WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apple Inc. v. Private Whois Service

Case No. D2011-0929

1. The Parties

The Complainant is Apple Inc. of Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is Private Whois Service of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <ipods.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2011. On May 30, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On June 2, 2011, Internet.bs Corp. 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 June 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2011.

The Center appointed David J.A. Cairns as the sole panelist in this matter on July 7, 2011. 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.

On June 27, 2011, the Center received from the Complainant a request for permission to amend the Complaint for inclusion of further domain names as well as an Amended Complaint.

4. Factual Background

The Complainant is the owner of various trademark registrations in the United States and throughout the world, including United States trademark registrations numbers 3,497,047; 3,341,191; 3,089,360; 2,835,698; 2,781,793; and 3,741,470 for the word mark IPOD (including in a stylized form) for goods and services in various classes and based on a first use in commerce of various dates, the earliest being January 15, 2000.

The Complainant has owned the domain name <ipod.com> since October 7, 1998. The domain name <ipod.com> redirects to the Complainant’s “www.apple.com” website, which is one of the United States’ most visited websites, which offers for sale various IPOD products.

The disputed domain name was first registered on April 28, 2002. The Panel entered the disputed domain name in his web browser on July 19, 2011. The disputed domain name redirected to the website address of “www.mp3gold.com”. This page offered sets of links called “related searches”, including links entitled “iPod”, “iPod Touch”, “iPod nano” and “iPods” as well as services such as “DJ Equipment”, “Multimedia Web Design”, “Web Hosting” and “Gold diamond Jewelry”. Clicking on these links led to pages with a list of “web results” and also advertisements relating to the search. Some of the web results were directly related to IPOD products or information, and others were completely unrelated (for example, web results for “cheapest iPod Touch” included “Gold Price Comparison” and “Cheapest Cigarettes on Earth”.

5. Parties’ Contentions

A. Complainant

In its Complaint, the Complainant states that it designs, manufactures and markets personal computers, mobile communications devices, and portable digital media players as well as a variety of digital software, services, peripherals and networking solutions. Its products and services, which are advertised and sold worldwide, include IPOD portable media players, IPHONE communication devices and IPAD mobile tablet computers, MAC computers, and a variety of Internet retail services including ITUNES.

The Complainant states that it has extensively used the trademark IPOD since at least as early as October 2001 in connection with IPOD portable electronic media players. It states that the IPOD device is a very successful portable media player, and the IPOD trademark is world-famous. It states that as of September 2010 the IPOD device was the most popular handheld media player in the world, with over 270 million units sold.

The Complainant states that the IPOD trademark has acquired a wide degree of public recognition, fame and distinctiveness as a symbol of the sort of high quality goods and services offered by the Complainant, and embodies valuable reputation and goodwill belonging exclusively to the Complainant.

The Complainant states that the disputed domain name is identical and/or confusingly similar to the Complainant’s well-known IPOD trademark, as it fully incorporates the IPOD trademark in its entirety. It states that the addition of the “s” to pluralise the Complainant’s trademark in the disputed domain name does nothing to dispel this confusion. It states that given the renown of the IPOD trademark, as well as the Complainant’s extensive use of the IPOD trademark, means that consumers on seeing the disputed domain name will reasonably believe that it is related to the Complainant.

The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name. It states that there is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademark. It states that the Respondent’s lack of legitimate interest in the disputed domain name is confirmed by the nature of the Respondent’s use. Since acquiring the disputed domain name the Respondent has simply sought to profit from it, and has never used the disputed domain name in connection with bona fide offering of goods or services or for noncommercial fair use. It states that when any Internet user enters the disputed domain name, the user is connected to a click-through linking portal. A number of “sponsors’ listings” and “related searches” in the portal reference the Complainant’s trademark, including the IPOD trademark, as well as references to generic products and services in competition with the Complainant’s IPOD device. When Internet users click on any other sponsored link they are directed to other websites unrelated to the Complainant. The Complainant states that it believes that the Respondent derives a financial benefit in the form of pay-per-click revenue from the web traffic that it is diverted through the disputed domain name to the linking portal and sponsored links. Specifically the linking portal appears to be generated by the domain monetization service Fabulous.com (operated by Dark Blue Sea) and also to use Google’s AdSense’s domain monetization tools.

The Complainant concludes by stating that in view of the extensive use and widespread fame of the Complainant’s IPOD trademark, and the fact that the Respondent has no rights in it, there can be no doubt that the Respondent has registered and is using the disputed domain name not for any legitimate noncommercial or fair use or purpose, but rather to profit from web traffic generated through the disputed domain name. It states that such use of the disputed domain name does not constitute a legitimate, bona fide offering of goods or services, referring to various UDRP decisions.

The Complainant also states that the Respondent has acquired and is using the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s trademarks. It states that the Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the disputed domain name purposefully incorporates the well-known IPOD trademark, and was registered by the Respondent well after the Complainant’s trademark became well-known to consumers in the trade. Such registration and use of the disputed domain name is in itself a form of opportunistic bad faith, referring to various UDRP decisions. The Complainant also states that the Respondent’s bad faith acquisition and use of the disputed domain name is evidenced by the fact that the Respondent has used and is using the disputed domain name to divert web traffic to a linking portal and sponsored links for commercial gain, in circumstances where the disputed domain name creates the impression that it is related to or affiliated with the Complainant. Finally the Respondent’s bad faith acquisition is further evidenced by the fact that the Respondent has failed to identify itself, choosing instead to conceal its address and contact information by using an identity protection service in connection with the disputed domain name. The Complainant states that such concealment of true registering contact information, in combination with the Respondent’s exploitation of the IPOD trademark for commercial gain is further evidence of bad faith.

The Complainant requests that the disputed domain name be transferred to the Complainant.

The Complainant subsequently filed an Amended Complaint, seeking to add four additional domain names. In light of the decision on the admissibility of the Amended Complaint (see below) the Panel does not summarize its further contentions.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The first issue, of a procedural nature, is the Complainant’s request to include four additional domain names in the proceedings also registered by the Respondent, and consequently to file an Amended Complaint. The four additional domain names are <appleipods.com>, <ipodhack.com>, <iphhone.com>, and <iphine.com>. The Complainant states that it only discovered that the Respondent had registered these domain names on June 22 and 24, 2011. The Complainant referred to UDRP decisions where the panel had allowed the amendment of the Complaint to include additional domain names. The Complainant stated its application will cause no delay in the proceeding or any undue prejudice to the Respondent. It also referred to judicial efficiency and the common registrar for all of the domain names.

This application from the Complainant was received after registrar verification, notification of the Complaint to the Respondent, and commencement of the proceedings, and just one day before the due date for the Response in respect of the disputed domain name <ipods.com>.

The circumstances where additional domain names may be added to an existing complaint is considered in paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The WIPO Overview 2.0 draws a distinction between the addition of domain names prior to the formal commencement of proceedings, and after notification of the Complaint to the Respondent. In the latter circumstances (which apply here) the WIPO Overview 2.0 states that “Any request for addition of domain names to a complaint only after it has been notified to the respondent and the proceeding has been formally commenced on that basis would normally need to be addressed by the panel (on appointment). Panels have in some cases been reluctant to grant such requests, where received only after appointment. Where panels grant such requests, they would typically order a partial recommencement of the procedure to allow a proper response opportunity in relation to the added domain names.”

The cases referred to in WIPO Overview 2.0 include Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337, referred to by the Complainant. In this case, the panel allowed the addition of a domain name to a case involving five domain names. All of the domain names in this case involved the same trademark (AIR FRANCE). The addition of the domain name was conditional on notification of the addition of the domain name to the respondent, with provision for the respondent to file a response to the new domain name, with consequential timetable modifications.

In Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547, the panel refused the addition of a domain name involving the same trademark, even though the additional domain name had not been registered until after the original complaint had been filed. The panel considered that the addition of the domain name was unfair to the respondent, rejecting the possibility that this unfairness might be remedied by modifications to the procedure and timetable:

“However, the Panel must reject the request for an amendment even in these circumstances, because the addition of a new domain name after a sole panelist has been appointed is inconsistent with the Panel’s duty to ensure the Parties are treated with equality. Procedural equality means that each party must have the option of having the dispute determined by a three member panel (see paragraph 3(b)(iv), 5(b)(iv) and (v) and 5(c) of the Policy). However, if the amendment to the Complaint were now allowed, and a new domain name added, then the Respondent would have lost the right to have the dispute regarding the additional domain name determined by a three member Panel.

This procedural problem cannot readily be solved by providing an opportunity for the Respondent to object to the addition of a new domain name on the basis that it wishes to exercise its right to a three member panel in respect of the added domain name, as such a course further complicates the procedure, and is likely to create additional delay. In this Panel’s view the course most consistent with paragraph 10 of the Policy, and the principles of the UDRP system, is generally not to permit the addition of new domain names to a Complaint after a single member panel has been appointed. This might appear hard to a complainant, as in the present case, not guilty of any omission, oversight or delay, but is an inherent limitation in the simplified dispute resolution system for domain names. It is, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires.”

The Panel here applies the reasoning in Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547. The amendment of an existing complaint at this stage to include additional domain names potentially compromises the respondent’s procedural rights. It is particularly problematic in the present case where the application involves four additional domain names, registered (and therefore potentially known to the Complainant) prior to the original Complaint, as well as two additional trademarks (namely APPLE and IPHONE, where the existing complaint is based on the IPOD trademark).

For these reasons the Complainant’s application to join additional domain names is refused.

Turning to the disputed domain name and the original Complaint, the Panel is required to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant owns the registrations of the IPOD trademark in the United States, referred to above.

The disputed domain name is not identical with the IPOD trademark, but does incorporate this trademark entirely, adding only the plural “s”.

The disputed domain name is confusingly similar to the IPOD trademark for the following reasons: (i) IPOD is an invented word and is inherently distinctive; (ii) The addition of the letter “s” does not create a new or distinctive word; rather it creates a plural and so emphasises the IPOD trademark; (iii) IPOD and “ipods” are visually and aurally similar and could easily be confused (see Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968).

Therefore the addition of the plural “s” does not avoid a confusing similarity between the IPOD trademark and the disputed domain name, and so the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interest of the Respondent in the disputed domain name: (i) there is no evidence before the Panel that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the IPOD trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) there is no evidence of legitimate noncommercial or fair use of the disputed domain name.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through advertisements and sponsored links through domain monetization services, and also that the use of the disputed domain name to attract Internet users to a competing website by deception (that is, by suggesting the website relates to the IPOD trademark when in fact it offers for sale directly or through links unrelated and competing products and services) is not a use in connection with a bona fide offering of goods or services.

Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Thus, the second element of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

In particular, paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website 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 its website, it should be taken as evidence of the registration and use of the disputed domain name in bad faith.

The Panel finds that the evidence establishes bad faith under Paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is clear from the advertisements on its website. The Panel also accepts the Complainant’s submission that the Respondent generates pay-per-click revenue from the listings that appear on its website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the IPOD trademark, and the evidence of the substantial public recognition and goodwill associated with the IPOD trademark.

Further, the Respondent is using the IPOD trademark to sell competing and unrelated products and services, and it is bad faith to use a trademark in this way (see, for example, Daimler AG v. William Wood, WIPO Case No. D2008-1712).

As a result, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 disputed domain name <ipods.com> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist
Dated: July 21, 2011