Apple Inc. v. Nelia Bahktina
Claim Number: FA0804001178697
PARTIES
Complainant is Apple Inc. (“Complainant”), represented by Matthew
R. Mills, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ituneslatino.com>, registered with Spot Domain
LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On April 21, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 12, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@ituneslatino.com by e-mail.
A timely Response was received and determined to be complete on
On
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
(1) the domain name registered by Respondent
is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the domain name has been registered and is
being used in bad faith.
B. Respondent
In his response, the Respondent states, “Registration of the Domain
name was made May 7th 2004 ituneslatino; The site was registered as <ituneslatino.com> along with
another eye care site to be launched names <lenslatino.com> referring to contact lens and
sunglasses to be sold online, the use of the letter “I” as it refers to the
part of the anatomy which we see from “tune” to focus and Latino to address the
Latino’s worldwide. We even coined a
slogan of “Tune in your eyes with the correct powers.” We have no intention of selling music or
videos via the net utilizing this URL.
We never registered the trademark ituneslatino and were not going to
until we actually launched the Contact lens sites, in which I can show proper
use.”
C. Additional Submissions
The Respondent timely filed a Response to the Complaint and the
Complainant timely filed a Response to the Respondent. The Complainant timely filed an Additional
Submission to the Respondent’s Response.
FINDINGS
I.
False
Registration Information for the <ituneslatino.com>
Domain Name was Submitted to the Domain Registrar.
Registrant has demonstrated his bad faith
registration of the domain name by providing false WHOIS Information. Mitchell Sandler, through his response, has
admitted that he, rather than Nelia Bahktina, is the owner of the <ituneslatino.com> domain
name. Additionally, all communications
received by Complainant have referred to Mitchell Sandler, rather than Nelia
Bahktina, as the registrant. Despite the
fact that the communications were eventually received by Mitchell Sandler, the
registrant information provided to the domain registrar, including the name,
address and phone number, was false because Mitchell Sandler, not Nelia
Bahktina, was the true registrant.
Furthermore, a copy of the UDRP complain was sent via International
Federal Express to the Russian address listed in the WHOIS information. This package was returned to Complainant’s
Counsel as undeliverable because the address was incorrect. This provision of false or misleading contact
information is evidence of bad faith registration and use even though the
communications were eventually received via the e-mail address listed.
II. Complainant
Established Legitimate Rights and Interests in the ITUNES Mark Prior to Respondent’s Registration of the <ituneslatino.com> Domain Name
Complainant first registered its ITUNES mark
on
III. Respondent’s
Use of Complainant’s ITUNES Mark to Attract Internet Users to a Web Site that
is Unrelated to the ITUNES Mark is Not a bona
fide Offering of Goods or Services.
Respondent contends that he has a right to
register the <ituneslatino.com>
domain name because he intends to engage in the selling of contact lenses and
sunglasses online. This use of
Complainant’s ITUNES mark to attract Internet users to a commercial web site is
not a bona fide offering of goods and
services. Secondly, Respondent has
offered not evidence to support his assertions.
The only support offered is the Respondent’s own assertion that he
intends to use the <ituneslatino.com>
domain to engage in the selling of contact lenses and sunglasses online. Respondent has offered no business plans or
other documents to support this assertion.
Thus, Respondent has not engaged in the bona fide offering of goods and services because he has used
Complainant’s ITUNES mark to draw Internet users to an unrelated commercial web
site, and he has offered no proof of his asserted legitimate interest.
IV.
Respondent’s
Use of Complainant’s ITUNES Mark to Attract Internet Users to a Web Site that
is Unrelated to the ITUNES Mark is Evidence of Bad Faith Registration and Use.
Respondent contends that he has a right to
register the <ituneslatino.com>
domain name because he intends to engage in the selling of contact lenses and
sunglasses online. This use of
Complainant’s ITUNES mark to divert Internet users seeking Apple’s services
under the ITUNES Marks to a deceptive commercial website offering for sale unrelated commercial goods is evidence of bad faith
registration and use.
V.
Respondent’s
Offer to Sell the Domain Name to Complainant is Evidence of Bad Faith
Registration and Use.
Respondent, through his response, has
admitted that he offered to sell the domain name to the Complainant. A prior communication also included an offer
to sell the domain name. Mitchell
Sandler stated that he was “willing” to “assign his URL,” <itunesltino.com>, if it was a “lucrative proposition” by a
“billion dollar company.” While an exact
dollar amount was not specified, any lucrative proposition is likely far in
excess of the documented out-of-pocket costs directly related to the domain
name.
VI.
Respondent
has Previously Registered Additional Domain Names Incorporating Complainant’s
ITUNES Mark.
Respondent has previously registered several
domain names that also include Complainant’s ITUNES Mark including,
<ituneseu.com>, <ituneschina.com>, and
<itunesesponal.com>. Although
these domain names have expired, Respondent has engaged in a pattern of
registering domain names that incorporate Complainant’s ITUNES mark. This pattern of registration is evidence of
Respondent’s bad faith registration and use of the <ituneslatino.com> domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “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 Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
The domain name is confusingly similar to the
ITUNES mark registered by the Complainant.
The Respondent has no rights or legitimate
interests in the domain name.
Registrant has demonstrated his bad faith of
the domain name by providing false WHOIS information and offering to sell the
domain name to Complainant.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <ituneslatino.com> domain name be TRANSFERRED from
Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 2, 2008
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