAuliffe
Newbury Hilliard & Geraldson.
Respondent is Aly Ramzan,
Karachi Sind, PAKISTAN (“Respondent”).
The
domain name at issue is <sunsolutions.biz>,
registered with Tucows, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 28, 2002; the Forum
received a hard copy of the Complaint on May 1, 2002.
On
May 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On June 26, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Carmody, Esq., as
the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<sunsolutions.biz> domain name is identical to Complainant's
SUNSOLUTIONS mark.
Respondent
has no rights or legitimate interests in the <sunsolutions.biz>
domain name.
Respondent
registered the <sunsolutions.biz> domain name in bad faith.
B.
Respondent
Respondent
has failed to submit a Response.
Complainant has registered its
SUNSOLUTIONS mark with the United States Patent and Trademark Office as
Registration Number 1,818,397.
Complainant uses its mark in relation to computer hardware and related
goods, services and technologies.
Complainant has invested millions of dollars in advertising and
promoting its mark.
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s
investigation has revealed that Respondent operates a domain name registration
business under the name “CUBEXS.”
Complainant has also found Whois records that show Respondent has
registered of hundreds of domain names, some of which correspondent to
well-known marks such as PARAMOUNT, WEBSTERS, and KAPOOR.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a disputed
domain name is not identical to the mark in which the Complainant asserts
rights.
Complainant
has established that it has rights in the SUNSOLUTIONS mark through
registration with the United States Patent and Trademark Office. The <sunsolutions.biz> domain
name is identical to Complainant’s SUNSOLUTIONS mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
There is no evidence on record, and
Respondent has not come forward with any evidence to establish it has a
trademark or service mark for SUNSOLUTIONS or <sunsolutions.biz>. Therefore Respondent has not established
that it has rights or legitimate interests in the disputed domain name pursuant
to STOP Policy ¶ 4(c)(i). See Nat’l
Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that, because Respondent did not come forward
with a Response, the Panel could infer that it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name).
The <sunsolutions.biz>
domain name is identical to Complainant’s mark and as a result Internet users
looking of Complainant are likely to be confused as to the source and
affiliation of Respondent’s website.
This type of use is not considered to be a bona fide offering of goods
or services pursuant to STOP Policy ¶ 4(c)(ii). See William L. Lyon & Assocs., Inc. v. Yata, FA 103043
(Nat. Arb. Forum March 21, 2002) (finding
the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated the Respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”).
Respondent is known to the Panel as Aly
Ramzan and there is no evidence that Respondent is also commonly known as
SUNSOLUTIONS or <sunsolutions.com>. Therefore, Respondent has no rights or legitimate interests in
the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June
19, 2000) (finding that Respondent has failed to demonstrate any rights or
legitimate interests in the <twilight-zone.net> domain name since
Complainant had been using the TWILIGHT ZONE mark since 1959); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in domain name when Respondent is
not known by the mark).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
There is evidence that Respondent has
registered numerous domain names with the intent of selling them. It can be inferred, based on this evidence,
that Respondent registered the dispute domain name with the intent of selling
it as a part of its domain name sales business. The registration of a domain name for the primary purpose of
selling, renting or transferring is evidence of bad faith pursuant to STOP
Policy ¶ 4(b)(i). See Cruzeiro Licenciamentos Ltda v. Sallen.,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale).
Based on the on STOP IP Claim procedure
Respondent received actual notice of Complainant’s mark before it registered
the disputed domain name. Despite
notice of Complainant’s rights to <sunsolutions.biz> Respondent
proceeded to register the domain name.
This is evidence of bad faith registration. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum
Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice
given to Respondent regarding existing IP Claims identical to its chosen domain
name precluded good faith registration of <genelogic.biz> when Respondent
registered it with “full knowledge that his intended business use of this
domain name was in direct conflict with a registered trademark of a known
competitor in exactly the same field of business”); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was
on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed
domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the domain name is evidence of bad faith”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <sunsolutions.biz> be transferred from
Respondent to Complainant and subsequent challenges under the STOP Policy
against this domain name shall not be permitted.
James A. Carmody, Esq., Panelist
Dated: July 1, 2002
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