Apple Inc. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED.
Claim Number: FA0805001195659
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 <itunesdownload.com>, registered with Lead Networks Domains Pvt. 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On June
26, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 16, 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@itunesdownload.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <itunesdownload.com> domain name is confusingly similar to Complainant’s ITUNES mark.
2. Respondent does not have any rights or legitimate interests in the <itunesdownload.com> domain name.
3. Respondent registered and used the <itunesdownload.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the ITUNES mark in numerous
jurisdictions across the globe, including with the United States Patent and
Trademark Office (“USPTP”) (Reg. No. 2,653,465 issued
Respondent’s <itunesdownload.com> domain name
was registered on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 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.
Complainant has sufficiently established rights in the
ITUNES mark through registration of the mark with the USPTO pursuant to Policy
¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb.
Forum
Complainant’s ITUNES mark is incorporated entirely followed
by the descriptive word “download” within Respondent’s <itunesdownload.com>
domain name. The generic top-level
domain “.com” is also included. It is
well establish that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Additionally,
the addition of a descriptive word that has an obvious relationship to a
complainant’s business will not distinguish a disputed domain name. The word “download” is obviously connected to
Complainant’s ITUNES mark, because all of Complainant’s services and products
under the ITUNES mark must be downloaded off of the Internet. Accordingly, the Panel finds that
Respondent’s <itunesdownload.com> domain name is confusingly
similar to Complainant’s ITUNES mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v.
Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks all rights and legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
Respondent has failed to reply to the Complaint. Therefore, the Panel may presume that
Respondent has no rights or legitimate interests in the <itunesdownload.com>
domain name, but will nonetheless examine the record in consideration of Policy
¶ 4(c). See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
From the outset, the Panel recognizes the notoriety behind Complainant’s ITUNES mark. Complainant has over 50 million customers and over four billion songs have been downloaded under Complainant’s mark over the Internet. The Panel determines that there must be strong evidence then to demonstrate that another such as a Respondent is or could be known by a domain name incorporating the ITUNES mark. Respondent has failed to provide any evidence, and there is nothing in the WHOIS information or elsewhere in the record that gives any indication that Respondent is or ever was commonly known by the disputed domain name. Consequently, the Panel finds that Respondent is not commonly known by the <itunesdownload.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The <itunesdownload.com> domain name is being
used to resolve to a commercial website prominently displaying Complainant’s
ITUNES mark and a series of links to third-parties, many of whom offer products
or services in direct competition with those offered under Complainant’s ITUNES
mark. The Panel finds this to be neither
a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The disputed domain name is being used to link a variety of
third-party websites, most of which offer competing services or products to
those offered under Complainant’s mark.
The Panel finds this use demonstrates that Respondent’s purpose in
registering and using the disputed domain name was to disrupt Complainant’s
business, and determines this to establish Respondent’s bad faith registration
and use of the <itunesdownload.com> domain name pursuant to Policy
¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr.
9, 2007) (finding that the respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the
disputed domain name to advertise goods and services of complainant’s
competitors, thereby disrupting the complainant’s business).
Additionally, the Panel may presume that such a competitive usage
of the disputed domain name is commercially benefiting Respondent through
either “click-through” fees or some other similar referral fee scheme. Additionally, the disputed domain name is
both confusing similar to Complainant’s mark and prominently displays the
ITUNES mark on the website resolving from the disputed domain name. As a result, the Panel finds this to be
further evidence of Respondent’s bad faith registration and use of the disputed
domain name pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922
(Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered
and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was commercially gaining from the likelihood of
confusion between the complainant’s AIM mark and the competing instant
messaging products and services advertised on the respondent’s website which
resolved from the disputed domain name).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <itunesdownload.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 4, 2008
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