WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apple Inc. v. -/Tarik Tolunay
Case No. D2011-0064
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 -/Tarik Tolunay of Istanbul, Turkey, represented by himself.
2. The disputed domain names and Registrar
The disputed domain names <appleoslion.com>, <appleosxlion.com>, <macoslion.com>, <macosxleo.com>, <macosxleon.com> and <macosxlion.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 12, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same day, GoDaddy.com, Inc. 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 January 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2011. The Response was filed with the Center on February 6, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on February 24, 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.
4. Factual Background
The Complainant is the world-famous designer, manufacturer, and distributor of a wide variety of goods and services, and Complainant’s APPLE brand is one of the best known brands in the world. Apple helped start the personal computer revolution in 1977 with the introduction of the groundbreaking Apple I and II computers. Today, the Complainant designs, manufactures, and/or markets in interstate and international commerce, among many other things, personal computers, mobile communication devices, and portable digital media players, and the company sells a variety of related software, services, peripherals, and networking solutions.
The Complainant has extensively promoted and advertised its goods and services in the form of advertisements in international magazines, on television, outdoor signage, and the Internet, among many other places. During the period from 1994 through 2008, the Complainant spent over USD 3 billion worldwide advertising its products and services. The market research firm Harris Interactive Inc. found the APPLE brand to be one of the 10 most recognized brands in the United States in its 2006 and 2007 “Best Brands” polls, based upon consumer responses.
The Complainant is the holder of a substantial number of trademark and service mark registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the APPLE word mark and the APPLE logo design mark, depicting a stylized apple silhouette with a bite removed (together, the “APPLE Marks”). Complainant is also the owner of numerous registrations for the APPLE Marks throughout the world, including but not limited to the countries of the European Community, Turkey, Canada, Singapore, Hong Kong, SAR of the People’s Republic of China and Australia. The Complainant has also registered and uses the domain names <apple.com> and <applecomputer.com> to deliver information concerning the Complainant and its products and services.
The Complainant introduced the Macintosh personal computer in 1984 and has extensively used the mark MACINTOSH in connection with computer sales. Apple has extensively used a shortened version of the MACINTOSH mark, MAC, in connection with its sales of computers since at least as early as 1994. All of the Complainant’s notebook and desktop computer products utilize some variant of the MAC mark in their product titles, such as the MACBOOK and the MAC PRO.
The Complainant has extensively used its MAC mark in connection with operating systems for its computers. For over 25 years, Apple has been designing, manufacturing and marketing operating systems under the name and mark MAC OS. In 2001, Apple introduced a new operating system known as the MAC OS X. The first MAC OS X operating system was given the designation of “Cheetah”. Every subsequent version of the MAC OS X operating system has likewise been given a designation based on the name of a “big cat”, which has allowed consumers to readily identify a specific MAC OS X version. On or about October 20, 2010, Apple announced that it will be releasing in the summer of 2011 a new version of the MAC OS X operating system entitled MAC OS X LION (v.10.7). That announcement was made at Apple’s annual Macworld conference and was thereafter widely publicized in online publications on the Internet and in print publications. The Complainant has extensively advertised and promoted its MAC OS and MAC OS X marks alone or in combination with “big cat” names, such as MAC OS X PUMA, MAC OS X JAGUAR, MAC OS X PANTHER, MAC OS X TIGER, MAC OS X LEOPARD, MAC OS X SNOW LEOPARD and MAC OS X LION. The Complainant is the holder of a substantial number of trademark and service mark registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and throughout the world. These include registrations for MAC; MAC OS; MAC.COM; MAC; and MACINTOSH.
The disputed domain names were variously registered on June 29, 2004, November 7, 2004, March 17, 2008, February 25, 2009 and August 20, 2009. The Complainant provides evidence that, since registering the disputed domain names, the Respondent has redirected web traffic to the Respondent’s own website directly, or through a page containing a link to the Respondent’s website and/or to click through revenue linking portals. At the date of this decision, the disputed domain names revert to a SEDO ”portal” or “pay per click” landing websites which contain lists of miscellaneous links, in some cases unconnected to the Complainant (e.g. the website at ”www.appleoslion.com“ contains links such as “Lion image”, “Picture Lion” and “Lion Games”) and in other cases relating to the Complainant’s products (e.g. the website at “www.macosxleo.com” contains links such as “Mac Laptop” and “Mac Specials”).
The Complainant has previously been a successful complainant under the Policy in relation to its APPLE mark: e.g. Apple Inc. v. Oakwood Services Inc. - N/A N/A, WIPO Case No. D2010-1917. The Complainant has also been successful in relation to its MAC marks: e.g. Apple Inc. v. Daniel Bijan, NAF Claim No. FA294886.
5. Parties’ Contentions
The Respondent registered the <macosxlion.com> and <macoslion.com> domain names in 2004 after the Complainant had adopted and made extensive use of “big cat” names for versions of Complainant’s MAC OS X operating system, namely, MAC OS X CHEETAH, MAC OS X PUMA, MAC OS X JAGUAR and MAC OS X PANTHER, and after the Complainant announced the release of the MAC OS X TIGER version on or about May 4, 2004. The Complainant says that the Respondent registered these domain names anticipating that the Complainant might eventually name a subsequent version of its MAC OS X operating system using the “big cat” name “lion” and that the Respondent could then profit from such domain names. That this is the case is confirmed by the Respondent’s subsequent registration in 2008 and 2009 of additional domain names based on the APPLE and MAC OS X marks, and the Respondent’s attempt to sell the disputed domain names to the Complainant for USD750,000 shortly after the Complainant announced on October 20, 2010 its upcoming release of MAC OS X LION, and the Respondent’s own admission that he registered the disputed domain names “when apple started to mac os cat series I booked”. The Complainant says that the Respondent’s actions are nothing more than a pure act of cybersquatting for profit.
Each of the disputed domain names is identical or confusingly similar to the Complainant’s marks or designations. The disputed domain names <macosxlion.com>, <macoslion.com>, <macosxleon.com> and <macosxleo.com> are identical and/or confusingly similar to the Complainant’s marks MAC, MAC OS and MAC OS X because they incorporate these marks exactly and in their entireties.
The Respondent’s domain names <appleosxlion.com> and <appleoslion.com> are likewise identical and confusingly similar to the Complainant’s famous APPLE mark, as they include the APPLE mark exactly and in its entirety, together with the Complainant’s well-known OS and OS X designations and the word “lion,” the name of a “big cat”. Such combination suggests that these domain names are connected to the Complainant and its MAC OS X operating system, or are somehow related to a product being offered, sold or distributed by the Complainant.
Since the Complainant’s rights in the Complainant’s Marks predate the Respondent’s registration of the disputed domain names, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain names. Here, the Respondent cannot demonstrate or establish any such rights or legitimate interests. That Respondent has no legitimate interest in the disputed domain names is confirmed by the Respondent’s attempt to sell the disputed domain names to the Complainant for USD 750,000, a sum well in excess of the Respondent’s out of pocket costs, only days after the Complainant had announced its planned release of MAC OS X LION. Since registering the disputed domain names the Respondent has simply sought to profit from them and has never used the disputed domain names in connection with a bona fide offering of goods or services or for a noncommercial or fair use. Rather, the Respondent has registered and used the disputed domain names to redirect web traffic to his own website both directly and via a web page containing nothing but a link to his website, which promotes his unrelated illustrations and animations.
For somewhat similar reasons, the Complainant says that the Respondent has registered and is using the disputed domain names in bad faith for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s marks.
The Respondent says that he has been working as a professional cartoonist, comic strip cartoonist, an illustrator and an animator since 1989. The Respondent says that the domain name <macosxlion.com> was registered by him in 2004 and that there were not any commercial goods by the name “macosxlion” on that date. The Respondent rhetorically asks whether the Complainant can have rights in the <macosx.com> domain name (not the subject of this dispute) which was registered in 1988, when the Complainant Apple was marketing its operating system named “macos”. The Respondent says that these trademarks and the concepts created over these trademarks also find place in daily language and are frequently used.
The Respondent also says that “In 1999, Apple announced that they would renew Macos and continue with the name MacosX. It also gave additional names to mid versions like
We don’t know why, but the company did not feel any need to register the domain names of most of these versions. For many years, a company marketed Apple products on macosxpanther domain name. macosxtiger was also used for the same purpose. In 2004, I had the macosxlion domain name registered. Apple did not even pronounce the name then. So, it’s not possible that I was influenced by a trademark which did not exist.”
The Respondent says that, when he realized he registered a domain name with the Complainant’s mark incorporated, he felt the need to get into contact with them. He notes that he did not ask for a price in his first email. In their replies, they wanted me to direct the domain name to their servers. The Respondent says that the Complainant did not offer to pay for the registration fees. Accordingly, he replied that he would only transfer the registration for a fee. In the following mail, the Complainant asked him: “What is on your mind?”. The Respondent felt offended that the domain name he had used for six years was demanded by the Complainant “dirt cheap”. So he gave a figure of USD750,000. The Respondent says that this was actually a message to the Complainant which meant “I will not transfer this domain name to you”.
The Respondent denies that, on the “macosxlion” website, he has ever broadcast anything which might harm the Complainant or its marks. The Respondent also claims that he does not trade in domain names and has never been a party to a proceeding for violation of a patent or trademark.
The Respondent asks whether the Complainant’s marks give it retrospective rights to the disputed domain names. More generally, the Respondent denies that the disputed domain name <macosxlion.com> corresponds to the Complainant’s MACOS mark. The Respondent says that he acted in accordance with the Code Of Intellectual Property Rights, “which is the national legal grounds in Turkey for intellectual property”.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
There is no doubt that the Complainant has registered rights in various registered marks relating to its products. The Complainant provided evidence of its registered rights in APPLE, APPLE STORE, APPLE TV, APPLE CINEMA DISPLAY. The Complainant also provides evidence of its registrations for, among others, MAC, MAC OS, MAC.COM, .MAC, and MACINTOSH. All of these marks were registered before the date of the registration of the disputed domain names. (The Complainant provides evidence of other marks which it registered after the date of registration of the dispute domain names, e.g. MACBOOK registered in 2006. However, for the reasons that follow, it is not necessary for the Panel to consider those other marks.)
The Complainant’s rights in its marks have also been recognized in previous proceedings under the Policy cited above. As found in prior cases, and supported by substantial evidence in this case, the Complainant’s APPLE mark is one of the most well-known in the world, and is clearly distinctive in relation to computer products. Apple Inc. v. Oakwood Services Inc. - N/A N/A, supra. In these circumstances, the Panel finds that the disputed domain names which wholly incorporate that mark (<appleoslion.com> and <appleosxlion.com>) are confusingly similar to it. In addition to the entire incorporation of the Complainant’s distinctive mark, those domain names add terms which are highly suggestive of the Complainant’s products. For similar reasons, the Panel also finds that the disputed domain names (<macoslion.com>, <macosxleo.com>, <macosxleon.com> and <macosxlion.com>) which wholly incorporate that Complainant’s MAC and MAC OS marks are confusingly similar to that mark. It is a common circumstance under the Policy to find that the entire incorporation of a mark in a domain name, including a domain that adds a generic word, may be sufficient for a finding of confusing similarity. See e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established a strong prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent provides little evidence that might support his case of having such rights. The Respondent principally appears to argue that the Complainant’s marks are comprised of terms that are descriptive and in everyday use, and that the Complainant did not, prior to the registration of at least some of the disputed domain names, market products precisely corresponding to the disputed domain names.
These are not strong arguments. The Complainant’s marks, with which the disputed domain names are confusingly similar, were registered well before the disputed domain names. Those marks are very well-known and distinctive in a trademark sense. The Respondent does not spell-out what he means by the concept of the Complainant’s marks being in daily use. The Panel is in no doubt that the Complainant’s marks have a wide currency as marks. It is obvious, as the Respondent points out, that the Complainant’s APPLE or MAC marks incorporate common terms with other associations. But this is not the context in which the Respondent has registered them. In each case, the disputed domain names incorporate the Complainant’s marks as well as terms (such as “os” as an abbreviation for “operating system”) that are directly related to the connotation of the mark with computer products.
In these circumstances, it is inconceivable that the Respondent could have rights or legitimate interests in the disputed domain names. The Respondent has provided no persuasive evidence to rebut the strong case against him in this respect. Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain names have been registered in bad faith. The Panel makes this finding for the following reasons:
Firstly, the Complainant’s marks are very well-known. The Respondent has registered the disputed domain names which also incorporate terms closely associated with the Complainant’s products. This suggests very strongly that the Respondent was motivated to register and use the disputed domain names because of the value of the Complainant’s marks.
Secondly, the Respondent has registered multiple domain names that all incorporate the Complainant’s marks and terms associated with those marks. Such a registration would be an unlikely coincidence for a single domain name. It is even less likely to have been a coincidence for all six disputed domain names.
Thirdly, the disputed domain names correspond to a pattern of names applied to by the Complainant to successive versions of its operating systems. The pattern of registrations by the Respondent strongly suggests that the Respondent was opportunistically motivated to register the disputed domain names in anticipation of related products being released by the Complainant.
Fourthly, the Respondent has offered to sell the disputed domain names for a sum that is clearly in excess of his out of pocket costs. The Respondent does not deny that he made this offer. However he denies that it was, in fact, an offer for sale. Instead, the Respondent says that his offer was, in effect, a refusal to sell. In the circumstances of this case, the Panel does not find this explanation plausible. If the Respondent had wanted to refuse to sell the disputed domain names, he only needed to say so.
Fifthly, the Respondent has used the disputed domain names to direct traffic to a “click through” or “pay per click” website. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See e.g., Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021. This does not mean that the operation of a click through site is always a sign of bad faith, in circumstances where a respondent uses the associated domain name to profit from its descriptive, common meaning. See e.g. the cases cited in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. But, for the reasons outlined above, the Panel has found that the disputed domain names are likely to have been registered because of their connection with the Complainant’s marks.
Finally, the Respondent provides little evidence to rebut the allegations made against him, or to provide contrary evidence to suggest that his registrations were made in good faith. The Respondent provides no explanation or evidence which would indicate that there is some objective connection between his business and the disputed domain names. The Panel gives little credit to the Respondent’s general claims of acting consistently with Turkish intellectual property law. The Respondent provides no detail to support these claims nor advice of a credible legal practitioner to support them. In any event, the Panel must be guided by the Policy and the body of prior UDRP panel decisions which relate to this ground.
In these circumstances, the Panel finds that the disputed domain names have been registered and used in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.
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 names, <appleoslion.com>, <appleosxlion.com>, <macoslion.com>, <macosxleo.com>, <macosxleon.com> and <macosxlion.com>, be transferred to the Complainant.
James A. Barker
Dated: March 10, 2011