Sun Microsystems, Inc. v. Telmex Management Services a/k/a Stealth Commerce a/k/a Lost in Space, SA, a/k/a Drevil
Claim Number: FA0206000114621
Complainant is Sun Microsystems, Inc., Palo Alto, CA, USA (“Complainant”) represented by Robert W. Sacoff, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson. Respondent is Telmex Management Services a/k/a Stealth Commerce a/k/a Lost in Space, SA a/k/a Drevil, Palma Majorca, SPAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jobsinjava.com>, registered with Intercosmos Media Group, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 11, 2002; the Forum received a hard copy of the Complaint on June 12, 2002.
On June 19, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <jobsinjava.com> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
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 July 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
On July 22, 2002, the Panel received an Additional Submission from Complainant that was not in compliance with Forum Supplemental Rule 7.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent’s <jobsinjava.com> domain name is confusingly similar to Complainant’s registered JAVA mark.
2. Respondent’s <jobsinjava.com> domain name resolves to an adult escort service and Respondent has made efforts to negotiate the sale of the domain name. Therefore, Respondent has no rights or legitimate interests in the subject domain name.
3. Respondent intentionally registered the infringing <jobsinjava.com> domain name and connected it to a commercial medium; thus, Respondent registered and used the infringing domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
C. Complainant’s Additional Submission was not timely and was not considered.
Complainant owns numerous trademark registrations for the JAVA mark with the U.S. Patent and Trademark Office (“USPTO”), specifically, Reg. No. 1,516,265 issued on December 13, 1988 and Reg. No. 2,178,784 issued on August 4, 1998. Complainant’s trademarks denote rights to the JAVA mark pertaining to computer programs and user manuals for use in developing and executing other computer programs on computer networks.
Complainant has invested millions of dollars in advertising and promotion of the JAVA mark and has sold and licensed millions of dollars in goods, services and technologies under the JAVA mark.
Respondent registered the disputed domain name on October 28, 2001. Respondent’s domain name resolves to an adult escort service website. On or about February 15, 2002, Respondent changed its contact information to “Stealth” after being contacted by Complainant’s counsel. On February 20, 2002, Respondent wrote in response to Complainant’s second e-mail a message containing an implicit offer to sell the domain
name to Complainant. Respondent’s message reads as follows:
Our client retains all rights to use the said domain name. It is not a matter for discussion. Unless you are proposing your clients would like to own this domain?
Complainant’s investigation provides uncontested evidence that Respondent has previously registered infringing domain names that resolve to the identical adult escort website. Respondent’s aliases include Telmex Management Services, Stealth Commerce, Drevil, and Lost in Space. Presently, Respondent is attempting to sell the subject domain name at <afternic.com> under the pseudonym of Drevil.
Paragraph 15(a) of the 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the JAVA mark through registration with the USPTO and subsequent continuous use.
The domain name registered by Respondent, <jobsinjava.com>, is confusingly similar to Complainant’s JAVA mark. The addition of the generic phrase “jobs in” fails to detract from the dominant presence of Complainant’s JAVA mark. Respondent’s generic phrase holds no meaning standing alone without the association of Complainant’s JAVA mark. Internet users encountering the infringing domain name are likely to believe, incorrectly, that the infringing domain name relates to opportunities for careers working with Complainant or its JAVA technology. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent did not submit a Response in this proceeding. Therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the <jobsinjava.com> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable 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”).
Complainant provided unrefuted evidence suggesting Respondent registered the infringing domain name in order to divert Internet users to its adult escort website, thereby tarnishing Complainant’s established JAVA mark. Respondent’s opportunistic registration of a domain name that infringes on Complainant’s mark fails to demonstrate rights to or legitimate interests in the domain name. Respondent’s use of <jobsinjava.com> does not correspond with a bona fide offering of goods or services pursuant to Policy ¶ 4(a)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(a)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
Furthermore, Complainant provided uncontested evidence that Respondent
communicated intentions to sell the subject domain name during correspondence with Complainant’s counsel; thus, Respondent’s actions fail to demonstrate rights or legitimate interests under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use); see Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale).
No evidence suggests that Respondent is commonly known by the <jobsinjava.com> domain name pursuant to Policy ¶ 4(c)(ii). No apparent connection exists between Respondent and the JAVA mark and Respondent has failed to produce information suggesting otherwise. Because Complainant’s JAVA mark has been extensively and exclusively used and indicates an obvious connection with Complainant, a presumption exists that Respondent does not have rights or legitimate interests in a domain name that incorporates Complainant’s JAVA mark in its entirety. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The criterion specified in ¶ 4(b) of the Policy does not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant’s Submission contains evidence that Respondent has engaged in a habitual pattern of opportunistically registering famous domain names and directing Internet users to the same adult escort website. Respondent Stealth has registered 471 domain names and Respondent Drevil is offering 2,736 domain names for sale at <afternic.com>. The circumstances surrounding Respondent’s present behavior are similar to Respondent’s previous pattern of registering infringing domain names. The facts permit the inference that Respondent registered Complainant’s JAVA mark in its domain name in an attempt to opportunistically benefit from an alleged affiliation with the famous mark; thus, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainant that the use or registration by anyone other than Complainant suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Respondent is offering the subject domain name for sale at <afternic.com> through one of its aliases, Drevil. Complainant has provided the Panel with information corroborating Respondent’s intentions to sell <jobsinjava.com>. Complainant’s Submission contains an e-mail illustrating Respondent’s implicit offer to sell the domain name. Respondent’s actions evidence bad faith registration and use under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Lastly, Respondent’s infringing domain name resolves to an adult escort website, which offers sexual services. Such an affiliation could damage the goodwill associated with Complainant’s mark in that Internet users may believe the website is sponsored or endorsed by Complainant because it contains the JAVA mark. Respondent’s attempt to commercially benefit from creating a perceived affiliation with Complainant’s mark represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <jobsinjava.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 1, 2002.
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