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
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@jobsinjava.com 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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