WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sun Microsystems, Inc. v. Mohammad Mahdi Rafiee
Case No. DIR2006-0005
1. The Parties
The Complainant is Sun Microsystems, Inc., Santa Clara, California, of United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, of United States of America.
The Respondent is Mohammad Mahdi Rafiee, Tehran, of Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <sun.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2006. On December 1, 2006, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On December 3, 2006, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 18, 2006.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the pursuant to the .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the Rules), both adopted by the .IR Domain Registry Authority (“IRNIC”) on December 22, 2003, and the World Intellectual Property Organization Arbitration and Mediation Center Supplemental Rules for .IR Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2007. The Respondent sent an email to the Center on December 21, 2006, but did not submit any formal response. Accordingly, the Center notified the Respondent’s default on January 11, 2007.
The Center appointed James A. Barker as the sole panelist in this matter on January 18, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a long-established, multi-national company with business operations in many areas, including but not limited to computer hardware, computer software, network computing equipment and related services.
The Complainant is the owner of various registered trademark rights. Those include word marks, registered on the principal register of the United States Patent & Trademark Office, including marks incorporating the word SUN and SUN MICROSYSTEMS. The Complainant provided evidence of those registered marks as part of the Complaint.
The Complainant is also provided evidence that it is the owner of registered trademark rights in Iran, including for the marks SUN MICROSYSTEMS, SUN RAY, MY SUN, SUN BLADE, and SUN FIRE.
The Complainant was founded in 1982, and has continuously operated a worldwide business under its SUN and SUN MICROSYSTEMS names and marks since that time.
Following communications between the Complainant and the Registrar, the Registrar then ‘took down’ the site to which the domain name previously reverted. At the date of this decision, the disputed domain name did not revert to an active website.
5. Parties’ Contentions
The following is a summary of the Complaint.
Activity of the Respondent
The Respondent is not related to the Complainant or licensed to use its marks.
The Respondent used the disputed domain name for a website purporting to be the Complainant’s official Iranian website. The website contained numerous SUN trademarks and logos, and appears to be a modified version of an old page from the Complainant’s “www.sun.com” website. The Respondent added content to the page, such as the notation “Sun Microsystems/Iran” and “© sun.ir 2005” to make it appear to be an official Sun website.
The Respondent’s website also purports to offer information on official Sun training programs, but the training manual provided by the Respondent was modified to add the Respondent’s contact information and website references. Respondent also added references to a company called Taha Microsystems to the brochure.
Before filing the Complaint, the Complainant attempted to contact the Respondent, but received no response.
Identical or confusingly similar
The disputed domain name is identical to the Complainant’s name and mark because the disputed domain name incorporates the entirety of the SUN name and mark.
In fact, the only difference between the disputed domain name and the SUN name and mark is the addition of the “.ir” country code top level domain. It is well recognized that such additions, being necessary parts of domain names, do nothing to distinguish a domain name from the corresponding trademark.
Rights or legitimate interests
The Respondent is not known by, or acquired any rights in the Complainant’s marks.
The Respondent has used the disputed domain name for a website that falsely purports to be the Complainant’s official Iranian website. The Respondent also offered training and consulting services to users through the use of a modified and out-dated Sun training manual. Such use, which intentionally attempts to trade on the fame of the Complainant’s marks, does not constitute a legitimate interest, or a bona fide offering of goods and services.
Based on the fame of the Complainant’s marks and the character of the Respondent’s website, the Respondent necessarily had actual knowledge of the Complainant’s rights.
Because the Respondent had actual knowledge of the Complainant’s trademark rights, the Respondent could not have registered the disputed domain name with the intention of using it legitimately. The Complainant claims that there is bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant requests, in its amended Complaint, that the registration if the disputed domain name be cancelled.
The Respondent did not file a formal response.
However, following the formal notification of the Complaint, on December 21, 2006, the Respondent sent an email to the Center. In the email, the Respondent claimed that its website was “just a model and sample used of SUN for our web designer, and not used to sell, buy and any other commercial or trade from sun logo or brand and etc.” The Respondent further indicated that it would use the disputed domain name, in the future, “for another field in real estate and with brand new company”.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered or is being used in bad faith.
The Complainant must prove each of these 3 elements, which are discussed in turn as follows. The Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to relevantly similar terms of the Policy.
A. Identical or Confusingly Similar
The first element of the Policy has two limbs. One is that the Complainant “has rights” in a trademark or service mark. The Complainant has established that it has such rights in its registered SUN marks, by providing copies of its trademark registrations.
The second limb concerns whether the disputed domain name is identical or confusingly similar to the Complainant’s mark.
It is well established that the “.com” extension is to be disregarded for the purpose of determining identicality or confusing similarity. Setting aside that extension, the disputed domain name is relevantly identical to the word element of the Complainant’s mark.
That finding is not affected by the fact that the mark includes a highly generic term (“sun”). Previous panels have made findings of identicality in similar circumstances. See, for example, J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054. That case involved a dissenting opinion, but all panelists agreed that the mark “crew” was identical to the domain name “crew.com”.
For these reasons, the Complainant has established this element.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case against the Respondent. Having established that case, the burden shifts to the Respondent to demonstrate that it has such rights or legitimate interests. (See item 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)
Because of the highly generic character of the disputed domain name, it would generally not be difficult for a respondent to establish a right or legitimate interest in it. Paragraph 4(c) of the Policy sets out three non-exclusive circumstances by which a Respondent may demonstrate such rights or legitimate interests. But the Respondent has established none of them. Neither has the Respondent demonstrated any other right or interest in the disputed domain name.
Rather, the evidence indicates that the Respondent used the disputed domain name to fraudulently identify itself as the Complainant. It is obvious that such a fraudulent use cannot demonstrate a right or legitimate interest. The flagrancy of that use indicates that the Respondent has no rights or legitimate interests in the disputed domain.
The Respondent’s only claim to the contrary is that it was using the webpage as a “model”. Evidence presented by the Complainant that the Respondent’s contact details were inserted in that website, to give the false appearance of an association with the Complainant, clearly establish otherwise. Neither does the Respondent give any explanation as to why a copy of the Complainant’s website was used as a “model”.
For these reasons, the Panel finds that the Complainant has established this element.
C. Registered and Used in Bad Faith
The character of the website to which the disputed domain name reverted clearly indicates that the Respondent was actually aware of the Complainant and its marks.
Relevantly, paragraph 4(b)(iii) of the Policy provides that there is evidence of bad faith registration and use where the Panel finds that the domain name was registered primarily for the purpose of disrupting the business of the Complainant. (Although the Panel notes that the Policy only requires a finding that there was bad faith registration or use of the disputed domain name.)
The Respondent’s fraudulently held itself out, through its website, as having an association with the Complainant. The Respondent offered training and consulting services relating to the Complainant’s software and hardware products. In doing so, it also appears that the Respondent may have directly and blatantly infringed the Complainant’s trademarks and copyright in its training materials. The wholesale copying of the Complainant’s materials could not have occurred without a deliberate effort by the Respondent. From this, it is clear that the Respondent was acting in unfair competition with the Complainant, which by nature would disrupt the Complainant’s business.
For these reasons, there is clearly evidence of bad faith for the purpose of paragraph 4(b)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sun.ir> be cancelled, in accordance with the request of the Complainant.
James A. Barker
Dated: Februrary 1, 2007