WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apple Inc. v. William Fernandez
Case No. D2011-1387
1. The Parties
Complainant is Apple Inc., Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is William Fernandez, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <appleproductsonline.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2011. On August 16, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name and on the same date, 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 Respondent of the Complaint, and the proceedings commenced on August 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 13, 2011.
The Center appointed Andrew S. Mansfield as the sole panelist in this matter on October 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
Complainant’s APPLE trademark is one of the most recognized trademarks in the world, with an estimated value of over USD 153 billion. Complainant designs, manufactures and markets 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. Its products and services include the “Mac” line of desktop and portable computers, including the “Macbook” and “Macbook Pro” portable computers, “iPhone” mobile telecommunication devices, “iPad” tablet computing devices, “iPod” line of portable digital music and video players, “Apple” TV digital medial device and “iTunes” software.
Complainant is the owner of several trademark and service mark registrations throughout the world for the APPLE, IPOD, IPHONE, MAC, MACBOOK and MACINTOSH trademarks, dating from 1977. Complainant advertises and promotes its trademarks on its website, which resolves from the domain name <apple.com>. It has also registered and uses the domain names <ipod.com>, <iphone.com>, <macbrookpro.com> and <mac.com>, amongst others, which redirect to the “www.apple.com” web site. Of import to this Complaint is the fact that Apple Inc. owns and operates numerous retail stores and an extensive online store at “www.apple.com” and “www.applestore.com” which resolves to Apple Inc.’s online store. The website at “www.apple.com” receive tens of millions of visitors per month.
As mentioned, Apple Inc. has expanded into the brick-and-mortar retail sector with its branded Apple Store retail stores, opening over 300 stores worldwide through September 2010. The APPLE STORE mark is used extensively on Complainant’s website at “www.applestore.com”, where Complainant offers products and services for online sale under the APPLE STORE name and trademark.
During the period from 1994 through 2008, Apple Inc. spent over USD 3 billion worldwide advertising its products and services. Apple Inc. is undeniably one of the most famous trademarks in the world. For example, as submitted by Complainant in an exemplary Annex to the Complaint, Interbrand, a brand consultancy, has consistently recognized Complainant’s APPLE trademark as belonging in the top 50 of the world’s most valuable trademarks. In 2010, Interbrand ranked the APPLE trademark as the 17th most valuable trademark in the world, with an estimated brand worth of USD 21,143 billion.
Apple Inc owns so many trademarks concerning the APPLE trademark it is difficult to list a sufficient number to provide an example of Apple Inc’s trademark library. Complainant indicates it 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. In particular, Complainant owns United States Registrations Nos. 1,078,312; 1,144,147; 1,895,326; 2,079,765; 2,808,567; 3,038,073; 3,226,289; and 3,621,571 for the APPLE word mark; and United States Registrations Nos. 1,114,431; 2,715,578; 2,753,069; 2,870,477; 3,298,028; and 3,679,056 for the APPLE logo design mark, covering, inter alia, computers hardware and software in Class 9; printed materials and publications in Class 16; electronic games in Class 28; retail credit services in Class 36; electronic transmission of data in Class 38; electronic recording of photographic images in Class 40; education and training services in Class 41; and computer consultation services in Class 42.
In addition, Complainant states that it owns a number of United State trademark and service mark registrations for APPLE in connection with other terms. Most notably, Complainant owns United States Registrations Nos. 3,710,912; 2,683,410 and 2,462,798 for APPLE STORE covering, inter alia, online retail store services, technical consulting services, and training services. Representative printouts from the USPTO trademark database pertaining to Complainant’s United States registrations for many of these trademarks (the “APPLE Marks”), including all of the above-referenced trademarks, are annexed hereto as Exhibit L to the Complaint. All of the foregoing registrations are valid and subsisting.
The disputed domain name <appleproductsonline.com> was registered on July 30, 2009.
5. Parties’ Contentions
Complainant first asserts that the disputed domain name is confusingly similar to Complainant’s trademarks. Respondent’s disputed domain name is identical and/or confusingly similar to Complainant’s well-known APPLE word mark, as it fully incorporates the APPLE word mark in its entirety. Complainant argues that when a disputed domain name incorporates a complainant’s trademark in its entirety, confusing similarity must be presumed, notwithstanding the addition of a generic term, such as “products” or “online.” Further, Complainant alleges that consumers who come across the disputed domain name and/or search the Internet for information about Complainant or Complainant’s servers or related services by using Complainant’s names and trademarks may be directed to the disputed domain name and associated web site, thereby creating a likelihood of confusion. For these reasons, Respondent’s disputed domain name is identical or confusingly similar to Complainant’s APPLE trademarks.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name. This results from the fact that Complainant’s rights in the APPLE and APPLE STORE trademarks predate Respondent’s registration of the disputed domain name. Complainant notes that this issue of timing places the burden on Respondent to establish rights or legitimate interests in the disputed domain name. In addition, Complainant indicates that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the domain name.
Complainant argues that Respondent has not met the burden of demonstrating rights or legitimate interests in the disputed domain name.
Finally, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the likely confusion that the disputed domain name, and associated website entitled “Apple Store,” are connected with Complainant. Here, Respondent’s bad faith registration of the disputed domain name is established by the fact that the disputed domain name completely incorporates Complainant’s APPLE word mark and was acquired long after the APPLE word mark became famous.
Complainant requests that the disputed domain name be immediately transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
iii. The disputed domain name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”
The Panel proceeds to each of these elements below.
A. Identical or Confusingly Similar
The disputed domain name incorporates the trademark APPLE in its entirety. Numerous UDRP decisions have reiterated that “the mere addition of common terms” to a trademark “does not change the overall impression of the designations as being a domain name connected to the Complainant.”. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services (March 28, 2001), WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja (December 9, 2000), WIPO Case No. D2000-1409 and America Online, Inc. v. Chris Hoffman (November 19, 2001), WIPO Case No. D2001-1184. In this case, the disputed domain name consists solely of the words “products” and “online” in addition to the trademark APPLE.
Apart from the identity of the main portion of the disputed domain name with Complainant’s well-known trademark, the words that are added to APPLE in the disputed domain name further create confusion. Those words, “products” and “online” could imply that Complainant is selling products online. The disputed domain name is confusingly similar to many APPLE trademarks.
The Panel finds that Complainant has satisfied Paragraph 4(a)(i) of the Policy. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel is satisfied that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in a disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the domain name in bad faith:
“i. Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
ii. The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 or location or of a product or service on Respondent’s website or location.”
It is clear that Respondent registered and is using the disputed domain name in violation of paragraph 4(b)(iv) of the Policy. Respondent has registered and used the disputed domain name in connection with an “www.amazon.com” affiliate website. When a consumer arrives at the website located at the disputed domain name, the website displays the APPLE trademark in its title bar and prominently features the APPLE trademark and APPLE logo mark across the top of the website, while also displaying numerous banner advertisements. This confusion is only exacerbated by Respondent’s operation of an “www.amazon.com” affiliate website, wherein Respondent offers links to sales of APPLE products and products unaffiliated with Complainant on “www.amazon.com”, thereby directly competing with Complainant’s own online sales through its website.
In the Panel’s view, Complainant has satisfied the requirements of paragraph 4(b) 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 disputed domain name, <appleproductsonline.com>, be transferred to Complainant.
Andrew S. Mansfield
Dated: October 23, 2011