WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apple Inc. v. Tim Lackey, BridgeIDentity

Case No. D2013-1650

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 Tim Lackey, BridgeIDentity, Plano, Texas, United States of America.

2. The Domain Names and Registrar

The disputed domain names <myappleid.com>, <myappleid.info>, <myappleid.mobi>, <myicloudid.com> and <myiphoneid.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2013. On September 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 20, 2013, the Registrar 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 September 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2013.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 7, 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.

4. Factual Background

The Complainant is a multinational consumer electronics company incorporated and headquartered in the State of California, United States, and listed on the New York Stock Exchange. It is one of the largest publicly traded corporations in the world by market capitalization. The Complainant and its predecessors have manufactured and sold consumer electronic devices and related software and accessories since 1976, using “Apple” as both the company name and a brand name.

Three of the Domain Names contain “apple”; the other two, respectively, “iphone” and “icloud”. APPLE, IPHONE, and ICLOUD, and are all trademarks registered to the Complainant in the United States and many other countries. The APPLE mark is used predominantly for personal computers, digital media devices, and related software and accessories; the IPHONE mark, for smart phones and related software and accessories; and the ICLOUD mark, for cloud-based data storage and software that synchs a user’s data across multiple devices.

The Complainant’s relevant United States trademark registrations include the following:

There is ample evidence that these marks are well known in the United States and globally. The Complainant’s products and services are sold both online and in the Complainant’s retail stores (250 in the United States and 140 in other countries, as of the end of 2012). Based on the Complainant’s 2012 Annual Report, it appears that these marks are collectively associated with annual sales amounting to tens of billions of US dollars. The Complaint indicates that the Complainant now spends more than one billion US dollars annually advertising products and services branded with these marks online, in print and broadcast media, and on outdoor advertising in the United States and other countries.

The APPLE mark: Harris Interactive Inc., which conducts market research surveys, found the APPLE mark to be the brand with the best reputation in the United States in 2012 and the second-best in 2013. Interbrand ranked Apple as the second most valuable brand in the world in 2012; it also ranked near the top in Interbrand’s annual surveys going back to 2001. Millward Brown Optimor, a brand valuation consulting firm, ranked Apple as the world’s most valuable brand in 2011, 2012, and 2013. The fame of the APPLE mark has been recognized in judicial and UDRP proceedings, such as Apple Inc. v. Algernon Salois, WIPO Case No. D2011-0413.

The IPHONE mark: The Complainant introduced the iPhone in 2007, with widespread advertising and media attention. Time magazine named the product “Invention of the Year” in November 2007. In the past three years, the Complainant has sold more than 237 million iPhones, and its net sales of those devices, along with related products and services, exceed USD 152 billion over that period.

The ICLOUD mark: This mark was registered in February 2010 to a Swedish corporation and then assigned to the Complainant on June 1, 2011. The assignment was recorded with the United States Patent and Trademark Office (“USPTO”) on July 11, 2011, as shown on the USPTO online trademark registration database.

The Complainant publicly announced its iCloud services in a press release on May 31, 2011:

APPLE® CEO Steve Jobs and a team of Apple executives will kick off the company’s annual Worldwide Developers Conference (WWDC) with a keynote address on Monday, June 6 at 10:00 a.m. At the keynote, Apple will unveil its next generation software - Lion, the eighth major release of MAC OS® X; iOS 5, the next version of Apple’s advanced mobile operating system which powers the IPAD®, IPHONE® and IPOD TOUCH®; and ICLOUD®, Apple’s upcoming cloud services offering.

iCloud became available as a software download from the Complainant’s online iTunes store on October 12, 2011. More than 20 million users downloaded the software in the first week. iCloud services are advertised on the Complainant’s devices as well as online and in print and broadcast media. They are now reportedly used by more than 300 million customers worldwide.

The Complainant operates websites at “www.apple.com”, “www.iphone.com”, and “www.icloud.com”, which link to one another. The Complainant’s websites receive more than 75 million unique visitors monthly.

The Complainant identifies users of its online services with an “Apple ID”. The Complainant offers a service called “My Apple ID” that allows users to create a single user name and log-on credentials to access a range of websites, online stores, and services provided by the Complainant. This service is used by millions of the Complainant’s customers.

The Registrar verified the following information concerning the registration of the Domain Names:

The Respondent Tim Lackey is apparently an individual residing in Plano, Texas, United States. The earliest Domain Name created, <myiphoneid.com>, lists Tim Lackey as the registrant and shows BridgeIDentity as his organization, with the same postal and email addresses that are listed in all of the subsequent Domain Name registrations. Hence, both Mr. Lackey and BridgeIDentity are named as Respondents in this proceeding. There is no evidence in the record concerning the nature of BridgeIDentity, and it is not currently listed online as a registered company in Texas. Accordingly, the Panel concludes that BridgeIDentity is likely an alter ego of Mr. Lackey and will hereafter refer to both collectively as “the Respondent”.

DomainTools reports submitted with the Complaint show that the Respondent was the original registrant for each of the Domain Names and has been the registrant since each of the Domain Names was created.

As evidenced by screen shots of the websites associated with the Domain Names over time, the Domain Names have all been used to display pay-per-click (“PPC”) advertising links for a variety of goods and services, including the Complainant’s products and those of competitors, such as mobile phones, laptop computer accessories, tablet computers, and cloud computing services. Some of the archived pages indicate that the Respondent was using the Registrar’s “CashParking” service to share in the PPC advertising revenues. More recently, the landing page for <myappleid.com> featured the Complainant’s design logo at the top of the page and pictures of the Complainant’s devices, followed by advertising links for third-party computer and mobile phone products. At the time of this decision, four of the Domain Names do not resolve to a website, while the Domain Name <myappleid.mobi> displays a list of PPC advertising links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its well-established APPLE, IPHONE, and ICLOUD marks, and that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant demonstrates that all three marks are well known and infers that the Domain Names were registered and are being used in a bad faith attempt to misdirect Internet users for commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is 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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall 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.”

A. Identical or Confusingly Similar

The Domain Names <myappleid.com>, <myappleid.info>, and <myappleid.mobi> all include the APPLE mark. “Apple” is, of course, a dictionary word in English, but it is also one of the best-known brands in the world. The addition of the word “my” and the letters “id”, a common abbreviation for the English word “identification”, does not avoid confusing similarity with the APPLE mark. “My” is often used in domain names and does not serve to distinguish a domain name containing a mark from one likely to be used by the trademark owner itself. See, e.g., Sony Kabushiki Kaisha also trading as Sony Corp. v. Sin, Eonmok, WIPO Case No. D2000-1007; Air France v. Kitchkulture, WIPO Case No. D2002–0158. The abbreviation “id” is also not distinctive. It would not suggest that the domain name had to do with “apple”, the fruit, for example, whereas “id”, referring to digital identification, is a term commonly used with computers, smart phones, and cloud computing services. Indeed, the entire string “myappleid” is identical to the name of the “My Apple ID” service offered by the Complainant. Hence, the additional terms enhance rather than diminish the likelihood of confusion with the Complainant’s APPLE mark.

Similarly, the Domain Names <myiphoneid.com> and <myicloudid.com> contain the Complainant’s marks IPHONE and ICLOUD, respectively, in their entirety. Unlike APPLE, these marks are coined names, distinctively adding the letter “i” to the dictionary words “phone” and “cloud”. Again, the addition of the word “my” and the abbreviation “id” is not distinctive, especially since the Complainant’s iPhone devices and iCloud service provide for personal identification.

UDRP panels customarily treat the first element of a UDRP complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that these tests are met in this case, with respect to all five Domain Names.

The Panel concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or

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

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1. In this proceeding, it is undisputed that the Complainant did not give permission to use its APPLE, IPHONE, or ICLOUD marks in the Domain Names. Nothing in the record of this proceeding, including screen shots of the websites associated with the Domain Names, indicates that the Respondent was known by a corresponding name or used the Domain Names in connection with a bona fide offering of goods or services. The Domain Names were used commercially for PPC advertising links, not for “apples”, “phones”, or “clouds” in their generic senses but prominently for competitors’ products and also items related to the Complainant’s products. The Respondent selected Domain Names confusingly similar to the Complainant’s marks and the name of the Complainant’s “My Apple ID” service, and then allowed the Domain Names to be used for PPC advertising that exploited the trademark value of the Domain Names. For Policy purposes, such conduct that likely infringes trademark rights cannot be considered a use of the Domain Names in connection with a “bona fide” offering of goods or services. See WIPO Overview 2.0, paragraph 2.6.

The Respondent has not rebutted the Complainant’s prima facie case on this point, and the Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of circumstances that shall be evidence of bad faith in paragraph 4(b) includes the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

This example of bad faith evidence aptly describes the circumstances in this proceeding. The record demonstrates the renown of the APPLE, IPHONE, and ICLOUD marks, globally and particularly in the United States, where the Respondent is located. The phrase “My Apple ID”, which is the distinctive portion of three of the Domain Names, is the Complainant’s name for its single sign-on identification system, which is employed by millions of customers who use the Complainant’s devices and related online retail and support services. The other two Domain Names are suggestive of a similar identification function relating to the Complainant’s iPhone and iCloud products, which are branded with coined terms and are also highly successful in the marketplace. Thus, the Domain Names appear to have been chosen for their apparent (and misleading) reference to the Complainant and its trademarked products and services.

The PPC advertising links presented on the landing pages associated with the Domain Names concerned both the Complainant’s and its competitors’ products. For a time, some of those pages were headed with the Complainant’s trademarked design logo and included pictures of the Complainant’s products. The Panel concludes that the Respondent intended to mislead Internet users, initially and perhaps even after they viewed the landing pages, as to the source or affiliation of the websites associated with the Domain Names.

Under the terms of the Policy, paragraph 4(a)(iii), the Complainant must demonstrate bad faith both in the registration and in the use of the Domain Names. The APPLE and IPHONE marks were well established in the marketplace at the time the Respondent registered the Domain Names incorporating those marks. By contrast, when the Respondent registered the Domain Name <myicloudid.com>, the Complainant’s iCloud service was not yet launched, although the mark was already registered and had recently been assigned to the Complainant. This does not prevent a finding of bad faith, however, with respect to that Domain Name. The record indicates that the Respondent targeted the mark, anticipating (correctly) that it would quickly become well known to the Complainant’s hundreds of millions of customers using devices that could employ the iCloud services. iCloud is not a generic term, and the timing is telling: the Respondent registered the Domain Name <myicloudid.com> just two days after the Complainant’s press release announcing iCloud, the Complainant’s “upcoming cloud services offering”. The press release even included the ® symbol indicating that the name was already registered as a trademark. The Panel finds on this record that the Respondent sought to exploit the announced brand name that was likely to be quickly established in the marketplace as the Complainant’s trademark for cloud services. Such targeting of an imminently anticipated mark must be considered bad faith registration within the meaning of the Policy, as UDRP panels have found even in cases where the mark was not yet registered. See WIPO Overview 2.0, paragraph 3.1; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

The Panel concludes that all five Domain Names were registered and are being used in bad faith, establishing the third element of the Complaint.

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 Domain Names <myappleid.com>, <myappleid.info>, <myappleid.mobi>, <myicloudid.com> and <myiphoneid.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: November 22, 2013