World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apple Inc. v. David Shaban

Case No. D2012-1176

1. The Parties

Complainant is Apple Inc. of Cupertino, California, United States of America (“U.S.”) represented by Kilpatrick Townsend & Stockton LLP, U.S.

Respondent is David Shaban of Los Angeles, California, U.S.

2. The Domain Name and Registrar

The disputed domain name <asiaapple.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2012. On June 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 June 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2012.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on July 24, 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

Complainant, under its APPLE trademark, designs, manufactures and markets a range of personal computers, mobile communication and media devices, portable digital media players and related software, all of which are advertised and sold worldwide.

Complainant has extensively promoted its Apple branded goods worldwide.

Complainant owns the following trademarks and service marks for the APPLE word mark on the Principal Register of the United States Patent and Trademark Office:

U.S. Reg. Nos. 1,078,312; 1,144,147; 1,895,326; 2,079,765; 2,808,567; 3,038,073; 3,226,289; 3,621,571; and 4,088,195;

and the following registrations for the APPLE and Design mark on the Principal Register of the United States Patent and Trademark Office:

U.S. Reg. Nos. 1,114,431; 2,715,578; 2,753,069; 2,870,477; 3,298,028; and 3,679,056.

In addition, Complainant owns trademark registrations for the APPLE mark throughout the world, including but not limited to registrations in the European Community, China, Canada, Singapore, and Australia.

Complaint owns the <apple.com>, <applecomputer.com>, and <applestore.com> domain names.

Respondent owns the domain name at issue which was registered on August 15, 2011 and expires on August 15, 2016.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:

The disputed domain name is confusingly similar to Complainant’s APPLE trademark as it contains the exact mark APPLE, preceded by the generic geographic term “asia”. Use of a famous mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the famous mark.

Respondent appears to have registered the disputed domain name in an attempt to register a Doppelgänger domain, which constitutes a form of typoquatting, but instead of involving a misspelling, it involves an omission of the punctuation between the sub-domain and domain.

With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:

Since Complainant’s APPLE mark is so well-known and recognized there can be no legitimate use by Respondent.

Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain name.

There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use a domain name incorporating Complainant’s APPLE mark. The disputed domain name is not, nor could it be contended to be, a name or nickname of Respondent.

Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Respondent has registered the disputed domain name to profit from click-through revenue derived from links to third-party commercial websites. When an Internet user connects to the disputed domain name, the user is connected to a parked website with hyperlinks that direct the user to sites that promote Apple products and to sites that promote products and services of parties wholly unrelated to Complainant, including those of competitors. Such use of the disputed domain name does not constitute a legitimate, bona fide offering of goods or services.

With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:

Respondent’s bad faith registration is established by the fact that the disputed domain name incorporates Complainant’s famous APPLE Mark in its entirety, was acquired long after Complainant’s mark and name became well-known, and is being used to generate click-through revenue.

B. Respondent

Respondent did not respond to Complainant’s contentions and has thereby defaulted.

Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

2) that the respondent has no rights or legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Given Complainant’s long use of the APPLE trademark and its ownership of numerous United States registrations as well as registrations in the European Community, China, Canada, Singapore, and Australia, the Panel finds that Complainant has trademark rights in the APPLE trademark. The Panel also finds that the disputed domain name is nearly identical and confusingly similar to Complainant’s APPLE mark. The disputed domain name <asiaapple.com> incorporates Complainant’s entire APPLE mark and adds only the geographic term “asia” and the generic top level domain (gTLD) “.com”. The gTLD “.com” can be disregarded for purposes of confusing similarity under the UDRP. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”); Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922 (“the addition of a geographically descriptive term to a mark does not exclude confusing similarity with the mark”); and BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097 (finding a domain name confusingly similar to a mark where the respondent merely added a country name to a well-known trademark).

The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In order for a respondent to demonstrate rights or legitimate interests in a domain name, it must show:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

Complainant alleges that at the time that the Complaint was filed, the disputed domain name was a parked page and did not constitute a bona fide offering of goods and services. Respondent is not known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

Complainant alleges that Respondent appears to be profiting from click-through revenue derived from links to third-party commercial websites offering Complainant’s competitors’ products or products wholly unrelated to Complainant. The links at Respondent’s website at “www.asiaapple.com” allegedly at the time of filing of the Complaint linked to competitors such as Sony. Complainant’s Exhibit L shows a link to a “Sony Multimedia Player.”

Because Respondent is exploiting the trademark value of the APPLE mark, its use is not bona fide under the Policy paragraph 4(a)(ii). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Section 2.6; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (finding that a parked page exploiting trademark value to link to competitors is not a bona fide use).

The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent was obviously aware of Complainant’s long established rights in the APPLE trademark when it registered the disputed domain name on August 15, 2011. Respondent’s website as of the filing of the Complaint is a parked page that contains links to competitor’s products. This supports a finding of bad faith registration. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. HostMonster.com INC / Stephen Lee, WIPO Case No. D2010-1355. See also, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).

Respondent has not rebutted Complainant’s allegation of bad faith use. Under paragraph 4(b)(iv) of the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.

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 name <asiaapple.com> be transferred to Complainant.

Lawrence K. Nodine
Sole Panelist
Date: August 7, 2012

 

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