Apple Computer Inc. v. iSMER
Claim Number: FA0204000112521
PARTIES
Complainant
is Apple Computer Inc., Cupertino,
CA, USA (“Complainant”) represented by Karen
M Kitterman, of Fenwick & West
LLP. Respondent is iSMER, London, UK (“Respondent”)
represented by Peter Norton, of Bazley White & Co.
The
domain name at issue is <airport.biz>,
registered with Registrars Asia Pty Ltd.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 27, 2002; the Forum
received a hard copy of the Complaint on May 1, 2002.
On
May 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 28, 2002.
Timely
additional submissions from Complainant were received on June 4, 2002; and from
Respondent, on June 10, 2002.
On June 11, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable Charles K. McCotter, Jr. as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<airport.biz> domain should be transferred to Complainant Apple
Computer, Inc. (“Apple”) because Respondent, iSMER, registered the domain in
bad faith and has no legitimate right or interest in it. Respondent’s <airport.biz >
domain name is identical to Complainant’s well-known, registered and common law
AIRPORT trademark.
B.
Respondent
Respondent
contends that it is a legitimate partnership under UK law and that the word
AIRPORT is a generic word to which Complainant does not have exclusive rights.
C.
Additional Submissions
Complainant
contends that Respondent is a fictional business entity using a false
address. Apple’s trademark is not
negated by being a generic term. A generic term fails to be a trademark only
when it is applied to the type of goods it represents. AIRPORT could not be a trademark for an
airport, but can be a trademark for wireless networking technology, as shown by
Apple’s numerous AIRPORT registrations.
Respondent applied for the <airport.biz> domain name with
knowledge of Apple’s trademark rights.
Respondent
says that it is not a fictional business and that AIRPORT is generic.
1. The
Complaint is based on the well-known AIRPORT trademark owned by
Complainant. For years, Apple has used
the AIRPORT mark extensively in the United States and abroad for its wireless
computer networking technology.
2. Respondent
registered the <airport.biz> domain, with actual knowledge of
Apple’s trademark rights. Apple
participated in the “.biz” Registry’s IP Claim service last July. That service enabled Apple to put all <airport.biz>
domain applicants on notice of its AIRPORT trademark rights during the “.biz”
domain’s roll out.
3. Consequently,
NeuLevel notified Respondent via e-mail of Apple’s IP Claim on the <airport.biz>
domain, before Respondent registered the domain. That e-mail required Respondent to either withdraw the <airport.biz>
application, through non-response, or to opt into continuing with the
application, by affirmatively requesting that the application proceed. Despite clear notice of Apple’s trademark
rights, Respondent opted to continue with the application.
4. Respondent
does not have registered or common law trademark rights in AIRPORT. Respondent is not known as AIRPORT.
5. Respondent
has failed to submit evidence of any demonstrable preparation to use the <airport.biz>
domain for a bona fide offering of goods or services. Respondent has no content posted on the <airport.biz>
domain’s web site. Respondent is making
no use of the domain name, but intends “to use the domain name for business
related to the aviation sector.”
6. Mr.
Tarek Soliman, the domain’s administrative contact, has registered dozens
of “.biz” domains.
7. Respondent’s
search of Google returns over 9.5 million results for AIRPORT.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established that it has rights in the AIRPORT mark through registration and
use. Respondent’s <airport.biz>
domain name is identical to Complainant’s AIRPORT trademark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent alleges some vague plan for
“business related to the aviation sector.”
Yet, it provides no evidence, plan, or detail of what that “business”
might be. If Respondent had real
business intentions for the <airport.biz> domain it would have
provided details. Instead, Respondent
claims that its administrative contact “initially pursued a career in
aviation.”
Similar
to UDRP ¶ 4(c)(i), a Respondent in a STOP proceeding may demonstrate its rights
or interests in a disputed domain name by proving its use of or demonstrable
preparations to use the domain name for a bona fide offering of
goods or services. STOP Policy ¶
4(c)(ii).
STOP
Panels have found that a Respondent’s “unsupported, self-serving allegations
alone are insufficient to establish that [the] Respondent has rights or
legitimate interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v.
Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the
Respondent’s assertion that she registered the domain name
<foxstudios.biz> in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that she
had rights or interests in respect to the domain name at issue).
Even
when a Respondent represents that it intends to use a domain name for a
commercial purpose, its use under STOP Policy ¶ 4(c)(ii) must be for a bona
fide offering of goods or services.
Registration
of an infringing domain name in order to opportunistically trade on the
goodwill of the Complainant’s mark does not constitute a bona fide offering of
goods or services. See William L.
Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21,
2002) (finding the Respondent’s
“intent to trade [on] the goodwill of Complainant’s mark, by attracting
Internet users confused as to the likely affiliation between Complainant and
Respondent’s website” indicated the Respondent had no rights or legitimate
interests pursuant to STOP Policy ¶ 4(c)(ii)).
Respondent’s use of a domain name
identical to Complainant’s established mark implies that Respondent intends to
divert Internet users interested in Complainant’s services or products to Respondent’s
website. Therefore, Respondent’s
registration of <airport.biz> is not in connection with a bona
fide offering of goods and services under STOP Policy ¶ 4(c)(ii). See Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Peachtree
Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002)
(finding that Respondent’s intended use of the <peachtree.biz> domain
name to provide information and services related to Complainant’s PEACHTREE
product, but without Complainant’s authorization, would cause customer confusion
and is not a bona fide offering of goods or services).
A
Respondent may demonstrate its rights or interests in a domain name by proving
that the Respondent has been commonly known by the domain name, even if it has
acquired no trademark or service mark rights.
STOP Policy ¶ 4(c)(iii).
Complainant has established that it has
rights in the disputed domain name because it is the owner of the relevant
registered trademarks and has made continuous use of its AIRPORT mark in
commerce. There is no evidence that
Respondent is commonly known by the <airport.biz> domain name
pursuant to STOP Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent
was not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Under STOP when a registrant (Respondent)
registers a domain name for which an IP Claim was previously filed, the
registrant is notified of the potential for trademark infringement before being
allowed to proceed with the registration.
One Panel has recognized that registration of a domain name despite such
notice, in appropriate circumstances, could “almost preclude any possibility of
registration in good faith of a domain name . . . .” Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar.
4, 2002) (finding bad faith where Respondent registered the
<genelogic.biz> domain name “with full knowledge that his intended
business use of this domain name was in direct conflict with a registered
trademark of a known competitor in exactly the same field of business”); see also Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Under
STOP Policy ¶ 4(b)(ii), the Complainant may prove bad faith by showing the
Respondent registered the domain name for the purpose of preventing Complainant
from registering domain names reflecting its mark. See Peachtree
Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002)
(finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it
was reasonable to conclude Respondent registered <peachtree.biz>
with the intent to prevent Complainant from reflecting its PEACHTREE mark in a
corresponding domain name, given Respondent's knowledge of Complainant's mark
and Respondent's lack of rights or interests in the mark).
STOP
Policy ¶ 4(b)(iv) states that bad faith is established when a Respondent, by
using the domain name, has intentionally attempted to attract, for commercial
gain, Internet users to its website 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 the website or location or of a
product or service on the website or location. STOP Policy ¶ 4(b)(iv).
Respondent’s
<airport.biz> domain name is identical to Complainant’s
established AIRPORT mark resulting in the likelihood that Internet users will
believe that there is some affiliation between Respondent and Complainant. Because many of the “.biz” domain names were
very recently registered, Panels have held that, even when the domain name has
not been used, bad faith under STOP Policy ¶ 4(b)(iv) can be demonstrated based
on the confusion that will inevitably arise when the Respondent finally uses
the name. See Fluor Corp. v. Song,
FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s
<fluor.biz> domain name was identical to the Complainant’s FLUOR mark,
Internet users would likely believe an affiliation between the Respondent and
Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA
102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name
identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv)
when use of the domain name would likely cause confusion as to the affiliation
between Respondent and Complainant);
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the Start-Up Trademark Opposition Policy, the Panel concludes
that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <airport.biz> be
TRANSFERRED from Respondent to Complainant and that subsequent
challenges under the STOP Policy against this domain name SHALL NOT be
permitted.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: June 24, 2002
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