The Complainant is Apple Inc. of Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Algernon Salois of Nice, France. 2. The Domain Names and Registrar
The disputed domain names and are registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 3, 2011, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain names. On March 10, 2011, B, Inc. 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 March 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2011.
The Center appointed Richard Tan as the sole panelist in this matter on April 12, 2011. 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. Due to exceptional circumstances, and in accordance with paragraph 10(c) of the Rules, the Panel has found it necessary to extend the Decision due date to May 17, 2011. 4. Factual Background
The Complainant is a designer, manufacturer, and distributor of a wide variety of goods and services under the well-known APPLE mark.
It is the holder of a substantial number of trademark and service mark registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the APPLE word mark and the APPLE logo design mark, depicting a stylized apple silhouette with a bite removed (together, the “APPLE Marks”). These registrations include United States Reg. Nos. 1,078,312; 1,144,147; 1,895,326; 2,079,765; 2,808,567; 3,038,073; 3,226,289; and 3,621,571 for the APPLE word mark; and United States Reg. Nos. 1,114,431; 2,715,578; 2,753,069; 2,870,477; 3,298,028; and 3,679,056 for the APPLE logo design mark, covering, inter alia, computers hardware and software in Class 9; printed materials and publications in Class 16; electronic games in Class 28; retail credit services in Class 36; electronic transmission of data in Class 38; electronic recording of photographic images in Class 40; education and training services in Class 41; and computer consultation services in Class 42. In addition, the Complainant owns a number of United States trademark and service mark registrations including APPLE STORE, APPLE TV, and APPLE CINEMA DISPLAY.
It is also the owner of numerous registrations for the APPLE Marks throughout the world, including but not limited to the countries of the European Community, the People’s Republic of China, Canada, Singapore, Hong Kong, SAR of the People’s Republic of China, and Australia.
The Complainant has also registered and uses the domain names and to deliver information concerning the Complainant and its products and services.
The Respondent is an individual based in France. The Respondent has used the disputed domain name for a web site that advertises and offers for sale downloads of various software products manufactured by approximately 98 vendors, including the Complainant, at steeply discounted prices, according to the Complainant. Although the disputed domain name does not have active content, this domain name, according to the Complainant, has been redirected to the web site. 5. Parties’ Contentions A. Complainant
The Complainant contends firstly, that its APPLE brand is one of the best known brands in the world. It contends that it helped start the personal computer revolution in 1977 with the introduction of the Apple I and II computers, which were widely considered the first truly affordable and usable personal computers, that since those early days, it has continued to innovate, repeatedly introducing groundbreaking, highly functional products and services and today, designs, manufactures, and/or markets in interstate and international commerce, among many other things, personal computers, mobile communication devices, and portable digital media players, and that it sells a variety of related software, services, peripherals, and networking solutions. It relies on comScore Media Metrix, a report tracking online activity released by an Internet marketing research company comScore, to show that the Complainant was the fifteenth most popular United States web property in September 2010, with over 69 million unique visitors in the month.
The products and services, which are advertised and sold worldwide, include the well-known MAC computers, iPod portable media players, iPhone communication devices, iPad mobile tablet computers, and a variety of Internet retail services, including the iTunes store. The iTunes store includes the successful AppStore and iBookstore stores, which allow online customers to purchase third-party software applications and books. It has also expanded into the brick-and-mortar retail sector with its branded Apple Store retail stores, and as at September 2010 has opened over 300 stores worldwide.
It contends that it has extensively promoted and advertised its goods and services in the form of advertisements in international magazines, on television, outdoor signage, and the Internet, among many other places. During the period from 1994 through 2008, it spent over USD 3 billion worldwide advertising its products and services. Its advertising expenditures were USD 691 million, USD 501 million, and USD 486 million for 2010, 2009 and 2008 respectively. As a result of such extensive use and promotion of the APPLE brand and associated marks, it contends that its trademarks have become exceptionally famous worldwide. It has adduced evidence by leading market researchers and various companies and publications to show that the APPLE mark is a famous and extremely well-known mark and is, inter alia, one of the 10 most recognized brands in the United States in its 2006 and 2007 “Best Brands” polls, based upon consumer responses and belongs in the top 50 of the world’s most valuable brands.
As a result of such extensive use and promotion of the Apple brand and associated APPLE Marks, the Complainant contends that its trademarks have become exceptionally famous worldwide.
It contends that based upon a simple comparison of the APPLE mark and the disputed domain names, the disputed domain names are identical and confusingly similar to the Complainant’s famous APPLE and APPLE-formative marks as well as the enormously popular and domain names registered by the Complainant, as they include the famous APPLE mark exactly and in its entirety, together with the common terms “downloads” or “oem” (the latter which the Complainant states is an acronym that stands for a manufacturer who resells another company's product under its own name and branding).
The Complainant contends that where, as here, the disputed domain name incorporates a complainant’s mark in its entirety, confusing similarity must be presumed, notwithstanding the addition of a generic term, such as “downloads” or “oem.” It further argues that given the reputation of the Complainant’s mark and name, the relevant consumers, on seeing the disputed domain names, will reasonably believe that they are related to the Complainant and that consumers who have come across the disputed domain names either by searching the Internet for the Complainant or the Complainant’s products by using the Complainant’s names and marks, or by other means, will be confused as to whether the Complainant was in fact affiliated with the disputed domain names. The Complainant contends that the disputed domain names are identical and/or confusingly similar to the Complainant’s mark.
The Complainant contends secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant’s marks predate the Respondent’s registration of the disputed domain names, and “the burden is on the Respondent to establish rights or legitimate interests in the disputed domain names”. The Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain names. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s marks. The disputed domain names are not, nor could they be contended to be, a name or nickname of the Respondent, or in any other way identified with or related to any rights or legitimate interests of the Respondent in accordance with paragraph 4(c)(ii) of the Policy.
The Complainant further contends that the Respondent is neither using the disputed domain names in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain names. It asserts that the Respondent has registered and used the disputed domain names in order to sell what are likely counterfeit or pirated copies of software products developed by the Complainant or others. The Complainant further contends that on information and belief, the web sites using the disputed domain names have offered software products of the Complainant and its competitors at steeply discounted prices. The Complainant contends that consumers have complained of being scammed by the Respondent and that the Respondent is using the disputed domain names for illicit commercial gain. In those circumstances, the Respondent’s use is not, and can not be legitimate.
The Complainant further contends that assuming arguendo that the Respondent is selling some of the Complainant’s genuine software products through its websites (as opposed to counterfeits), such sales are of no import and do not make the Respondent’s registration and use of the disputed domain names legitimate, particularly as the Respondent is also promoting the sale of software products from 98 other vendors. It argues that where, as here, a respondent has registered and is using domain names that are identical or confusingly similar to a well-known mark to promote the sale of genuine products, such use and registration is not legitimate. The Complainant argues that this is particularly the case here as confirmed by the fact that the Respondent is not an authorized seller of the Complainant’s products, is selling questionably obtained software products at huge discounts and is using the disputed domain names and accompanying web sites to promote the sales of products of the Complainant’s competitors.
The Complainant therefore argues that given the fame of the APPLE Mark and name, as well as the fact that the Respondent has no rights in this mark, it is plain that the Respondent did not register the disputed domain names for any legitimate or fair-use purpose. Rather, the Respondent registered the disputed domain names in order to use the Complainant’s marks to profit from the web traffic generated by consumers seeking to download the Complainant’s products, or from the association and goodwill between the disputed domain names and the Complainant’s well-known marks.
The Complainant contends, thirdly, that the disputed domain names have been registered and used in bad faith. The Complainant relied on a number of facts and assertions.
It contends that according to information that was posted on the web site using the disputed domain name , the web site is purportedly affiliated with a company called Software Store Ltd, which claims to have brick and mortar offices located at […] in San Francisco, California. However, the Complainant asserts on information and belief, that the Software Store Ltd is a fictitious entity as there are no company registrations or listings for this alleged company in San Francisco.
It argues that the Respondent has registered and is using the disputed domain names in bad faith for commercial gain and to benefit from the likely confusion that the disputed domain names and associated company, Software Store Ltd, are connected with the Complainant. The Respondent’s bad faith registration of the disputed domain names is further established by the fact that the disputed domain names completely incorporate the famous APPLE mark and were acquired long after the APPLE mark became famous. Such registration and use of the disputed domain names, which include the terms “downloads,” and “oem,” is in and of itself a form of opportunistic bad faith. Further, a portion of the Complainant’s main website is devoted to software downloads, which the Complainant has operated for many years. The fact that the disputed domain name is quite similar to the Complainant’s URL used to sell official Apple downloads only further proves the Respondent’s bad faith.
While the Respondent’s web sites at the disputed domain names have claimed that it has numerous corporate “Certified Partners,” such as Adobe, Microsoft, Verisign, Cnet and Autodesk, the Complainant’s investigation reveals that this is likely not the case. The Complainant contends that as the Respondent’s web site is selling downloads of software products at steeply discounted prices, it is likely that the web site is either engaged in counterfeiting and/or is selling bootlegged copies of software products. That this is likely the case is confirmed by numerous postings by consumers on message boards or other online forums complaining about being scammed by the web site and/or questioning the legitimacy of the web site and the alleged Software Store Ltd. Company, and by consumer postings at the California Better Business Bureau complaining about the alleged Software Store Ltd. company. The Complainant has adduced evidence of such postings. It has also asserted that several consumers have contacted the Complainant directly to report and complain about the activities of the disputed domain names and associated web sites and attached printouts of the e-mails. The Complainant contends that simply put, the Respondent is plundering the reputation of the well-known APPLE Marks for profit.
It also argues that the Respondent’s registration and use of the disputed domain names is also in bad faith because, as noted above, the Respondent is using the disputed domain names to illicitly profit from the initial interest confusion generated by the disputed domain names. It contends that the Respondent has targeted the Complainant which is obvious from the overwhelming notoriety of the Complainant’s APPLE Marks and name, and from the Respondent’s own bad faith conduct. The Respondent could only have registered domain names so confusingly similar to the Complainant’s APPLE Marks to capitalize on the hard earned and valuable goodwill associated with the mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain names:
(i) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.” While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant, as noted above, this Panel has no hesitation in finding that the Complainant’s APPLE mark is indeed a famous and well-known trade mark and is one of the most famous and valuable brands in the world, and in which the Complainant has rights.
The Panel also accepts that the disputed domain names are confusingly similar to the Complainant’s famous APPLE and APPLE-formative or family of marks as well as the and domain names registered by the Complainant.
The disputed domain names include the famous APPLE mark. They also include and incorporate the common terms “downloads” and “oem”.
The Panel finds that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. The mark APPLE is recognizable as the dominant or principal component of the disputed domain names. The addition of the descriptive words “downloads” and “oem” in the respective disputed domain names, and , does not prevent the disputed domain names from being regarded as confusingly similar to the trade mark APPLE: see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, “automotive” did not distinguish the respondent’s domain name from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety.
Neither would the presence of the top-level suffix “.com” be sufficient to escape a finding of substantial or confusing similarity, since that is a technical requirement of registration: see inter alia, CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith,WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar,WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures,WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015.
This Panel accordingly finds that the disputed domain names are confusingly similar to the Complainant’s trade marks in which the Complainant has rights. B. Rights or Legitimate Interests
As several panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The undisputed evidence is that the Respondent registered the disputed domain names long after the Complainant established its rights in the APPLE mark and its family of APPLE Marks. It is also clear that the Complainant is in no way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark. There is also no evidence that the Respondent is commonly known by the disputed domain names or that the disputed domain names are in any other way identified with or related to any rights or legitimate interests of the Respondent.
The Panel accepts the Complainant’s contentions that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names. The Complainant has invited the Panel to infer that the Respondent registered and used the disputed domain names in order to sell what are likely counterfeit or pirated copies of software products developed by the Complainant or others. The Complainant has adduced some evidence to show that the web sites at the disputed domain names have offered software products of the Complainant and its competitors at steeply discounted prices and that some consumers have complained of being scammed by the Respondent. Absent a Response, the Panel is prepared to draw these inferences.
With regard to the Complainant’s assertion that even assuming arguendo that the Respondent is selling some of the Complainant’s genuine software products through its websites (as opposed to counterfeits), such sales are of little consequence, the Panel agrees that such sales do not make the Respondent’s registration and use of the disputed domain names legitimate where the Respondent is also promoting the sale of competing software products from numerous other vendors: Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095 (“Even if Respondent were legally selling Complainant’s products, it would not have the right to use Complainant’s trademark in the domain name to sell products of Complainant’s competitors…”).
The Panel accordingly finds that having regard to the fame of the APPLE Marks and name, as well as the fact that the Respondent has no rights in this mark, the Respondent did not register the disputed domain names for any legitimate or fair-use purpose. The Panel accepts the Complainant’s arguments that the Respondent registered the disputed domain names and used the Complainant’s mark to profit from the web traffic generated by consumers seeking to download the Complainant’s products, or from the association and goodwill between the disputed domain names and the Complainant’s well-known marks. The Respondent has clearly not demonstrated or established any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain names have been registered and used in bad faith.
The Complainant submits that the Respondent has registered and used the disputed domain names in bad faith. On the evidence, the Respondent has no license or other authorization to use the APPLE Marks. There is little doubt that the Respondent registered the disputed domain names long after the APPLE mark and other APPLE Marks were registered. The APPLE trade mark was and is a famous and well-known mark based on the evidence adduced by the Complainant, which the Panel accepts, and clearly, the Respondent must have known about the Complainant’s mark and business when registering the disputed domain names.
On the evidence as noted above, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith for commercial gain and to benefit from the likely confusion that the disputed domain names and associated company, Software Store Ltd, are connected with the Complainant. The disputed domain names incorporate the Complainant’s famous APPLE mark. The Panel accepts, as found by other panels, that where a domain name is so obviously connected with a well-known product, its very use by someone with no connection with the product suggests opportunistic bad faith: see for example Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562.
Further, one of the disputed domain names also includes the term “downloads”. The Panel accepts that this is yet a further indicator of the Respondent’s registration and use in bad faith since (as must also have been known to the Respondent) a portion of the Complainant’s main website is devoted to the sale of the Complainant’s official Apple software downloads.
The Panel accepts from the evidence offered by the Complainant that the Respondent has registered and used the disputed domain names in a deliberate attempt to attract Internet users to its website for commercial gain by seeking to profit from the confusion created by the use of the Complainant’s marks in the disputed domain names. The use of a domain name that is confusingly similar to a trademark, in order to divert traffic to a website and generate revenue, is evidence of bad faith pursuant to paragraph 4(b) of the Policy.
The Panel has no hesitation in finding on the facts and the undisputed evidence that the Respondent’s registration and use of the disputed domain names was intended to profit from the confusion created by the inclusion of the Complainant’s marks in the disputed domain names. The Panel finds that by intentionally attempting to attract, for commercial gain, users to the Respondent’s website through creating a likelihood of confusion with the Complainant’s marks, the Respondent’s registration and use of the disputed domain names was in bad faith.
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant, the Panel accepts the Complainant’s contentions that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 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 names and be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: May 17, 2011
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