The Complainant is Apple Inc. of Cupertino, California, United States of America, represented by Kilpatrick Stockton LLP, United States of America.
The Respondent is Oakwood Services Inc. - N/A N/A of Dallas, Texas, United States of America, represented by Sid Chesnin. 2. The Domain Name and Registrar
The disputed domain name was originally registered with Compana LLC and later transferred to F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 10, 2010, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On November 11, 2010, Compana LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 November 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2010. The Response was filed with the Center on December 2, 2010 (CST)/December 3, 2010 (CET).
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 14, 2010. 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.
On December 3, 2010, the Center received a request from the Respondent to suspend this matter for 30 days, so that a settlement between the Respondent and the Complainant could be reached. The Center communicated such request to the Complainant and gave the Complainant until December 7, 2010 to respond. On December 6, 2010, the Center received a response from the Complainant that it did not desire a suspension, explaining that no settlement discussions were underway. On December 6, 2010, the Center notified both the Complainant and the Respondent that no suspension of these proceedings would be granted. 4. Factual Background
The Complainant is an internationally renowned United States of America company that produces and sells computer and telephone and related products and services on a worldwide basis. Its APPLE trademark is registered with, among other national authorities, the United States Patent and Trademark Office (“USPTO”) (i.e., Registration No. 1078312, issued November 29, 1977; Registration No. 1144147, issued December 23, 1980; etc.). The Complainant’s owns the domain name, , as a host to one of the most visited websites in the world.
The disputed domain name, , was registered on January 7, 2002. The domain name is used for a website that provides links to third party websites which offer a variety of products and services unrelated to those offered by the Complainant. 5. Parties’ Contentions A. Complainant
- The Complainant introduced its personal computers for sale in the United States of America in 1977. Since then the Complainant’s brand name, “Apple”, has become one of the best known in the world, and the Complainant manufactures and sells a variety of computer and telephone related products and services on a worldwide basis. The Complainant has spent approximately USD$691 Million advertising its brand thus far in 2010 alone.
- The Complainant owns many trademark and service mark registrations with the USPTO for the mark, APPLE. The Complainant also possesses many such registrations with the appropriate authorities in a multitude of countries other than the United States.
- The Complainant has also registered the domain names, and , to deliver information concerning its products and services. The websites found at those domain names are among the most visited on the Internet.
- The Complainant’s APPLE mark is one of the most famous marks in the world, and is associated with high quality products and services that enjoy an exceedingly valuable reputation and goodwill.
- The Respondent is a prolific cyber-squatter who has registered many domain names based on third party marks. The Respondent uses these names to generate click-through revenues from sponsored links placed on the Respondent’s corresponding websites.
- The disputed domain name, , is confusingly similar to the Complainant’s APPLE trademark. The name and the mark are nearly indistinguishable, the name merely substituting a letter “l” for the second letter “p” in the mark. The Respondent, invoking a classic typo-squatting procedure, intends to reach Internet users who, in seeking the Complainant’s more popular domain name, accidentally type an extra “l” instead of a second “p”.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has given the Respondent no permission to use the Complainant’s mark in any domain name.
- The Respondent is not commonly known by the disputed domain name. Moreover, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Because the Respondent uses the disputed domain name to garner pay-per-click fees, the Respondent is also not using that name for noncommercial or fair use purposes.
- The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is deliberately attempting to gain commercially based on exploitation of the goodwill associated with the Complainant’s very famous trademark. The Respondent intends to divert Internet traffic to its website to profit from linking portals. Finally, the Respondent has exhibited a pattern of bad faith domain name registration and use, continually employing infringing domain names to redirect Internet users to its website for commercial gain. B. Respondent
- The disputed domain name, , is not confusingly similar to the Complainant’s APPLE trademark.
- For eight years, the Respondent has not used the disputed domain name to display or advertise goods or services that are similar to those of the Complainant.
- There is clear dissimilarity between the websites of the Complainant and the Respondent, and a reasonable Internet user would not mistake those websites for each other. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) – (iii), these proceeding will result in a transfer of the disputed domain name, , to the Complainant, if it can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Given the world renown of the Complainant and its trademark, APPLE, the Panel finds no difficulty in following prior UDRP panels in determining that the Complainant has sufficient rights in that mark to satisfy the requirements of Policy paragraph 4(a)(i). See, Apple Computer, Inc. v. Omar Acosta Rivera,WIPO Case No. D2006-1118; and Apple Computer, Inc. v. Apple-Computers c/o Marcus Grey, NAF Claim No. FA535416 (“Complainant has established in this proceeding that it has rights to the APPLE mark as evidenced by its registration with the USPTO.”).
The Complainant contends that the disputed domain name, , if not identical to the mark, APPLE, is at least confusingly similar to that mark. The Panel agrees with the Complainant that the only difference is the substitution of a second letter “l” for the second letter “p” in the mark – the addition of the obligatory gTLD, “.com” offering no meaningful distinction whatsoever. Thus, the Panel finds that similarity is undeniable. While the Respondent argues that such similarity should not be confusing to reasonable Internet users, the Panel is cognizant of the practice of “typo-squatting”, by which cyber-squatters intend to lure Internet users to their websites by relying on the commission of minor typographical errors by some users. In this case, only one such error would send a reasonable Internet user – seeking the Complainant’s heavily trafficked site – to the Respondent’s wholly unrelated website. Thus, the similarity becomes confusing in the opinion of the Panel. See, A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517 (finding that , among other disputed domain names, was confusingly similar to the mark AMAZON, while stating that “[t]he disputed domain names differ from the Complainant’s mark only by the change of a single letter...a practice known as ‘typosquatting’...Given the foregoing, the Panel finds that the disputed domain names and the Complainant’s mark, when directly compared, are confusingly similar.”); and Red Bull GmbH. v. Grey Design,WIPO Case No. D2001-1035 (ruling the disputed domain name, , to be confusingly similar to the trademark, RED BULL, and writing that “[t]his is a typical case of ‘typo-squatting’ where the infringing domain name is one letter less than or different from the Complainant’s mark. Such attempts have been disapproved of in various WIPO decisions.”).
As reasoned above, the Panel finds that the Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant asserts that it has given the Respondent no authorization to use the Complainant’s trademark as part of a domain name. Furthermore, the Complainant has demonstrated to the Panel’s satisfaction that the disputed domain name is confusingly similar to that trademark. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel now looks to the Respondent for an affirmation of such rights or interests. See, Citizens Financial Group, Inc. v. Ron Alvarado, NAF Claim No. FA897530 (“Once Complainant makes a prima facie case under Policy [paragraph] 4(a)(ii), the burden shifts to Respondent to show that it does have rights or legitimate interests.”); and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (“The Panel notes that Complainant bears the ‘general burden of proof’ under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests”).
The Respondent’s contention in support of its rights or legitimate interests in the disputed domain name is essentially that the Respondent has used the name for eight years – clearly before the current dispute arose – to display and/or advertise goods and services that are dissimilar to those marketed by the Complainant. The Panel views this contention as an attempt to satisfy paragraph 4(c)(i) of the Policy, which requires a claim that, before the instant dispute, the Respondent was using the disputed domain name “in connection with a bona fide offering of goods or services”. Unfortunately for the Respondent, the Panel is not persuaded by the Respondent’s contention.
The Respondent’s contention would have been stronger if “aplle” was a common word and the products and/or services found at the Respondent’s website corresponded directly to the meaning of that word. See, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; and Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843. But “aplle” is not a word, common or otherwise, and the products and services do not so correspond.
Instead, the Panel has chosen to rely on the Complainant’s uncontested assertion that the Respondent’s website found at the disputed domain name is used merely to link Internet users to third party websites, presumably for the Respondent’s pecuniary benefit through application of pay-per-click fees. Use of a domain name that is confusingly similar to another party’s famous trademark for such purposes has been held by many prior Policy panels to fall short of a bona fide offering of goods or services. The Panel is inclined to apply those holdings to this case. See, CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark,WIPO Case No. D2004-0330 (“Respondent has not used the [disputed] domain name in connection with a bona fide offering of goods or services…Click-through links to other websites is not enough to show a bona fide offering...”); The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sale c/o Legend .name, NAF Claim No. FA857581 (“Moreover, resolves to a commercial web directory displaying links to various content unrelated to Complainant. Respondent’s use of the domain name for commercial gain, presumably by earning click-through fees for diverting Internet users seeking information on Complainant to other websites, is not a bona fide offering of goods or services under Policy [paragraph] 4(c)(i)…”); and Eurochannel, Inc. (f/k/a Multithematiques, Inc.) v. P,WIPO Case No. D2005-0318.
With respect to the other rationales listed in paragraph 4(c) that might support its assertion of rights or legitimate interests in the disputed domain name, the Respondent has not claimed to be commonly known by that name and, as a consequence of the linkage fees noted above, has not claimed to be engaged in noncommercial or fair use of the name. Accordingly, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie case.
In line with the above, the Panel rules that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As the Complainant is an internationally pre-eminent computer company, the Complainant’s APPLE mark is one of the most well-known in the world. In the Panel’s estimation, the Complainant has cited correctly previous UDRP decisions where panels have found bad faith registration and use of disputed domain names that are confusingly similar to marks of such stature when the entities involved in said registration and use are unconnected to the owners of those marks. See, for example, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (“‘VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”); and Chanel, Inc. v. B,WIPO Case No. D2000-1126 (“CHANEL is an immediately recognizable and famous mark that exclusively identifies Complainant…Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use the CHANEL mark, the very fact that Respondent has registered [] establishes bad faith use and registration.”).
Moreover, in this case, the Complainant has also presented the Panel with plenty of prior Policy cases in which the Respondent was found to have registered and used other domain names in bad faith, suggesting to the Panel that the Respondent is a serial cyber-squatter with no respect for the trademark rights of others. See, Graco Children’s Products Inc. v. Oakwood Services Inc.,WIPO Case No. D2009-0813; Ubisoft Entertainment S. A. v. Oakwood Services Inc. - N/A N/A, NAF Claim No. FA1298869; Cable New Network, Inc. f/k/a Cable News Network, LP, LLLP v. Oakwood Services Inc. - N/A N/A, NAF Claim No. FA1331735; Laufer Media, Inc. v. Oakwood Services Inc.,WIPO Case No. D2009-1180; and The Trustees of the British Museum, The British Museum Company Limited v. Oakwood Services Inc.,WIPO Case No. D2007-1145.
Therefore, given the fame of the Complainant’s mark together with the prior pattern of abusive domain name registration engaged in by the Respondent, the Panel finds that the disputed domain name was registered and is being used in bad faith. 7. Decision
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 be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: December 28, 2010
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