WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sun Microsystems, Inc. v. Cyber Business Holdings Ltd.
Case No. D2007-1439
1. The Parties
The Complainant is Sun Microsystems, Inc., of Broomfield, Colorado, United States of America (“USA”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson of Chicago, Illinois, United States of America.
The Respondent is Cyber Business Holdings Ltd. of Charleston, Antigua and Barbuda.
2. The Domain Names and Registrars
The disputed domain names <javaroulette.com>, <javacraps.com>, <java21.com> and <javavegas.com> are registered with eNom. The disputed domain name <javacasinogames.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 29, 2007, and in hard copy on October 2, 2007. The Complaint as filed included the domain names <javagambling.com>, <javalotto.com>, <javacasinos.com>, <javasportsbook.com> and <javaslots.com> (the “other domain names”) in addition to the disputed domain names mentioned above.
The Center transmitted its request for registrar verification by email to eNom and Tucows on October 2, 2007. Tucows replied on October 2, 2007, confirming that it was the registrar and the respondent was the current registrant of the disputed domain name <javacasinogames.com>, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that this domain name would remain locked during this proceeding, that the registration agreement was in English and contained a submission to the jurisdiction at its principal office; and providing the contact details held in respect of the registration on its Whois database.
The Center sent a reminder to eNom on October 3, 2007. eNom responded on October 3, 2007, with a notification that the disputed domain names <javacraps.com>, <javaroulette.com>, <javavegas.com> and <java21.com> would remain locked during this proceeding, confirming that the registration agreement was in English and contained a submission to the jurisdiction of the courts of King County, Washington, and providing the contact details of the registrant of these domain names on its Whois database.
The Center asked eNom by email of October 4, 2007, to respond in relation to the other domain names. eNom replied on October 5, 2007, stating that it was not the registrar of these domain names, which appeared to be registered with GoDaddy. The Center sent a request for registrar verification in respect of these domain names to GoDaddy on October 5, 2007. GoDaddy replied on October 8, 2007, confirming that it was the registrar of these domain names but that they were registered in the name of Net Webmaster of Jakarta, Indonesia.
The Center sent a Complaint Deficiency Notice to the Complainant on October 9, 2007, pointing out that the other domain names were not registered in the name of the Respondent or with eNom or Tucows, and requiring the Complainant to rectify these deficiencies within five days in accordance with paragraph 4(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
The Complainant’s representative responded by email of October 9, 2007, asserting that the other domain names had been registered in the name of the Respondent with eNom according to printouts from eNom’s Whois database taken the day before the Complaint was filed. The Center replied on October 10, 2007, suggesting that the Complainant could file a new Complaint in relation to the other domain names.
On October 12, 2007, the Complainant filed a motion to cancel the transfer of the other domain names and an amended Complaint, limited to the disputed domain names. The Center contacted eNom by email on October 17, 2007, pointing out that the other domain names had been transferred after the filing of the Complaint and the transmission of the request for registrar verification, and asking whether they could be retrieved. eNom replied on October 17, 2007, stating that the other domain names were transferred prior to its verification, that the transfers appeared to be legitimate and that eNom had no grounds to dispute the transfer. On October 22, 2007, the Center informed the Complainant that eNom was unable to retrieve the other domain names and that it would proceed with the amended Complaint.
The Center verified that the amended Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 11, 2007. The Response was filed with the Center by email without annexes on November 12 and with annexes on November 13, 2007, and in hard copy with annexes on November 16, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on November 20, 2007. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
On December 4, 2007, the Complainant submitted a document entitled “Reply in Support of Complaint”. The Respondent responded to this submission by email on December 5, 2007. By Procedural Order No. 1 issued as of December 7, 2007, the Panel ordered that paragraph II.A.1 and Exhibit 1 to the Complainant’s submission would be admitted into this proceeding; that the Respondent’s email of December 5, 2007, would be admitted into the proceeding in so far as it related to the parts of the Complainant’s additional submission which were admitted; that the Respondent would be permitted to make a further submission in response to those parts of the Complainant’s supplemental submission by December 21, 2007; and that the date for the Panel to forward its decision to the Center would be extended until January 11, 2008. The Respondent made further submissions by email on December 22, 2007 and December 26, 2007.
4. Procedural Rulings
Although the Response was filed out of time, the delay was insignificant. The Panel admits the Response pursuant to paragraph 10(c) of the Rules.
The Complainant’s supplemental submission raised more difficult issues. As stated by the Panel in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447,
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph  of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
“The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules; see e.g. the decisions of WIPO Panels in WIPO Case No.s. D2000-0166 <plazahotel.com>, D2000-1151 <goldline.com>, D2000-1571 <tdwatergouse.com> et al., D2000-0270 <htmlease.com> and, recently, D2003-0229 <pepsibabies.com> et al. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
“These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
To these considerations, the Panel would add that any supplemental submission inviting the Panel to exercise its discretion under paragraph 12 of the Rules should be made as soon as possible. A late submission is liable to exacerbate the adverse impact of its admission on the expedition and economy of the procedure.
In this case, the Complainant’s supplemental submission was made 22 days after the Response was filed, 14 days after the Panel was appointed, and on the very date by which the Panel was required to forward its decision to the Center. In fact the Panel had prepared a draft of its Decision when it was informed of the Complainant’s submission.
The Complainant sought to explain the lateness of its supplemental submission on the basis that it had not received hard copy of the Response until November 26, 2007. The Panel is not impressed by this explanation. An electronic copy of the Response was copied by the Respondent to the Complainant, without annexes, on November 12, 2007, and with annexes on November 13, 2007. The Complainant did not require hard copy to address any unexpected points raised in it. The Panel regards the extreme and unjustified lateness of the Complainant’s supplemental submission as a significant factor weighing against its admission.
Having said this, the submission was made before the Panel confirmed the final text of the Decision. The Panel considers that it retains a discretion to request further statements under paragraph 12 of the Rules at least until it has confirmed its final text of the Decision, and possibly until the Decision has been notified to the parties and the Registrar. Furthermore, the delay in finalising the Decision which would result from admitting part or all of the Complainant’s supplemental submission did not appear in this case to be liable to prejudice the Respondent.
Much of the Complainant’s supplemental submission essentially reiterated points already made in the Complaint. The Panel had no hesitation in deciding not to admit these parts in accordance with the principles cited above. However, the submission also made one further point which could be regarded as rebutting the explanation given by the Respondent in its Response of its choice of the disputed domain names.
In these circumstances, the Panel decided to make the Procedural Order summarised above, admitting only the last-mentioned point in the Complainant’s supplemental submission and affording the Respondent a full opportunity to respond further to it. The time for submission of the Panel’s decision was extended in consequence, taking into account the Panel’s prior arrangements. In the result, the procedure has taken considerably longer than should normally be the case. However, to the extent that the Complainant may have been prejudiced thereby, it has itself to blame. Complainants should not assume that Panels will generally admit such late submissions in other cases.
The Respondent’s further submissions made on December 22, 2007, were out of time, but the delay was insignificant and the Panel admits them pursuant to paragraph 10(c) of the Rules to the extent that they respond to the part of the Complainant’s supplemental submission admitted by the Procedural Order. The Respondent’s further submission of December 26, 2007, was rather more out of time and irrelevant. The Panel declines to admit this last submission.
5. Factual Background
The Complainant supplies computer hardware and software and related services, including software under the name “Java”. The Complainant has registered “JAVA” as a trademark in the USA for computer software and hardware and electronic transmission of data over a global communications network. One of these registrations was made in 1988 claiming use from December 10, 1987; the others were registered at various dates between 1998 and 2005, claiming first dates of use varying from January 1996 to August 1999. The Complainant has also registered “JAVA” as a trademark in a considerable number of other countries.
The Respondent registered the disputed domain names on June 3, 1998, with the exception of <javacasinogames.com> which it registered on January 24, 2000. The disputed domain names (other than <javacasinogames.com> and <javavegas.com>) are currently directed to a web page headed with a banner reading “Internet Casinos / Top Online Casinos” followed by an array of 6 “buttons” linked to internet gambling websites. This is followed by four paragraphs headed “Reviews”, “Policies”, “Fairness” and “Requirements”, purporting to summarise the website’s nature and policies. However, these statements do not appear to reflect any real website content.
The disputed domain name, <javacasinogames.com>, is directed to a different web page, which starts with a paragraph stating that the following casinos have been picked on the basis of various specified factors. This is followed by an array of “buttons” linking to internet gambling websites followed by some further links to similar websites. The final disputed domain name, <javavegas.com>, does not resolve to any web page.
The Complainant’s attorneys sent a cease and desist letter to the Respondent on September 21, 2007, requesting a response by September 26, 2007. This letter referred to the disputed domain names and also the other domain names mentioned above. The Complaint was filed and notified to the Respondent on September 28, 2007, in respect of the disputed domain names and the other domain names. As mentioned above, the other domain names were subsequently transferred to Net Webmaster of Jakarta, Indonesia. The Respondent did not reply to the Complainant’s attorneys’ cease and desist letter.
6. Parties’ Contentions
The Complainant refers to its registrations of “JAVA” as a trademark in the USA and other countries. It states that it has invested many millions of dollars in advertising and promoting its “JAVA” mark and has sold or licensed many millions of dollars in goods, services and technologies under this mark. According to the Complainant, the “JAVA” mark has become famous and represents extraordinarily valuable goodwill.
The Complainant then refers to the Respondent’s registrations of the disputed domain names and their use for websites as described above. The Complainant points to indications that the Respondent obtains commissions when internet users follow the links on its websites. The Complainant submits that the disputed domain names are confusingly similar to its “JAVA” mark.
The Complainant contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain names. It points out that it has not licensed or permitted the Respondent to use its mark, and that the Respondent’s use of the disputed domain names to provide links to online gambling websites does not correspond with a bona fide offering of goods or services.
The Complainant submits that the Respondent had actual or constructive knowledge of its “JAVA” mark when it registered the disputed domain names and could not have registered them with the intention of using them legitimately. The Complainant contends that the Respondent’s use of the disputed domain names to attract internet users to online gambling websites shows bad faith. According to the Complainant, the Respondent has intentionally attempted to attract internet users to its websites for commercial gain (through affiliate marketing programs) by creating a likelihood of association with the Complainant’s “JAVA” mark as to the source, sponsorship, affiliation or endorsement of its websites.
The Complainant also alleges that the Respondent’s passive holding of the disputed domain name <javavegas.com> is evidence of bad faith, as is the Respondent’s transfer of the other domain names following notification of the Complaint.
The Complainant requests a decision that the disputed domain names be transferred to it.
In its supplemental submission, the Complainant states that the Respondent owns numerous other domain names that infringe the trademark rights of third parties. According to the Complainant, the Respondent is a serial cybersquatter.
The Respondent asserts that the domain names are not confusingly similar to the Complainant’s “JAVA” mark because “java” is a common word referring to a type of coffee or an island with a population of over 100 million people. He contends that there is no connection between the Complainant’s business and gambling, and that when the disputed domain names were registered, the Complainant’s use of the name “Java” was at most two years old and not widely known.
The Respondent points out that there are many other domain names containing the word “java” registered and used by third parties. It notes that the Complainant’s mark is not registered in Antigua and suggests that Antigua’s WTO victory against the USA may allow it to disregard trademarks. The Respondent also comments that since “Java” software is open-source, the Complainant’s goodwill in relation to this name cannot be “extraordinarily valuable”.
The Respondent contends that it has rights or legitimate interests in the disputed domain names because they have been used for between seven and nine years for websites providing reviews of online casinos. According to the Respondent this has been a bona fide offering of goods or services. The Respondent emphasizes that its reviews were written before Google made text advertisements appear similar. The Respondent also points out that it is based in Antigua where online gambling is legal and that it has not used any metatags referring to the Complainant.
The Respondent submits that the domain names have not been used in bad faith. It asserts that its websites have not had computer games or programs and have nothing to do with the Complainant. It claims that the disputed domain names were registered because the registrant drank a lot of coffee and had a girlfriend from the island of Java. According to the Respondent, the websites at the disputed domain names have only 100 visitors per day, in contrast to 500,000 per day at “www.java.com”. The Respondent also points out that it has not offered the disputed domain names for sale.
The Respondent states that it believes that the Complainant intends to move into online gambling and is seeking to grab the disputed domain names for this purpose. The Respondent asks the Panel to reject the Complaint and make a finding of reverse domain name hijacking.
In its supplemental submission of December 6, 2007, the Respondent states that Amazon.com had contacted it years ago in relation to its registration of <amazoncasino.com>, but had taken no action following the Respondent’s reply. This had pointed out that the Respondent had registered and designed <amazoncasino.com> a long time ago in 1998, when it had not seen Amazon.com’s website, that “amazoncasino.com” was chosen as a “theme” site for a casino business with motifs related to tropical rain forests, that there was never any intention to capitalize on Amazon.com, and that there was no interference with Amazon.com’s rights since Amazon had no involvement in the casino business. The Respondent also acknowledged that it had reserved domain names including the word “Virgin” before the Virgin group became involved in gaming.
In its first supplemental submission of December 22, 2007, the Respondent emphasizes that it owns thousands of domain names, including over 40 domain names which comprise geographical names together with gaming terms. The Respondent states that it develops full websites and does not simply hold domain names. It adds that, years after it registered the disputed domain names, it has bought through automated methods at auctions some domain names which it would not have picked due to conflicts.
In its second supplemental submission of December 22, 2007, the Respondent alleges that the other domain names referred to in the Complainant’s supplemental statement were registered 6-8 years after the disputed domain names and were previously registered domain names which had lapsed. According to the Respondent, it made occasional mistakes when going through the lists of expired domain names and clicking on those which it wished to register.
7. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (a) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (c) that the disputed domain names have been registered and are being used in bad faith.
Each of these requirements will be considered in turn.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
It is clear that the Complainant has registered rights in the mark “JAVA”. This finding is not affected by the fact that some of these registrations were made after the disputed domain names were registered. It is well established that the first requirement of the Policy can be satisfied even if the Complainant did not obtain the rights until after the domain name was registered: see, for example, AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527. The fact that the registration of a domain name preceded the registration of a complainant’s mark may be relevant to the second and third requirements of the Policy, but does not affect the operation of the first.
The disputed domain names are clearly not identical to the Complainant’s mark and it is therefore necessary to determine whether they are confusingly similar to it. The Complainant has not provided specific details or evidence of the nature and extent of its use of the mark “JAVA” which would assist the Panel in assessing whether there is a likelihood of confusion. The Complainant has merely made very general and conclusory statements regarding its reputation under the mark.
However, this first requirement of the Policy should be regarded as setting a relatively low, threshold test, in keeping with its function in the context of the Policy as a whole of ensuring that a complainant has a sufficient interest in the disputed domain names: see PepsiCo, Inc. v. The Holy See, WIPO Case No. D2003-0229.
Bearing this in mind, the Panel has concluded that the disputed domain names are confusingly similar to the Complainant’s “JAVA” mark within the meaning of this requirement, particularly as Internet users may suppose that they refer to gambling operations in which the Complainant’s software is used.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel has reviewed the use made by the Respondent of the disputed domain names. The Panel considers that it does not constitute a bona fide offering of goods or services such as to give rise to rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy. The Panel notes the Respondent’s contention that the descriptions accompanying the links were written by the Respondent and not automatically generated. Nevertheless, the Panel considers that any contribution of the Respondent is too slight to be regarded as a genuine service for this purpose.
It seems clear that the Respondent is not commonly known by the disputed domain names and it is not suggested that the Respondent is making non-commercial use of them.
Having reviewed the evidence, it does not appear to the Panel that there is any other basis on which the Respondent could claim to have rights or legitimate interests in respect of the disputed domain names. The Panel concludes that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The two parts of third requirement of the Policy are cumulative conditions: the Complainant must show that the disputed domain names both were registered and are being used in bad faith. This point is clear from the wording of the Policy and has been confirmed in many decisions under it, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026, and Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782.
The Panel will consider first whether the disputed domain names were registered in bad faith. The Respondent asserts that they were registered because the “registrant” (which presumably refers to the moving spirit behind the Respondent company) drank a lot of coffee and had a girlfriend from the island of Java. This improbable explanation is not substantiated by any evidence and is undermined by the Respondent’s registration of numerous other domain names incorporating well-known marks together with gambling terms.
The Respondent claims in its second supplemental submission of December 22, 2007, that these other domain names were registered long after the disputed domain names. If this were true, it could be said that their registration does not indicate the Respondent’s intention at the dates when it registered the disputed domain names. However, this contention is contradicted by the Respondent’s submission of December 6, 2007, which confirms that it registered <amazoncasino.com> in 1998 and domain names comprising the word “virgin” together with gaming terms before the Virgin group became involved in gaming.
Viewing the evidence as a whole, the Panel is satisfied that the Respondent adopted the disputed domain names in bad faith in order to take advantage of the reputation of the Complainant’s “JAVA” mark.
It remains to consider whether the Respondent is using the disputed domain names in bad faith. It is apparent that the Respondent’s websites contain virtually no substantive content and it is reasonable to suppose that their main purpose is to obtain click-through commissions from the sponsored links which they display.
The Panel notes the Respondent’s contention that the disputed domain names receive relatively few hits. Nevertheless, the Panel is satisfied that the Respondent is using these domain names with the intention of attracting internet users to its websites through confusion with the Complainant’s mark and thereby obtaining click-through commissions from sponsored links accessed by such internet users.
The Respondent’s transfer of other domain names included in the original Complaint following its notification is further indication that the Respondent is not making bona fide use of its portfolio of domain names containing the word “Java” in connection with an independent business.
The Panel concludes in all the circumstances that the Respondent registered and is using the disputed domain names in bad faith. The third requirement of the Policy is satisfied.
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 names, <javaroulette.com>, <javacraps.com>, <java21.com>, <javavegas.com> and <javacasinogames.com> be transferred to the Complainant.
Dated: January 11, 2008