The Complainant is Apple Inc. of Cupertino, California, United States of America (the “US”), represented by Kilpatrick Townsend & Stockton LLP, the US.
The Respondent is Protection Domain of Tumba Muerto, Panama Ciudad, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with A Pty, Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2014. On February 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 21, 2014.
The Center verified that the Complaint together with the amendment to 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 February 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2014.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 22, 2014. 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.
In accordance with paragraph 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy, the date by which the Administrative Panel was required to forward its decision to the Center was extended to May 15, 2014. 4. Factual Background
The Complainant Apple Inc. is a world leader in the design, manufacturing and marketing of a range of personal computers, mobile communication and media devices, and portable digital media players. Its products and services include the MAC line of desktop and portable computers, the MAC OS X operating system, the IPHONE mobile telecommunication devices, the IPAD tablet computing devices, the IPOD line of portable digital music and video players, the APPLE TV digital media device; and the ITUNES software. The Complainant also sells a variety of related software, services, peripherals, networking solutions, and third-party digital content, all of which are advertised and sold worldwide. The Complainant maintains a worldwide network of APPLE STORE retail stores.
The Complainant is the holder of the following trademark and service mark registrations for the APPLE word trademark (the “APPLE trademarks”):
- the APPLE word trademark, with registration number 1,078,312, registered in the US on November 29, 1977 for goods in International Class 9;
- the APPLE word trademark, with registration number 1,144,147, registered in the US on December 23, 1980 for goods in International Class 16;
- the APPLE word trademark, with registration number 1,895,326, registered in the US on May 23, 1995 for services in International Class 36;
- the APPLE word trademark, with registration number 2,079,765, registered in the US on July 15, 1997 for services in International Class 38;
- the APPLE word trademark, with registration number 2,808,567, registered in the US on July 15, 1997 for services in International Class 42;
- the APPLE word trademark, with registration number 364,209, registered in Australia on August 13, 1981 for goods in International Class 9;
- the APPLE word trademark, with registration number TMA263265, registered in Canada on October 16, 1981 for goods in International Class 9;
- the APPLE word trademark, registered as a Community Trade Mark with registration number 006313316, registered on January 20, 2009 for goods and services in International Classes 9, 16, 35, 38, 41, 42;
The Complainant is the holder of the following trademark and service mark registrations for the APPLE STORE word trademark (the “APPLE STORE trademarks”):
- the APPLE STORE word trademark, with registration number 2,424,976, registered in the US on January 30, 2001 for services in International Class 35;
- the APPLE STORE word trademark, with registration number 2,462,798, registered in the US on June 19, 2001 for services in International Class 35;
- the APPLE STORE word trademark, with registration number 2,683,410, registered in the US on February 4, 2003 for services in International Class 35;
- the APPLE STORE word trademark, with registration number 3,710,912, registered in the US on November 17, 2009 for services in International Classes 37, 38, 41 and 42;
- the APPLE STORE word trademark, with registration number 883,222, registered in Australia on February 27, 2006 for services in International Class 35;
- the APPLE STORE word trademark, with registration number TMA690090, registered in Canada on June 18, 2007 for services in International Class 35; and
- the APPLE STORE word trademark, registered as a Community Trade Mark with registration number 001159706, registered on September 1, 2000 for goods and services in International Classes 35, 39 and 41.
The Complainant has also registered and uses the domain names and to deliver information concerning the Complainant and its products and services. These websites attract tens of millions of unique visitors per month and have consistently been among the first dozen most popular US websites in the last several years.
The disputed domain name was registered on April 4, 2012. 5. Parties’ Contentions A. Complainant
The Complainant submits that over the course of more than 30 years of operation, its APPLE brand has become one of the most recognized and valuable brands in the world and has acquired a high degree of public recognition and distinctiveness as a symbol of a source of high quality. The Complainant has extensively promoted and advertised its goods and services in international magazines, on television, outdoor signage, and the Internet, among many other media. In 2012, its advertising expenditures were equal to USD 1 billion.
The Complainant contends that since registering the disputed domain name in April 2012, the Respondent has associated it to a click through revenue search engine webpage, which contains links to computer related websites, some of which purport to offer products and services of the Complainant or of its competitors. The Respondent’s website features hyperlinks using the Complainant’s various trademarks, such as “Apple Iphone 5 Price”, “Apple Iphone Repair”, “Apple iPAD Mini Deals”, “Apple Store Apps”, “Apple iPAD Price” , “Iphone Software Download”, “Apple Store Online”, “Apple Iphone 4 Price”, “App Store” and other products and services of the Complainant.
According to the Complainant, the disputed domain name is confusingly similar to the well-known APPLE and APPLE STORE trademarks, as it includes these trademarks in their entirety with the addition of “www” before the marks. This minor variation of the Complainant’s APPLE STORE trademark does not obviate the confusing similarity between it and the disputed domain name.
The Complainant asserts that the Respondent has no legitimate interests in the disputed domain name. The Complainant’s rights in the APPLE and APPLE STORE trademarks predate the Respondent’s 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 Respondent could own or use any domain name incorporating the Complainant’s APPLE and APPLE STORE trademarks. The disputed domain name is not a name or nickname of the Respondent. The Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of it.
The Complainant further contends that the Respondent’s use of the APPLE STORE trademark serves to attract users seeking the Complainant’s website to its own website or to parasitically usurp traffic intended for the Complainant’s websites. The disputed domain name serves as a trap for unwary Internet users who mistype the address “www.”, by accidentally omitting the period between “www” and “”. This is classic typosquatting intending to direct Internet users who misspell the Complainant’s trademark to the Respondent’s website. Given the renown of the Complainant and of its trademarks, the relevant consumers, on seeing the disputed domain name, will reasonably believe it is related to or sponsored by the Complainant. The Respondent is thus illegitimately exploiting the goodwill of the Complainant’s well known APPLE and APPLE STORE trademarks for the purpose of monetizing or profiting from the web traffic that flows through the disputed domain name.
The Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and fame associated with the APPLE and APPLE STORE trademarks. The disputed domain name incorporates the Complainant’s famous APPLE and APPLE STORE trademarks in their entirety, was acquired long after these trademarks became well-known, and is being used to capitalize on these trademarks. The disputed domain name is also nearly identical to Complainant’s domain name, and is a misspelling of the latter. Such registration and use of the disputed domain name, based on well-known trademarks, is a form of opportunistic bad faith. The Respondent is using the disputed domain name to divert web traffic to a click through revenue website advertising computer-related products, often related to the Complainant and the Complainant’s competitors, for commercial gain by creating the impression that the website is associated with the Complainant. The Respondent is attempting to profit from the web traffic generated by the Complainant’s APPLE and APPLE STORE trademarks, and is thus acting in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has provided information about its registrations of the APPLE and APPLE STORE trademarks, registered for the territory of various countries, and has thus established its exclusive rights in these trademarks.
It is a common practice under the Policy to disregard in appropriate circumstances the generic Top Level Domain (“gTLD”), such as “.com”, for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is the sequence “wwwapplestore”. This sequence contains three easily distinguishable parts – “www” and “apple” and “store”. The “apple” element is identical to the Complainant’s APPLE trademarks and the elements “apple” and “store” together are identical to the APPLE STORE trademarks. As to the “www” element, it lacks distinctiveness, being identical to the commonly used acronim for “World Wide Web”, which forms part of most website addresses separated by a dot from their remaining elements. The dot between “www” and the other elements of the disputed domain name is omitted. Given the fame of the APPLE and APPLE STORE trademarks and the inconspicuousness of the missing dot, it is likely that Internet users who have mistakenly typed “wwwapplestore” instead of “www.applestore” would not notice the missing dot between “www” and “applestore” and would presume that the disputed domain name is associated to or endorsed by the Complainant – a classic example of typosquatting. Therefore, the Panel is satisfied that the disputed domain name is confusingly similar to the APPLE and APPLESTORE trademarks in which the Complainant has rights, and finds that the Complainant has established the first element of the test under Policy, paragraph 4(a). B. Rights or Legitimate Interests
The Consensus view of UDRP panels is that the Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has put forward a number of arguments in support of its contention that the Respondent has no rights or legitimate interests in the disputed domain name - the Respondent is not known by the disputed domain name, that it is not connected to the Complainant and has not been licensed by it to use the disputed domain name, and that it is not engaged in any bona fide activity that could give rise to rights or legitimate interests in the disputed domain name, but rather attempts to exploit the reputation of the Complainant’s APPLE and APPLE STORE trademarks for its own commercial gain by misleading and diverting Internet users from the Complainant to its own website. Thus, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given an opportunity to present its case, has decided not to submit a Response and to put forward any arguments why it should be regarded as having rights or legitimate interests in the disputed domain name.
Having reviewed the website at the disputed domain name, the Panel finds that this website lists many products and services offered by the Complainant. This makes it clear that the Respondent is well aware of the Complainant and its products. It appears that the Respondent is using for its own commercial purposes a domain name that is confusingly similar to the Complainant’s APPLE and APPLE STORE trademarks in an attempt to attract more visitors to its website by using the goodwill of the Complainant and its products and services. In the absence of any evidence to the contrary and in light of the fame of the Complainant and its APPLE and APPLE STORE trademarks, the Panel cannot regard the Respondent’s actions as a legitimate activity that gives rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent has not established any rights or legitimate interests in the disputed domain name, and has not rebutted the prima facie case made by the Complainant under the second element of the test under Policy, paragraph 4(a). The Complainant prevails on this issue. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
In the present case, the Respondent has engaged in typosquatting by the registration of a misspelled domain name that is confusingly similar to the Complainant’s famous APPLE and APPLE STORE trademarks and has associated it to a website that offers the products and services of the Complainant, without having rights or legitimate interests in the disputed domain name. Taking this into consideration, the Panel accepts that the Respondent has registered a domain name that is confusingly similar to the Complainant’s APPLE and APPLE STORE trademarks with knowledge of these trademarks and of their established goodwill. The Panel finds this conduct of the Respondent as an example of opportunistic bad faith registration of a domain name.
The Respondent uses the disputed domain name for a commercial website that offers products and services that appear to be identical to those of the Complainant. In these circumstances, and in view of the bad faith registration of the disputed domain name, the Panel finds that the Respondent has used the disputed domain name in an attempt to attract visitors to its website by exploiting the popularity of the Complainant’s APPLE and APPLE STORE trademarks - the conduct described in the paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: May 18, 2014
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