Apple, Inc. v. Xiamen Jianfa Xinxi Jishu Youxiangongsi(143434) / Xiamen Jianfa Xinxi Jishu Youxiangongsi
Claim Number: FA2002001882879
Complainant is Apple Inc. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is Xiamen Jianfa Xinxi Jishu Youxiangongsi(143434) / Xiamen Jianfa Xinxi Jishu Youxiangongsi (“Respondent”), represented by Zhang Yunbin of C&D Building, HuanDao East Road, Siming Area, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tradeicloud.com>, registered with Xiamen 35.Com Technology Co., 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.
On February 13, 2020, Xiamen 35.Com Technology Co., Ltd. confirmed by e-mail to the Forum that the <tradeicloud.com> domain name is registered with Xiamen 35.Com Technology Co., Ltd. and that Respondent is the current registrant of the name. Xiamen 35.Com Technology Co., Ltd. has verified that Respondent is bound by the Xiamen 35.Com Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tradeicloud.com. Also on February 25, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 16, 2020.
Complainant's Additional Submission was received on March 19, 2020.
On March 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.
Complainant requests that the language of this administrative proceeding proceed in the English language because i) Respondent has registered an English language domain name that is meant to capitalize on Complainant’s well-known English language mark ICLOUD; ii) the disputed domain name's resolving website is totally in English; iii) Respondent will not be unduly burdened by conducting this proceeding in English; and iv) requiring Complainant to proceed in Chinese, on the other hand, would unduly delay the proceeding and would burden Complainant.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant is a world-famous designer, manufacturer, and marketer of mobile communication and media devices and personal computers, and a seller of a variety of related software, services, accessories, and third-party digital content and applications. Notably, Complainant created the iCloud computing software for purposes of its customers being able to remotely and securely store their digital content. Complainant asserts rights in the ICLOUD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,744,821 registered on February 2, 2010). The disputed domain name is confusingly similar to Complainant’s ICLOUD mark as it includes the mark in its entirety, adding the generic term “trade” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not authorized to use the Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a webpage where Respondent promotes a supply chain service that implies a connection with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Specifically, Respondent uses the disputed domain name to imply a connection with Complainant. Further, Respondent had actual knowledge of Complainant’s rights in the ICLOUD mark prior to its registration of the disputed domain name. Respondent’s attempt to register a figurative version of TRADEICLOUD is further evidence of bad faith.
B. Respondent
i) The disputed domain name is not confusingly similar to Complainant’s ICLOUD mark. Respondent provides a supply chain integration platform which is different from the services offered by Complainant. Complainant’s ICLOUD mark is inherently generic and Complainant provides no evidence to the fame of the ICLOUD mark, but only the APPLE mark. Due to this difference, there can be no confusing similarity between Complainant’s ICLOUD mark and the disputed domain name.
ii) Respondent has rights and legitimate interests in the disputed domain name. Respondent developed the Tradeicloud software early and has used it in its business since as early as 2014. Respondent makes a bona fide offering and legitimate noncommercial use as Respondent uses the disputed domain name for its business, which offers service that do not compete with Complainant.
iii) Respondent registered the disputed domain name for its own use not for the purpose of selling or transferring it. Respondent does not attempt to disrupt Complainant’s business because Respondent is not a competitor of Complainant. Respondent does not attempt to create a likelihood of confusion, for commercial gain, with Complainant’s ICLOUD mark.
C. Complainant's Additional Submission
i) Respondent's evidence does not establish a bona fide use by Respondent and in fact further establishes that Respondent has no legitimate interest and has acted in bad faith by registering and using the disputed domain name, given that Respondent’s alleged evidence post-dates Complainant’s adoption and extensive use of the ICLOUD mark.
ii) The evidence submitted by Respondent further establishes Respondent’s bad faith attempt to take advantage of the ICLOUD mark given (i) Complainant’s numerous trademark registrations for the ICLOUD mark; (ii) the extensive evidence of acquired distinctiveness of the ICLOUD mark attached to the Complainant (most predating January 2014); and (iii) the findings of China’s Trademark Review and Adjudication Board’s in canceling Respondent’s filings for TRADEICLOUD that the ICLOUD mark is unique, distinctive, and well-known.
iii) None of the annexes to the Response demonstrates that Respondent has rights or legitimate interests to the disputed domain name under paragraph 4(a)(ii) of the Policy because (i) the disputed domain name fully incorporates Complainant’s ICLOUD mark—of which Respondent was undoubtedly aware (given Respondent’s repeated highlighting of the ICLOUD mark on its website and alleged evidence)—and adds only the generic word “trade.”; and (ii) Respondent’s claimed use competes directly with the services offered by Complainant under the ICLOUD mark.
1. The disputed domain name was registered on August 5, 2014.
2. Complainant has established rights in the ICLOUD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,744,821 registered on February 2, 2010).
3. The disputed domain name’s resolving webpage demonstrates that Respondent promotes a supply chain cloud service that implies a connection 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."
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 asserts rights in the ICLOUD mark through registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration of the ICLOUD mark with the USPTO (e.g. Reg. No. 3,744,821 registered on February 2, 2010). Accordingly, the Panel finds that Complainant has established rights in the ICLOUD mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues the disputed domain name is confusingly similar to Complainant’s ICLOUD mark as it includes the mark in its entirety, adding the generic term “trade” and the “.com” gTLD. Addition of a generic term with a gTLD is not sufficient to distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel therefore finds that the disputed domain name is identical and/or confusingly similar to the ICLOUD mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s ICLOUD mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Xiamen Jianfa Xinxi Jishu Youxiangongsi(143434) / Xiamen Jianfa Xinxi Jishu Youxiangongsi,” and there is no other evidence to suggest that Respondent was authorized to use the ICLOUD mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Complainant argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to promote a supply chain service that implies a connection with Complainant. A respondent’s use of a disputed domain name to imply a connection with a complainant may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant provides screenshots of the disputed domain name’s resolving webpage which allegedly demonstrates that Respondent promotes a supply chain cloud service that implies a connection with Complainant.
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent contends that it has rights and legitimate interests in the disputed domain name: (i) Respondent developed the Tradeicloud software early and has used it in its business since as early as 2014; and (ii) Respondent makes a bona fide offering and legitimate noncommercial use as Respondent uses the disputed domain name for its business, which offers service that do not compete with Complainant. In support of this contention, Respondent submits evidence: (i) a copyright registration for computer software from January 1, 2014; (ii) a screenshot of orders on the <tradeicloud.com> website from 2016; and (iii) a service agreement with a third party from 2016.
Complainant rebuts in its Additional Submission that Respondent's evidence does not establish a bona fide use of the disputed domain name by Respondent and in fact further establishes that Respondent has no legitimate interest and has acted in bad faith by registering and using the disputed domain name, given that Respondent’s alleged evidence post-dates Complainant’s adoption and extensive use of the ICLOUD mark.
Complainant states that the evidence submitted by Respondent further establishes Respondent’s bad faith attempt to take advantage of the ICLOUD mark given (i) Complainant’s numerous trademark registrations for the ICLOUD mark; (ii) the extensive evidence of acquired distinctiveness of the ICLOUD mark attached to the Complaint (most predating January 2014); and (iii) the findings of China’s Trademark Review and Adjudication Board’s in canceling Respondent’s filings for TRADEICLOUD that the ICLOUD Mark is unique, distinctive, and well-known.
Complainant further contends that none of the annexes to the Response demonstrates that Respondent has rights or legitimate interests to the disputed domain name under Paragraph 4(a)(ii) of the Policy because (i) the disputed domain name fully incorporates Complainant’s ICLOUD mark—of which Respondent was undoubtedly aware (given Respondent’s repeated highlighting of the ICLOUD mark on its website and alleged evidence)—and adds only the generic word “trade.”; and (ii) Respondent’s claimed use competes directly with the services offered by Complainant under the ICLOUD Mark.
As the Panel agrees with Complainant and finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the disputed domain name in bad faith as Respondent uses the disputed domain name to imply a connection with Complainant in order to sell products. A respondent’s use of a disputed domain name to imply a connection with a complainant to sell products may be evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides screenshots of the disputed domain name’s resolving webpage which allegedly demonstrates that Respondent promotes a supply chain cloud service that implies a connection with Complainant.
Respondent counter-states that it registered the disputed domain name for its own use not for the purpose of selling or transferring it; Respondent does not attempt to disrupt Complainant’s business because Respondent is not a competitor of Complainant; and Respondent does not attempt to create a likelihood of confusion, for commercial gain, with Complainant’s ICLOUD mark.
Respondent further contends that Complainant’s iCloud services and Respondent’s Tradeicloud services are aimed at different types of cloud services: (i) Respondent’s Tradeicloud services offered by the website of the disputed domain name suggest a fully automated B2B-driven supply collaboration program; (ii) Respondent's services are targeted for business, not for personal daily use; (iii) on the contrary, Complainant’s ICLOUD service enables personal users, especially those who have Apple devices to store, access, and manage data - such as music, photos, calendars, contacts--on remote servers, in addition to manage their apple devices; and (iv) in this sense, Complainant's ICLOUD service is more aimed at personal data storage and management.
Complainant rebuts in its Additional Submission that Complainant offers its services to individuals and businesses alike, providing industry-standard security measures like end-to-end encryption that are not limited solely to retail consumers, and thus Complainant serves both individuals and businesses, the parties’ services compete directly.
The Panel agrees with Complainant and finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tradeicloud.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 2, 2020
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