NATIONAL ARBITRATION FORUM

 

DECISION

 

Apple Inc. v. Daniel Bijan

Claim Number: FA0911001295941

 

PARTIES

Complainant is Apple Inc. (“Complainant”) represented by Georges Nahitchevansky, of Kilpatrick Stockton LLP, California, USA.  Respondent is Daniel Bijan (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <macbookpro.us>, <macbook.us>, <macbooks.us>, and <macpro.us>, registered with Godaddy.com, 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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 23, 2009; the Forum received a hard copy of the Complaint on November 24, 2009.

 

On November 23, 2009, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <macbookpro.us>, <macbook.us>, <macbooks.us>, and <macpro.us> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  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 the U. S. Department of Commerce’s usTLD 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 in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the 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 Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <macbookpro.us>, <macbook.us>, and <macbooks.us> domain names are confusingly similar to Complainant’s MACBOOK mark.  Respondent’s <macpro.us> domain name is confusingly similar to Complainant’s MAC mark.

 

2.      Respondent does not have any rights or legitimate interests in the <macbookpro.us>, <macbook.us>, <macbooks.us>,  and <macpro.us> domain names.

 

3.      Respondent registered and used the <macbookpro.us>, <macbook.us>, <macbooks.us>,  and <macpro.us> domain names in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Apple Inc., is a computer manufacturer and marketer which promotes its products and services under the MAC and MACBOOK marks.  Complainant registered the MAC mark with the United States Patent and Trademark Office (“USPTO”) on March 26, 1996 (Reg. No. 1,964,391), and registered the MACBOOK mark with the USPTO on March 27, 2007 (Reg. No. 3,222,089).  Complainant has sold over $38 billion worth of computers in the last two years.

 

Respondent, Daniel Bijan, registered the <macbookpro.us>, <macbook.us>, and <macbooks.us> domain names on March 29, 2007, and registered the <macpro.us> domain name on March 31, 2007.  The disputed domain names resolve to a website that contains links to third-party websites, some of which offer technology products and services in competition with Complainant’s products and services.

 

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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.

 

Identical and/or Confusingly Similar

The Panel finds that Complainant’s registrations of the MAC and MACBOOK marks with the USPTO (MAC: Reg. No. 1,964,391 issued March 26, 1996; MACBOOK: Reg. No. 3,222,089 issued March 27, 2007) adequately confer sufficient rights in the marks upon Complainant pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to [UDRP] ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

Complainant contends that Respondent’s <macbook.us> domain name differs from Complainant’s MACBOOK mark only in that the country-code top-level domain (“ccTLD”) “.us” has been added.  The Panel finds that the addition of a ccTLD is irrelevant.  See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”).  Therefore, the Panel finds that the <macbook.us> domain name is identical to the MACBOOK mark under Policy ¶ 4(a)(i). 

Complainant also contends that the <macbookpro.us> and <macbooks.us> domain names are confusingly similar to the MACBOOK mark, because each only contains one insignificant change – the addition of the generic term “pro” or the addition of a single letter “s,” respectively – along with the addition of the ccTLD “.us.”  The Panel finds that neither the addition of a generic term nor the addition of a single letter “s” sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i).  See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to UDRP ¶ 4(a)(i)).  As above, the Panel also finds that the addition of a ccTLD is irrelevant to a ¶ 4(a)(i) analysis.  See Lifetouch, supra.  Therefore, the Panel finds that the <macbookpro.us> and <macbooks.us> domain names are confusingly similar to the MACBOOK mark under Policy ¶ 4(a)(i).

Complainant also contends that the <macpro.us> domain name is confusingly similar to the MAC mark, as it only differs from the mark because of the addition of the generic term “pro” and the addition of the ccTLD “.us.”  As above, the Panel finds the addition of a generic term does not sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i).  See Warner Bros. Entm’t, supra.  The Panel also finds that the addition of a ccTLD is irrelevant to a ¶ 4(a)(i) analysis.  See Lifetouch, supra.  Therefore, the Panel finds that the <macpro.us> domain name is confusingly similar to the MAC mark under Policy ¶ 4(a)(i).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names.  Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the disputed domain names.  Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant contends that Respondent has never been the owner or licensee of either the MAC mark or the MACBOOK mark, and that there is no evidence within the record to suggest that Respondent is commonly known by the disputed domain name.  The WHOIS information lists Respondent as “Daniel Bijan.”  Therefore, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(iii).  See 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

Respondent is using the disputed domain names to resolve to a parked website that features links to third-party websites, some of which are offering technology products and services in direct competition with Complainant.  Respondent presumably receives referral fees from the advertisers listed on its website.  Thus, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under UDRP ¶ 4(c)(i) nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration or Use in Bad Faith

Complainant contends that Respondent is using the disputed domain names to resolve to a website that features links to websites offering products and services in direct competition with Complainant.  The Panel therefore finds that Respondent’s use of the disputed domain names is intended to disrupt the business of Complainant pursuant to Policy ¶ 4(b)(iii).  See Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to [UDRP] ¶¶ 4(b)(iii) [and] (iv).”).

Complainant also contends that Respondent’s use of Complainant’s MAC and MACBOOK marks within the disputed domain names creates a likelihood of confusion as to the source and affiliation of Respondent’s website and the disputed domain names.  Further, Respondent is presumed to have sought out commercial benefit through the accrual and receipt of click-through referral fees.  Therefore, the Panel finds that Respondent engaged in bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv).  See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <macbookpro.us>, <macbook.us>, <macbooks.us>,  and <macpro.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated: January 6, 2010

 

 

 

 

 

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