Apple Computer Inc. v. iSMER
Claim Number: FA0204000112521
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.
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.
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.,
Dated: June 24, 2002
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