World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apple Computer, Inc. v. PrivacyProtect.org / Private Registrations Aktien Gesellschaft

Case No. D2012-0879

1. The Parties

The Complainant is Apple Computer, Inc. of Cupertino, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is PrivacyProtect.org of Queensland, Australia / Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.

2. The Domain Name and Registrar

The disputed domain names <applestor.com> and <wwwitune.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On April 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 26, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2012 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 May 1, 2012.

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 May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2012.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on June 7, 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.

4. Factual Background

The Complainant is Apple Inc., which designs, manufactures and markets a wide range of personal computers, mobile communication and media devices, and portable digital media players.

The Complainant’s Apple brand is one of the best-known brands in the world. The Complainant also sells a variety of related software, services, peripherals, networking solutions, and third-party digital content, all of which are advertised and sold worldwide. The Complainant’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.

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 and as a result of such extensive use and promotion of the Apple brand and associated marks, including the mark ITUNES, the Complainant and its trademarks have become exceptionally famous worldwide.

The Complainant owns a substantial number of United States trademark and service mark registrations for the APPLE word mark and the APPLE logo design mark (“APPLE Marks”); in addition, the Complainant owns a number of United States trademark and service mark registrations for APPLE in connection with other terms, including APPLE STORE.

Moreover, the Complainant submitted documents that it is the owner of numerous registrations for the APPLE Marks throughout the world, including but not limited to the countries of the European Community, China, Canada, Singapore, Hong Kong, and Australia.

The Complainant has also registered and uses, inter alia, the domain names <apple.com>, <applecomputer.com>, and <applestore.com> to deliver information concerning its products and services. According to the comScore Media Metrix, a report tracking online activity released by leading Internet marketing research company comScore, the Complainant was the eleventh most popular United States web property in December 2011 with over 83 million unique visitors in the month.

The Complainant is also the holder of a substantial number of United States trademark and service mark registrations and applications for the ITUNES mark and related marks, covering a wide variety of goods and services. These include registrations for ITUNES, ITUNES STORE, ITUNES MUSIC STORE, ITUNES PLUS, ITUNES EXTRAS, ITUNES PASS, and THE ITUNES DOWNLOAD.

Also the ITUNES mark was registered by the Complainant throughout the world, including in Canada, Australia, Hong Kong, and the countries of the European Union (CTM). The Complainant has also registered and uses the domain name <itunes.com> that redirects to the Complainant’s massively popular <apple.com> domain name and website to deliver information to the trade and the public concerning the Complainant and its products and services.

According to the publicly-available WhoIs information, the disputed domain name <applestor.com> was created on August 15, 2005, and the disputed domain name <wwwitune.com> was created on March 15, 2004.

According to the evidence submitted by the Complainant, the disputed domain name <applestor.com> was used in connection with web pages that harvest valuable personal information about users, while the disputed domain name <wwwitune.com> is used in connection with a searchable portal website with different commercial links to the Complainant as well as to the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that Apple brand is one of the best-known brands in the world, extensively used and promoted.

Over the course of more than 30 years of operation, the Complainant has won a fiercely loyal customer base, and the Apple brand has become one of the most recognized, celebrated, and valuable brands in the world, as proved by several press reports and brand awareness surveys, exhibited by the Complainant.

The indisputable renown of the Complainant and its Apple brand has been confirmed by several decisions rendered by many international and national judicial and arbitral bodies.

As a result of the Complainant’s substantial marketing, advertising, and promotional efforts and activities in connection with the APPLE Marks, they have acquired a high degree of public recognition and distinctiveness as a symbol of the source of high quality services offered by the Complainant and embody valuable reputation and goodwill belonging exclusively to the Complainant.

Concerning the ITUNES mark, the Complainant contends that it has extensively used the mark ITUNES since at least January 9, 2001 when the launch of the Itunes software application was announced.

The early success of the Itunes software application and, later, of the Itunes STORE retail services are directly intertwined with the massive success of the world-famous IPOD portable media player device, introduced in October 2001. By October 2001, the Itunes software application had been distributed to over six million users. On April 28, 2003, the Complainant announced the launch of the Itunes Music Store retail services (now known as the “Itunes Store”). The Itunes Store was an immediate smash success, as over one million songs were sold in the store’s first week. By September 2003, ten million songs had been sold through the Complainant’s Itunes Store services, and by December 2003, over 25 million songs. The meteoric rise of the Itunes Store service has continued since 2004, and the Itunes Store E service today offers a wide variety of media for sale and/or rental, including movies, television shows, and podcasts. As of February 2010, over 10 billion songs had been downloaded through the Complainant’s Itunes Store services.

As a result of the Complainant’s substantial marketing, advertising, and promotional efforts and activities in connection with the ITUNES mark, also the ITUNES sign, as the APPLE Marks, is recognized and associated by the consuming public and the trade with the Complainant. Accordingly, the ITUNES mark has acquired a high degree of public recognition, fame, and distinctiveness as a symbol of the source of high quality goods and services offered by the Complainant, and embodies valuable reputation and goodwill belonging exclusively to the Complainant.

The Complainant contends that the disputed domain name <applestor.com> is nearly identical and confusingly similar to the Complainant’s famous APPLE and APPLE STORE marks as well as the <applestore.com> domain name registered by the Complainant, because it incorporates the entirety of the famous APPLE STORE mark with the deletion of an “e”; such minor variation is not sufficient to distinguish the disputed domain name from the trademarks owned by the Complainant or to avoid confusion.

The Complainant contends that similarly, the disputed domain name <wwwitune.com> is nearly identical and confusingly similar to the Complainant’s famous ITUNES mark and the disputed domain name <itunes.com>, as it includes the mark in its entirety with the addition of “www” before the mark and the deletion of an “s” at the end of the mark. Also these variations are not sufficient to distinguish the disputed domain name from the trademark owned by the Complainant or to avoid confusion.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s marks and name. The Respondent is not generally known by the disputed domain names, and has not acquired any trademark or service mark rights in the name or marks.

Moreover, the disputed domain names cannot be considered basis for a bona fide offering of goods or services. As a matter of fact, the Respondent registered and used the disputed domain name <applestor.com> for commercial gain by using it to redirect Internet traffic to web pages that harvest valuable personal information about users and the use of the Complainant’s marks and name for the disputed domain name to obtain sensitive personal identification information, including names and email addresses, does not constitute a legitimate or bona fide use. Similarly the disputed domain name <wwwitune.com> has been used to list links to different websites, some of which offer products or services from competitors of the Complainant. Even though some of those links pertain to the Complainant, many do not.

Since the Respondent has registered and is using the disputed domain names with the clear intention to use the Complainant’s marks and name for its own profit it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.

The Complainant contends 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 and name.

The Respondent’s bad faith registration is established by the fact that the disputed domain names incorporate the Complainant’s famous APPLE, APPLE STORE, and ITUNES marks almost completely in their entirety and were acquired long after the Complainant’s marks and name became well-known. Further, the Respondent’s disputed domain names are simply misspellings of the Complainant’s marks and name.

The Respondent’s bad faith use of the disputed domain names is evidenced by the fact that Respondent is profiting from the disputed domain names. More precisely, the Respondent has sought to profit from the disputed domain name <applestor.com> by using it to promote an incentivized freebie website that harvests sensitive user information and delivers “Sponsor Offers” to users. And the Respondent is likewise acting in bad faith by registering and using the disputed domain name <wwwitune.com> to divert web traffic to a click through revenue website, advertising music and computer-related products for commercial gain.

The Complainant contends that the Respondent’s bad faith registration is also evidenced by the fact that the Respondent originally failed to identify itself by choosing to conceal its name, address and contact information by using an identity protection service in connection with the disputed domain names. Such use of concealed contact information, in combination with the Respondent’s blatant exploitation of the Complainant’s marks and name for commercial gain, is further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the disputed domain names registered by the Respondent 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 registered by the Respondent have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are nearly identical and confusingly similar to the Complainant’s trademarks, which have to be considered strong, distinctive and famous marks, on the basis of their worldwide reputation and goodwill in connection with the wide range of products and services in the field of technology (personal computers, mobile communication, media devices, portable digital media players, hardware, software, peripherals, operating system, mobile telecommunication devices, etc).

In particular, the disputed domain name <applestor.com> differs from the Complainant’s trademark APPLE STORE only for the deletion of an “e”. And the disputed domain name <wwwitune.com> differs from the Complainant’s ITUNES mark, only for the addition of the prefix “www” and the deletion of an “s”.

Such minor differences and the adding of the prefix “www” in the disputed domain name <wwwitune.com> cannot be considered factors of differentiation (see Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441) and are not enough to prevent a confusing similarity between the disputed domain names and the incorporated trademarks (see Cr édit Industriel et Commercial S.A. Banque Scalbert Dupont S.A. v. Laporte Holdings, Inc., WIPO Case No. D2004-1110).

Furthermore, the disputed domain names are mere misspellings or predictable mistyping of the Complainant’s marks and, according with the Complainant’s view, the Panel finds that the Respondent has intentionally registered them in order to take advantage from the typographical errors made by Internet users seeking the Complainant’s website and to divert them to the Respondent’s website, and thus confusing similarity should be presumed (besides the WIPO decisions mentioned by the Complainant, see Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2000-1293).

Finally, with regards to the suffix “.com” (which indicates that the disputed domain names are registered in the “.com” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

There is no doubt that the disputed domain names <applestor.com> and <wwwitune.com> are confusingly similar to the Complainant’s trademarks. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain names, such as:

(i) use or preparation to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain names.

The Complainant states that there is and has never been a relationship between the Complainant and the Respondent. The Respondent is not affiliated or related to the Complainant, nor is a licensee of the Complainant and no authorization has been granted to the Respondent to use the trademarks APPLE, APPLE STORE, or ITUNES.

The Respondent is not generally known by the disputed domain names, and it has not acquired any trademark or service mark rights in the name or marks.

Furthermore, the use of the disputed domain names cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain names, the Respondent clearly intended to profit from the use of the disputed domain names which are confusingly similar to the Complainant’s trademarks, diverting Internet users, solely for commercial gain.

Indeed, the Complainant provided evidence in an annex to the Complaint that by typing the disputed domain name <applestor.com>, the Internet traffic has been redirected to web pages that harvest valuable personal information about users including names and email addresses. The infringing website connected with <applestor.com> is an example of a phishing website and cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy (see Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031 and MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051).

The disputed domain name <wwwitune.com> has been used to list links to different websites, some of which offer products or services from competitors of the Complainant, and others pertain to the Complainant; in other word by typing the disputed domain name <wwwitune.com>, Internet users are diverted to websites where pay-per click links exist and generate gain for the Respondent.

Since the Respondent has registered and is using the disputed domain names with the clear intention to use the Complainant’s marks and name for its own profit it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090) it may be the case that “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.

Therefore, based on the evidence, the Panel is satisfied that the second element is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain names were registered and are being used in bad faith.

The Complainant’s name, trademarks and activity are well-known throughout the world and considering the widespread use and fame of the Complainant’s trademarks, in this Panel’s view the Respondent must have been aware of them when it registered the disputed domain names. And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain names consisting in misspelled versions of the Complainant’s trademarks.

As the Panel has found that the Respondent has no right or legitimate interest in the disputed domain names, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, given the circumstance of this case and in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent’s registration of disputed domain names confusingly similar to the Complainant’s worldwide well-known trademarks suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Concerning the use of the disputed domain names, there is evidence that suggests that the Respondent used the disputed domain name <applestor.com> to attract Internet users to phishing websites and deceive them into divulging private information. The Respondent very likely gained from the illegitimate use of users’ sensitive information. As state in several previous UDRP decisions, these actions constitute bad faith registration and use pursuant to the Policy (See Halifax Plc. v. Sontaja Sanduci, WIPO Case No. D2004-0237 and MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051).

Concerning the disputed domain name <wwwitune.com>, the Complainant has proven that it has resolved to a searchable portal website, offering several commercial links to different websites where information concerning the Complainant’s services and products as well as those of the Complainant’s competitors are offered. In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services and to obtain information about the Complainant’s activity, to another variety of advertising music and computer-related products and services, by creating a likelihood of confusion with the Complainant’s trademarks and business. By exploiting the renown of the Complainant’s trademarks, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the disputed domain name by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325).

Furthermore, according with the Complainant’s opinion, also in the Panel’s view the use of a proxy registration service to avoid disclosing the name and contact details of the real party owner of the disputed domain names, is also consistent with an inference of bad faith in registering and using the disputed domain names in this case, given the evidence in this case of evasive and irresponsible conduct and of the Respondent’s blatant exploitation of the Complainant’s marks and name for commercial gain (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 cited by Complainant, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311).

Finally as proved by the Complainant, the Respondent whose real identity and contact information were disclosed by the Registrar to the Center after the Complaint had been filed is an habitual cybersquatter engaged in a pattern and practice of registering and using in bad faith domain names corresponding to the well-known trade names and/or marks of third parties. Indeed a search in the publicly available UDRP decisions, reveals seven recent decisions made against the Respondent in UDRP cases covering a broad range of domain names, suggesting that the Respondent is, in this Panel’s opinion, a serial cybersquatter (see, cited by the Complainant, Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898 describing the Respondent as a “serial cybersquatter”; see also Siemens AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2011-1163 recognizing the Respondent’s pattern of bad faith registrations; Scholarship America, Inc. v. Private Registrations Aktien Gesellschaft, NAF Claim No. 1387326 “[the] [R]espondent has been the respondent in multiple prior UDRP proceedings resulting in the transfer of the disputed domain names in those cases to the respective complainants”).

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain names <applestor.com> and <wwwitune.com> were registered and are being used in bad faith.

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 disputed domain names, <applestor.com> and <wwwitune.com> be transferred to the Complainant

Alessandra Ferreri
Sole Panelist
Dated: June 21, 2012

 

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