DECISION

Sun Microsystems, Inc. v Elise, Bruce, Regina & Associates, Inc.

Claim Number: FA0112000102723

PARTIES

Complainant is Sun Microsystems, Inc., Palo Alto, CA (“Complainant”) represented by Mark V.B. Partridge, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson.  Respondent is Elise, Bruce, Regina & Associates, Inc., Atlanta, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <javaone.com>, registered with Network Solutions.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 3, 2001; the Forum received a hard copy of the Complaint on December 6, 2001.

On December 5, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <javaone.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 December 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 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@javaone.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 January 8, 2002, Complainant submitted a timely additional submission, pursuant to the Forum’s Supplemental Rule 7.

On January 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as 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 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <javaone.com> is identical and confusingly similar to JAVAONE and JAVA, marks in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

C. Additional Submission by Complainant

Respondent failed to respond to the Complaint by December 31, 2001, as required.  Respondent’s failure to present any evidence or deny Complainant’s allegations justifies an adverse inference against the Respondent that the evidence would not have been favorable.

FINDINGS

Complainant registered the service mark JAVAONE on the Principal Register of the United States Patent and Trademark Office on February 17, 1998, as Registration No. 2,137,780, and has continuously used the mark in commerce since May 1996 in connection with computer and information technology trade shows.

Complainant also holds several other registered trademarks and service marks in the word JAVA, which were registered as early as 1988 by Complainant or its predecessor. 

Respondent registered the disputed domain name on May 1, 1998 and has made no apparent use of it; the domain name does not currently resolve to an active web server.

On November 24, 2001, Respondent sent Complainant via e-mail an unsolicited offer to sell the domain name, stating that no reasonable offer would be refused.  Complainant replied by offering to compensate Respondent for its out-of-pocket expenses for transfer of the domain name; Respondent did not respond to the offer.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Complainant has sufficiently established its rights in the JAVAONE mark through registration with the United States Patent and Trademark Office.  The disputed domain name is identical to Complainant’s mark.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

The inclusion of the generic top-level domain (“gTLD”) “.com” in the disputed domain name is irrelevant to the identical inquiry, as use of a gTLD is required of domain name registrants.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the gTLD “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has sufficiently established its rights to and legitimate interests in the JAVAONE mark.  Because Respondent did not submit a Response in this matter, the Panel may presume it has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

By passively holding the domain name for over three years, Respondent has demonstrated that it has no rights or legitimate interests in it.  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest could be found when Respondent failed to use disputed domain names in any way); see also American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

As there is no evidence Respondent is commonly known as “javaone” or “javaone.com” pursuant to Policy ¶ 4(c)(ii), the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant’s JAVA and JAVAONE marks are distinctive and well known among Internet users.  By registering an identical domain name without regard for the marks, Respondent acted with “opportunistic bad faith.”  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names at issue were so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggested “opportunistic bad faith”).

Further, Respondent’s willingness to sell the domain name, albeit for an unnamed price, evinces bad faith registration and use under Policy ¶ 4(b)(i).  See American 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”); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

Finally, Respondent’s three year non-use of the domain name amounts to passive holding and bad faith use under the Policy.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

Accordingly, 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 should be hereby granted.

Accordingly, it is Ordered that the <javaone.com> domain name be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: January 14, 2002

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