The Complainant is Apple Computer, Inc. of Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Li Hongbo of Beijing, Chna. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2015, 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.
On April 9, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On April 10, 2015, the Respondent submitted its request that it be entitled to respond in Chinese by email to the Center. On April 11, 2015, the Complainant submitted its request English be the language of the proceeding.
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 in English and Chinese, and the proceeding commenced on April 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2015. The Response was filed with the Center on May 10, 2015.
The Center appointed Douglas Clark as the sole panelist in this matter on May 20, 2015. 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, and portable digital media players. 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. One service provided by the Complainant is iCloud which allows customers access to files on all their electronic devices connected to the service. The Complainant is the registered proprietor of the trademark ICLOUD in various countries around the world. The Complainant has a pending application for ICLOUD in China. The Complainant is also the registrant of the domain name . The Complainant first announced its ICLOUD service on May 31, 2011 ahead of its official launch on June 6, 2011.
The disputed domain name was registered on July 16, 2013. The website to which the disputed domain name resolved at the time the Complaint was filed was a parking page with re-directs to goods and services unrelated to the Complainant. Some of the re-directs were to apparent phishing schemes. The Respondent is also the registrant of other websites that appear to be typosquatting, namely: , , and . 5. Parties’ Contentions A. Complainant
The Complainant contended as follows:
Identical or confusingly similar
The Complainant argues that the disputed domain name is made entirely up of the registered trademark ICLOUD and the generic term “www” to which generic Top-Level Domain (“gTLD”) “.com” has been added. The Complainant asserts it is an attempt to typosquat on the domain name and is therefore confusingly similar to the Complainant’s registered trademark ICLOUD.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for ICLOUD. Further, the Respondent had shown no bona fide use of the disputed domain name.
Registered and used in bad faith
The Complainant submits that the Respondent’s registration of the disputed domain name and its use was in bad faith. There is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the ICLOUD trademark and registered the disputed domain name to attract visitors to its website so that they could then be re-directed to websites for click through gain or that potentially were phishing sites. The registration of other famous marks as domain names further goes to prove the Respondent’s bad faith. B. Respondent
The Respondent replied as follow:
1. The disputed domain name was registered legally and renewal fees have been paid for almost 3 years. Further, computers can correctly tell apart even domain names that are very similar.
2. The parking page is provided by BODIS company. Using parking pages is very common in the industry. The Respondent referred to the decision in UTV Limited v. Unitedeurope Consulting, Kwang Pyo Kim, WIPO Case No. D2011-2293 where the panel in that case rejected a complaint relating to . The Respondent in that case had relied upon an argument that the use of parking pages was common in the industry.
3. As soon as a complaint was received from the Complainant regarding the parking page for , the Respondent caused the advertisements complained of to be taken down.
4. The disputed domain name was registered legally. “Cloud” is a generic term referring to “clouds in the sky” (“云” in Chinese). The meaning in Chinese is “I love clouds” (www=我、i=ai=爱、cloud=云). The registration was not in bad faith.
5. The Respondent has registered the disputed domain name but has not used, sold or rented it out in bad faith.
6. The Complainant had plenty of time to register the disputed domain name itself. The disputed domain name was first registered in 2009. Because the renewal fees were not paid it was cancelled in 2013 and then the Respondent registered it.
Taking into account the above matters the complaint is in bad faith and amounts to reverse domain name hijacking and should be rejected. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding to be English on grounds that included that the parking page for the website under the disputed domain name was written in English; visitors were re-directed to pages in English; and, that a call in number on a pop-up on the page directed callers to a representative who speaks English.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The Respondent requested that it be allowed to file a Response in Chinese. The Respondent filed a Response in Chinese showing it understood the Complaint.
The final determination of the language of the proceeding lies with this Panel (which is familiar with both languages).
The Panel to determine to follow the Center’s preliminary determination and accept the Complaint in English and the Response in Chinese. As the Respondent has shown in its Response that it understands English well, the Panel will render its decision in English. 6.2. Substantive Issues
This is a very simple case of clear cybersquatting for the purposes of commercial gain which the UDRP was designed to stop. A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark ICLOUD, the generic term “www” and the gTLD “.com”. The disputed domain name is confusingly similar to the registered trademark ICLOUD. The fact that they may be told apart by computers is irrelevant. The test is whether domain names are “identical of confusingly similar” to marks or other rights. While identity can be determined by a computer, whether domain names are “confusingly similar” is a question of how humans, not computers, perceive domain names.
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The only legitimate interests the Respondent has asserted are that the Complainant did not register the disputed domain name itself and that the disputed domain name means “I love clouds”.
There is no requirement for a Complainant to register every possible variation of a domain name. To do so would be too costly and time consuming.
The Panel is not satisfied that a Chinese reader would read the disputed domain name to mean “I love clouds”. “www” does not mean “I” in Chinese. The word for “I” is “wo”. “love” is pronounced “ai” in Chinese. This is the same pronunciation as “I”. However, it would be unlikely that a Chinese person would associate “I” with “ai”. The Panel is not satisfied that this is the true explanation for why the disputed domain name was chosen.
In any event, the Respondent has not taken any steps to establish a website relating to clouds or his/her purported love for them. There is no evidence of any legitimate use being made of the disputed domain name.
The second part of the paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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 at the disputed domain name is clearly being used to direct Internet visitors to a parking page which generates click through revenue for the Respondent. The fact some of the links appear to be malware or phishing sites is further evidence of bad faith.
The decision in UTV Limited v. Unitedeurope Consulting, Kwang Pyo Kim,WIPO Case No. D2011-2293 does not assist the Respondent. That case related to a short domain name . The panel was not satisfied that a registrant in Republic of Korea would necessarily know of a TV station based in Northern Ireland. The panel in that case specifically stated:
“The disputed domain name [] typically is such a short term which may represent many acronyms. This could have been different if the Complainant’s claim that that the Trademark has a strong reputation and is widely known outside the (Northern) Ireland region, and – as the Complainant implied – more particularly in Republic of Korea where the Respondent is located, is true, as in such case the Respondent would have registered and used the disputed domain name with the actual knowledge of the Trademark and may have been using the disputed domain name in bad faith.”
In this case, the ICLOUD trademark is not a simple acronym. It is a trademark well known around the world.
The Panel is, therefore, more than satisfied that the disputed domain name was registered and is being used in bad faith.
The third part of the paragraph 4(a) of the Policy is satisfied. 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.
The Panel also rejects the Respondent’s claim for Reverse Domain Name Hijacking.
Douglas Clark
Sole Panelist
Date: May 25, 2015
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