Apple Inc. v. Nelia Bahktina
Claim Number: FA0804001178697
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.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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
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.
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.
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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