WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sun Microsystems, Inc. v. Jennifer O. Flynn

Case No. DBIZ2002-00208

 

1. The Parties

Complainant is Sun Microsystems Inc., 901 San Antonio Road, Palo Alto, California, 94303-4900, United States of America.

Respondent is Jennifer O. Flynn, Holly Cottage, Stock, Essex, CM4 9LG, United Kingdom.

 

2. The Domain Name and Registrar

The domain name at issue (the Domain Name) is <esun.biz>.

The registrar of the Domain Name is Netbenefit d/b/a Netnames, 33 Broad Street, 18th Floor, New York, New York 10004, United States of America.

 

3. Procedural History

On April 28, 2002, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated May 10, 2002.

By Notification of Complaint and Commencement of Administrative Proceeding dated May 28, 2002, the Center informed the Respondent of the commencement of the proceedings and of subsection 5 of the STOP Rules which grants the respondent 20 days to respond to the Complaint. The last day for the Respondent to send a Response to the Complainant and the Center was thus held as June 17, 2002. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.

The Center then proceeded to verify that the Complaint satisfied the formal requirements in accordance with the Rules for Start-up Trademark Opposition Policy [hereinafter referred to as the STOP Rules] and the World Intellectual Property Organization Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ [hereinafter referred to as the WIPO Supplemental STOP Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative. The Panel has reviewed the documentary evidence provided by the parties and with the Centerís assessment that the Complaint complies with the formal requirements of the STOP Rules and the WIPO Supplemental STOP Rules.

On June 24, 2002, the Center issued a Notification of Respondent Default.

On July 3, 2002, the Complainant submitted an additional statement.

The Center then informed the Parties on July 24, 2002, that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the STOP Rules and the WIPO Supplemental STOP Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence. The transmission of the case file was also executed on this date.

As part of the material provided to the Panel was included a submission by the Respondent in the form of an e-mail dated July 25, 2002, containing an amendment to her address contact details to include her company name as "Esun Ltd" and a copy of the e-mail the Respondent allegedly sent to the Complainant on April 29, 2002.

The Panel is obliged to issue a decision on or prior to August 7, 2002, in the English language, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.

 

4. Factual Background

The Complainant alleges to be a multi-national company with business operations in many areas such as computer systems, computer hardware, computer software and the Internet. The Complainant alleges to have continuously used and promoted the SUN mark in connection with computer software, computer hardware and related goods, services and technologies in the United States and abroad. The Complainant alleges to have used and registered on a worldwide basis a family of SUN-based marks for such goods and services, as put forth in exhibit B.

The Respondent is an individual, who according to the WHOIS database, has registered the Domain Name on March 27, 2002 (Exhibit A). Thereafter the Complainant received notice that the Respondent had registered the Domain Name. By e-mail correspondence dated April 25, 2002, the Complainant informed the Respondent that it had filed an IP claim based on rights in the ESUN mark and that it had until April 28, 2002, to initiate a STOP proceeding. The Complainant requested from the Respondent her comments with respect to her good faith and legitimate interest in registering the Domain Name (Exhibit E). Respondent failed to answer the letter before the stated deadline of April 26, 2002.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on the trademarks and service marks it owns, such as "SUN ONE", "SUN BLADE", and "SUN CONSULTING" for goods and services in connection with computer software, computer hardware, and related goods, services and technologies (U.S. and U.K. trademark registrations for the SUN marks are shown in Exhibit B). No application by the Complainant for the registration of the trademark ESUN, based on intent to use, has yet matured to registration neither in the United States nor in the United Kingdom.

The Complainant further contends that these registrations constitute proof of the validity of the Trademarks, Sunís ownership of the Trademarks, and its exclusive right to use them in association with the goods specified in the registrations.

The Complainant alleges that it has used the SUN, ESUN and its family of SUN-based Marks on a worldwide basis, and has registered the SUN and ESUN Marks, or applied for registration, in many foreign jurisdictions.

The Complainant states that SUN, ESUN and its family of ESUN-based Marks have become famous and represent extraordinarily valuable goodwill as a result of its extensive marketing efforts, substantial sales and the resulting success of goods, services and technologies.

The Complainant contends that it reviewed all available online trademark registration records for numerous countries and has found no applications or registration by the Respondent for SUN or ESUN. The Complainant further submits that an Internet search for any legitimate use by the Respondent of SUN or ESUN was to no avail.

The Complainant claims that the numerous domain names registered by the Respondent according to the WHOIS records (provided in Exhibit D) demonstrate the Respondentís lack of intent to make bona fide use of the Domain Name.

The Complainant alleges that the Respondent acted in bad faith. The Complainant contends that during the Registration process of the Domain Name, the Respondent had received notice of Complainantís IP Claim in ESUN. Nonetheless, the Respondent proceeded with the application without contacting the Complainant to resolve the issue.

The Complainant submits that the Respondentís <esun.biz> Domain Name is identical to its ESUN Mark and is confusingly similar to its famous SUN and family of SUN-based Marks. The Complainant further alleges that "E" is a common prefix in the computer and Internet industry, that it is an apt prefix for its services, and that the addition of "E" to SUN merely increases the likelihood of confusion with the Complainant.

The Complainant contends that the Respondent does not have any rights or legitimate interest in the Domain Name since the latter does not conduct any legitimate commercial or non-commercial business activity using the <esun.biz> Domain Name, is not commonly known by the <esun.biz> Domain Name, and has not acquired any trademark or service mark rights to such name.

The Complainant contends that the Respondent has made no bona fide use of the <esun.biz> Domain Name.

The Complainant adds that the burden shifts to the Respondent to prove a legitimate interest in the Domain Name.

The Complainant contends that the Respondent has registered the Domain Name in bad faith to sell the name for profit or to mislead users based on confusion with the Complainantís famous Marks.

B. Respondent

The Respondent failed to submit a Response to the Complainant's Complaint before the due date. No reasons were given to explain why no Response was provided within the stated period. In the absence of such explanations, the Panel refuses to consider the e-mail dated July 25, 2002, which was sent by the Respondent to the Center. But even if this e-mail were considered it would not change the Panelís appreciation of the facts, since the said e-mail is no evidence of the facts alleged therein.

 

6. Discussion and Findings

Pursuant to the STOP the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show cumulatively:

i) that the Domain Name is identical to a trademark in which the Complainant holds rights;

ii) that the Respondent has no legitimate rights or interests in the Domain Name; and

iii) that the Domain Name was registered or used in bad faith.

Each of these elements will be addressed in turn below.

Identical to Trademark

The Panel finds the Domain Name <esun.biz> to be identical to the trademark ESUN for which the Complainant has filed applications for registration in the United States and United Kingdom.

However, the Domain Name is not identical to the SUN trademark registered by the Complainant in the United States of America. and United Kingdom. The prefix "E" (with all of what it connotes in the Internet field) which is part of the Domain Name is an element not found in the trademark SUN. Therefore, the Domain Name cannot be said to be identical with the SUN trademark. The Complainant admits this finding when it writes: "Respondentís <esun.biz> Domain Name is identical to SUNís ESUN Mark and is confusingly similar to Complainantís famous SUN and family of SUN-based Marks" (page 5 of the Complaint). The Panel has no difficulty in reaching the conclusion that the Domain Name is confusingly similar with the SUN Trademark, but in a STOP proceeding, this is irrelevant.

Furthermore, in STOP proceedings, the generic top-level domain ".biz" is irrelevant when determining whether a domain name and mark are identical.

Complainant's Rights in the Identical Trademark

The Panel finds the Complainant has shown insufficient evidence pointing towards the rights it holds in the ESUN mark. As brought forth in Exhibits B and C, the Complainant has proceeded with the registration of the trademark SUN; however, concerning the service mark ESUN, no evidence of the use or making known of the aforementioned mark has been submitted to the Panel.

According to Exhibit B submitted by the Complainant, there is no evidence for first use in commerce of the ESUN mark applied for; in fact, the application is based on intent to use in the United States of America. In the United Kingdom, in its application, the Complainant claims as priority date the U.S. filing date, i.e. March 16, 2000. The document filed (Exhibit C) in connection with this application also states with respect to status: "opposition outstanding". No date of first use is mentioned.

With respect to the U.S. application, it is a pending application (which was published for opposition June 18, 2002, according to a search done by the Panel).

"eSun" may be thus considered a service mark that has not yet been registered and for which no evidence of making known or of use has been filed. Furthermore, the Complainant has not presented evidence that Internet users recognize that "eSun" identifies goods or services unique to the Complainant. No available products or services were shown to be marketed under the ESUN trademark. See Vietnam Venture Group v. Cosmos Consulting gmbh, FA 102601 (Nat. Arb. Forum February 6, 2002) (dismissing the Complainant because (1) the Complainant did not hold a registered trademark in VVG, and (2) the Complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the VVG mark identified goods or services unique to the Complainant).

The evidence, or the absence thereof, therefore shows that the Complainant has filed two trademark applications for the ESUN trademark, that the applications were not based on prior use or making known, that the applications have not matured to registration, that they are open to opposition proceedings, that nothing on the record proves that the ESUN trademark is used or made known, nothing indicates that there are any common law rights attaching thereto.

It is the Panelís opinion that when the STOP Rules state that the Complainant must show that it holds rights in an identical trademark, these rights must be more significant than simply rights in an application for the registration of a trademark. If it were otherwise, then anyone could hold rights in any trademark by simply applying for its registration and then file an IP claim, a complaint under the STOP rules and eventually obtain the transfer of a domain name while the trademark application may be objected to or opposed and never mature to registration.

The STOP Rules do not require for the Complainant to show that it holds rights in a registered trademark; but they do require from the Complainant to demonstrate that it has at least common law rights in an identical trademark.

 

7. Decision

The Panel finds that the Complainant has failed to show that it holds rights in an identical trademark.

Since the three elements of the STOP Rules are cumulative, there is no need to decide the other two elements.

Accordingly, the Complainant is dismissed.

 


 

Hugues G. Richard
Sole Panelist

Dated: August 5, 2002