WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apple, Inc. v. WhoIs Privacy Services Pty Ltd. / Stanley Pace / Shahamat / Kent Mansley / Phoebe Aoe / Tammy Caffey / Staci Michele / Layne Fletcher / Hiroko Tadano / Keith Besterson / Andrew Devon

Case No. D2013-1312

1. The Parties

Complainant is Apple, Inc. of California, United States of America (“US”), represented by Kilpatrick Townsend & Stockton LLP, US.

Respondents are WhoIs Privacy Services Pty Ltd. of Australia / Stanley Pace of Flower Mound, Texas, US / Shahamat of Kandahar, Afghanistan / Kent Mansley of Riverside, California, US / Phoebe Aoe of Provo, Utah, US / Tammy Caffey of Orange, Texas, US / Staci Michele of Harlingen, Texas, US / Layne Fletcher of Provo, Utah, US / Hiroko Tadano of New York City, New York, US / Keith Besterson of Denver, Colorado, US / Andrew Devon of West Covina, California, US.

2. The Domain Names and Registrars

The disputed domain names <appeloffre.com>, <appestore.com>, <appleiphoneunlockcode.info>, <applesore.com>, <applestpre.com>, <applestroe.com>, <appllestore.com>, <bestiphonestuff.com>, <beyouriphone.com>, <downloadsforipod.com>, <ebookforipad.com>, <ifixipods.com>, <ipod2download.com> and <unlockiphone4free.com> are registered with Fabulous.com (the “First Registrar”).

The disputed domain names <crackmyapple.com>, <hargaipod.com> and <i4iphone.com> are registered with GoDaddy.com, LLC (the “Second Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 19, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names.

On July 22, 2013, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <appeloffre.com>, <appestore.com>, <appleiphoneunlockcode.info>, <applesore.com>, <applestpre.com>, <applestroe.com>, <appllestore.com>, <bestiphonestuff.com>, <beyouriphone.com>, <downloadsforipod.com>, <ebookforipad.com>, <ifixipods.com>, <ipod2download.com> and <unlockiphone4free.com> which differed from the named Respondent and contact information in the Complaint. In this regard, on August 5, 2013, the Center requested the First Registrar to confirm whether any change in registrant information for the disputed domain names <bestiphonestuff.com>, <beyouriphone.com>, <unlockiphone4free.com> and <ipod2download.com> had taken place after the filing of the Complaint. On August 6, 2013, the First Registrar indicated the time such changes took place. On August 6, 2013, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the First Registrar, and requesting Complainant either to file a separate Complaint(s) for the disputed domain name(s), and file a short amendment to drop said separately-filed domain name(s) from the current Complaint, or to provide the Center with a brief amendment to the Complaint (amended Complaint), adding the names of the First Registrar-disclosed registrants as formal Respondents and demonstrating that registrants are, in fact, the same entity. Complainant followed the second option and filed an amended Complaint on August 11, 2013.

On July 22, 2013, the Second Registrar transmitted by email to the Center its verification response confirming that Respondent, namely Stanley Pace, is listed as the registrant of the disputed domain names <crackmyapple.com>, <hargaipod.com> and <i4iphone.com> and providing the contact details.

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 Respondents of the Complaint, and the proceedings commenced on August 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2013. No Respondent submitted a timely response. Accordingly, the Center notified Respondents’ defaults on September 6, 2013.

The Center appointed Michael A. Albert as the sole panelist in this matter on September 12, 2013. 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 September 20, 2013, Respondent Stanley Pace informally requested to stay the proceedings and objected to the consolidation of multiple parties. On September 21, 2013, Complainant objected to the Respondent’s request. As Respondent’s communication was not timely, the request was not granted by the Panel. Additionally, Respondent Layne Fletcher submitted a Response on September 20, 2013. As this Response was also not timely, it was not considered by the Panel.

4. Factual Background

Complainant designs and sells a variety of products including personal computers, mobile communication devices, and portable media players. Through commercial success and aggressive marketing, Complainant’s APPLE brand has become one of the most recognizable and valuable brands in the world. Complainant owns trademark rights in the mark APPLE, with registrations dating back to US Registration No. 1,078,312 with a filing date of March 25, 1977. Prior WIPO UDRP decisions have recognized Complainant’s rights in the APPLE mark under the Policy. See, e.g., Apple Inc. v. Algernon Salois, WIPO Case No. D2011-0413 (“[the] APPLE mark is indeed a famous and well-known trademark… in which the Complainant has rights.”); Apple Computer, Inc. v. Omar Acosta Rivera, WIPO Case No. D2006-1118 (“the trademark Apple is a famous trademark worldwide”).

Complainant has additionally cultivated extensive brand recognition of its trademarked terms IPOD (US Registration No. 2,835,698 with filing date of October 18, 2001), IPAD (US Registration No. 3,776,575 with filing date of March 7, 2003) and IPHONE (US Registration No. 3,669,402 with filing date of September 26, 2006). Complainant has used the mark IPOD extensively since it released the IPOD portable electronic media player in October 2001. It has used the mark IPHONE extensively since it released a handheld communication device in January 2007.

On October 24, 2012, WhoIs listed Respondent Stanley Pace as the registered holder for ten of the disputed domain names (masked behind a privacy service at the time of the filing of the Complaint, namely July 19, 2013 (Exhibit 1 to the Complaint)). No information is provided with respect to the registrant information for the remaining seven disputed domain names (Exhibit 1 to the Complaint). A table providing relevant WhoIs registrant contact information is provided as Exhibit A to this Decision.

At the time that Complainant filed its initial Complaint on July 19, 2013, WhoIs listed Respondent Stanley Pace as the registered domain holder for the following seven disputed domain names: <crackmyapple.com>, <beyouriphone.com>, <i4iphone.com>, <hargaipod.com>, <ipod2download.com>, <unlockiphone4free.com> and <bestiphonestuff.com>. The remaining disputed domain names used a privacy service to conceal the identity of the domain holder.

The websites associated with the disputed domain names previously displayed a list of pay-per-click links automatically generated by a third party (Annex Q to the Complaint). At the time of the Decision, the disputed domain names displayed a landing page automatically generated by Sedo Holding Group’s domain parking service.

According to the First Registrar, on July 21, 2013 Pacific Standard Time, after Complainant’s initial Complaint was filed but before the First Registrar placed a lock on the disputed domain names, Respondent Stanley Pace transferred three disputed domain names <ipod2download.com>, <unlockiphone4free.com> and <bestiphonestuff.com> to Respondent Tammy Caffey. Additionally, on the same date, Respondent Stanley Pace transferred the disputed domain name <beyouriphone.com> to Respondent Phoebe Aoe.

The First Registrar identified the registrants masked by the privacy service on July 22, 2013. Respondent Shahamat was the listed registrant for the disputed domain names <applestroe.com>, <ebookforipad.com>, and <downloadsforipod.com>. Respondent Keith Besterson was the listed registrant for the disputed domain names <applesore.com> and <ifixipods.com. Respondent Staci Michele was the listed registrant for the disputed domain name <appleiphoneunlockcode.info>. Respondent Layne Fletcher was the listed registrant for the disputed domain name <appeloffre.com>. Respondent Hiroko Tadano was the listed registrant for the disputed domain name <appestore.com>. Respondent Andrew Devon was the listed registrant for the disputed domain name <applestpre.com>. Respondent Kent Mansley was the listed registrant for the disputed domain name <appllestore.com>.

According to the information provided by the mail courier all Respondents, except Respondent Andrew Devon, provided nonexistent street addresses as registrant information.

5. Parties’ Contentions

A. Complainant

Complainant contends that Stanley Pace remains in control of all seventeen disputed domain names, and thus this Panel may exercise its discretion under paragraph 10(e) of the Rules to consolidate multiple domain name disputes under a single proceeding. Complainant asserts that Respondents Tammy Caffey, Shahamat, Keith Besterson, Staci Michele, Layne Fletcher, Hiroko Tadano, Andrew Devon, Kent Mansley and Phoebe Aoe are all alter egos of Respondent Stanley Pace.

Complainant characterizes Respondent Stanley Pace as a “well-known cybersquatter engaged in a pattern of registering and using in bad faith domain names based on the names and marks of others.” Complainant notes that several prior panels have held that Stanley Pace acted in bad faith under the Policy. See, e.g., Shandong Lingong Construction Machinery Co., Ltd. v. Stanley Pace and Whois Privacy Services Pty Ltd., WIPO Case No. D2012-1626; Mahindra & Mahindra Limited. v. Stanley Pace, WIPO Case No. 2011-2189.

Complainant asserts that the disputed domain names are confusingly similar to Complainant’s APPLE, IPHONE, IPAD and IPOD marks. According to Complainant, many of the disputed domain names are characteristic of “typosquatting,” in which Respondent has relied on potential letter deletions, letter inversions, or common misspellings to “parasitically usurp traffic intended for Complainant’s websites.” Complainant further contends that the remaining disputed domain names are characteristic of “cybersquatting,” in which generic or descriptive terms are appended to Complainant’s marks.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services.

Complainant asserts that Respondent Stanley Pace registered and is using the disputed domain names in bad faith. Complainant alleges that Respondent Stanley Pace acquired the disputed domain names, after Complainant’s marks became well known, in order to create the impression of an association with Complainant.

B. Respondent

No Respondent filed any timely response to the Complaint.

6. Discussion and Findings

A. Preliminary Procedural Issues

Untimely Responses

Respondent Layne Fletcher purported to submit a Response to the Center on September 20, 2013. This Panel will not consider the untimely Response.

Although Respondent Stanley Pace did not formally respond to the Complaint, he did (belatedly) contact the Center on September 20, 2013, asking for a “temporary stay in the dispute in order to engage in settlement negotiations with the Complainant” and stating that Complainant had indicated interest in an amicable settlement and that he was “willing to comply” but needed time “to get the other Respondents to agree.” Respondent Stanley Pace asked in the alternative to be “excused from this dispute” on the grounds that there are too many respondents, contrary to the Policy, and that he would “rather release domain names to the Complainant than pay for expensive legal representation.”

Charitably construed, this request may be considered a Response in which Respondent Stanley Pace (1) requests a temporary stay of the case and (2) objects to the consolidation of multiple Respondents. Respondent waited until 15 days after its Response was due to first raise the request to stay proceedings, and did not obtain Complainant’s consent to such a stay. Accordingly, the request to stay proceedings is denied. The Panel addresses below the substance of Respondent’s objection to the consolidation of multiple parties.

Consolidation of Multiple Respondents

Complainant alleges that all ten Respondents in this case are actually alter egos of Respondent Stanley Pace. Accordingly, Complainant seeks to consolidate ten Respondents and seventeen disputed domain names into a single proceeding.

Paragraph 10(e) of the Rules grants the Panel authority to “decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Similarly, paragraph 3(c) of the Rules provides that a complaint “may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Prior UDRP panels have treated multiple registrants controlled by a single person as one single respondent for the purposes of the Policy. See, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Archipelago Holdings LLC. v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729. Absent common control, “[n]either the Policy nor the Rules make explicit provision for proceedings against legally separate respondents to be combined.” See, General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834.

Prior UDRP panel decisions have described two factors that indicate multiple domain names are under the common control or ownership of a single person. First, common control may exist where “the domain names at issue point to nearly identical web pages.” General Electric Company, supra; see also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (noting that the multiple domains at issue “all directed to essentially identical websites”). Second, common control has been found if evidence suggests that a single person has registered multiple domain names using different fictitious names. See Yahoo!, Inc. v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461.

In the instant case, the majority of the disputed domain names point to webpages generated by Sedo’s free domain name parking service. With this service, Sedo provides a domain name with a generic “landing page.” The use of such a landing page, however, is insufficient to demonstrate common control. In Speedo Holdings B.V., supra the panel found common control where each of the domain names was used in an identical manner to display pornographic content involving the SPEEDO mark. In the instant case, the disputed domain names merely point to a common and generic landing page. There is no indication that Respondents are intentionally displaying similar content.

Complainant has also alleged that Respondent Stanley Pace has maintained common control of the disputed domain names by “engaging in sham transfers and using multiple aliases.” Complainant alleges that Respondent Stanley Pace transferred fourteen of the disputed domain names to fictitious registrants shortly after the initial Complaint was filed. Complainant has not introduced sufficient evidence to support this claim. The evidentiary record only demonstrates that four disputed domain names were transferred after the filing of the initial Complaint. Complainant assumes that Respondent Stanley Pace controlled the remaining ten privacy-masked disputed domains on July 18, 2013, and transferred these disputed domain names to other Respondents upon receiving the initial Complaint. This assumption, while it may ultimately prove correct, is unsupported by the evidentiary record currently before this Panel. That record demonstrates only that Respondent Stanley Pace transferred these ten disputed domain names sometime between October 24, 2012, and July 22, 2013.

In support of its argument that Respondent Stanley Pace retained common control of the disputed domain names, Complainant alleges that the IP Addresses have remained “relatively consistent from registrant to registrant.” This is insufficient to demonstrate common control. The majority of the disputed domain names direct the user to webpages generated by Sedo’s domain name parking service. It is not implausible that the new owners would leave the use of Sedo unchanged, accounting for the unchanged IP Addresses.

Furthermore, Complainant notes that two of the new registrants provide nonexistent email addresses, and seven of the new registrants provide nonexistent street addresses. In Adobe Systems Incorporated v. Domain Oz, WIPO Case No. D2000-0057, the panel found common control because multiple allegedly fictitious registrants listed identical administrative contact information. In the instant case, Complainant has not introduced evidence directly indicating that the nine Respondents added in the Amended Complaint are alter egos of Respondent Stanley Pace. The use of inaccurate registration evidence is insufficient to demonstrate that the registrants are fictitious.

As a general principle, the consolidation of multiple respondents must be “both procedurally fair and equitable to all parties.” Speedo Holdings B.V., supra. Circumstances in the record must demonstrate that all Respondents are under common control, or that a “sufficient unity of interests otherwise exists” so that the parties may be treated as a single domain name holder for the purposes of the Policy. Although Complainant alleges that Respondent Stanley Pace retained control of all seventeen disputed domain names, Complainant has ultimately failed to satisfy its burden of proof as to this issue. Accordingly, this Decision will only determine rights concerning the disputed domain names registered to Respondent Stanley Pace: <crackmyapple.com>, <i4iphone.com> and <hargaipod.com>.

Under Paragraph 8(a) of the Policy, a registrant may not transfer a domain name during a pending administrative proceeding “unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator.” In this dispute, the evidentiary record suggests that four disputed domain names were transferred after the filing of the initial Complaint: <ipod2download.com>, <unlockiphone4free.com>, <bestiphonestuff.com> and <beyouriphone.com>. Complainant has not, however, demonstrated that the new owners of the four improperly transferred disputed domain names are alter egos of or acting in concert with Respondent Stanley Pace. Nor has Complainant established that the transferees of these four disputed domain names were complicit in violating Paragraph 8(a) of the Policy. Accordingly, the Panel does not find the Paragraph 8(a) violation warrants consolidating as respondents the transferees of the four improperly transferred disputed domain names. See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (finding that “Respondent attempted to frustrate the Complainant’s rights” by transferring 6 of 14 disputed domains but nevertheless dismissing as to the 6 transferred domain names because Complainant failed to establish that transferees were merely fictitious: “The Panel has an obligation to ensure that each Party is given a fair opportunity to present its case’ (paragraph 10(b) of the Rules). It would be a grave breach of this duty to make an order for the transfer of a domain name in a proceeding where the registered owner, although notified of the proceeding, has not been named as a respondent and therefore does not submit any response.”).

The claims against Respondents Tammy Caffey, Shahamat, Keith Besterson, Staci Michele, Layne Fletcher, Hiroko Tadano, Andrew Devon, Kent Mansley and Phoebe Aoe will be dismissed without prejudice. Complainant is free to re-file separate complaints under the Policy as to those Respondents and their associated disputed domain name names, accompanied by such evidence as may be necessary either to establish common control or to make an individualized case against each such Respondent sufficient to warrant transfer of the domain name(s) in question.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant has the burden of demonstrating that the disputed domain names are “identical or confusingly similar to a trademark or service mark” in which Complainant has rights.

Complainant Has Established Rights

Complainant has offered evidence sufficient to prove that it owns trademark rights in the marks APPLE, IPOD and IPHONE. Furthermore, Complainant has submitted extensive evidence of its use of the three marks in commerce.

Disputed Domain Names Are Confusingly Similar

Each of the disputed domains registered to Respondent Stanley Pace is comprised of one of Complainant’s marks plus descriptive or generic terms. These disputed domain names are: <crackmyapple.com>, <i4iphone.com> and <hargaipod.com>. These disputed domain names include Complainant’s registered trademarks APPLE, IPHONE, and IPOD.

The addition of generic or descriptive wording to a trademark is insufficient to avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy. See Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (holding that “wrapping a well-known mark with merely descriptive or generic words is a doomed recipe for escaping a conclusion that the domain name is confusingly similar to the well-known mark”). Furthermore, if the generic or descriptive words are related to the commercial purpose of the mark, such additional words may render the disputed domain even more confusing to Internet users. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755 (concluding that “the additional words [in the disputed domain] may reinforce an affiliation among the Domain Names and Complainant”).

In the instant case, the disputed domain name <i4iphone.com> simply adds a generic term to Complainant’s mark, and is thus confusingly similar under paragraph 4(a)(i) of the Policy. Hoffman La-Roche Inc., supra (noting that “[t]he mere addition of words “your” and “shop” before and after the Complainant’s mark” was insufficient to avoid the conclusion that the contested domain was confusingly similar under paragraph 4(a)(i)). The disputed domain name <hargaipod.com> includes Complainant’s mark IPOD and the generic term “harga,” which translates to “price” in the Indonesian language. The disputed domain name <crackmyapple.com> includes Complainant’s mark APPLE and the generic term “crack,” which likely refers to the removal of limiting features in an operating system.

All three above-referenced disputed domain names are thus confusingly similar to Complainant’s marks under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Once a complainant makes a prima facie showing that the respondent does not possess rights or legitimate interests in a domain name, the burden shifts to the respondent to provide evidence of such rights or interests. Here, the Panel concludes that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests. Complainant’s registration and use of the marks predates Respondent’s registration of the disputed domain names, and the marks are widely known and recognized. Complainant has not granted Respondent any license or form of permission to use the marks.

A respondent may demonstrate rights to and legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy by demonstrating any of the following:

(i) before receiving notice of the dispute, respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) respondent has been commonly known by the domain name, even if it has acquired no trademark or service rights

(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has not submitted a Response to the Complaint. As a result, there is nothing in the record that suggests that Respondent has obtained rights or legitimate interests in the disputed domain names.

Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. See Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (concluding that “if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name”). The disputed domain names exploit Complainant’s well-established marks. At the time the initial Complaint was filed, the disputed domain names were used to host revenue-generating pay-per-click links. At the time of this Decision, the disputed domain names appear to be offered for sale via Sedo’s domain name parking service. There is no evidence that Respondent has been commonly known by any of the disputed domain names. Respondent is not making a noncommercial or fair use of the disputed domain names, and instead has sought to misleadingly divert consumers for its own financial gain.

Accordingly, the Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, the Panel may find that a domain name was registered and used in bad faith if “by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [respondent’s] website.” The Respondent has registered multiple disputed domain names that directly reference Complainant’s famous marks, and the evidence of record strongly suggests that Respondent has done so in order to usurp Internet traffic meant for Complainant. Consequently, the Panel concludes that Respondent has acted in bad faith by intentionally creating a likelihood of confusion with Complainant’s marks.

Accordingly, the Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 names <crackmyapple.com>, <i4iphone.com> and<hargaipod.com> be transferred to Complainant.

The Panel dismisses without prejudice Complainant’s claims against Respondents Tammy Caffey, Phoebe Aoe, Kent Mansley, Shahamat, Keith Besterson, Staci Michele, Layne Fletcher, Hiroko Tadano, Andrew Devon with regard to the disputed domain names <ipod2download.com>, <unlockiphone4free.com>, <bestiphonestuff.com>, <beyouriphone.com>, <applestroe.com>, <appllestore.com>, <ebookforipad.com>, <downloadsforipod.com>, <applesore.com>, <ifixipods.com>, <appleiphoneunlockcode.info>, <appeloffre.com>, <appestore.com>, <applestpre.com>. Complainant shall be free to bring appropriate subsequent proceedings against the identified Respondents and corresponding domain names.

Michael A. Albert
Sole Panelist
Date: September 24, 2013

EXHIBIT A