The Complainant is Jonathan Ive of California, United States of America, represented by Edwards Angell Palmer & Dodge UK, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Harry Jones of London, United Kingdom of Great Britain and Northern Ireland, represented by Altenburger, Switzerland.
The disputed domain names <jonathan-ive.com>, <jonathanive.com>,
<jony-ive.com> and <jonyive.com> are registered with SRSPlus.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2009. On March 9, 2009, the Center transmitted by email to SRSPlus (a wholly owned subsidiary of Network Solutions LLC) a request for registrar verification in connection with the disputed domain names. On March 9, 2009, SRSPlus transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all four disputed domain names 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 March 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2009. The Response was filed with the Center on April 6, 2009.
On April 7, 2009, the Center advised the Respondent's representative that the Response as filed substantially exceeded the 5,000 word limit prescribed by the Rules and Supplemental Rules. The Center invited the Respondent to submit a revised Response which complied with the word limit by April 14, 2009. The Respondent filed a revised Response on April 14, 2009.
The Center appointed John Swinson as the sole panelist in this matter on April 21, 2009. 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.
The Complainant is the Senior Vice President of Industrial Design at Apple, Inc. He was the principal designer behind the iMac, iPod and iPhone. In October 2008, the Complainant filed two Community Trade Mark applications for JONATHAN IVE and JONY IVE. These marks are yet to register.
On the <jonathanive.com> website, the Respondent notes:
“I'm a web designer living in the UK, and I've been a huge fan of Jonathan Ive since I first used an iMac G3 in college in 1998.
I set up this site as a university project in 2004, back when the iPod still had a black and white screen and the iPhone didn't even exist!
These days I'm busy with work and other projects but I still try and update the site every now and again. My aim is for the site to be a great resource for anyone wanting to find out a little bit about the incredbible [sic] design talent of Jonathan Ive - I hope you enjoy it!
On February 12, 2008, the Respondent sent the Complainant's employer an email regarding the <jonothanive.com> domain name. The email states:
- The Respondent is busy and he has not had much time to devote to <jonathanive.com>.
- While the Respondent would like to put some time into the site and develop it into a comprehensive Jonathan Ive resource it is not something that would be done immediately.
- The Respondent may be willing to let the domain name go, but it represents something he has built up over the preceding four years.
- The website makes significant revenue from advertising and has the potential to generate significant more once developed.
- The website also ranks very well on Google.
A further email from the Respondent to the Complainant's employer dated February 24, 2008, states that:
- The Respondent doesn't particularly need or want to sell the site.
- The Respondent is aware that Apple acquired the domain name iphone.com for over $1 million.
- The <jonathanive.com> site would be valuable in light of Apple's public relations, and the Respondent would be looking to sell for $400,000. This represents the true value of the site and is fair to both parties.
The Complainant makes the following contentions:
The name of the Complainant (expressed as JONATHAN IVE or JONY IVE) is internationally renowned within the field of industrial design, and relates to one of the world's finest industrial designers (of laptops, hand held computers and mobile telephones). In particular, the Complainant is identified as the principal designer of the iMac, Apple iBook, iPod and iPhone. He has won a significant number of awards and accolades for his designs (including an appointment as a Commander of the Order of the British Empire (CBE) from Queen Elizabeth II of England).
The Complainant has substantial unregistered rights in his name which precede the first domain name registration. People in the industrial design industry and the public at large have come to expect particular quality in a JONATHAN IVE/JONY IVE design. The Complainant's name performs the function of a trade mark.
The Complainant is a full time employee of Apple Inc. (acting as Senior Vice President of Industrial Design, reporting directly to the CEO). The Complainant has been in charge of the design team since 1996. Even though the employer exploits the commercial benefit of the Complainant's trade marks, this does not diminish the value in them. It does not prevent the Complainant from using the marks for commercial benefit. The Complainant's employer has been in discussions with the Respondent on the Complainant's behalf.
The Complainant has been approached by other manufacturers (such as car and camera manufacturers) to design items for them. The Complainant also designed the character Eve in the Pixar movie “Wall-e”, and an award winning book cover.
The Complainant has also filed Community Trade Mark applications for JONATHAN IVE and JONY IVE (both filed on October 21, 2008).
The disputed domain names were registered on March 25, 2004 (jonathanive.com), February 27, 2007 <jonathan-ive.com>, <jonyive.com> and February 7, 2008 <jony-ive.com>. They are identical to the name of the Complainant, including the shortened name “JONY” by which the Complainant is equally renowned. The addition of a hyphen does not render the marks dissimilar.
There is no evidence that the Respondent has used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute.
The Respondent has never been commonly known by the disputed domain names, and has not acquired trade mark rights in these terms.
The Respondent is not making legitimate non-commercial or fair use of the disputed domain names. The Respondent uses three of the disputed domain names to direct traffic to the principal website located at <jonathanive.com>. This website hosts Google advertisements, so visitors to the website are likely to follow the links and earn revenue for the Respondent through pay-per-click advertising.
The Respondent has admitted his commercial interest in the disputed domain names by stating in correspondence with the Complainant that the advertising revenue from the site is considerable. The Respondent earns advertising revenue as a direct result of the mistaken belief by Internet users that the website is owned or controlled by the Complainant.
The Respondent was aware of the trade mark JONATHAN IVE and JONY IVE prior to registration of the disputed domain names. The website located at “www.jonathanive.com” states that the Respondent has been a fan of Jonathan Ive since 1998.
The disputed domain names are not designed to attract Internet users for any purpose other than providing information about the Complainant. The Complainant's name is not common, and any person typing the domain name directly into a web browser would be seeking the Complainant alone.
The Respondent did not launch the “jonathanive.com” website until February 2006 (almost two years after the disputed domain name was first registered). The inference is that the Respondent did not initially register the disputed domain names for a legitimate purpose, but rather intended to exploit the reputation of the Complainant.
The Respondent has placed a disclaimer on the “jonathanive.com” website for some of the time since it was launched. Use of a disclaimer is not sufficient to create a defence to bad faith.
Internet users are attracted to the “jonathanive.com” website by the celebrity name. The Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Respondent has previously assured the Complainant that any personal correspondence directed to the website would be forwarded to the Complainant however this has not been done.
The Respondent has tarnished the Complainant's reputation through the disputed domain names. Members of the public are encouraged to leave comments and questions on the website. As the website is out of the Complainant's control, these may go unanswered or answered inaccurately, which may result in the public developing a negative impression of the Complainant. The poor quality and design of the website, the lack of accuracy and outdated information also tarnish the Complainant's reputation. As the Complainant is a leading designer, this may reflect on his professional abilities and reputation. The operation of the disputed domain names is damaging to the Complainant, his privacy and reputation.
The Respondent has demanded USD400,000 for transfer of the disputed domain names, even though he had previously been offered USD10,000 by Apple Inc. This demonstrates that the disputed domain names were registered primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registrations to the Complainant, for valuable consideration in excess of the Respondent's out of pocket costs.
The Respondent registered the <jonathan-ive.com> and <jonyive.com> domain names contemporaneously while having discussions with the Complainant's employer regarding the <jonathanive.com> domain name. This was done as a direct result of the approach made to the Respondent, to bar the Complainant from registering any “.com” registrations and to apply more pressure to obtain more money from the Complainant. The Respondent then registered the fourth domain name <jony-ive.com>, to deprive the Complainant as completely as possible from owning any “.com” registrations related to his name, increasing the pressure further on the Complainant to settle for a larger amount. The Complainant has been prevented from reflecting his rights in a corresponding domain name by the monopoly established by the Respondent.
The Respondent makes the following contentions:
The Complainant's fame and talent are not sufficient to establish a common law trade mark. The Complaint fails to show that the Complainant's name has been used in trade or commerce for the sale of any products or services. The names “Jonathan Ive” and “Jony Ive” have not been used as a distinctive identifier of associated goods or services, and have not acquired secondary meaning or sufficient goodwill that could suffice to pass the test for common law trade marks. The fact that both names are used interchangeably is confusing and demonstrates that there is not one distinctive mark under which any product could be recognised.
The Complainant's name never appears on any Apple products or services. No reference is made to the Complainant on packaging or marketing materials. The Complainant's employer has a corporate strategy which minimises the contributions of individual designers, by labeling all products as “designed by Apple in California”. It is therefore not possible to claim that JONATHAN IVE or JONY IVE performs the function of a trade mark. Each component of the names (“Jonathan”, “Jony” and “Ive”) are not inherently distinctive.
The Complainant only filed its Community Trade Mark applications in October 2008, after Apple Inc. had tried to coerce the Respondent into assigning the disputed domain names in July 2008.
The Respondent has a clear right and legitimate interest in the disputed domain names. In particular, the Respondent used the disputed domain names before any notice of a dispute arose, as an educational fan site.
The Respondent obtained the disputed domain name <jonathanive.com> in 2004, before any allegation of trade mark rights existing in the Complainant's name were raised. The Respondent launched his fan site in January 2006, which is also before any dispute existed. The Complainant and the Respondent spoke for the first time in April 2008, at which time the Respondent was unwilling to sell the disputed domain names. This conversation did not constitute a dispute. When the Complainant and Respondent spoke, an agreement was reached that the Respondent would give the Complainant a right of first refusal to purchase the disputed domain names, should the Respondent ever tire of managing the site. A dispute only arose in July 2008, when the Complainant's solicitors wrote to the Respondent alleging an action in passing off. This came two years after Apple Inc. had approved the Respondent's fan site.
The Respondent and his fan site have become commonly known by the disputed domain name <jonathanive.com>. This website is well established and regarded, according to Google search ranking and Wikipedia. The Respondent receives emails via the website addressed to the Respondent personally. He has thus become commonly known by the disputed domain names and has acquired a right in them.
The website is a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue. The Respondent has been using the domain names to produce an educational fan site, which constitutes legitimate and fair use. The Respondent has never sought to sell the disputed domain names. He reluctantly agreed to name a possible sale price in February 2008 after he was threatened with litigation. He mentioned a high amount in order to dissuade Apple Inc. from contacting him further. The Respondent expressly stated that he did not need or want to sell the disputed domain names.
The Respondent's legitimate interest in the disputed domain names has been acknowledged by the Complainant on at least three previous occasions where the parties discussed the contents of the Respondent's fan site and the Complainant approved the contents. Apple Inc. has admitted that the fan site does not tarnish its trade marks, and this is evidence from the fact that the website advertises Apple Inc.'s own products and provides links to its online store.
The Respondent regularly updates the website. The information on the website was properly researched. While Google ads are used on some pages, they are not for the sale of products or services belonging to the Complainant. The advertisements have generated an amount of less than USD500 since February 2006, and hardly amounts to commercial activity. Such ads are clearly not central to the site.
Apple Inc. first sought to acquire the Respondent's disputed domain names in February 2008. Prior to this date the Complainant or Apple Inc. never challenged the Respondent's rights or legitimate interests. Rather, other employees of Apple Inc. acknowledged that the Respondent was operating a legitimate fan site. The Respondent was asked to add a clearer disclaimer, and this was done by the Respondent immediately (after seeking and obtaining approval from Apple Inc.).
The Respondent is not a competitor of the Complainant, and the disputed domain names were not registered by the Respondent primarily to disrupt the Complainant's business. The Respondent's fan website cannot be perceived as having any detrimental impact on the Complainant's business, or to have diverted any Internet traffic away from it. The website does not lead to any disreputable sites or products, and Apple Inc. actually benefits from and advertises on the fan site using Google advertisements.
As discussed above, the Respondent did not acquire the disputed domain names primarily for the purpose of selling, renting or transferring them to the Complainant. The Complainant was relatively unknown in the United Kingdom when the Respondent registered the first disputed domain name in 2004. This was done as a school assignment and was used as a fan site from January 2006. At that time there was no way of knowing that the Complainant's name would be used as a trade mark. In April 2006, when Apple Inc. contacted the Respondent, the only issue was printing a disclaimer - there was no discussion about selling or transferring the domain name. The possible sale of the disputed domain name was first raised by Apple Inc. in February 2008. No allegations of impropriety on the part of the Respondent were raised by Apple Inc. or the Complainant at this time.
The Respondent never obtained the disputed domain names to prevent Apple Inc. or the Complainant from using its trade marks or obtaining related domain names. The Respondent was not aware in 2004 or up until receiving the Complaint in March 2009 that the parties were asserting trade mark rights in the words “Jonathan Ive” or “Jony Ive”.
The Respondent has never sought to gain commercially from the “jonathanive.com” website. The website is a fan site, and an educational, loss generating activity, which the Respondent has conducted as a hobby and which he wishes to enjoy in the future. There is no likelihood of confusion, as the site is written in the third person and is clearly identified as a fan site managed by the Complainant. The disclaimer is unambiguous. The website promotes the Complainant and his products - it does not tarnish the Complainant's name, nor any trade marks that Apple Inc. has rights in.
The Complaint was brought in bad faith and constitutes an abuse of the UDRP administrative proceedings, as an attempt at reverse domain name hijacking, or to harass the Respondent into giving up his fan site. This is evident from the fact that the disputed domain names were registered prior to the Complainant's trade mark application. The Complainant has failed to make a sufficient case under each of the three elements.
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain names registered by the Respondent are 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 with respect to the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied.
This element requires the Complainant to prove that he owns trade mark rights, and that the disputed domain names are identical or confusingly similar to that trade mark.
The Panel notes that the UDRP does not specifically protect personal names. However, that is not to say that an administrative proceeding concerning an individual personality name will not be successful per se. If a personal name has been trade marked, it can serve to satisfy Complainant's assertions of trademark rights under the first element.
The Complainant in this case has filed two Community Trade Mark applications (for JONATHAN IVE and JONY IVE). These applications were filed in October 2008. As they are pending applications, they are not sufficient to show registered trade mark rights (see for example, Donald J. Trump v. eStore of New York, WIPO Case No. D2007-0119).
Of course, a complainant also has the right to claim a common law mark where there is no registered trade mark. The usual test to ascertain common law rights applies, namely, considering whether the trade mark has acquired secondary meaning, and become a distinctive identifier associated with the complainant's goods and services (see for example, Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786). In the case of personal names, the complainant must show that its name/trade mark has been used in trade or commerce. Evidence of the complainant's reputation or renown (on its own) will not necessarily be sufficient to demonstrate unregistered trade mark rights.
Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540 sets out a useful summary of cases where well-known persons have brought complaints under the UDRP. Previous complainants in these type of cases include authors, actors, artists, performers, athletes, royalty, politicians and business people.
In this case, the Complainant is a Senior Vice President of Industrial Design at Apple, Inc. He is noted as the principal designer of the iMac, Apple iBook, iPod and iPhone (items which are well-known and widely used in today's society) which he designed in the course of his employment with Apple Inc. The Complainant has won (in his own right) a number of significant awards, and received many accolades as a talented designer. The majority of these awards and accolades relate to work carried out by the Complainant for his employer, Apple Inc.
The Respondent openly admits that the Complainant is famous. However, as discussed above, that is not sufficient to succeed under the first element. The question becomes whether the “Jonathan Ive” and/or “Jony Ive” name is used by the Complainant in trade and commerce.
The Respondent alleges that products for which the Complainant is famous (such as iPods and iPhones) are marketed, promoted and sold under the Apple brand. The Complainant's personal name is not referenced on the packaging or labeling for these products. This argument appears factually correct, and indicates that the Complainant's name/trade mark is not readily associated with the goods for which he is famous. In the Panel's view, many people who purchase “i” Apple products around the world would not be aware of the Complainant or the fact that he designed those products.
A declaration of the Complainant, states that the Complainant has been approached on multiple occasions to design other products (such as cameras, cars or other luxury brand items). He has also been approached by movie directors who ask for assistance in production and set design, and is regularly offered paid speaking engagements. The Complainant alleges that this evidence demonstrates a brand of real value, and recognition by the public.
However the Complainant admits that he rarely accepts these offers. The Complainant's declaration states:
“On only a couple of occasions, as favours to friends have I ever accepted these invitations.”
“I only occasionally accept speaking engagements and only accept payment of direct expenses.”
“I am a very private person. My reputation has been established by the work I do, not through self-publicity. I do not usually give interviews … I seek to avoid publicity.”
Accordingly, despite the many offers that are made to the Complainant to engage in work outside of Apple Inc., it appears that the Complainant rarely accepts such invitations. The Complainant's work of note which is not directly associated with Apple Inc. is designing a character in a Pixar/Disney computer animated movie “Wall-e” and designing a book cover.
The evidence provided indicates that the Complainant (and Apple Inc.) do not promote the Complainant's name as a brand or trade mark, and therefore do not use it in trade or commerce. Firstly, because the Complainant's work for which he is most famous is publicly recognised and primarily attributable to Apple Inc. rather than the Complainant. Secondly, despite having the opportunity to pursue individual endeavours outside his employment, which under certain circumstances might be branded under his personal name, the Complainant has made a conscious decision not to do so. In fact, the Complainant has actively sought to keep his personal name out of trade and commerce. As was the case in The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohen, Profile.net and God.Info, WIPO Case No. D2002-0184: “Complainant is careful to avoid any suggestion that he has exploited his name for ‘materialistic' or ‘commercial' purposes.”
The following comments from the Jerry Falwell case are similarly applicable here:
“The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services. … Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use as a trademark. On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the ‘Second WIPO Report'). In that report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. ‘Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to Society.' Second WIPO Report, paragraph 199.”
For the foregoing reasons, the Complainant has failed to establish that he has unregistered trade mark rights in his name, and accordingly the first element has not been met.
The Respondent submitted that the Complainant brought the Complaint in bad faith, which constitutes reverse domain name hijacking. The Complainant's lack of success is not of itself sufficient to constitute reverse domain name hijacking. (See Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0535).
The Panel has some sympathy for the Complainant's case, particularly in relation to the second and third elements which were not discussed in this decision. The issue as to whether a person has trade mark rights in their personal name is a difficult one, and there are many previous panel decisions based on diverse records which go either way. Accordingly, in the Panel's view, it would not have been clear to the Complainant from the outset that he had no chance of success. The Panel declines to make a finding of reverse domain name hijacking in this instance.
A different result under this element could occur if or when the Complainant's Community Trade Marks are registered, or if for instance Apple Inc., takes different steps in relation to the branding and use of Complainant's personal name. In such circumstances, the Complainant may be entitled to file another UDRP case (see Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082).
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: May 5, 2009