The Complainant is Apple Inc. of Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondents are Domain Admin of Hong Kong, China; Private Whois of Nassau, Bahamas; Private Whois of Nassau, Bahamas; Private Whois of Nassau, Bahamas. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2011. On August 17, 2011, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain names. On August 19, 2011, I Corp. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. The Complainant filed an amended Complaint on August 20, 2011.
The Center verified that the Complaint together with the amended 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 August 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 19, 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. 4. Factual Background
The Complainant’s APPLE brand is one of the best-known brands in the world, with an estimated value of over USD153 billion. The Complainant designs, manufactures and markets a range of personal computers, mobile communication and media devices, and portable digital media players. It also sells a variety of related software, services, peripherals, networking solutions and third-party digital content. Its products and services include the “Mac” line of desktop and portable computers, including the “Macbook” and “Macbook Pro” portable computers, “iPhone” mobile telecommunication devices, “iPad” tablet computing devices, “iPod” line of portable digital music and video players, “Apple” TV digital medial device and “iTunes” software.
The Complainant is the owner of numerous trademark and service mark registrations throughout the world for the APPLE, IPOD, IPHONE, MAC, MACBOOK and MACINTOSH trademarks, dating from 1977. The Complainant advertises and promotes its trademarks on its website, which resolves from the domain name . It has also registered and uses the domain names , , and , amongst others, which redirect to the domain name. The website to which the latter domain name resolves receives tens of millions of visitors per month.
The disputed domain name was registered on December 5, 2004, the disputed domain name was registered on November 8, 2001, the disputed domain name was registered on June 1, 2009, and the disputed domain name was registered on March 30, 2010. The disputed domain names , , and resolve to websites that provide information on products and services of the Complainant, products and services of the Complainant’s competitors and unrelated products and services. They contain “Sponsored Listings” and “Related Searches” that may redirect Internet users to websites unrelated to the Complainant. Around the time of the filing of the Complaint, the disputed domain name did not appear to resolve to any website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the registrants of the disputed domain names are aliases for one and the same entity. As of June 24, 2011, the registrant for each of the disputed domain names was “Private Whois Service”, with the same address and other contact information. On June 27, 2011, the Complainant filed a request to amend another, already pending, UDRP proceeding against “Private Whois Service” in order to include in that proceding the disputed domain name . Shortly after this request was filed, the registrant of the disputed domain name was changed to “Domain Admin”, and the registrant of the disputed domain names , and was changed to “Private Whois ”, “Private Whois ” and “Private Whois ”, respectively. For the last three of the disputed domain names, all of the contact details remained the same. For the first disputed domain name, , although the contact details changed the Registrar, the domain name servers and the website resolving from the disputed domain name remained the same. As well, the contact phone numbers for both “Domain Admin” and “Private Whois Service” (which claims to be based in the Bahamas) are telephone numbers in Hong Kong, China. Further, the “+852” Hong Kong international calling code is listed in the contact information of all the disputed domain names in this case. The Complainant contends that for the foregoing reasons, “Private Whois Service”, “Domain Admin”, “Private Whois ”, “Private Whois ” and “Private Whois ” are related entities or aliases for one and the same entity or individual.
The Complainant contends the disputed domain names and are identical and/or confusingly similar to its APPLE and IPOD trademarks as they fully incorporate one or both of the APPLE and IPOD marks in their entirety. The addition of the “s” to pluralize the Complainant’s mark in the disputed domain name does nothing to dispel this confusion. The addition of the trademark APPLE, the source of and legitimate brand associated with the iPod device, to the disputed domain name only serves to exacerbate the confusion created by the Respondent’s use of this disputed domain name. Similarly, the Respondent’s addition of the generic and related term “hack”, meaning to heavily modify the software or hardware of a computerized device to extend its functionality beyond the manufacturer’s specifications, in the disputed domain name does nothing to dispel the confusion created by this disputed domain name.
The Complainant contends the registration of the disputed domain name is a classic case of typo-squatting. It is nearly identical and/or confusingly similar to the Complainant’s IPHONE trademark. The disputed domain name contains exactly the trademark IPHONE but for the replacement of the “o” with a second “i” which is an insignificant variation to the Complainant’s IPHONE trademark and does nothing to obviate the confusing similarity between it and the disputed domain name.
The Complainant contends the disputed domain name is identical and confusingly similar to the Complainant’s trademarks MACBROOK PRO, MACBOOK and MAC because it incorporates these marks exactly and in their entireties. The addition of the term “pro” to the Complainant’s registered MACBOOK trademark also renders the disputed domain name confusingly similar to the MACBOOK mark because the combined term “macbook pro” refers to the name of a specific product that the Complainant has been selling for nearly four years. The addition of the “s” to pluralize the MACBOOK PRO trademark in the disputed domain name does nothing to dispel this confusion.
The Complainant contends the Respondents have no legitimate interest in the disputed domain names because (i) there is no relationship between the Complainant and the Respondents giving rise to any license, permission, or other right by which the Respondents could own or use any domain name incorporating the Complainant’s trademarks; (ii) the disputed domain names are not names or nicknames of the Respondents; (iii) the website to which the disputed domain name resolves is a “dead link” and therefore is one on which the Respondent is squatting and making no legitimate use thereof; (iv) the remaining three disputed domain names resolve to websites containing “Sponsored Listings” and “Related Searches” which reference some of the Complainant’s trademarks, e.g., “Apple Macbook Pro Prices”, and/or includes references to generic products and services in competition with the Complainant, and may direct Internet users to other websites unrelated to the Complainant; (v) the Respondents derive, or have derived, a financial benefit in the form of pay-per-click revenue from the web traffic that has been diverted through the disputed domain names; and (vi) the Respondents have registered and are using the disputed domain names to profit from the web traffic generated through the websites resolving from them, which does not constitute a legitimate bona fide offering of goods or services.
The Complainant contends the Respondents have acquired and are using the disputed domain names in bad faith because (i) the Respondents are attempting to benefit from the goodwill and fame associated with the Complainant’s trademarks by using them for commercial gain; (ii) the disputed domain names incorporate the Complainant’s well-known trademarks and were registered or acquired well after they became well-known to consumers and the trade; (iii) the Respondents are using the disputed domain names to divert web traffic to multiple search engines and/or linking portals with sponsored links/results for commercial gain; (iv) given the content of the websites to which the disputed domain names resolve and the apparent use of monetization services, the Complainant believes the Respondents profit from the web traffic generated by the Complainant’s trademarks; (v) the Respondent is offering the disputed domain name for sale on “”; and (vi) the Respondents have a well established pattern of registering and using domain names incorporating the trademarks, or variations thereof, of third parties including the Complainant to redirect Internet users to websites for profit. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Procedural Issue: Consolidation of Multiple Domain Names
Pursuant to paragraph 3(c) of the Rules, a single complaint may be brought in respect of multiple domain names “provided that the domain names are registered by the same domain-name holder”. As explained by this Panel in Kimberly-Clark Corporation v. N/A, Po Seer and N/A, Hu Lim,WIPO Case No. D2009-1345, the use of the phrase “domain-name holder” rather than “domain-name registrant” in the Rules indicates that the holder of a domain name may be someone other than the apparent registrant of it – and, in particular, includes the underlying registrant of a privacy or proxy service registration, an entity that controls the operation of the registrant of record, and an entity that has adopted an alias for the name of the registrant of record. The common feature of these various situations is that, while the registrant of record has apparent control over the domain name, some other person has practical control over the domain name. As explained by this Panel in the Kimberly-Clark case, for the purpose of determining if a single complaint has been properly brought in respect of multiple domain names, a “holder” of a disputed domain name is any person who has such an interest in the domain name that provides it with apparent or actual control over the domain name. It follows that a single complaint will be properly brought in respect of multiple domain names where there is a common person holding an interest in those domain names. Other panels deciding cases under the Policy have adopted a similar approach to this issue – see, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 (consolidation permitted where “common control is being exercised over the disputed domain names or the websites to which they resolve”.
Applying this principle to the facts of this case, this Panel finds that there is a common person holding an interest in the disputed domain names. The Complainant has provided evidence showing that up until its application to add the first disputed domain name, , to the earlier, pending, case under the Policy, that disputed domain name and all the other disputed domain names had the same registrant. Shortly after the Complainant’s application, the registrant of record for the disputed domain names changed; however, for the last three disputed domain names the contact details remained the same, and for the first disputed domain name although the contact details changed the Registrar, the domain name servers and the website resolving from the disputed domain name remained the same. This evidence, together with the fact that the Respondents did not contest the Complainant’s assertion, persuades this Panel that there is a single entity that has practical control over the disputed domain names – that being the entity for whom the names of the registrants of record are aliases. Accordingly, this Panel finds that this single Complaint is properly brought against each of the disputed domain names, despite the fact that the registrant of record for each disputed domain name is different. 7. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain names , and all contain one or more of the Complainant’s registered trademarks APPLE, IPOD, MACBOOK and MAC PRO, and unregistered trademark MACBOOK PRO, in their entirety. The addition of the letter “s” in and simply pluralizes the Complainant’s trademarks, and does nothing to lessen the inevitable confusion between those disputed domain names and the Complainant’s trademarks. The addition of the word “hack” in the disputed domain name simply adds a descriptor (a software or hardware modification) to the Complainant’s IPOD trademark, and does nothing to lessen the inevitable confusion between this disputed domain name and the Complainant’s trademark. The disputed domain name is an obvious misspelling of the Complainant’s registered trademark IPHONE, and is confusingly similar to that trademark. Accordingly, this Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondents are not licensees of, or otherwise affiliated with, the Complainant, and have not been authorized by the Complainant to use its APPLE, IPOD, IPHONE or MACBOOK trademarks, or any of the other trademarks of the Complainant. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, the disputed domain names, or that they have, for any other reason, rights or legitimate interests in the disputed domain names. Each of the disputed domain names was registered after the Complainant’s first use and filing for registration of the trademark in respect of which the disputed domain name is confusingly similar. The evidence provided by the Complainant shows that the disputed domain names , and were used to resolve to click-through portals with automatically-generated sponsored listing and related searches links to various websites, some of which relate to products of the Complainant, some of which relate to product or services of competitors of the Complainant, and some of which are completely unrelated to the disputed domain name from which the website resolves. Around the time of the filing of the Complaint, the disputed domain name did not appear to be in use. According to the present record, none of the disputed domain names are being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Accordingly, this Panel finds that the Respondents have no rights or legitimate interests in any of the disputed domain names. C. Registered and Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the use of its trademarks, combined with the absence of any evidence provided by the Respondents to the contrary, is sufficient to satisfy this Panel that the Respondents both knew of the Complainant’s trademarks at the time of registration of the disputed domain names, and knew that they had no rights or legitimate interests in the disputed domain names. Accordingly, this Panel finds that the Respondents registered the disputed domain names in bad faith. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondents’ use of the disputed domain names , and indicates that those disputed domain names have been used to attract, for commercial gain, Internet users to websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of those websites. The evidence on the record provided by the Complainant with respect to the offering for sale of the disputed domain name indicates it has been registered or acquired primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket expenses. Accordingly, pursuant to paragraphs 4(b)(iv) and 4(b)(i) of the Policy, this Panel finds that each of the disputed domain names has been registered and is being used in bad faith. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, , , and , be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: October 3, 2011
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