WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apple Computer, Inc. v. DomainH, Inc.
Case No. D2000-0341
1. The Parties
The Complainant is Apple Computer, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Cupertino, California, USA.
The Respondent is DomainH, Inc., with place of business in Pasadena, California, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "".
The registrar of the disputed domain name is R, Inc., with business address in New York, New York, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on
April 27, 2000, and by courier mail received by WIPO on May 1, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On April 28, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, R, Inc.
b. On May 9, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.
c. A response from Respondent was received via e-mail by WIPO on May 27, 2000, and received by WIPO via courier mail on May 29, 2000. Respondent also transmitted the response to Complainant.
d. On June 15, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On June 15, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO. On June 19, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 3, 2000. On June 19, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of active trademark registrations for the word mark "QUICKTIME" in ten countries or regions outside the United States, including Canada (No. TMA497874, registered July 27, 1998), Austria (No. 154039, registered August 22, 1994), Benelux (No. 548574, published December 1, 1994), Denmark (No. VR 798 1995, registered February 3, 1995), France (No. 94 515520, published February 10, 1995), Germany (No. 2088793, registered December 30, 1994), Italy (No. 694901, registered December 12, 1996), Spain (App. No. 1815480 M, published June 16, 1994), Switzerland (No. 422068, published April 30, 1996), and the United Kingdom (No. B1569622, registered July 28, 1995)(Complaint, para. 12 and Exhibit C). These registrations are valid and subsisting. Complainant formerly held a trademark registration for the word mark "QUICKTIME" on the Principal Register at the USPTO (No. 1,747,719, registered January 19, 1993). This registration expired. Complainant has submitted an application to re-register the mark on the Principal Register (Ser. No. 75-635236, filed October 30, 1999)(id.). The "QUICKTIME" mark has been used in commerce since at least 1993 (based on the expired U.S. registration), and continues to be used in commerce (id., Exhibit D).
Complainant has registered and uses the domain name "". According to a Network Solutions� WHOIS database query, this domain name was registered on May 1, 1996 (Panel�s Network Solutions� WHOIS database query of July 2, 2000).
R�s WHOIS database query response (Complaint, Annex A and R�s April 28, 2000 response to WIPO verification request) indicates that "DomainH, Inc.", with Administrative Contact at "Martinez, Wilson", is registrant of the domain name "". The record of this registration was created on February 4, 2000, and was last updated on April 28, 2000 (id.).
Respondent maintains a website at "www.domainh" that offers domain names for sale. There is no evidence on the record of this proceeding that the disputed domain name is or has been offered for sale on Respondent�s website. A standard format r announcement of registration appears at the website address identified by the disputed domain name (Complaint, Exhibit E).
Respondent has furnished a copy of an offer extended to it by Browser Media LLC, dated March 29, 2000 to enter into a website development agreement. This is a standard form agreement with no reference to the disputed domain name. The agreement is executed by Browser Media LLC. It is not executed by Respondent.
The Registration Agreement in effect between Respondent and R subjects Respondent to R�s dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties� Contentions
A. Complainant
Complainant states: "The Complainant is the owner of the trademark QUICKTIME for computer software products. The mark has been in use with the goods since 1991, and the Complainant owned U.S. Registration No. 1,747,719 which registered on January 19, 1993 but inadvertently expired. In any case, Complainant has refiled an application for U.S. Registration of the mark and has received Serial No. 75/635,236." (Complaint, para. 12 and Exhibit C) Complainant indicates that it is the holder of trademark registrations in ten countries or regions outside the United States for the word mark "QUICKTIME" (id.) (See Factual Background, supra).
Complainant states:
"The Complainant is known throughout the world as offering software products under the mark QUICKTIME. Enclosed please see promotional material for QUICKTIME � from the Complainant�s web site which may be found at www..
"The second level domain name in the address www. is identical to the Complainant�s trademark QUICKTIME. Persons encountering the subject domain name will believe it emanates from, is endorsed by, or is licensed by Complainant.
"The Respondent has no rights or legitimate interests in the subject domain name. Further, the Respondent is not commonly known by the domain name, and has acquired no trademark or service mark rights in the name. In addition, Respondent is not making a legitimate noncommercial or fair use of the domain name.
"The Registrant has not used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent registered the subject domain name in February 4, 2000 and has not made use of the domain name at all. See � a screen shot of the web site address as it appeared on April 24, 2000. The Respondent seeks commercial gain by attempting to sell domain names. This is evidence [sic] by the Respondent�s name and the web site identified by that name, namely, www.domainh. The Respondent�s web site clearly offers domain names for sale. This activity interferes with the business of Complainant and creates a likelihood of confusion with Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the web site. �
"The Respondent has registered a variety of different domain names and offers such domain names for sale to the highest bidder as depicted on the Respondent�s web site. �
"The Respondent registered the domain name in the name of Domainh. Further, the intentions of Respondent are apparent from its web site of the same name. Respondent has therefore made clear in a variety of ways that his intent in registering the domain name was primarily for the purpose of selling the domain name registration." (Id.)
Complainant requests that the Panel ask the Registrar to transfer the domain name "" from Respondent to it (id., para. 13).
B. Respondent
Respondent states:
"The Complainant does not have a valid U.S. Federally registered trademark at the time of the filing of this action and enjoys no presumption of validity of its exclusive rights to use the name under the trademark law of the United States. The application of U.S. trademark law is proper since both parties are domiciled in the United States. A search of the United States Patent and Trademark Office database shows that the word mark "quicktime" was cancelled as of July 26, 1999. �
"The words �quick� and �time� are generic words. �Quick� means moving or functioning rapidly and energetically; speedy. �Time� means a nonspatial continuum in which events occur in apparently irreversible succession from the past through the present to the future. Complainant does not enjoy the presumption of secondary meaning because of its cancelled trademark, and shoulders the burden of establishing distinctiveness. Complainant has not offered proof as to the distinctiveness of its mark.
"Even if "quicktime" is a valid registered trademark, consumers are not likely to confuse "A" which sells computers and softwares, with "DomainH" a domain name exchange website. The parties are not competitors, and are doing business in different business classifications. Complainant has not shown actual consumer confusion resulting from use or non-use of the mark.
"The Complainant is commonly known as Apple Computer, it is a trademark in relation to hardware and software computer products. It is the registrant for a, and . A search of the Network Solutions�s database shows that the domains is registered with Columbia River Networks, created on May 31, 1995; and registered to Apple Network, created on December 31, 1997. The United States Patent and Trademark Office limits the scope of the issued trademark to such specific use by Apple Computer, rejecting broader claims of use as part of the trademark prosecution process, in order to permit other companies to use the same mark in other trademark classifications and even in its own class, if they were clearly differentiated products. The same rule applies to the domain at issue in this case�
"We reserved �� to use it for a parenting information website. Our first choice was �quality time� but was not available. Quicktime refers to the fast or speedy time period of childhood from birth to seven years old, a critical stage of childhood development, a time that passes by so quickly most parents, deep in the pursuit of their careers barely notice the quickness by which their children have grown. It is a quick time period, which so greatly influences what a child becomes as an adult. The site will present a compilation of studies regarding this period of childhood. One of the most recent studies was done by a law enforcement group, which reported, that children who attend quality day care are less likely to commit crimes in later life. �
"Prior to receiving a notice of this action we have initiated negotiations with Hydrogen M and BrowserM, to help us build a dynamic and database driven website for . Due to threat of litigation by the Complainant, we decided to postpone the development of the site pending the legal outcome of this dispute. �
"The domain �� was reserved for non-commercial use. We have not listed nor offered the domain for sale. We have not pointed nor directed the domain to our website. The domain was reserved and parked at r, and is intended for the parenting site described above. We understand the suspicion regarding our intention in registering the domain, due to the unhidden fact that our company is in the business of trading domain names. �However, suspicion alone, cannot suffice to prove that we registered the domain in bad faith�. (Vanguard Medica Limited vs. Teho McCormick Case No. D2000-0067.)
"DomainH, Inc. is a domain name exchange, web hosting and development company. We have filed a trademark application on our name and slogan. Our business model is to serve as an idea engine to help individuals and businesses in their selection of domain names. There are primarily three conceptual guidelines in choosing the domains that we register. (1) Common phrases in the English language, such as , , , . etc. (2) Misspelled generic words such as , leqal, buyss, beerr, sportss, bedss, tickett etc. Most generic words are already taken; we believe that misspelled generic words will have its own place in domain name use due to its brevity. It also has trademarkability advantage, is more trademarkable than , because it is a made up word therefore distinctive rather than descriptive. (3) The third concept is to add the "i" and "e" after the word, like , , , etc. Same idea brevity, simple, easy to spell and remember.
"Trading in domain names is a legal and legitimate business. The domain name industry has now joined the mainstream of services provided on the Internet. ICANN does not prohibit this activity, all three top ICANN accredited registrars, NetworkS, R and BulkR, encourage multiple domain registration in their websites. BulkRegister, by its name alone is for bulk registrations of domain names. And just very recently, NetworkS has entered the secondary market for domain names by advertising and actively recruiting domain traders to list their domains with NetworkSolutions. R has offered escrow services for domain sale transfers. �
"The mere fact that we are in the domain trade business, should not give rise to a presumption of bad faith, absent a pattern of prohibited conduct known as "cybersquatting". The complaint merely states a bare allegation of bad faith without offering any evidence of bad faith as to registration and use. The complainant takes this position despite the fact that the Complainant itself thru its lawyers, admitted and declared in writing that they have not found any malice on our part in the adoption of the domain name. Complainant in its demand letter dated February 29, 2000 stated, "Our client has no information which would tend to indicate that you adopted the domain name with any malice." �
"This is the first and only domain name dispute filed against our company. We are in the same situation and circumstances, when the Complainant found us with no malice on February 29, 2000, except for the passage of time (3 months). In Meredith corp. vs. CityHome, Inc. the honorable panelist concluded that non-use of the domain name for eight months is not determinative of bad faith.
"We respectfully requests the Administrative Panel to make a finding of reverse domain name hijacking based on the following grounds�" (Response, para. 6)
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed Response to the Complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of trademark registrations for the word mark "QUICKTIME" in ten countries or regions outside the United States (see Factual Background). A number of such registrations are in member states of the European Union (EU) (i.e., Austria, Benelux, Denmark, France, Germany, Italy, Spain and the United Kingdom). Registration of a trademark in a member state of the EU confers a presumption of validity of the mark (see First Trade Marks Directive, arts. 3 & 4). 2 The Panel determines that Complainant has rights in the trademark "QUICKTIME" in member states of the EU. Moreover, although Complainant�s trademark registration in the United States has expired, and an application for re-registration confers no presumption of validity, Complainant�s long use in U.S. commerce of the "QUICKTIME" mark, combined with its prior registration of the mark, persuades the Panel that Complainant has rights in the mark in the United States 3. The Panel determines that Complainant has rights in the trademark "QUICKTIME" within the meaning of Paragraph 4(a)(i) of the Policy.
Based on the January 19, 1993 date of Complainant�s initial U.S. registration of the trademark "QUICKTIME" (the earliest of the registrations submitted in this proceeding by Complainant), and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the trademark arose prior to Respondent�s registration, on February 4, 2000, of the disputed domain name "".
Respondent has registered the domain name "". This name is identical to Complainant�s trademark "QUICKTIME", except that (1) the domain name adds the generic top-level domain name ".net", and (2) the domain name employs lower case letters, while the trademark is generally used with the letters "Q" and "T" capitalized (i.e., "QuickTime")(see Complaint, Exhibit D).
Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "" is a difference without legal significance from the standpoint of comparing "" to "QuickTime" 4. Similarly, the addition of the generic top-level domain (gTLD) name ".net" is without legal significance since use of a gTLD is required of domain name registrants, ".net" is one of only several such gTLDs, and ".net" does not serve to identify a specific enterprise as a source of goods or services 5.
For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent�s domain name is "identical" to Complainant�s trademark, since Respondent�s domain name "" is without doubt confusingly similar to Complainant�s trademark "QUICKTIME".
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c))
Respondent has acknowledged that it has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, and it has not suggested that it has been commonly known by the disputed domain name. Respondent has, however, suggested that it has prepared to use the domain name to establish a website devoted to presenting information about parenting for non-commercial purposes. The Panel notes that while paragraph 4(c)(i) of the Policy refers to "preparations to use" a domain name in the context of offering goods or services, paragraph 4(c)(iii) refers only to the active "making" of a "legitimate noncommercial use". The express language of the Policy indicates that its drafters intended to limit the circumstances in which legitimate noncommercial use could successfully be claimed to those circumstances in which a respondent is "making" use. Applying the express language of the Policy to Respondent�s claim of legitimate noncommercial use, the Panel finds that Respondent is not "making" such legitimate non-commercial use.
Respondent, however, asserts that it would or might have made such use, but for the receipt of a cease and desist notice from Complainant that was sent shortly following its registration of the disputed domain name. As evidence of its intention, it proffers an unexecuted (by it) standard form website development contract that makes no reference to the disputed domain name or to the Respondent�s alleged intention for registration.
Although the Panel accepts that receipt of a cease and desist letter might well persuade a domain name registrant from using a name pending resolution of controversy, the Panel does not find Respondent�s evidence or explanation persuasive. Respondent, on its own behalf, has made clear that it is in the business of developing, warehousing and selling domain names. It has gone to some lengths to justify this practice. The development of a noncommercial website devoted to parenting and childcare is sufficiently remote from the ordinary object and purpose of Respondent�s activities to demand more concrete evidence of its intention. The mere hypothesis of a legitimate noncommercial use under the present circumstances does not suffice to establish a legitimate right or interest in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
The Panel concludes that Respondent has not established a legitimate non-commercial or fair use of Complainant�s mark. Consequently, Complainant has established the second element necessary to succeed on a claim of abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent�s] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)).
Respondent observes that offering for sale and selling domain names is an inherently legitimate commercial activity. The leading domain name registrars offer or plan to offer their services to assist domain name registrants to advertise and sell names they have previously registered. Respondent is in the business of developing and selling domain names. Respondent claims to have developed combinations of generic or common descriptive terms, or misspellings of such terms, that will appeal to purchasers of domain names.
There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.
In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy 6. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others.
In the present case, Respondent�s business is the development and sale of domain names. Its acknowledged purpose for registering names is to sell them. In light of this evident purpose, the Panel determines that Respondent registered the disputed domain name with the intention to offer it for sale to the public for valuable consideration in excess of its out-of-pocket costs. The Panel determines that Respondent has acted in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "" to the Complainant.
The Panel rejects Respondent�s request for a determination that Complainant has engaged in reverse domain name hijacking.
7. Decision
Based on its finding that the Respondent, DomainH, Inc., has engaged in abusive registration of the domain name "" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "" be transferred to the Complainant, Apple Computer, Inc.
Frederick M. Abbott
Sole Panelist
Dated: July 5, 2000
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. FIRST COUNCIL DIRECTIVE of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC), OJ L 040 , 11/02/1989 P. 0001 � 0007.
3. Two generic or common descriptive terms may be combined to form a trademark, provided that secondary meaning is established. See, e.g., Mil-Mar Shoe v. Shonac, 75 F. 3d 1153, 1161 and n. 15 (7th Cir. 1996).
4. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).
5. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".net" may be capable of acquiring secondary meaning in another context.
6. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000; General Electric Company v. Online S, Inc., Case No. D2000-0343, decided June 19, 2000, and; General Electric Company v. John Bakhit, Case No. D2000-0386, decided June 22, 2000.
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