Sun Microsystems, Inc. v. Color Vivo Internet c/o David Carrero Fdez-Baillo
Claim Number: FA0909001282898
Complainant is Sun Microsystems, Inc. (“Complainant”), represented by Andrew
N. Downer, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <javastore.com>, registered with Coolhosting.ca.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 assertions:
Complainant holds several registrations for the JAVA trademark with the United States Patent and Trademark Office (“USPTO”) for use in connection with computer programs, including Reg. No. 1,516,265, issued Dec. 13, 1988.
Complainant has not granted to Respondent any license of other permission to use its JAVA mark.
Complainant announced on June 2, 2009, that Complainant intended to start a new service called “Java Store.”
Respondent registered the domain
name <javastore.com> days
After Respondent received the cease-and-desist letter, the disputed domain name stopped resolving to an active website.
Respondent’s <javastore.com> domain name is confusingly similar to Complainant’s JAVA mark.
Respondent does not have any rights to or legitimate interests in the <javastore.com> domain name.
Respondent registered and uses the <javastore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant holds a registration of the JAVA mark with the
USPTO. Such registration, establishes
its rights in the JAVA mark under Policy ¶ 4(a)(i). See Miller Brewing
domain name contains Complainant’s JAVA mark in its entirety, plus the generic
word “store,” and the generic top-level domain (“gTLD”) “.com.” The disputed domain name is thus confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
See also Westfield
Corp. v. Hobbs, D2000-0227 (WIPO
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii)
is on Complainant to prove by a prima
facie showing that Respondent does not have rights to or legitimate
interests in the disputed domain name. Once Complainant has made out a prima
facie case, the burden shifts to Respondent to show that it does indeed have
rights to or legitimate interests in its domain. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Do The Hustle, LLC v. Tropic Web,
Complainant has presented a prima facie case in support of its claim, and Respondent has failed to respond in these proceedings. While we are therefore free to presume that Respondent has no rights or interests cognizable under the Policy, we will nonetheless examine the record before us to determine if there is in it any basis for concluding that Respondent has any such rights or interests under the criteria set out in Policy ¶ 4(c).
We begin with consideration of Complainant’s undenied assertion
that, before receiving a cease-and-desist letter from Complainant, Respondent
used the <javastore.com>
domain name, which we have found is confusingly similar to Complainant’s JAVA
mark, to advertise third-party websites that compete with Complainant’s
business. This was not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
We next consider that there is also no dispute as to
Complainant’s further allegation that, since
Finally under this heading, Complainant contends, and Respondent does not deny, that Complainant has not granted Respondent any license of other permission to use its JAVA mark. Moreover, the WHOIS information associated with the disputed domain names identifies Respondent as “Color Vivo Internet c/o David Carrero Fdez-Baillo,” and there is no evidence in the record to indicate that Respondent is commonly known by disputed domain name. We therefore conclude that Respondent is notcommonly known by <javastore.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered the <javastore.com>
domain name on July
11, 2009, and thereafter used it to resolve to websites containing links to third-party
websites, some of which directly compete with Complainant’s computer software
business. Respondent was thus using the <javastore.com> domain name to
disrupt Complainant’s business by diverting Internet users to Complainant’s
competitors. This is evidence of bad
faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See Puckett,
Individually v. Miller, D2000-0297 (WIPO
The website previously resolving from the <javastore.com> domain name displayed
links to sites related to, and in competition with, Complainant’s
business. We may infer from the
circumstances presented that Respondent received pay-per-click fees for hosting
these links. Because the disputed domain
name is confusingly similar to Complainant’s mark, Internet users were likely
confused as to Complainant’s possible affiliation with or sponsorship of the
disputed domain name and resolving website.
This is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat.
Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.
To the same effect, see also
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Additionally, in order to find bad faith registration and
use pursuant to Policy ¶ 4(a)(iii) it is not necessary
that Respondent have put the <javastore.com>
domain name to any active use. Failure
to make an active use of the disputed domain name can, in and of itself, be evidence
of bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). Thus, where,
as here, Respondent, after receiving a cease-and-desist letter, has failed to
make an active use of the disputed domain name, it is appropriate to, and we do,
conclude that this is further evidence that Respondent registered and uses the
disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Am.
Broad. Cos., Inc. v. Sech, FA 893427
(Nat. Arb. Forum
Finally, there is
no dispute as to Complainant’s allegation that on June 2, 2009, it announced
that Complainant would be starting a new service called “Java Store.” Respondent’s registration of the <javastore.com> domain name a little over a month after this
announcement is evidence of opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota
v. Waldron, D2001-0351 (WIPO
If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that respondent has to refute and which he has failed to do. The panel finds a negative inference from this.
For all of these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <javastore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 21, 2009
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