WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apple Inc. v. Stanley Pace (a.k.a. Jordan Smith, Chris Carter, sunhei.org, Keith Besterson, Shahamat, Staci Michele and Courtney Culbertson) and Fundacion Private Whois
Case No. D2013-1313
1. The Parties
1.1 The Complainant is Apple Inc. of Cupertino, California, United States of America ("U.S.") represented by Kilpatrick Townsend & Stockton LLP, U.S.
1.2 The Respondent is Stanley Pace of Flower Mound, Texas, U.S. and Fundacion Private Whois (the identity of which is not clear but appears to be an entity based in Panama).
2. The Domain Names and Registrars
2.1 The disputed domain names <apole.com>, <findmyipad.com>, <hackmyipod.com>, <ipa-iphone.net>, <iphonefc.com>, <iphonelyrics.com>, <ipodcleaner.com> and <ipodtouch5.com> (the "First Registrar Domain Names") are registered with Fabulous.com (the "First Registrar").
2.2 The disputed domain names <freeiphonesoft.com> and <macbook7.com> (the "Second Registrar Domain Names") are registered with Internet.bs Corp (the "Second Registrar").
2.3 The disputed domain name <jailbreakmyipad.com> (the "Third Registrar Domain Name") is registered with Dynadot, LLC (the "Third Registrar").
2.4 In this decision, the First Registrar Domain Names, the Second Registrar Domain Names and the Third Registrar Domain Name are together referred to as the "Domain Names" and the First Registrar, Second Registrar and Third Registrar are together referred to as the "Registrars".
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2013. At the date of the Complaint, the Domain Names were recorded on the publically available WhoIs database as follows:
(i) In the case of the First Registrar Domain Names:
<apole.com> Whois Privacy Services Pty Limited
<findmyipad.com> Stanley Pace
<hackmyipod.com> Whois Privacy Services Pty Limited
<ipa-iphone.net> Stanley Pace
<iphonefc.com> Whois Privacy Services Pty Limited
<iphonelyrics.com> Whois Privacy Services Pty Limited
<ipodcleaner.com> Whois Privacy Services Pty Limited
<ipodtouch5.com> Whois Privacy Services Pty Limited
(ii) In the case of the Second Registrar Domain Names:
<freeiphonesoft.com> Fundacion Private Whois
<macbook7.com> Fundacion Private Whois
(iii) In the case of the Third Registrar Domain Name:
<jailbreakmyipad.com> Chris Carter
3.2 In its Complaint, the Complainant contended that all of the Domain Names were in fact controlled by Stanley Pace.
3.3 On July 19, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. All the Registrars responded to that request by July 22, 2013 providing registrant details as follows:
(i) In the case of the First Registrar Domain Names:
<apole.com> Jordan Smith
<findmyipad.com> Keith Besterson
<hackmyipod.com> Shahamat
<ipa-iphone.net> Staci Michele
<iphonefc.com> Courtney Culbertson
<iphonelyrics.com> Shahamat
<ipodcleaner.com> Shahamat
<ipodtouch5.com> Shahamat
(ii) In the case of the Second Registrar Domain Names:
<freeiphonesoft.com> Fundacion Private Whois
<macbook7.com> Fundacion Private Whois
(iii) In the case of the Third Registrar Domain Name:
<jailbreakmyipad.com> Chris Carter
3.4 The Center sent an email communication to the Complainant on July 25, 2013 providing the registrant and contact information disclosed by the Registrars and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on July 31, 2013. In that Amended Complaint, the Complainant continued to maintain that all the Domain Names were controlled by Stanley Pace and contended that the proceeding could and should proceed as "consolidated" proceedings in relation to all of the Domain Names.
3.5 The Center verified that 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").
3.6 In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 7, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2013.
3.7 On September 18, 2013, the Center received an email from "Lorin Pace" at an email address associated with Stanley Pace ("Mr. Pace") in the WhoIs details for the domain names <ipa-iphone.net> and <findmyipad.com> at the time the Complainant was filed. The email incorporated the following statement:
"In case it is helpful to the case, I would support an amicable resolution but I no longer have control of any of the domain names in case D2013-1313
I am not the current registrant of these domain names, and some of the domains are registered at registrars I never opened an account with like Internet.bs.
I did own some of the domain names in the past, although domains like macbook7.com and freeiphonesoft.com have been registered to another party for many years.
I would appreciate not being included in this case since there is nothing I can do to help and I am not the registrant for any of these domains."
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 20, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
4.1 The Complainant and its products are very well known throughout the world. It designs, manufactures, markets, and sells a range of personal computers, mobile communication and media devices, portable digital media players, and related software and services. Its products include "Macbook" portable computers, "iPhone" telecommunication devices, "iPad" tablet devices and the "iPod" line of portable digital media players. It also uses the "Apple" brand in connection with its products and various software.
4.2 As one would expect, the Complainant has a very extensive portfolio of registered trademarks around the world that comprise or incorporate its name and the names of its products. It is sufficient for the purpose of the present proceeding to refer, by way of example, to the following marks:
(i) U.S. registered trade mark number 1078312 filed on March 25, 1977 and registered on November 29, 1977 for the mark APPLE in class 9;
(ii) U.S. registered trade mark number 3089390 filed on October 18, 2001 and registered on May 9, 2006 for the mark IPOD in class 9;
(iii) U.S. registered trade mark number 3222089 filed on February 22, 2006 and registered on March 27, 2007 for the mark MACBOOK in class 9;
(iv) U.S. registered trade mark number 3669402 filed on January 8, 2007 and registered on August 11, 2009 for the mark IPHONE in class 9; and
(v) U.S. registered trade mark number 3776575 filed on March 7, 2003 and registered on April 20, 2010 for the mark IPAD in class 9.
4.3 The Domain Names were first registered (in date order) as follows:
<ipodcleaner.com> February 25, 2003
<hackmyipod.com> August 1, 2006
<iphonelyrics.com> October 24, 2007
<apole.com> February 2, 2009
<freeiphonesoft.com> October 5, 2009
<macbook7.com> December 17, 2009
<jailbreakmyipad.com> January 27, 2010
<findmyipad.com> January 27, 2010
<ipa-iphone.net> February 8, 2010
<iphonefc.com> March 19, 2010
<ipodtouch5.com> September 16, 2010
4.4 On June 10, 2011, the Complainant’s lawyers wrote to Mr. Pace to complain about the fact that he had registered eleven domain names that incorporated either one of the Complainant’s marks or a variant of one of those marks and was using them for pay-per-click websites. Three of those domain names are part of the Domain Names in the present proceeding (i.e. <apole.com>, <freeiphonesoft.com> and <macbook7.com>).
4.5 The Complainant’s sending of that letter appears to have prompted the transfer of some of these domain names (including the three domain names, <apole.com>, <freeiphonesoft.com> and <macbook7.com) into other registrant names.
4.6 For the most part, the Domain Names have since registration been used to display pay-per-click web pages. However, in the case of <apole.com>, the domain name has also been used to dynamically redirect Internet users to other websites. These websites have included the legitimate websites of other businesses (e.g. "www.homedepot.com" and "www.monster.com"). However, it has also included other websites that on their face appear to be engaged in various phishing or other fraudulent activity.
5. Parties’ Contentions
A. Complainant
5.1 The amount of material filed in this proceeding is voluminous. The case file provided to the Panel (which includes correspondence sent or received by the Center) amounts to 821 pages, and there is also a separate file of exhibits of an additional 764 pages.
5.2 A large part of the material filed by the Complainant is said to support the Complainant’s contention that all of the Domain Names are in fact controlled by Mr. Pace. The position here is undoubtedly factually complex, and the Complainant’s claims and the material relied upon to support those claims are described in greater detail later on in this Decision.
5.3 So far as the substance of the remainder of the Complainant’s case is concerned, it can be summarised relatively simply as follows:
(i) all of the Domain Names, except the domain name <apole.com>, incorporate one of the Complainant’s marks in its entirety in combination with ordinary English words;
(ii) in the case of <apole.com>, the domain name represents a "classic case of typosquatting" with the second "P" in the APPLE mark being replaced with letter "O", which is next to the letter "P" on a standard qwerty keyboard;
(iii) given this, the Domain Names are all confusingly similar to at least one mark in which the Complainant holds rights;
(iv) Mr. Pace is a serial cybersquatter who has an extensive history of registering domain names that incorporate the trademarks of others with a view to gaining some advantage for himself by unfairly trading off the reputation of those trademarks;
(v) once it is accepted that Mr. Pace still controls all of the Domain Names, and once one has considered Mr. Pace’s documented past activities, the uses made of the Domain Names to date and the various "sham" transfers that have taken place, it becomes clear that all of the Domain Names have been registered and used in order to take advantage (primarily by the monetising of web traffic) of the similarity of the Domain Names with the Complainant marks; and
(vi) in these circumstances, the Complainant contends that Mr. Pace has no right or legitimate interest in the Domain Names and that the Domain Names have all been registered and used in bad faith.
B. Respondent
5.4 No one claiming to be the Respondent replied to the Complainant’s contentions although there is the curious email dated September 18, 2013 referred to in the Procedural History of this Decision. The Panel notes that this purports to come from someone who shares the same surname as the individual who the Complainant claims to retain control over the Domain Names.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a Response.
6.2 Where no Response is filed, the Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, 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".
6.4 The Panel will address each of these requirements in turn. However, before doing so, it first needs to address the procedural point, whether this single proceeding can continue in respect of all eleven Domain Names, notwithstanding the fact that WhoIs details for the Domain Names now appear to show seven different "registrants".
A. Multiple Registrants
6.5 Paragraph 4.15 of the WIIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") addresses the issue of whether one proceeding can be brought against multiple respondents. It suggests that where a complaint is brought against more than one "respondent", the question is whether:
"(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties."
This paragraph then goes on to state:
"In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted."
6.6 The issues have been explored in some detail by this Panel in a number of decisions including, RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, et al., WIPO Case No. D2010-0894 and most recently in Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou, Fujian Anfu, WIPO Case No. D2012-0888. In the last of these decisions, this Panel suggested that the use of the word "consolidation" is inapposite in a case such as this where the issue is not one of consolidation of separate proceedings, but whether a single proceeding that has been commenced against multiple respondents should continue. However, this is a point of terminology rather than substance. If a complaint shows that a number of domain names, prima facie registered in different names, are in fact under common control, then a panel can proceed to a single decision in relation to all of those domain names.
6.7 In the present case, the Complainant contends that this is a case where there is common control and that the common controller in this case is one Mr. Pace. It is, therefore, necessary to examine each of the relevant Domain Names in turn to establish whether the Complainant has made out its case in this regard.
(a) <apole.com>
6.8 So far as <apole.com> is concerned, the Complainant contends that Jordan Smith, the name in which this domain name is currently registered, is a pseudonym for Mr. Pace. It refers in this respect to the decision in Novartis AG v. Jordan Smith / Stanley Pace, WIPO Case No. D2009-1738. This was a case where, shortly after the Complaint had been filed, Mr. Pace transferred the domain name into the name of "Jordan Smith", but then admitted in correspondence that he still maintained control of the domain name.
6.9 Further, the Complainant relies upon (a) historic WhoIs details that show that the domain name was at one time directly registered in the name of Mr. Pace; (b) the fact that the transfer of the domain name took place shortly after the Complainant’s lawyers wrote to Mr. Pace in June 2011 to complain about this and other registrations; and (c) hosting records that show that although different IP addresses have been used for this domain name at different times, the same IP address has been used for this domain name when registered in the names of Mr. Pace and Mr. Smith. The Complainant also relies upon the fact that when registered both in the name of Mr. Pace and Mr. Smith, this domain name was used to display pay-per-click advertising.
6.10 Overall, the Complainant’s evidence is compelling and the Panel accepts that Mr. Smith and Mr. Pace can be considered the same person for the purposes of this proceeding. Accordingly, the <apole.com> domain name can properly form part of the subject matter of the present proceeding.
(b) <findmyipad.com> and <ipa-iphone.net>
6.11 The Panel accepts that in the case of <findmyipad.com> and <ipa-iphone.net>, the domain names were registered in the name of Stanley Pace at the time that the Complaint was filed with the Center. It would appear that in response to the filing of the Complaint, Mr. Pace engaged in cyberflight, transferring both of these domain names into the names of other people. The Complainant contends that these names are fictitious and relies in this respect upon the common use of IP addresses for the websites operating from these domain names, both before and after the "transfer", and the fact that, notwithstanding the transfer, the domain names continued to be used for pay-per-click advertising.
6.12 The Panel accepts the Complainant’s contentions in this respect, but ultimately, this does not matter. The transfer in each case was contrary to paragraph 8(a) of the UDRP. Given this, the Panel is entitled to treat the registrant prior to the transfer (i.e. Mr. Pace) as the registrant of <findmyipad.com> and <ipa-iphone.net> domain names for the purposes of the present proceeding (see Accor v. Jose Garcia, Jan Cerny, and N/A, Dopici Nasrat, WIPO Case No. D2010-0471).
(c) <iphonefc.com>
6.13 When the Complaint was filed, this domain name was registered in the name of Whois Privacy Services Pty Limited privacy service, but when the privacy shield was raised in response to this proceeding, the name disclosed for the registrant was Courtney Culbertson. The Complainant has brought forward evidence, in the form of historic Whois records, to show that this domain name was registered in the name of Stanley Pace as late as October 2012 before being transferred into the name of Whois Privacy Services Pty Limited. Further, the Complainant has provided evidence that the postal address given for "Courtney Culbertson" does not exist and that the email address given for "Courtney Culbertson" is a false one. Also, the Complainant relies upon the hosting history for this domain name. This shows that only one IP address has been associated with this domain name from March 2012 until the date that this proceeding commenced.
6.14 The inference that the Complainant asks the Panel to draw from these facts is that Courtney Culbertson does not exist and at all times, the domain name has remained under the control of Mr. Pace. The Panel is prepared to draw that inference and accepts for the purposes of this proceeding that the Complainant’s claim is correct. In the circumstances, the domain name <iphonefc.com> can properly form part of the subject matter of the present proceeding.
(d) <hackmyipod.com>, <iphonelyrics.com>, <ipodcleaner.com> and <ipodtouch5.com>
6.15 These are four domain names where at the time the Complaint was filed, the WhoIs records showed the registrants as the Whois Privacy Services Pty Limited privacy service, but that when the "privacy shield" was lifted in response to this proceeding, they were revealed to be registered in the name of "Shahamat".
6.16 The Complainant has brought forward evidence in the form of historic WhoIs records to show that they were all at one time registered in the name of Stanley Pace. Further, although different IP addresses have been associated with these four domain names at different times, the Complainant is able to show that in each case, at least one common IP address was used during some of the time that the domain names were registered in the name of Mr. Pace and in the name of "Shahamat". In the case, for example, of <ipodcleaner.com>, there has been no change in IP address since March 2012, and the domain name was still held in the name of Mr. Pace as late as October 2012. Further, the Complainant once again relies upon the fact that the four domain names have at all times been used for no other purpose than pay-per-click advertising.
6.17 Given this evidence and the absence of any communication from any other person claiming to have an interest in any of these domain names, the Panel accepts the Complainant’s contention that the domain names are still controlled by Mr. Pace. Accordingly, the domain names <hackmyipod.com>, <iphonelyrics.com> <ipodcleaner.com> and <ipodtouch5.com> can properly form part of the present proceeding.
(e) <freeiphonesoft.com> and <macbook7.com>
6.18 Both of these domain names were registered in June 2011 in the name of Stanley Pace and were among the domain names that the Complainant’s lawyers complained about in their letter of June 2011. This appears to have prompted the transfer of both domain names into the name of "Sunhei.org". The Complainant contends this was a sham transfer given its timing and the fact that the IP address used in connection with the <Sunhei.org> domain name is the same as that used for the <freeiphonesoft.com> domain name and another domain name (i.e.<downloadsforipod.com>) registered in the name of Stanley Pace. Subsequently, both of these domain names were registered in the name of "Fundacion Private Whois" (although exactly when is not explained).
6.19 The Complainant brings forward evidence (in the form of what appears to be a print out from that organisation’s website) to the effect that "Fundacion Private Whois" is a privacy service that claims to be based in Panama. It also contends that it is apparent that these two domain names remained in the control of “Sunhei.org” (and thereby Mr. Pace) from the fact that at all times since these two domain names were transferred into the name of "Sunhei.org" (and thereafter Fundacion Private WhoIs), the IP addresses used have all fallen in the range the range 64.95.64.190 to 64.95.64.197. Further, it claims that at all times, these domain names have been used for pay-per-click advertising.
6.20 In support of its claim that these transfers were sham transfers, the Complainant also claims that Mr. Pace’s "pattern of creating sham transfers is well documented". In this respect, it refers to a number of different cases. These include Kayak Software Corp. v. Stanley Pace and Micah Smurthwaite, WIPO Case No. D2010-1178, where the person, into whose name the domain name had been transferred, sent an email to the Center stating that it had nothing to do with that particular domain name.
6.21 Given this evidence and the absence of any communication from any person other than Mr. Pace claiming to have an interest in these Domain Names, the Panel accepts the Complainant’s contention that the domain names are still controlled by Mr. Pace to be correct. Accordingly, the domain names <freeiphonesoft.com> and <macbook7.com> can form part of the present proceeding.
6.22 The Panel would also record its concern that (in marked contrast to Whois Privacy Services Pty Limited) "Fundacion Private Whois" failed to reveal the identity of the underlying registrant in this case in response to the Complaint and the Center’s verification request. Unfortunately, this is not the first occasion on which "privacy services" connected with the Second Registrar have either refused or been slow to disclose details of the underlying registrant behind a privacy shield.
6.23 For example, in Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service, WIPO Case No. D2009-1657, the Second Registrar disclosed the identity of the person behind a domain name in a clear case of cybersquatting, only at the eleventh hour and after the Panel had issued a Procedural Order stating that the Panel was likely to issue a decision critical of the Respondent’s conduct. Similarly, in Blue Cross and Blue Shield Association et al v. Private Whois Service et al., WIPO Case No. D2010-1699, the Second Registrar did not disclose the identity of persons behind a number of domain names, notwithstanding the fact that once again, it was clear that the persons were engaged in cybersquatting.
6.24 As is explained in each of those cases, for a registrar to act in this fashion potentially undermines the operation of the UDRP. It also opens up the unedifying prospect of a registrar seeking to gain a competitive advantage over other registrars by offering a service that is less supportive of the UDRP than that offered by other registrars. In both cases, the Second Registrar’s conduct was such as to lead the Panel to invite the Center to bring a copy of the Panel’s decision to the attention of ICANN to take such investigation and action in relation to the Registrar as it considers appropriate.
6.25 These two case involved registrations in the name of "Private Whois Service". The present case involves registrations in the name of "Fundacion Private Whois". There is also no evidence before the Panel as the nature of the relationship between the Second Registrar and "Fundacion Private Whois". Nevertheless, the Panel notes that there appear to be a growing number of cybersquatting cases where "Fundacion Private Whois" is the registrant and there has been no disclosure of the underlying registrant. In all of these cases, the Second Registrar was the registrar responsible for the domain name. These cases include:
(i) Hoffmann-La Roche Inc. v. Fundacion Private Whois, WIPO Case No. D2012-0909;
(ii) F. Hoffmann-La Roche AG v. Fundacion Private Whois, WIPO Case No. D2012-1155;
(iii) McDonald’s Corporation v. Fundacion Private Whois, WIPO Case No. D2012-1435;
(iv) Karen Millen Fashions Limited v. Fundacion Private Whois, WIPO Case No. D2012-1644;
(v) LK International AG v. Fundacion Private Whois, WIPO Case No. D2013-0135; and
(vi) FIL Limited v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2013-0849.
6.26 Further, the Panel is unaware of any case involving "Fundacion Private Whois" where the registrar was not the Second Registrar.
6.27 In the circumstances, the Second Registrar and “Fundacion Private Whois” appear to be closely connected.1 Therefore, the Panel once again invites the Center to bring these matters to the attention of ICANN with a view to it undertaking such investigation and taking such steps as it considers appropriate in relation to the Second Registrar’s conduct.2
(f) <jailbreakmyipad.com>
6.28 So far as <jailbreakmyipad.com> is concerned, the Complainant contends that Chris Carter, the name in which this domain name is currently registered, is a pseudonym of Mr. Pace. It refers in this respect to the decision of Yahoo! Inc. v.SL Pace a/k/a Chris Carter, NAF Claim No. 1240860. In that decision the panel held (on the basis of a use of common email addresses) that Mr. Pace and Mr. Carter were the same person.
6.29 Further, the Complainant brings forward evidence in the form of (a) historic WhoIs details that show that the domain name was at one time directly registered in the name of Mr. Pace; and (b) hosting histories that show that although different IP addresses have been used for this domain name at different times, the same IP address was used when registered in the name of Mr. Pace and Mr. Carter. It also relies upon the fact that when registered both in the name of Mr. Pace and Mr. Carter, the domain name was used to display pay-per-click advertising.
6.30 When considered in the round, the Panel finds this evidence compelling and accepts that Mr. Carter and Mr. Pace can be considered the same person for the purposes of this proceeding. Accordingly, the <jailbreakmyipad.com> domain name can properly form part of the subject matter of the present proceeding.
B. Identical or Confusingly Similar
6.31 The test of "confusing similarity" under the Policy has tended to be interpreted by panels as imposing a low threshold standing requirement (see paragraph 1.2 of the WIPO Overview 2.0). It is an approach that means that where a domain name incorporates in its entirety any trade mark relied upon, it will usually lead to a finding that the domain name is "confusingly similar" to that mark, although each case has to be decided on its particular facts (see Research in Motion Limited v. One Star Global LLC WIPO Case No. D2009-0227).
6.32 The Complainant is clearly the owner of numerous IPOD, MACBOOK, IPHONE and IPAD registered trade marks. All of the Domain Names (with the exception of <apole.com> can only be sensibly read as including those terms (and indeed some include other text such as "hackmy" or "jailbreak", which make an association with the Complainant’s mark inevitable). Accordingly, each of these Domain Names is confusingly similar to at least one of the Complainant’s marks.
6.33 So far as <apole.com> is concerned, the position is slightly different. This could well be seen either as the words "a pole" in combination or as the word "apple" with a typographical error (i.e. the second "p" being replaced with letter "o"). The fact that the Domain Name might sensibly (as opposed to fancifully) be read as "apple" with a typographical error, is in the Panel’s view, sufficient to justify a finding of confusing similarity with the Complainant’s APPLE mark when applying the necessary low threshold test. In conducting this assessment, the Panel can and does think it is legitimate to take into account the fact that the letter "p" and letter “o” are next to one another on a qwerty keyboard.
6.34 That is sufficient to decide this issue in the favour of the Complainant. However, this is also one of those cases where the respondent’s subjective intent is evidence that is of potential relevance to the assessment of whether the objective test of confusing similarity is satisfied (as to which see the discussion in RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089). As is described under the heading of bad faith later on in this decision, the Panel has reached the clear conclusion that this particular domain name was registered as part of a broader course of conduct, whereby the Respondent (and Mr. Pace in particular) has sought to seek some advantage by registering a portfolio of domain names that are similar to the Complainant’s marks. The Respondent’s intention to take advantage of such similarities is something that can be legitimately taken into account when assessing whether <apole.com> and the corresponding APPLE mark are "confusingly similar".
6.35 Accordingly, the Panel finds that the Complainant has, in relation to all of the Domain Names, made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.36 The Panel accepts the Complainant’s contention that the Domain Names were all registered and held with a view to the Respondent taking unfair advantage of the similarity between the Domain Names, whether through pay-per-click advertising or similar activity, with a view to financial gain. The reasons for this are set out in greater detail under the heading of bad faith below. In the opinion of the Panel, such a finding constitutes positive evidence that a respondent has no "rights or legitimate interests" as that term is understood under the Policy (see similar comments of this Panel in Comvita Limited v. Kwan Kim Young, WIPO Case No. DCO2012-0030).
6.37 Accordingly, the Panel finds that the Complainant has, in relation to all of the Domain Names, made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registration and Use in Bad Faith
6.38 The Panel accepts that each of Domain Names were first registered (or alternatively came into the possession or control of Mr. Pace) after the Complainant had obtained a registered trade mark in the relevant term incorporated in that Domain Name. Further, the Panel accepts that the extent of the Complainant’s reputation in each of the relevant marks is such that the registrant is very likely to have been aware of that reputation at the time of registration. Further, the terms themselves are in many cases sufficiently unusual (e.g. "Macbook") that the most likely explanation for their registration is its association with the Complainant’s mark. Further, in some cases, the Domain Names also contain texts that are obviously clear references to the Complainant’s product and marks (e.g. "hackmy" or "jailbreak").
6.39 Further, if one accepts (as the Panel already has) that during material times, each of the Domain Names has in fact been controlled by Mr. Pace, regardless of the exact name in which each of the Domain Names has been registered, it follows from a consideration of how those Domain Names have been used, that there is only one sensible conclusion that the Panel can reach. That is that the Domain Names have all been registered and held as part of a broader scheme to register and hold a large number of Domain Names so as to take unfair advantage of the similarities between those Domain Names and the Complainant’s marks. It appears that the main way Mr. Pace has sought to gain that advantage is through pay-per-click advertising. All but one of the Domain Names has been used in this fashion at one time or another by the Respondent. Such activity is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy.
6.40 The one exception appears to be <jailbreakmyipad.com> where there is no evidence before the Panel of any such pay-per-click use. However, it has long been the case that the mere fact that a domain name has only been passively held does not prevent a finding of bad faith registration or use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). If a domain name is passively held with a view to taking unfair advantage of the trade mark rights of another, such passing holding can still amount to bad faith use for the purposes of the Policy. Given the way in which the other Domain Names have been used, and in the absence of argument or evidence to the contrary, the Panel accepts that it is more likely than not that the Respondent is holding this particular domain name with similar intentions to all the other Domain Names that form part of the Respondent’s portfolio of Complainant-related domain names.
6.41 The Panel also accepts that in the case of <apole.com>, the Complainant has brought forward sufficient evidence to show that in addition, Mr. Pace also used the domain name to dynamically redirect Internet users to various websites, some of which appear to have engaged in forms of fraudulent activity. There is no evidence before the Panel of the Respondent directly benefiting or intending to benefit from that use. However, whether he benefits or some third party does, does not matter. This is still bad faith use.
6.42 This conclusion as to the Respondent’s motivation when registering and holding the Domain Names is also supported by the fact that Mr. Pace appears to have a long history of cybersquatting. The Complainant provides a very long list of cases in which UDRP panels have concluded that Mr. Pace has registered and used domain names corresponding to the trademarks of others in bad faith. They include:
- Shandong Lingong Constr. Mach. Co., Ltd. v. Stanley Pace / Whois Privacy Serv. Pty Ltd., WIPO Case No. D2012-1626;
- Mahindra & Mahindra Ltd. v. Stanley Pace, WIPO Case No. D2011-2189;
- Tenaris Connections BV v. Stanley Pace, WIPO Case No. D2011-1448;
- Am. Auto.Ass’n, Inc. v. Stanley Pace, WIPO Case No. D2011-0969;
- Weil Cadillac-Hummer, Inc. v. Stanley Pace, WIPO Case No. D2010-1711;
- Kayak Software Corp. v. Stanley Pace and Micah Smurthwaite, WIPO Case No. D2010-1178;
- Viacom Int’l Inc. v. Stanley Pace / M Smurth Waite, WIPO Case No. D2010-1149;
- Starkey Labs., Inc. v. Stanley Pace, WIPO Case No. D2010-0774;
- Flow Companies, LLC v. Stanley Pace, WIPO Case No. D2010-0651;
- Novartis AG v. Jordan Smith / Stanley Pace, WIPO Case No. D2009-1738;
- State Farm Mut. Auto. Ins. Co. v. Stanley Pace, NAF Claim No. 1429947; and
- Shoedazzle.com, Inc. v. Stanley Pace, NAF Claim No. 1424616.
6.43 There are also other factors that point to bad faith in this case. They include the Respondent’s transfers of three of the Domain Names into different names following receipt of the Complainant’s lawyers’ letter of June 10, 2011 and the attempted cyberflight in the case of two of the Domain Names following the filing of the Complaint in the present proceeding.
6.44 When the Respondent’s conduct is viewed in the round, there is more than enough evidence to justify findings of both bad faith registration and bad faith use in relation to all the Domain Names in this case.
6.45 Accordingly, the Panel finds that the Complainant has in relation to all of the Domain Names made out the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the disputed domain names, <apole.com>, <findmyipad.com>, <freeiphonesoft.com>, <hackmyipod.com>, <ipa-iphone.net>, <iphonefc.com>, <iphonelyrics.com>, <ipodcleaner.com>, <ipodtouch5.com>, <jailbreakmyipad.com>, <macbook7.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: September 30, 2013
1 The Panel also notes that there are a few cases where the Second Registrar has disclosed the details of the underlying registrant, even though the registrant at the time the complaint was filed was “Fundacion Private Whois” (see for example GönençGürkaynak v. Marco Rinaudo / Fundacion Private Whois, WIPO Case No. D2012-1350). This suggests that “Fundacion Private Whois” is the current privacy service of the Second Registrar.
2 This is so even though the Panel considers it likely that this will not result in any immediate action on the part of ICANN. It notes in this respect that the new “Registrar Accreditation Agreement” for the first time appears to expressly contemplate that a registrar may offer privacy services, but places no obligation on them to disclose the identity of the registrant even in cases of blatant cybersquatting. Instead, it requires registrars (absent the establishment of a Proxy Accreditation Program) to disclose “the circumstances under which the P/P Provider will reveal and/or publish in the Registration Data Service (Whois) or equivalent service the P/P Customer’s identity and/or contact data” (see paragraph 2.4.5 of the Specification On Privacy And Proxy Registrations attached to the 2003 Registrar Accreditation Agreement).