Apple Inc v. Daniel Bijan
Claim Number: FA0911001294886
Complainant is Apple Inc. (“Complainant”), represented by Georges
Nahitchevansky, of Kilpatrick Stockton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <macbookpro.com>, <macbookpro.net>, <macbookpro.org>, <macbookpro.biz>, <macfriend.com>, <blueipod.com>, <redipods.com>, <ipodaccessories.info>, <ipodsbaratos.com>, <ipodkits.com>, <iphonecheap.com>, and <iphonetoys.com>, registered with Godaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2009.
On November 17, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <macbookpro.com>, <macbookpro.net>, <macbookpro.org>, <macbookpro.biz>, <macfriend.com>, <blueipod.com>, <redipods.com>, <ipodaccessories.info>, <ipodsbaratos.com>, <ipodkits.com>, <iphonecheap.com>, and <iphonetoys.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 2009 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@macbookpro.com, postmaster@macbookpro.net, postmaster@macbookpro.org, postmaster@macbookpro.biz, postmaster@macfriend.com, postmaster@blueipod.com, postmaster@redipods.com, postmaster@ipodaccessories.info, postmaster@ipodsbaratos.com, postmaster@ipodkits.com, postmaster@iphonecheap.com, and postmaster@iphonetoys.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <macbookpro.com>, <macbookpro.net>, <macbookpro.org>, <macbookpro.biz>, <macfriend.com>, <blueipod.com>, <redipods.com>, <ipodaccessories.info>, <ipodsbaratos.com>, <ipodkits.com>, <iphonecheap.com>, and <iphonetoys.com> domain names are confusingly similar to Complainant’s MAC, MACBOOK, IPOD and IPHONE marks.
2. Respondent does not have any rights or legitimate interests in the <macbookpro.com>, <macbookpro.net>, <macbookpro.org>, <macbookpro.biz>, <macfriend.com>, <blueipod.com>, <redipods.com>, <ipodaccessories.info>, <ipodsbaratos.com>, <ipodkits.com>, <iphonecheap.com>, and <iphonetoys.com> domain names.
3. Respondent registered and used the <macbookpro.com>, <macbookpro.net>, <macbookpro.org>, <macbookpro.biz>, <macfriend.com>, <blueipod.com>, <redipods.com>, <ipodaccessories.info>, <ipodsbaratos.com>, <ipodkits.com>, <iphonecheap.com>, and <iphonetoys.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Apple Inc., is a worldwide leader in the computer, computer accessory, and music device industries. Complainant owns a number of trademark registrations for the IPOD family of marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,835,698 issued April 27, 2004). Also, Complainant owns numerous registrations for the MAC family of marks with the USPTO (e.g., Reg. No. 1,964,391 issued March 26, 1996), the MACBOOK family of marks (e.g., Reg. No. 3,222,089 issued March 27, 2007), and the IPHONE family of marks (e.g., Reg. No. 3,669,402 filed September 26, 2006 and issued August 18, 2009).
Respondent registered the <macbookpro.com> domain name on January 10, 2006, the <macbookpro.net> domain name on April 3, 2007, the <macbookpro.org> domain name on March 29, 2007, the <macbookpro.biz> domain name on March 28, 2007, the <macfriend.com> domain name on November 2, 2005, the <blueipod.com> domain name on November 26, 2007, the <redipods.com> domain name on January 27, 2008, the <ipodaccessories.info> domain name on January 24, 2009, the <ipodsbaratos.com> domain name on July 5, 2006, <ipodkits.com> on April 24, 2008, the <iphonecheap.com> domain name on May 23, 2006, and the <iphonetoys.com> domain name on March 21, 2008. Respondent’s disputed domain names resolve to websites displaying third-party links to websites offering computer, computer accessories, and music devices in competition with Complainant.
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 established rights in the MAC (e.g., Reg.
No. 1,964,391 issued March 26, 1996), MACBOOK (e.g., Reg. No. 3,222,089 issued
March 27, 2007), IPOD (e.g., Reg. No. 2,835,698 issued April 27, 2004) and
IPHONE (e.g., Reg. No. 3,669,402 filed September 26, 2006 and issued August 18,
2009) marks pursuant to Policy ¶ 4(a)(i) through its
various registrations with the USPTO. See Miller Brewing
Complainant argues that Respondent’s <macbookpro.com>, <macbookpro.net>, <macbookpro.org> and <macbookpro.biz> domain names are confusingly similar to Complainant’s MACBOOK mark pursuant to Policy ¶ 4(a)(i). Each of Respondent’s disputed domain names contain one of Complainant’s marks in its entirety, add a generic term, and add a generic top-level domain (“gTLD”). The Panel finds that the addition of generic or descriptive term to a registered mark in a disputed domain name creates a confusing similarity between the disputed domain name and the registered mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). In addition, the Panel finds that the addition of a gTLD fails to distinguish a disputed domain name from a registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s registered marks pursuant to Policy ¶ 4(a)(i).
Also, Complainant contends that Respondent’s <macfriend.com> domain name is confusingly
similar to Complainant’s MAC mark pursuant to Policy ¶ 4(a)(i). The Panel finds that the addition of the
generic term “friend” fails to create a defining characteristic in the disputed
domain name. See supra Arthur
Guinness Son & Co. (
Further, Complainant argues that Respondent’s <blueipod.com>, <redipods.com>, <ipodaccessories.info>,<ipodsbaratos.com>,
and <ipodkits.com> domain names are confusingly similar to
Complainant’s IPOD mark pursuant to Policy ¶ 4(a)(i). The Panel finds that the addition of a
generic term to Complainant’s registered mark in the disputed domain names, as
well as the addition of a gTLD creates a confusing similarity between the
disputed domain names and Complainant’s IPOD mark pursuant to Policy ¶
4(a)(i). See supra Arthur
Guinness Son & Co. (
Lastly, Complainant contends that Respondent’s <iphonecheap.com> and <iphonetoys.com>
domain names are confusingly similar to Complainant’s IPHONE mark pursuant to
Policy ¶ 4(a)(i). The Panel finds that
the addition of the generic terms “cheap” and “toys” in the respective disputed
domain names creates a confusing similarity between the disputed domain names
and Complainant’s IPHONE mark. See supra Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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).
Complainant asserts that Respondent is neither commonly
known by the disputed domain names, nor licensed to register a domain names
using the Complainant’s marks. Respondent’s WHOIS
information identifies the registrant as “Daniel Bijan” and therefore lacks any
defining characteristics relating it to the disputed domain names. The Panel finds that without affirmative
evidence Respondent is commonly known by the disputed domain names,
Respondent lacks all rights and legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record).
Respondent’s disputed
domain names resolve to websites featuring advertisements and links relating to
Complainant’s competitors in the computer, computer accessory, and music device
industries. The Panel may infer that Respondent profits through the
generation of click-through fees from the links to Complainant’s
competitors. Therefore, the Panel finds that Respondent’s use of the
disputed domain names are not in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use of the disputed domain names under Policy ¶ 4(c)(iii). See 24 Hour
Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to divert Internet customers seeking Complainant’s website to the competitive
websites that resolve from the disputed domain names, through the confusion
caused by the similarity between the Complainant’s marks and the disputed domain
names. The Panel finds that Respondent’s
use of the disputed
domain names disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel infers that Respondent receives click-through fees from the use of the aforementioned hyperlinks. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and the resolving websites. Therefore, the Panel finds that Respondent’s use of the disputed domain names constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <macbookpro.com>, <macbookpro.net>, <macbookpro.org>, <macbookpro.biz>, <macfriend.com>, <blueipod.com>, <redipods.com>, <ipodaccessories.info>, <ipodsbaratos.com>, <ipodkits.com>, <iphonecheap.com>, and <iphonetoys.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 6, 2010
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