Complainant is Apple Computer, Inc. of Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is Tim Lackey of Plano, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “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 January 24, 2014. On January 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on February 12, 2014.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (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 Respondent of the Complaint, and the proceedings commenced on February 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 17, 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. 4. Factual Background
Complainant’s APPLE brand is one of the best-known brands in the world. Complainant designs, manufactures and markets a range of personal computers, mobile communication and media devices, and portable digital media players. 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 Domain Name was registered on July 21, 2012. 5. Parties’ Contentions A. Complainant
Complainant contends that Respondent has cybersquatted on Complainant’s well-known APPLE mark by creating a Domain Name that consists of Complainant’s mark with the prefix “my” and the descriptive term “id,” and then using the Domain Name in connection with a website to generate click-through revenue for a profit. Complainant filed another complaint against Respondent to recover five other domain names, , , , , and , all styled and used in the same manner as the Domain Name. See Apple Inc.v.Tim Lackey, BridgeIDentity,WIPO Case No. D2013- 1650. The panel in that proceeding ordered that all five domain names be transferred to Complainant after finding that Respondent had registered and was using these domain names in bad faith.
Complainant has submitted evidence to show that it has extensively promoted and advertised its goods and services in international magazines, on television, using outdoor signage, and on the Internet. Apple’s advertising expenditures were USD 1.1 billion, USD 1.0 billion, and USD 933 million for 2013, 2012, and 2011, respectively. As a result of such extensive promotion and use, Complainant and its trademarks have become famous worldwide. The market research firm, Harris Interactive Inc., found the APPLE brand to be the brand with the best reputation in the United States in its 2012 poll, while it placed second in 2013. In 2013, Interbrand ranked the APPLE brand as the most valuable brand in the world, valued at approximately USD 98.32 billion. Millward Brown Optimor, a leading brand valuation company, has found APPLE to be the most valuable brand in the world in its 2013, 2012 and 2011 rankings, valued at approximately at USD 185 billion in 2013.
Complainant submits evidence to show that judicial and arbitral bodies have also recognized the renown of Complainant and its APPLE brand. In a recent UDRP decision finding for Complainant, the panel had “no hesitation in finding that the Complainant’s APPLE mark is indeed a famous and well-known trademark and is one of the most famous and valuable brands in the world, and in which the Complainant has rights.” Apple Inc. v. Algernon Salois, WIPO Case No. D2011-0413. Complainant is the holder of a substantial number of trademark registrations with the United States Patent and Trademark Office for the APPLE word mark and the APPLE logo design mark depicting a stylized apple silhouette with a bite removed (together, the “APPLE Marks”). Complainant is the owner of numerous registrations for the Apple Marks throughout the world, including in Australia, Canada, China, the European Community, Hong Kong, and Singapore. Complainant is also the owner of registrations for the Apple Marks in Montenegro, the jurisdiction that corresponds to the .ME country code Top-Level Domain (“ccTLD”).
Complainant operates a service called “My Apple ID,” which permits consumers to create a unique user name for seamless use of Complainant’s different services. With a registered Apple ID credential, users can access and use Complainant’s various services and digital stores, including Complainant’s iTunes Store service, iCloud storage service, and Find My iPhone service. Users may also manage purchases from the Apple Store website, purchase apps from the App Store, make reservations at Apple Store locations and access Apple Support. The user’s Apple ID account is a linchpin for accessing, downloading, and sharing a user’s content from one device or service to another.
Identical or Confusingly Similar: Complainant contends that it is one of the most famous companies in the world, and the APPLE brand is considered one of the most valuable brands in the world. Respondent’s registration of presents a classic case of cybersquatting. Upon simple comparison, the Domain Name is confusingly similar to Complainant’s famous APPLE mark and the popular domain name registered by Complainant, as the Domain Name incorporates Complainant’s mark in its entirety. Use of the .ME country code Top-Level Domain (ccTLD) is of no import, as it has long been held that suffixes such as ccTLDs do not dispel confusing similarity where it otherwise exists.
Complainant argues that Respondent’s registration of the Domain Name presents a case of cybersquatting. Respondent’s addition of the descriptive terms “my” and “id” does nothing to lessen the confusing similarity to Complainant’s marks created by the Domain Name. Prior panels have held that the addition of the term “MY” does not dispel the confusing similarity of a domain name to a complainant’s mark. Similarly, the addition of the descriptive term “ID” cannot dispel the confusing similarity between the Domain Name and Complainant’s APPLE mark. The inclusion of these terms instead serves to increase the confusing similarity between the Domain Name and Complainant’s APPLE mark. Complainant operates a service called “My Apple ID,” which permits consumers to create a unique user name for seamless use, storage, and transfer of a user’s personal settings and content from one Apple device to another. Given the renown of Complainant’s name and Apple Marks, the relevant consumers, on seeing the Domain Name, will reasonably believe that it is related to or sponsored by Complainant. For these reasons, Respondent’s Domain Name is identical and/or confusingly similar to Complainant’s name and marks. Because the Domain Name incorporates Complainant’s famous APPLE mark in its entirety, which is clearly the most distinctive part of the Domain Name, confusing similarity should be presumed.
Rights or Legitimate Interests: Complainant states that since its rights in its name and APPLE Marks predate Respondent’s registration of the Domain Name, which is based on Complainant’s name and mark, the burden is on Respondent to establish rights or legitimate interests in the Domain Name. Here, Complainant’s APPLE Marks are so well-known and recognized that there can be no legitimate use by Respondent.
There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s name and marks. The Domain Name is not, nor could it be contended to be, a name or nickname of Respondent, or in any other way identified with or related to any rights or legitimate interests of Respondent in accordance with paragraph 4(c)(ii) of the Policy. In addition, Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. Instead, Respondent is using the Domain Name to host a web site that provides multiple links to products and services unrelated to Complainant. Upon information and belief, Respondent derives a financial benefit in the form of click-through revenue from the web traffic that is diverted through the Domain Name to linking portals. On information and belief, Respondent is reaping financial benefits from using GoDaddy’s CashParking service, a revenue program that pays domain name owners for the traffic that they direct to links on the websites hosted at their domains. The Domain Name uses GoDaddy’s CashParking name servers. That the sponsored links may not have been placed or generated by Respondent is of no import. Respondent, as the one who chose the Domain Name and registrar, is fully responsible for the use to which the Domain Name is put and, in particular, for what appears on the web page placed at the Domain Name. Respondent is acting in bad faith by leveraging Complainant’s name and mark for the purpose of monetizing the web traffic that flows through the Domain Name – traffic that is likely looking for Complainant’s website and Complainant’s “My Apple ID” service. Such use of the Domain Name does not constitute a legitimate, bona fide offering of goods or services.
Complainant contends that given the level of fame and consumer recognition that its name and APPLE Marks enjoy, it is inconceivable that Respondent was unaware of Complainant’s mark. A search of the Internet would have quickly revealed Complainant’s rights. Complainant states that Respondent was aware of Complainant’s rights when registering and using the Domain Name. In view of the extensive use and widespread fame of Complainant’s name and marks, and the fact that Respondent has no rights in them, Complainant reasonably believes that Respondent has registered and is using the Domain Name not for any legitimate noncommercial or fair use purpose, but rather to profit from the web traffic generated through the Domain Name.
Registered and Used in Bad Faith: Complainant maintains that Respondent has registered and is using the Domain Name in bad faith for commercial gain and to benefit from the goodwill and fame associated with Complainant’s name and Apple Marks. The Domain Name incorporates Complainant’s famous APPLE name and mark in their entirety. Moreover, the Domain Name was acquired long after Complainant’s name and marks became well-known. The Domain Name could not have been legitimately adopted other than for the purpose of creating an impression of an association with Complainant. Respondent’s bad faith registration and use of the Domain Name is further evidenced by the fact that the Domain Name is being used to host web pages full of multi-level pay-per-click advertising links to competitors’ products and to products unrelated to Complainant. This is being done for commercial gain by creating the impression (and, at a minimum, the initial impression) that the websites are sponsored, authorized, or associated with Complainant. Given the commercial content of the website, there can be no doubt that Respondent is attempting to profit from the web traffic generated by Complainant’s name and marks, and is thus acting in bad faith.
Complainant submits that Respondent has registered and used in bad faith other domain names based on Complainant’s marks. See Apple Inc. v. Tim Lackey, BridgeIDentity, WIPO Case No. D2013-1650. Based on all of the above, Complainant contends that it has met the requirements of the Policy by demonstrating that Respondent’s use of the Domain Name is in bad faith to unlawfully profit from it. B. Respondent
Respondent did not file a Response. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Domain Name includes Complainant’s APPLE mark, along with the word “my” and the letters “id.” Complainant has submitted evidence to show that its APPLE brand is one of the best-known brands in the world. This Panel agrees with the panel’s analysis in Apple Inc. v. Tim Lackey, BridgeIDentity,WIPO Case No. D2013- 1650, where the panel analyzed confusingly similarity with respect to the domain name , which is identical to the Domain Name except for a different Top-Level Domain suffix (“.com”). There, the panel considered that the:
“addition of the word ‘my’ and the letters ‘id’, a common abbreviation for the English word ‘identification’, does not avoid confusing similarity with the APPLE mark. ‘My’ is often used in domain names and does not serve to distinguish a domain name containing a mark from one likely to be used by the trademark owner itself. (Citation omitted.) The abbreviation ‘id’ is also not distinctive. It would not suggest that the domain name had to do with ‘apple’, the fruit, for example, whereas ‘id’, referring to digital identification, is a term commonly used with computers, smart phones, and cloud computing services. Indeed, the entire string ‘myappleid’ is identical to the name of the ‘My Apple ID’ service offered by the Complainant. Hence, the additional terms enhance rather than diminish the likelihood of confusion with the Complainant’s APPLE mark.
Accordingly, given that the terms “my” and “id,” when added to the word “apple,” accentuate rather than decrease the likelihood of confusion between the Domain Name and Complainant’s APPLE trademark, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant’s APPLE Marks are so well-known and recognized that it is hard to conceive of any legitimate use that could be made of the Domain Name by Respondent. The evidence demonstrates that Complainant has no relationship with Respondent and has never authorized Respondent to use Complainant’s APPLE mark or the Domain Name, and Respondent is not commonly known by the Domain Name. Moreover, Respondent is not making any legitimate noncommercial or fair use of the Domain Name, but instead has linked it to a pay-per-click parking site. Respondent registered the Domain Name, which is confusingly similar to Complainant’s APPLE mark as well as to the name of the Complainant’s “My Apple ID” service, and then allowed the Domain Name to be used for pay-per-click advertising that capitalizes on the trademark value related to the Domain Name.
In the face of these facts, Respondent has failed to submit any Response.
Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent has registered and is using the Domain Name in bad faith. The APPLE Marks were well-known and famous at the time Respondent registered the Domain Name incorporating the APPLE trademark. The Domain Name appears to have been chosen by Respondent for its specific reference to Complainant and its APPLE Marks and “My Apple ID” services. The “myappleid” string is quite distinctive and there is no other plausible reason for why Respondent would have chosen it, other than targeting Complainant.
Further, included in the list of circumstances that shall be evidence of bad faith in paragraph 4(b) of the Policy is the following:
“(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 web site or location or of a product or service on your web site or location.”
The record in this case shows that the circumstances for use of the Domain Name fall within this example. Complainant’s APPLE Marks are famous around the world, and the phrase “My Apple ID”, which is virtually identical to the Domain Name, is the name Complainant uses for its service permitting consumers to create a unique user name for seamless use of Complainant’s different services. The pay-per-click advertising links presented on the landing pages associated with the Domain Name concerned both Complainant’s and its competitors’ products. The Panel concludes that Respondent intended to mislead Internet users, at least initially, as to the source or affiliation of the websites associated with the Domain Name.
The Panel finds that the Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy. 7. Decision
For all 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 Complainant.
Christopher S. Gibson
Sole Panelist
Date: April 6, 2014
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