Apple Computer, Inc. v. Apple-Computers
c/o Marcus Grey
Claim Number: FA0508000535416
PARTIES
Complainant
is Apple Computer, Inc. (“Complainant”),
represented by Aaron Hendelman, of Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA
94304-1050. Respondent is Apple-Computers c/o Marcus Grey (“Respondent”),
1th Avenue-4-Suite 1, Pinole, CA 94564.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <apple-computers.us>,
registered with Wild West Domains, Inc.
PANEL
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.
Honorable
Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 8, 2005; the Forum received a hard copy of the
Complaint on August 9, 2005.
On
August 9, 2005, Wild West Domains, Inc. confirmed by e-mail to the Forum that
the domain name <apple-computers.us>
is registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On
August 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
6, 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
usTLD Dispute Resolution Policy (the “Rules”).
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 12, 2005, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink
(Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any Response
from Respondent.
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, <apple-computers.us>, is confusingly similar to Complainant’s
APPLE mark.
2.
Respondent does not have any rights or legitimate interests in the <apple-computers.us> domain name.
3.
Respondent registered and/or used the <apple-computers.us> domain name in
bad faith.
B.
Respondent failed to submit a response in this proceeding.
FINDINGS
Complainant, Apple Computer, Inc., has
been, and continues to be, a world leader in the production and innovation of
computer products and services. Over
the past thirty years, Complainant has become one of the most recognized names
in the computer industry and has developed an extremely loyal customer
base. In connection with the goods and
services provided, Complainant holds a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for the APPLE mark (Reg. No.
1,200,280 issued July 6, 1982).
Respondent registered the <apple-computers.us> domain name on April 10, 2005. Respondent claims to be an authorized
seller and reseller of Complainant’s products. Respondent is using the disputed domain
name to sell and resell Complainant’s products for Respondent’s commercial
gain.
DISCUSSION
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 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; 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.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant has
established in this proceeding that it has rights to the APPLE mark as evidenced
by its registration with the USPTO. See
Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18,
2001) (finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”).
Respondent’s <apple-computers.us> domain
name is confusingly similar to Complainant’s APPLE mark
because the domain name fully incorporates Complainant’s mark, adds the term
“computers,” a hyphen between the terms “apple” and “computers” and the
country-code “.us.” Furthermore, the
term “computers” describes Complainant’s business. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name
combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business); see also Health Devices Corp. v. Aspen S T C, FA 158254
(Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as
hyphens is irrelevant in the determination of confusing similarity pursuant to
Policy ¶ 4(a)(i).”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat.
Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code
“.us” fails to add any distinguishing characteristic to the domain name, the
<tropar.us> domain name is identical to Complainant’s TROPAR mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent
does not have rights or legitimate interests in the <apple-computers.us> 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). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
There is no
evidence to suggest that Respondent is the owner or beneficiary of a trade or
service mark confusingly similar to the <apple-computers.us> domain name
pursuant to ¶ 4(c)(i). Furthermore,
Respondent is using the <apple-computers.us> domain name to
redirect Internet users to a website that purports to be an authorized seller
and reseller of Complainant’s products.
Respondent is not an authorized seller or reseller of Complainant’s products,
and Respondent is not affiliated with or related to Complainant’s
business. Respondent is using the
disputed domain name for Respondent’s commercial gain. Thus, Respondent’s use of a domain name that
is confusingly similar to Complainant’s APPLE mark to
redirect Internet users interested in Complainant’s products to a commercial
website that purports to be an authorized seller of Complainant’s products is
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iv).
See Nike,
Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods
or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also
Pitney Bowes Inc. v. Ostanik,
D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in
the <pitneybowe.com> domain name where the respondent purports to resell
original Pitney Bowes equipment on its website, as well as goods of other
competitors of the complainant); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec.
10, 2000) (finding that domain names used to sell the complainant’s goods
without the complainant’s authority, as well as others’ goods, is not bona
fide use).
Furthermore, Respondent was not
authorized or licensed by Complainant to register or use a domain name that
incorporates the APPLE mark and there is no
evidence to show that Respondent is commonly known by the <apple-computers.us> domain name.
Therefore, the Panel finds that Respondent does not have rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent is
not known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use); see also
Hewlett-Packard Co. v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22,
2004) (“The Panel finds, because of the prominence of the HP mark, that
Respondent’s registration under the ‘HP Supplies’ name does not establish that
Respondent is commonly known by the <hpsupplies.com> domain name.”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent intentionally registered the <apple-computers.us> domain name for Respondent’s
commercial gain. Respondent’s domain
name diverts Internet users who seek Complainant’s APPLE
mark to Respondent’s commercial website through the use of a domain name
that is identical to Complainant’s mark.
Furthermore, Respondent is unfairly and opportunistically benefiting
from the goodwill associated with Complainant’s APPLE
mark. Respondent’s practice of
diversion, motivated by commercial gain, constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with the complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see
also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (finding that the respondent’s use of the <saflock.com>
domain name to offer goods competing with the complainant’s illustrates the
respondent’s bad faith registration and use of the domain name, evidence of bad
faith registration and use pursuant to UDRP ¶ 4(b)(iv)).
Respondent is using the <apple-computers.us> domain name to purportedly sell and
resell Complainant’s products for Respondent’s commercial gain. The Panel finds that, by creating confusion
around Complainant’s APPLE mark, Respondent is
attempting to disrupt Complainant’s business.
Respondent’s use of Complainant’s APPLE mark
to sell and resell Complainant’s products is evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Fossil, Inc. v. NAS,
FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the
<fossilwatch.com> domain name from the respondent, a watch dealer not
otherwise authorized to sell the complainant’s goods, to the complainant); see also Wall v. Silva, FA
105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim
that it used the <josephinewall.com> domain
name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant
become popular in the United States, the Panel found that the respondent’s use
of the domain name to sell the complainant’s artwork in the United States
constituted disruption pursuant to UDRP ¶ 4(b)(iii)); see also Caterpillar
Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent
registered each of the disputed domain names in order to gain customers and to
disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Complainant
having established all three elements required under the usTLD Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <apple-computers.us> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 22, 2005
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