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 Qiuju Wang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2012. On April 13, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On April 16, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 18, 2012, the Center transmitted an email to the parties in both the Chinese and English languages regarding the language of proceedings. On April 21, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 April 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2012. On May 3, 2012, the Center received an email communication from the Respondent. However, the Respondent did not submit any formal response. Accordingly, the Center updated the proceeding status on May 16, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 20, 2012. 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 designs, manufactures and markets a range of personal computers, mobile communication and media devices, portable digital media players, and related software, services, peripherals, networking solutions and third-party digital content. The Complainant’s products are advertised and sold worldwide. The Complainant’s products include the MAC line of computers, MAC OS X operating system, IPHONE mobile devices, IPAD tablet computing devices. Online services of the Complainant include the ITUNES STORE and IBOOKSTORE which allow customers to purchase third-party content. The Complainant has over 300 stores worldwide. From 1994 to 2008, the Complainant spent over USD 3 billion worldwide in advertising.
The Complainant’s APPLE brand has been touted as among the most recognized brands in the world by Harris Interactive Inc, Interbrand, Millward Brown Optimor, Fortune magazine and Business Week. The APPLE trademark has also been recognized as a well-known mark by previous UDRP panels (e.g., Apple Inc v. Algernon Salois,WIPO Case No. D2011-0413; Apple Computer, Inc v. Omar Acosta Rivera Case,WIPO Case No. D2006-1118) and courts around the world.
The trademark APPLE is registered around the world including the following:
Jurisdiction
Trademark number
Registration date
United States
1,078,312
November 29, 1977
Australia
3564209
August 13, 1981
European Union
006313316
January 20, 2009
Singapore
T9711323C
September 15, 1997
The Complainant also owns trademark registrations around the world (e.g., European Union, Hong Kong, China, Australia for their trademarks (e.g., APPLE STORE) and the logo of an apple.
The Complainant operates websites under the domain names , , . The Complainant’s website under the domain name receives tens of millions of unique visitors per month and is among the highest ranked websites in the world in terms of overall web traffic. The Complainant’s website incorporates a gray menu bar across the top.
The Disputed Domain Name was registered on August 15, 2011. As of April 25, 2012, the Disputed Domain Name resolved to a website which features products under various trademarks of the Complainant, including IPHONE and the APPLE logo. The design of the website comprised a gray menu bar across the top. The website purports to sell the Complainant’s products. Online shopping cart facilities are apparent on the face of the website.
Beyond the WhoIs information relating to the Disputed Domain Name and the website resolved from the Disputed Domain Name, little is known about the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s trademarks and name. The Disputed Domain Name includes the trademark APPLE in its entirety. The only difference is the addition of a dash and the number “9”. The minor variation does not obviate the confusing similarity between the Disputed Domain Name and the APPLE trademark;
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant’s trademarks and name predate the registration of the Disputed Domain Name. There is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could register or use any domain name incorporating the Complainant’s trademarks and name. The Respondent is not an authorized distributor of the Complainant’s products. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use of the Disputed Domain Name; and
(c) The Disputed Domain Name is registered and is being used in bad faith. The Respondent registered the Disputed Domain Name for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s trademarks and name. The Respondent is using the Disputed Domain Name to sell counterfeit versions of the Complainant’s products by creating the impression that the website is sponsored, authorized or associated with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
As the registration agreement is in Chinese, the default language of the proceeding is Chinese. The Complainant has requested that English be adopted as the language of the proceeding. Having reviewed the circumstances including the following, the Panel determines that English be adopted as such:
(a) The Complainant will be additionally burdened by dealing with the proceeding in Chinese;
(b) There will be undue delay to the proceedings if Chinese translations of documents were required;
(c) The Respondent has not commented on the language of the proceeding and has not insisted on any particular language requirement;
(d) The Respondent has chosen not to participate in the proceeding by failing to file a Response;
(e) No apparent advantage to the proceeding or benefit to the parties may be gained by insisting on Chinese as the language of the proceeding; and
(f) The Center’s communications to the Parties have been made in both English and Chinese. 6.2 Discussion
To succeed in this proceeding, the Complainant must establish the 3 limbs of paragraph 4(a) of the Policy. The Panel now turns to consider each of these 3 limbs in sequence. A. Identical or Confusingly Similar
It is a requirement of the Policy for the Complainant to show that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. There is no doubt from the evidence that the Complainant has trademark rights in the trademark APPLE.
The Disputed Domain Name incorporates the trademark APPLE in its entirety. The Disputed Domain Name differs from the trademark APPLE by the addition of the suffix “-9”. It is the consensus of past UDRP panels that the addition of non-distinctive prefixes and suffixes to a trademark genereally does not result in a domain name which can be distinguishable from the trademark. Therefore, the Panel agrees with the Complainant that the Disputed Domain Name is confusingly similar to the trademark APPLE and the suffix “-9” is insufficient to avoid such confusingly similarity.
Accordingly, the Panel holds that the first limb of paragraph 4(a) of the Policy is made out. B. Rights or Legitimate Interests
The Complainant has confirmed that it has no relationship with the Respondent giving rise to any license, permission or other right by which the Respondent could register or use the Disputed Domain Name and that the Respondent is also not an authorized distributor of the Complainant’s products. There is nothing in the evidence to suggest that the Respondent is commonly known by the Disputed Domain Name or that the use of the Disputed Domain Name by the Respondent is in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
In the circumstances, the Panel is of the view that it is entitled to make a prima facie finding that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. In the absence of any Response to rebut the prima facie finding, the position stands. The second limb of paragraph 4(a) is also established on the facts. C. Registered and Used in Bad Faith
The trademark APPLE pre-dates the registration of the Disputed Domain Name by many years. Based on the evidence submitted, the Panel accepts that the trademark APPLE was well-known at the time the Disputed Domain Name was registered. It is inconceivable that the Respondent was unaware of the trademark APPLE. The design of the website resolved from the Disputed Domain Name leaves the Panel without any doubt that the Respondent was and is aware of the Complainant, the trademark APPLE and the various products of the Complainant. The manner in which the design of the website is made to resemble the Complainant’s website including down to the gray menu bar and the use of images is very telling. The circumstances are such that the Panel cannot avoid concluding that the Respondent is using the website to create an impression that the website is sponsored, authorized or associated with the Complainant.
Paragraph 4(b)(iv) of the Policy identifies the following situation as exemplary of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”
The website is clearly targeted at commercial gain. It is obvious from the evidence that the Respondent is using the Disputed Domain Name to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark APPLE. The Panel is of the view that the facts fall fully within the situation outlined in paragraph 4(b)(iv). As such, bad faith use and registration under the third limb of paragraph 4(a) of the Policy is also established. 7. Decision
For 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.
Kar Liang Soh
Sole Panelist
Dated: July 17, 2012
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