The Complainant is Incase Designs Corp. of Chino, California, United States of America (“U.S.”) represented by Sideman & Bancroft LLP, U.S.
The Respondent is Juliane Kuefer of Dahlheim, Germany. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 11, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 15, 2012, the Registrar 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 October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2012.
The Center appointed John Swinson as the sole panelist in this matter on November 12, 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 is Incase Designs Corp., a company that was founded in 1997. The Complainant designs, develops, manufactures and sells carry cases and bags for consumer electronics, such as Apple products, including the MacBook, iPhone, iPad, and iPod.
The Complainant owns numerous registered trade marks for INCASE in various countries, including U.S. Registration No. 2,643,012, registered on October 29, 2002, with a first use date of August 1, 1997. The Complainant provided evidence of these registrations (the “Trade Marks”).
The Respondent is Juliane Kuefer of Dahlheim, Germany. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on April 5, 2011. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Disputed Domain Name wholly incorporates the Trade Marks. The Respondent’s use creates a likelihood of confusion because Internet users are likely to come across the Respondent’s website while searching for the Complainant and assume an affiliation between the Respondent and the Complainant because of the Disputed Domain Name.
This likelihood of confusion is enhanced by the Respondent’s use of the Trade Marks in connection with the word “MacBook”, a registered trademark of Apple, Inc. The combination of the Trade Marks with a term (i.e., “MacBook”) that Internet users would associate with the Complainant creates the impression that the Disputed Domain Name is associated with the Complainant.
Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use the Trade Marks. The Respondent is not commonly known by the Disputed Domain Name.
The Respondent is not making any bona fide offering of goods and services. It is using the Disputed Domain Name to attract potential Incase customers to the Respondent’s website by implying an affiliation with the Complainant. Internet users are then diverted to a page offering an open source program for paid download. The Respondent seeks to generate revenue via “click throughs”.
Registered and Used in Bad Faith
The Complainant submits that the following evidence bad faith:
- the Respondent is using the Disputed Domain Name to suggest an affiliation that does not exist and to attract Internet users to its website for commercial gain (to generate “click through” revenue);
- the Complainant has trade mark rights beginning in 1997 and it is unlikely that the Respondent was unaware of these rights, particularly as it describes the Complainant’s products on the website associated with the Disputed Domain Name;
- the Disputed Domain Name also infringes the trade mark rights of Apple Inc.;
- the Complainant has been unable to contact the Respondent and it appears the Respondent has provided false contact information to the Registrar; and
- the Respondent misleadingly includes a copyright notice incorporating the Trade Marks on the website associated with the Disputed Domain Name.
Remedy Requested
The Complainant acknowledges that the Disputed Domain Name, in addition to the Trade Marks, contains the “MacBook” trade mark owned by Apple Inc., a third party. The Complainant requests that the Disputed Domain Name be transferred to the Complainant or alternatively, be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Marks.
The Complainant asserts that it owns the Trade Marks, and provided evidence of ownership. The Panel accepts that the Complainant owns the Trade Marks.
The addition of generic top level domains (the “.com” suffix) may be disregarded when comparing the similarities between a domain name and a trade mark (see Missoni S.p.A. v. Ahmed Salman,WIPO Case No. D2007-1485; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429). Therefore, the Disputed Domain Name consists of a combination of the Trade Marks and “Macbook”, a trade mark of Apple Inc. The addition of a third party trade mark does not lessen the confusing similarity of the Disputed Domain Name with the Trade Marks. The fact that the Complainant’s products are used in relation to Apple Inc.’s products, would increase the confusion of Internet users (see cases involving the same Complainant, Incase Designs Corp. v. Domain Admin, PrivacyP / YongFeng Li,WIPO Case No. D2012-1608 and Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero,WIPO Case No. D2012-1491).
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- the Respondent has no connection or affiliation with the Complainant;
- the Complainant has not consented to the Respondent’s use of the Disputed Domain Name;
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name;
- the Respondent does not use the website associated with the Dispute Domain Name in connection with a bona fide offering of goods or services; and
- the Respondent makes no legitimate non-commercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Panel infers that the Respondent was or must have been aware of Trade Marks, which the Complainant had used for 14 years prior to the Respondent’s registration of the Disputed Domain Name. This awareness is evidenced, among other things, by:
- the combination of the Trade Marks with “MacBook”, a term that Internet users would associate with the Complainant; and
- the description of the Complainant’s products on the website associated with the Disputed Domain Name.
The Panel further infers that Respondent registered the Disputed Domain Name intending to trade off the value of the Trade Marks. The website operated by the Respondent at the Disputed Domain Name displays “click through” links to a third party website where open source software can be downloaded. The Panel infers that some Internet users, once at the Respondent’s website will follow the provided links and “click through” to the third party website. The Respondents presumably earn “click through” linking revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see, for example, Magnamail Pty Limited v. Domain Admin, PrivacyP ID#10760, Luis Vicente Rodrigues, Grupo JBS SA,WIPO Case No. D2011-2037 and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396).
The incorrect contact information provided by the Respondent in the WhoIs record for the Disputed Domain Name is further evidence of bad faith (see, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and North Atlantic Operating Company, Inc., National Tobacco Company, L.P. v. Macarius Rizk,WIPO Case No. D2012-0994).
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
The Panel finds that the appropriate remedy in this proceeding is cancellation of the Disputed Domain Name.
As stated above, the Dispute Domain Name incorporates both the Trade Marks and Apple Inc.’s MACBOOK trade mark. The Panel acknowledges that transfers have been granted in some situations where a domain name has incorporated the trade marks of two parties. However, generally in those proceedings complainants either presented evidence of the other trade mark holder’s consent. There are a number of decisions where transfers have been refused because the consent of the other trade mark holder has not been evidenced (see, for example, Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions, WIPO Case No. D2003-0725). Here, Apple, Inc. is not a party and there is no evidence before the Panel that Apple, Inc. would consent to the remedy of transfer the Disputed Domain Name to the Complainant.
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 name be cancelled.
John Swinson
Sole Panelist
Dated: November 26, 2012
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