WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apple Inc. v. Domain Privacy Ltd.
Case No. D2012-0620
1. The Parties
The Complainant is Apple Inc. of Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Domain Privacy Ltd of Marblehead, Massachusetts, United States.
2. The Domain Names and Registrar
The disputed domain names <itunes.net> and <i-tune.com> are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 26, 2012, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name itunes.net. On March 26, 2012, Fabulous.com 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 March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012.
On April 6, 2012, the Center received a supplemental filing in which the Complainant requested to add the domain names <i-tune.com> and <ituneshelper.com> to the proceeding. On April 11, 2012, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel, once appointed, for determination pursuant to its discretion.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2012.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on May 2, 2012. 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 May 14, 2012, the Panel issued Administrative Panel Procedural Order No. 1 in which it noted that the registrant for the disputed domain names <itunes.net> and <i-tune.com> was “Domain Privacy LTD” and that the registrant for the domain name <ituneshelper.com> was “Abadaba S.A“. The Panel noted that while a complaint may relate to more than one domain name, the names must be registered by the same domain-name holder. Complainant was given to May 21, 2012 to respond to the Panel Order and Respondent was given to May 23, 2012 to submit any comments it may wish to make in relation to the Panel Order.
On May 21, 2012, Complainant filed an “Amended Request for Permission to Include Additional Domain Name I-TUNE.COM and To File Second Amended Complaint.” In support of such request, Complainant noted that it only discovered that Respondent had registered the disputed domain name <i-tune.com> after the matter was instituted; that its request will cause neither delay nor undue prejudice to Respondent; that the legal issues and facts involving the domain names are common; and that the grant of such request will promote judicial efficiency.
Respondent did not submit any comments in relation to the above.
The Panel granted Complainant’s request to add the domain name <i-tune.com> to the present proceeding and the Complaint, as amended, was re-notified to the Parties on June 8, 2012. The due date to file a Response, in reference to paragraph 5(a) of the Rules, was June 28, 2012.
Respondent did not file a response by the specified date.
4. Factual Background
Complainant Apple designs, manufactures and markets a range of personal computers, mobile communication and media devices, and portable digital media players under the APPLE mark. Apple also sells a variety of related software, services, peripherals, networking solutions, and third-party digital content, all of which are advertised and sold worldwide.
Apple’s products and services include the MAC line of desktop and portable computers, the MAC OS X operating system, IPHONE mobile telecommunication devices, IPAD tablet computing devices, the IPOD line of portable digital music and video players, the APPLE TV digital media device, a portfolio of consumer and professional software, including the popular ITUNES software, along with a variety of accessory, service, and support offerings. Apple also provides a vast catalog of Apple-owned and third-party digital content through the ITUNES STORE, APP STORE, and IBOOKSTORE services. Apple has also expanded into the brick-and-mortar retail sector with its branded APPLE STORE retail stores, opening over 300 stores worldwide through September 2011. See Complaint, Exhibit C at 2.
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, Apple spent over USD 3 billion worldwide advertising its products and services. Apple’s advertising expenditures were USD 933 million, USD 691 million, and USD 501 million for 2011, 2010, and 2009, respectively. See Complaint, Exhibit C at 50.
Complainant is the holder of a substantial number of U.S. trademark and service mark registrations and applications for the ITUNES mark and related marks covering a wide variety of goods and services. See Complaint, Exhibit J. Complainant is also the owner of numerous trademark and service mark registrations throughout the world for the ITUNES mark – including in Australia, Canada, Singapore, Hong Kong, China, and the countries of the European Union, among others.
Complainant advertises and promotes its ITUNES mark on its website at the domain name “www.apple.com”. Complainant has also registered and uses the domain name itunes.com, among numerous other domain names, to deliver information to the public concerning Complainant and its products and services. The domain name <itunes.com> redirects to Apple’s popular <apple.com> domain name and website.
The disputed domain name <itunes.net> was registered on March 1, 2004. The disputed domain name <i-tune.com> was registered on September 2, 2002. See Exhibit A. The websites associated with the disputed domain names contain hyperlinks to second-level pay-per-click sites, some of which refer to Complainant and its products, such as “Apple Ipod,” “Itunes,”, “Ipod,” and “Free Music Downloads.” See Complaint, Exhibit N. One link takes a user to a second-level pay-per-click site that includes links to third-party sites promoting media devices and services that incorporate several of Complainant’s marks. See Complaint, Exhibit N. Another site includes a second-level pay-per-click site which promotes an on-line downloadable MP3 radio Internet player, which has nothing to do with Complainant or its ITUNES mark.
5. Parties’ Contentions
Complainant asserts that “[t]his case presents a classic case of cybersquatting.” Upon simple comparison, Complainant maintains, the disputed domain names are identical and confusingly similar to Complainant’s ITUNES mark. It notes that the disputed domain name <itunes.net> copies entirely Complainant’s ITUNES mark and, as such, confusing similarity must be presumed. The addition of the “.net” top-level domain, Complainant contends "is an insignificant variation to Complainant’s ITUNES Mark and does nothing to obviate the confusing similarity between the Domain Name and Complainant’s ITUNES Mark.”
With respect to the disputed domain name <i-tune.com>, Complainant notes that such domain name includes the ITUNES mark in its entirety with the deletion of an “s” and addition of a hyphen. According to Complainant, “[s]uch a minor variation to Complainant’s ITUNES mark does nothing to obviate the confusing similarity between the I-TUNE.COM domain name and ITUNES mark. Rather, the I-TUNE.COM domain name serves as a trap for unwary Internet users who mistype the domain name I-TUNE.COM, by accidentally adding a hyphen between the “I’ and “tunes” and omitting the letter S at the end of the term. This is classic typosquatting, intending to direct Internet users who misspell Complainant’s trademark to Respondent’s website and thus confusing similarity should be presumed.”
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that “[w]here, as here, Complainant’s mark is so well known and recognized, there can be no legitimate use by Respondent.” Moreover, Complainant adds, even if Respondent was not aware of Complainant’s ITUNES mark, it had a responsibility to determine whether its domain name registrations infringe or violate another’s rights.
Complainant further asserts that there is no relationship between the parties giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s ITUNES mark. The disputed domain names also are not the names or nicknames of Respondent, Complainant indicates.
According to Complainant:
“That Respondent has no legitimate interest in the Domain Names is confirmed by Respondent's use thereof. When an Internet user visits ITUNES.NET or I-TUNE.COM, the user is connected to a website with numerous hyperlinks, including such links with titles related to Complainant as "Apple Ipod," "Itunes," and "Ipod," and links to various topics such as, inter alia, "Alvin and the Chipmunks 2," "Free Music Downloads," and "Download Full Movie." Each of these links either directs the user to sites promoting third-party competitors' products, to third-party sites promoting APPLE products, and occasionally to Complainant's own website. See Exhibit N (screenshots of Respondent's website and representative third-party sites linked to Respondent's). Respondent and/or Respondent’s predecessors has used both Domain Names since at least 2009 to generate click-through revenue for profit. See Exhibit O (historical screenshot history for the Domain Names obtained through DomainTools.com and/or the Wayback Machine)..
Upon information and belief, Respondent derives a financial benefit from the web traffic that is diverted through this pay-per-click linking portal placed at both Domain Names. Such use of Complainant's Mark for the purpose of monetizing the web traffic that flows through the Domain Names is acting in bad faith and without a legitimate interest. Indeed, this use of another's mark as a domain name for the purpose of monetizing the traffic does not constitute a legitimate, bona fide offering of goods or services.”.
With respect to the issue of bad faith registration and use, Complainant contends that such is established by the fact that the disputed domain names purposefully incorporates the well-known ITUNES mark and was registered or acquired by Respondent after Complainant’s mark became well-known to consumers and the trade.
Complainant further argues that Respondent’s bad faith use is evidenced by the fact that Respondent has used and is currently using the disputed domain names to divert web traffic through a click-through revenue site with numerous hyperlinks advertising computer-related music and film products, many of which are not related to Complainant but to Complainant’s competitors. “This is being done for commercial gain by creating the impression (and, at a minimum, the initial impression) that the website is sponsored, authorized, or associated with Complainant. Given the commercial content of the websites at issue, there can be no doubt that Respondent is attempting to profit from the web traffic generated by Complainant’s ITUNES mark, and is thus acting in bad faith.”
Finally, Complainant asserts that Respondent’s bad faith is heightened by Respondent’s well-established pattern of registering and using domain names incorporating the marks, or variations thereof, of third parties to redirect Internet users to pay-per-click websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <itunes.net> is, for all intents and purposes under the Policy, identical to the ITUNES mark. The disputed domain name <itunes.net> incorporates the mark in full, adding only the non-distinctive top-level domain “.net.”
The Panel further determines that the disputed domain name <i-tune.com> is confusingly similar to the ITUNES mark. The disputed domain name <i-tune.com> merely adds a hyphen and deletes the letter “s” from the ITUNES mark. Such changes, whether viewed separately or collectively, do not detract from the domain name’s confusing similarity with the ITUNES mark.
The evidence further establishes that Complainant, as a result of its trademark registrations covering, and use of, the ITUNES mark, has rights in the mark.
Accordingly, the Panel finds that Complainant has satisfied the first element under the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant has met its burden of establishing a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. The evidence establishes that the disputed domain names are used in connection with pay-per-click sites with numerous hyperlinks featuring products associated with Complainant and its ITUNES mark and that, in many cases, are sold by Complainant’s competitors. Such use does not constitute use of the domain name in connection with a legitimate, bona fide offering of goods or services. See Champagne Lanson v. Development Services / MailPlanet.com Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 (“[U]se which intentionally trades on the fame of another cannot constitute a "bona fide” offering of goods and services.”).
There also is no evidence that Respondent is commonly known by the disputed domain names or that their use constitutes a noncommercial or fair use under the Policy.
Respondent has not responded to the Complaint and thus has not presented evidence rebutting Complainant’s case. Accordingly, the Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel rules that the disputed domain names were registered and are being used in bad faith.
As found above, the disputed domain names may be considered identical or confusingly similar to the ITUNES mark and are used in connection with a pay-per-click sites that may lead an Internet user to the sites of Complainant’s competitors. As such, the Panel finds that, through its use of the disputed domain names <itunes.net> and <i-tune.com>, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its site or other on-line locations, by creating a likelihood of confusion with Complainant’s ITUNES mark as to the source, sponsorship, affiliation, or endorsement of its sites or of a product or service on such sites, within the meaning of paragraph 4(b)(iv) of the Policy. See Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith); see also Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 (generation of revenue from domain name parking or other advertising activities is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another party in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to respondent's webpage); Charlotte Ruses Holding, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0371 (recognizing that the registration of a domain name which is confusingly similar to complainant's trademark, and which is then used to operate a “click-through” site, will be considered to be evidence of bad faith).
Accordingly, the Panel finds that the Complainant has satisfied the third element 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 names <itunes.net> and <i-tune.com> be transferred to the Complainant.
Jeffrey M. Samuels
Date: June 30, 2012