The Complainant is Apple Inc. of Cupertino, California, United States of America (“U.S.”) represented by Kilpatrick Townsend & Stockton LLP, U.S.
The Respondent is Contact Privacy Inc. / Grand Slam Co. of Toronto, Ontario, Canada, and Juneau, Alaska, U.S., respectively.
The disputed domain names <applemudic.com>, <applemusoc.com>, <applenusic.com>, <applwmusic.com>, <appplemusic.com>, <wwapplemusic.com>, <wwwapplemusic.com>, <wwwipodlounge.com>, <wwwlapplemusic.com> (collectively the “Domain Names”) are registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 20, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 23, 2012.
The Center verified that the Complaint together with the amended 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 April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.
The Center appointed Warwick Smith as the sole panelist in this matter on May 21, 2012. 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 the absence of a Response, the Panel has checked the record and is satisfied that the Complaint has been properly notified to the Respondent.
The Complainant is a corporation based in Cupertino, California. It designs, manufactures, and markets a range of personal computers, mobile communication and media devices, and portable digital media players. It also sells a variety of related software, services, peripherals, networking solutions and third-party digital content, all of which are advertised and sold worldwide. Its APPLE brand is one of the best known brands in the world. The Complainant’s Mac line of desktop and portable computers, and its iPod (portable music and video player), iPhone (mobile telecommunication device), and iPad (tablet computing device), in particular, have achieved a worldwide reputation.
The Complainant holds numerous trademark registrations around the world for its APPLE mark. For example, it is the registered proprietor of the trademark APPLE in the U.S. for computers and computer programs recorded on paper and tape, under U.S. registration number 1078312. That registration has been in effect since November 29, 1977.
The Complainant is also the registered proprietor of an APPLE word mark registered in Canada, with effect from August 11, 1980, in respect of computers, computer software, and related goods.
The Complainant holds U.S. registration number 2835698 for the word mark IPOD, covering portable and hand held digital electronic devices for recording, organizing, transmitting, and manipulating and reviewing audio files. The application for this mark was filed on October 18, 2001, and it proceeded to registration on April 27, 2004.
The Complainant introduced its iPod device to the market in October 2001. In introducing the new product, the Complainant’s then chief executive officer, the late Steve Jobs, stated that: “With iPod, Apple has invented a whole new category of digital music player …”.
The Complainant advertises and promotes its trademarked products through its website at “www.apple.com” (“the Complainant’s Website”). It also owns the domain name <ipod.com>, which redirects to the Complainant’s website.
The Domain Name <wwwipodlounge.com> (“the ipod Domain Name”) was created on June 29, 2004. All of the other Domain Names (“the apple Domain Names”) were created on May 16, 2003.
The Complainant says that the Domain Names have all resolved to the website at “www.mysportsbook.com”, which offers gambling services which are unrelated to the Complainant or its APPLE or IPOD marks. The Complainant says that there is no relationship between it and the Complainant such as might give rise to any license, permission, or other right to own or use a domain name incorporating the Complainant’s APPLE or IPOD marks.
The Complainant produced archived material from the “Domain Tools” website, showing that the apple Domain Names have all resolved to the <mysportsbook.com> website for some years (in some cases, the archived material went back as far as 2008).
The Complainant alleged that the Respondent has been an unsuccessful respondent in a number of administrative proceedings under the Policy. Prior decisions referred to by the Complainant include The Sporting Exchange Limited v. Grand Slam Co., WIPO Case No. D2003-0800 (expressly recognizing a pattern of bad faith registrations); Hilton Group Plc v. Grand Slam Co., WIPO Case No. D2003-0136 (again, recognizing a pattern of bad faith registrations by the Respondent); National Collegiate Athletic Association v. Grand Slam Co., NAF Claim No. 1222410; Harrah’s Las Vegas, Inc. v. Grand Slam Co., NAF Claim No. 114339; InfoSpace, Inc. v. Grand Slam Co. c/o Jerry Stein, NAF Claim No. 223027; Expedia, Inc. v. Grand Slam Co., NAF Claim No. 1361168, and Apple Inc. v. Contact Privacy Inc. Customer 016745298 / Grand Slam Co., WIPO Case No. D2011-1327.
The Panel’s Attempts to Access Websites at the Domain Names
The Panel was unable to access a website at any of the Domain Names when he attempted to do so on June 4, 2012.
The Complainant contends:
1. Each of the Domain Names is identical or confusingly similar to one of the Complainant’s marks. The Domain Name <wwwipodlounge.com> is confusingly similar to the Complainant’s IPOD mark, and each of the other Domain Names is confusingly similar to the Complainant’s APPLE mark. In each case the mark itself (or a close variant of it) has been included within the corresponding Domain Name. The addition of generic terms such as “lounge” does nothing to dispel the confusion, and the addition of the letters “www”, or “ww”, are insignificant variations which do nothing to obviate the confusing similarity between the relevant Domain Name and the Complainant’s APPLE mark (or IPOD mark in respect of the Domain Name <wwwipodlounge.com>).
2. The Respondent has no rights or legitimate interests in the Domain Names. The Complainant relies on the following:
(i) The Complainant’s rights in its APPLE and IPOD marks predate the Respondent’s acquisition of the Domain Names.
(ii) There is no relationship between the Complainant and the Respondent which might have given rise to any license, permission or other right to use the Complainant’s marks in a domain name.
(iii) None of the Domain Names is the name or nickname of the Respondent.
(iv) The Respondent has been using the Domain Names to derive financial benefit, by diverting Internet traffic through the Domain Names to the gambling website at “www.mysportsbook.com”. This use of a domain name by the Respondent (redirecting Internet traffic to a gambling website) has been held to be not a bone fide or legitimate use of a typo-squatted domain name – see Expedia Inc v. Grand Slam Co (supra).
(v) On information and belief, the Respondent has never used the Domain Names in connection with a bona fide offering of goods or services, nor made a legitimate noncommercial or fair use of the Domain Names. In the past, the Respondent has consistently generated improper profits from redirecting traffic to the gambling services website.
3. The Respondent acquired and is using the Domain Names in bad faith. The Complainant relies on the following:
(i) The Respondent has purposefully incorporated the Complainant’s well-known APPLE or IPOD marks into the Domain Names well after those marks had become well known to consumers and to the relevant trade. Such registration and use of the Domain Names is, in and of itself, a form of opportunistic bad faith (citing, among other cases, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
(ii) The Respondent’s use of the Domain Names creates the impression that the Domain Names are related to or affiliated with the Complainant. The Respondent has created that impression in order to divert Internet traffic to the gambling services website, and it is reasonable to infer that the Respondent profits from the redirected Internet traffic (citing InfoSpace, Inc v. Grand Slam Co. c/o Jerry Stein (supra)).
(iii) The Respondent’s pattern of registering and using domain names incorporating the marks (or variations thereof) of third parties, to redirect Internet users to gambling websites for profit. The previous UDRP decisions involving the Respondent are clear evidence of a pattern of conduct by the Respondent of registering and using domain names in bad faith.
(iv) The Respondent’s bad faith is further evidenced by the fact that it failed to identify itself, choosing instead to conceal its address and contact information by using an identity protection service. Such concealment of the true registrant’s contact information, in combination with the exploitation of the Complainant’s marks for commercial gain, is further evidence of bad faith (citing Societé Nationale de Radiodiffusion Radio France v. France Info, WIPO Case No. D2002-1052).
(v) The fact that the Respondent has targeted the Complainant is obvious from the overwhelming fame of the Complainant’s marks, and the number of Domain Names registered by the Respondent incorporating those marks.
The Respondent did not reply to the Complainant’s contentions.
What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, in the absence of exceptional circumstances, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g.. by failing to file a response), as the Panel considers appropriate.
The Complainant has proved that it is the registered proprietor of the marks APPLE and IPOD, in a number of jurisdictions around the world.
It has also shown that it has a very substantial global presence in the music industry, primarily derived from the worldwide success of its IPOD device, and its ITUNES software and store.
According to the consensus view of WIPO UDRP Panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition – “WIPO Overview 2.0”), the first element of paragraph 4(a) of the Policy serves essentially as a standing requirement. On the question of confusing similarity, the authors of WIPO Overview 2.0 state:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive […] terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name[.]”
In this case, the Complainant’s APPLE mark is included in its entirety in the following apple Domain Names:
(i) <applemudic.com>
(ii) <applemusoc.com>
(iii) <applenusic.com>
(iv) <wwapplemusic.com>
(v) <wwwapplemusic.com> and
(vi) <wwwlapplemusic.com>
In each case, the APPLE mark is followed by the common dictionary word “music”, or a close misspelling of that word. In three of these Domain Names, the expression “Apple music” is preceded by short combinations of letters in which the letter “w” predominates. In all of these cases the Complainant’s APPLE mark is clearly recognizable as such within the Domain Name.
In the foregoing circumstances, the Panel is satisfied that each of the apple Domain Names listed (i) to (vi) above is confusingly similar to the Complainant’s APPLE mark.
The apple Domain Names <applwmusic.com> and <appplemusic.com>, are so close to <applemusic.com> that the same result must follow. Changing the “e” in “Apple” to a “w”, and adding an extra “p”, are changes which would be barely noticeable to many Internet users, and those changes do nothing to dispel the confusion likely to be caused by combining with the Complainant’s well-known APPLE mark a common word (“music”) which is descriptive of one of the very commercial fields in which the Complainant is a global player. The Panel concludes that these two Domain Names are also confusingly similar to the Complainant’s APPLE mark.
The remaining Domain Name is the ipod Domain Name. The Complainant’s IPOD mark is included in full within the ipod Domain Name, and it is recognizable as such. It is followed by the common dictionary word lounge, and in accordance with WIPO Overview 2.0 that addition is insufficient to prevent the requisite level of threshold “Internet user confusion” from arising. That is essentially because the dominant part of the ipod Domain Name is the expression “ipod”, which is of course identical to the Complainant’s IPOD mark. The addition of the “www” at the beginning of the ipod Domain Name does not lessen the likelihood of Internet user confusion – many Internet users would be likely to misread these letters as the standard abbreviation for “world wide web”, not noticing that there is no dot between the three “w”s and the rest of the ipod Domain Name. Taking those factors into account, the Panel concludes that the ipod Domain Name is confusingly similar to the Complainant’s IPOD mark.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1, WIPO Overview 2.0, as follows:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Domain Names are all confusingly similar to trademarks owned by the Complainant. The Complainant has not authorized the Respondent to use those marks, or any marks confusingly similar to them, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business or organization operated by it, is commonly known by any of the Domain Names. The Respondent’s use of the Domain Names (linking them to a commercial betting website) has been commercial in nature, so there is no possibility that the Respondent could claim that its use of the Domain Names has been a legitimate noncommercial use, without intent for commercial gain.
The foregoing combination of circumstances is sufficient to establish a prima facie case of “no rights or legitimate interests”, so that the burden of production shifts to the Respondent to show that it has some rights or legitimate interest in each of the Domain Names. The Respondent not having filed a Response, that burden has not been discharged, and the Complainant’s prima facie proof must prevail. The Complainant has therefore sufficiently established that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel also finds this part of the Complaint proved. The Panel has no doubt that the Respondent, apparently based in Alaska, was well aware of the Complainant and its APPLE mark when the apple Domain Names were registered. The Complainant’s APPLE mark was well known around the world by the time these Domain Names were registered in May 2003, and by then the Respondent already had a history of cyber squatting, including by registering as domain names small variations of well-known trademarks, and pointing those domain names to the same gambling website to which the apple Domain Names have resolved (see the Sporting Exchange Limited and Hilton Group Plc. (supra) cases cited by the Complainant). This case appears to be part of the same pattern.
There is no obvious connection between any of the apple Domain Names and the commercial website to which they have resolved. In the absence of any explanation from the Respondent for its choice of the apple Domain Names, the Panel can only sensibly conclude that the Respondent must have been deriving some financial gain for linking the apple Domain Names to the gambling website – why else would the Respondent go to the trouble of registering the apple Domain Names, and maintaining the registrations for 9 years?
On the evidence which has been produced, the Panel is satisfied that the Respondent registered (and has used) the apple Domain Names with a view to ensnaring Internet users who made simple mistakes, typing one of the apple Domain Names into their browsers instead of the expression “Apple Music”. The Respondent’s registration and use of the apple Domain Names is fairly typical of the practice of “typo squatting”, which UDRP panels have routinely regarded as compelling evidence of bad faith registration and use (the Expedia case to which the Complainant referred is an example of a case where that view was taken by the panel). The Panel is also satisfied on the evidence produced that the Respondent has been targeting the Complainant in its registration and use of the apple Domain Names. By May 2003 the Complainant’s connection with the music industry was well-known worldwide, particularly through its iPod device. And the Respondent’s registration of the domain names <wwitunes.com> and <wwwitunes.com> on July 6, 20031, and its registration of the ipod Domain Name approximately one year later, are consistent with the Respondent having had the Complainant and its APPLE mark in mind as the particular “hook” which it would use to attract Internet users to the websites at the apple Domain Names.
The circumstances described above fall squarely within paragraph 4(b)(iv) of the Policy, and in the absence of any evidence pointing to a contrary conclusion, the Panel finds that the those circumstances provide sufficient proof of bad faith registration and use of the apple Domain Names under paragraph 4(a)(iii) of the Policy.
Similar reasoning applies with respect to the ipod Domain Name. Although the Complainant did not produce a screenshot showing that the ipod Domain Name has resolved to the website at “www.mysportsbook.com”, that allegation was clearly made in the Complaint, and in the absence of a Response the Panel is required to decide the dispute “based upon the complaint” (Rules, paragraph 5(e)). Furthermore, the Panel notes that the apple Domain Names, and all of the other domain names which the Respondent has been shown to have registered in bad faith in other cases, appear to have been pointed to gambling websites. In the absence of any challenge to the Complainant’s allegation, the Panel thinks it more likely than not that the ipod Domain Name has also resolved to a sports gambling website.
“IPod” is not the sort of expression the Respondent is likely to have thought of without knowledge of the Complainant’s IPOD product and mark, and the Panel can think of no reason why anyone would include the expression in a domain name for a gambling website, other than to falsely suggest that the website had some connection with the Complainant’s iPod product, or was endorsed by the Complainant. Gambling websites are commercial in nature, so that use of the ipod Domain Name is clearly caught by paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <applemudic.com>, <applemusoc.com>, <applenusic.com>, <applwmusic.com>, <appplemusic.com>, <wwapplemusic.com>, <wwwapplemusic.com>, <wwwipodlounge.com>, <wwwlapplemusic.com>, be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: June 4, 2012
1 The Respondent was held to have registered these two domain names in bad faith, in Apple Inc. v. Contact Privacy Inc. Customer 016745298 / Grand Slam Co., WIPO Case No. D2011-1327.