WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apple Inc. v. Contact Privacy Inc. Customer 016745298 / Grand Slam Co.
Case No. D2011-1327
1. The Parties
The Complainant is Apple Inc. of Cupertino, California, United States of America represented by Kilpatrick Townsend & Stockton LLP.
The Respondent is Contact Privacy Inc. Customer 016745298 / Grand Slam Co. of Toronto, Canada and Juneau, Alaska, United States of America, respectively.
2. The Domain Names and Registrar
The disputed domain names <wwitunes.com> and <wwwitunes.com> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2011. On August 4, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On August 4, 2011, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2011 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 August 5, 2011.
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 August 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2011.
The Center appointed Angela Fox as the sole panelist in this matter on September 7, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the manufacturer of the well-known ITUNES digital media software application. Designed for use with the Complainant’s APPLE MAC computers and IPOD portable media player device, the ITUNES application enables users to create and synchronise digital music libraries.
The Complainant’s ITUNES software has been a huge commercial success, with over 6 million users within 10 months of its launch in early 2001. Similarly, the Complainant’s related online digital music retail website, branded ITUNES STORE, sold some 25 million songs for download within eight months of its launch in early 2003. By February 2010, over 10 billion songs had been downloaded through the Complainant’s ITUNES STORE website.
The Complainant owns numerous trademark registrations for ITUNES and marks including ITUNES in the United States and abroad. Attached to the Complaint were details of the Complainant’s United States trademark registration nos. 3213164, 3100480, 3532063, 3398242 and 2653465 for ITUNES, the earliest of which dates from January 2001, as well as copies of numerous other registrations in the United States, Australia, Canada, Singapore, Hong Kong and the European Union for marks comprising or including ITUNES.
The Complainant also operates a website relating to its ITUNES software product at “www.itunes.com”.
The disputed domain names were registered on July 6, 2003. Website print-outs annexed to the Complaint show that they have been in use at various times since at least as early as 2005 to re-direct Internet traffic to a gambling website at “www.mysportsbook.com”. Although the registrant’s true details are protected by a privacy service, the Complainant filed copies of historic WhoIs printouts showing that until recently the disputed domain names were owned by Grand Slam Co., a company with a history of registering domain names comprising or incorporating third-party trademarks and using them to re-direct Internet traffic to commercial websites unconnected to the trademark owners, including to gambling websites like (and including) the one at “www.mysportsbook.com”. According to the WhoIs print-outs attached to the Complaint, the registrar and server information for the disputed domain names remained the same when the registrant details were changed to a privacy service, and the Complainant submits that the true Respondent in this case is, in fact, Grand Slam Co.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are confusingly similar to its ITUNES trademark. It contends that this is a classic case of typo-squatting, alleging that the Respondent has deliberately registered domain names comprising the Complainant’s well-known and distinctive ITUNES trademark coupled with common typographical errors for the non-distinctive website prefix “www.” The Complainant observes that both disputed domain names are essentially mistyped versions of the Complainant’s own website address at “www.itunes.com” and claims that Internet users seeking that website by typing the domain name into a browser bar may, as a result of common typographical errors, be redirected to the gambling website linked to the disputed domain names.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not authorized the Respondent to use domain names incorporating the ITUNES trademark, nor is the Respondent commonly known by names corresponding to the disputed domain names. The Complainant alleges that the Respondent is deriving a financial benefit from linking the disputed domain names to a gambling services website, and submits that such use is neither a bona fide commercial use, nor a legitimate noncommercial or fair use.
Finally, the Complainant contends that the disputed domain names were registered and have been used in bad faith. The Complainant asserts that it’s ITUNES mark had acquired a high degree of public recognition, fame and distinctiveness and embodied valuable reputation and goodwill belonging exclusively to the Complainant by the time the disputed domain names were registered in July 2003. The Complainant submits that the Respondent’s acquisition of domain names comprising the well-known ITUNES trademark coupled with common typographical errors for the website identifier “www.” points to opportunistic bad faith, and that the Respondent’s use of domain names that are confusingly similar to the ITUNES trademark to derive income from redirecting Internet traffic to a gambling website amounts to a parasitic use of the Complainant’s trademark designed to profit from the confusion of Internet users.
The Complainant further submits that the Respondent has a pattern of such conduct, noting a number of previous cases in which findings against the Respondent have been made (The Sporting Exchange Limited v. Grand Slam Co., WIPO Case No. D2003-0800; Hilton Group Plc v. Grand Slam Co., WIPO Case No. D2003-0136; 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; and Expedia, Inc. v. Grand Slam Co., NAF Claim No. 1361168). The Complainant also points to the Respondent’s use of a privacy service as evincing a bad faith effort to conceal its true identity.
The Complainant seeks the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
As regards the identity of the Respondent in this case, the Panel agrees that the facts point to Grand Slam Co. as the likely true owner of the disputed domain names. That Grand Slam Co. was the original named registrant for several years before the registrant details changed to a privacy service, that the registrar and server information remained unchanged afterwards, and that the disputed domain names continue to point to a website with which Grand Slam Co. has been connected in other UDRP decisions, are all factors that point toward Grand Slam Co. as the entity behind the disputed domain names. The Respondent has not sought to deny this, and the Panel concludes that Grand Slam Co. is, on the balance of probabilities, the actual proprietor of the disputed domain names.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns registered trademark rights in ITUNES in the United States as well as in numerous other countries around the world. The earliest of these rights dates from 2001, some two years before the disputed domain names were registered.
The disputed domain names incorporate the Complainant’s ITUNES trademark in its entirety, adding only the prefixes “www” and “ww” and the non-distinctive domain name suffix “.com”. The letters “www” followed by a full stop are the essential prefix for all Internet website addresses when appearing in browser bars, and the omission of the full stop or the final “w” are predictable and common typographical errors made by Internet users typing website addresses into browser bars. Consequently, the disputed domain names are inherently likely to attract Internet users attempting to locate the Complainant’s website by typing a web address consisting of the Complainant’s ITUNES trademark and the universal website address prefix, “www.” into Internet browser bars.
Other panels have found similar conduct to constitute “typo-squatting” (see, inter alia, Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585, in which the panel found the domain name <wwwscania.com> to be confusingly similar to the trademark SCANIA, stating, “Many prior panel decisions have considered domain names that consist of the prefix ‘www’ affixed to a trademark as […] typo-squatting […] and have concluded that such domain names are substantially similar to the relevant trademark […] ‘www’ is the well-known acronym for ‘world wide web’ and thus [has] no distinguishing capacity in a domain name context”). In other cases involving Grand Slam Co., panels have also found the prefix “ww” as pointing to a form of typo-squatting that is likely, and is indeed designed, to ensnare Internet users who make the common typographical error of omitting the final “w” and the full stop when typing a website address into a browser bar (see The Sporting Exchange Limited v. Grand Slam Co., WIPO Case No. D2003-0800 and InfoSpace, Inc. v. Grand Slam Co. c/o Jerry Stein, NAF Claim No. 223027).
In the Panel’s view, both of the disputed domain names are confusingly similar to the Complainant’s registered ITUNES trademark.
B. Rights or Legitimate Interests
The Respondent has used the disputed domain names in order to redirect Internet traffic to a commercial gambling website. The Respondent has not denied the Complainant’s allegation that it derives revenue from this activity.
The only distinctive element of the disputed domain names is the invented word ITUNES, which the Complainant has shown in the Complaint is well-known internationally as denoting its digital media software and related music download service. The disputed domain names are clearly designed to attract Internet users seeking an Internet website relating to the Complainant and its ITUNES products and services. Use that intentionally trades on the fame and reputation of a third-party trademark in order to generate revenue does not constitute a bona fide offering of goods or services (see, inter alia, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847). The Respondent’s activities in this case do not, in the Panel’s view, amount to bona fide commercial use. The Panel notes that similar findings have been made against the presumed Respondent in other cases involving redirection to gambling websites (see, inter alia, Expedia, Inc. v. Grand Slam Co., NAF Claim No. 1361168).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of respondents (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the Respondent has not attempted to refute the Complainant’s assertions.
There is nothing in the evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain names. The Panel finds that it has none.
C. Registered and Used in Bad Faith
The evidence annexed to the Complaint demonstrates that the Complainant’s ITUNES trademark had become internationally famous as denoting the Complainant’s digital music software and download service by the time the disputed domain names were registered in July 2003.
Under paragraph 4(b)(iv), the Panel is entitled to find both registration and use in bad faith where there is evidence that by using a domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s web site or location or of a product or service on it.
In this case, the Respondent has acquired and used domain names that are confusingly similar to the Complainant’s trademark in order to redirect Internet traffic to a gambling website, apparently deriving an income thereby. The Respondent has therefore intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. The Respondent’s conduct in adopting and using domain names that are confusingly similar to the Complainant’s famous ITUNES trademark in order to profit from the redirection of Internet traffic strongly suggests opportunistic bad faith on the Respondent’s part (see, inter alia, Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585 and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 where “blatant appropriation of a universally recognized trademark” was regarded as evidence of bad faith conduct).
The Respondent appears to have deliberately adopted domain names that were likely to attract Internet users to its website as a result of their confusing similarity with the Complainant’s ITUNES trademark, in order to profit from the redirection of confused Internet users. The Panel considers that this conduct permits a finding of registration and use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel notes that other panels have reached similar conclusions in other cases involving the Respondent and redirection to websites identical or similar to the gambling website involved in this case (see The Sporting Exchange Limited v. Grand Slam Co., WIPO Case No. D2003-0800; Hilton Group Plc v. Grand Slam Co., WIPO Case No. D2003-0136; 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; and Expedia, Inc. v. Grand Slam Co., NAF Claim No. 1361168).
The Panel concludes that the disputed domain names were registered and have been used in bad faith.
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, <wwitunes.com> and <wwwitunes.com> be transferred to the Complainant.
Dated: September 20, 2011