The Complainant is Apple Computer, Inc., of Cupertino, California, United States of America, represented by José Lloreda Camacho & Co., Colombia.
The Respondent is Omar Acosta Rivera of Miami, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names <applefans.com> and <applefansgallery.com> are registered with AAAQ.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 31, 2006, by email and on September 5, 2006, in hard copy. On September 5, 2006, the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification in connection with the domain names at issue. On September 20, 2006, AAAQ.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced September 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2006. Respondent sent to the Center a series of communications from September 22, 2006 until October 10, 2006, where he put forward some arguments in his defense.
The Center appointed Manoel J. Pereira dos Santos, Miguel B. O’Farrell and Daniel Peña as panelists in this matter on November 7, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Center received from Complainant a Supplemental Filing on November 8, 2006, by email with comments on Respondent’s email dated October 10, 2006. In this Supplemental Filing, Complainant merely reiterates the main contentions set forth in the Complaint.
Since Complainant’s Supplemental Filing did not bring any new material element to the case, the Panel decides that the unsolicited Supplemental Filing will not be considered. As decided in WIPO Case No. D2003-0668 (Advanced Magazine Publishers Inc. v. Computer Dazhong), “[p]arties to a UDRP proceeding should realize that there is no right to make supplemental filings without the express permission of the Panel.”
4. Factual Background
The trademark upon which Complaint grounds its contentions is APPLE. According to the documentary evidence and contentions submitted, Complainant registered the trademarks APPLE and APPLE Design in Colombia in 1984. Reference is made to Annex 3 of the Complaint.
The Panel accepts Complainant’s contentions that Apple Computer, Inc. is a widely known company in the computer technology field and that the trademark APPLE is a famous trademark worldwide. Reference is made to Annex 4 of the Complaint.
Complainant is the owner of the domain name <apple.com> which resolves to the official website of Apple Computer, Inc. The “www.apple.com” website has been used to promote and sell all kinds of products manufactured by Complainant, including APPLE products.
The domain name <applefans.com> was registered on March 25, 2000, and the domain name <applefansgallery.com> was registered on August 27, 2003.
On November 15, 2002, upon learning of the use by Respondent of the domain name incorporating “apple fans” in Colombia, Complainant sent a cease and desist letter to Respondent. Reference is made to Annex 5 of the Complaint. On November 25, 2006, Respondent answered the letter and argued that “www.applefans.com” is for a group of Internet users that utilizes the website to promote and discuss their use of APPLE computers. Reference is made to Annex 6 of the Complaint. However, as alleged by Complainant, on November 29, 2002, Respondent sent to Complainant a Certificate of the Chamber of Commerce of Bogota attesting that the commercial name “applefans.com” had been changed to Omar Acosta.
Because Respondent continued using the domain name <applefans.com> on September 23, 2005, Complainant sent a second cease and desist letter to Respondent demanding the suspension of the use of the domain names <applefans.com> and <applefansgallery.com>. Reference is made to Annex 7 of the Complaint. Complainant sent a third letter to Respondent on April 4, 2006. There is no evidence showing that Respondent answered these two letters.
5. Parties’ Contentions
A. Complainant
Complainant argues that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant adds that, due to the notoriety of the trademark APPLE, consumers should know the origin of the products and services bearing that trademark, associated with Complainant, Apple Computer, Inc.
Complainant further contends that Respondent did not obtain any authorization from Complainant to include the trademark APPLE in the disputed domain names on the websites where the domain names at issue resolve. Complainant also argues that the website “www.applefans.com” was created to advise users of APPLE computers in Bogota and worldwide. Complainant further alleges that Respondent used the related website to offer brand new and second hand APPLE products.
Complainant also contends that Respondent acknowledged Complainant’s exclusive rights to the APPLE and APPLE Design trademarks when it agreed to cease the use of the commercial name APPLE as a consequence of Complainant’s first warning letter. In addition, Complainant argues that (a) Respondent offers email services under the <applefans.com> domain name and charges for its services, and (b) Respondent has the burden to show that it has rights or legitimate interests with respect to the domain names at issue.
Finally, Complainant contends that Respondent is taking an unfair advantage of the prestige of APPLE trademarks by creating a likelihood of confusion regarding the origin of the services offered in the “www.applefans.com” and “www.applefansgallery.com” websites since consumers will presume that such websites are authorized by Complainant and have a direct relationship with Complainant’s website “www.apple.com”.
Complainant also points out that that the words “fans” and “fansgallery” are generic and give the wrong idea that the web pages to which the disputed domain names resolve were created by Complainant for its fans. Complainant contends that the fact that Respondent has recently modified the design of such websites to make their contents look more like Complainant’s official site confirms the intent of Respondent to deceive consumers.
Complainant contends that Respondent uses the domain name <applefans.com> to attract and divert web traffic to its website for commercial gain, and Respondent obtains a profit from Complainant’s reputation by creating a likelihood of confusion with Complainant’s APPLE trademark.
B. Respondent
Initially, Respondent argued in a short statement that “www.applefans.com” is an Apple usergroup and that “www.applefansgallery.com” promotes Colombian artists. In a subsequent statement, Respondent contended that “www.applefans.com” is a usergroup approved directly by Apple Computer, Inc. and that its mission is to provide advice and to promote the use of APPLE computers.
6. Discussion and Findings
A. Effect of Respondent’s Response
The Panel finds that, as Respondent was validly notified of the Complaint and commencement of the proceeding, there are no exceptional circumstances for the failure of Respondent to submit a complete Response, and the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel notes that in an email sent to the Center on October 2, 2006, Respondent requested that the communication be made in Spanish. The Panel finds that because English is the language of the registration agreement, English is, therefore, the language of the administrative proceeding in accordance with the terms of paragraph 11 of the Rules. Moreover, the information provided by Respondent to the Registrar includes an address in Florida, United States of America.
B. Identical or Confusingly Similar
This Panel accepts Complainant’s core contention that the disputed domain names are identical or confusingly similar to the trademark APPLE. In fact, the trademark APPLE is distinctive, is registered in a large number of jurisdictions throughout the world and is widely known. The disputed domain names <applefans.com> and <applefansgallery.com> incorporate such trademark in its entirety.
The words “fans” and “fansgallery” are generic. When a respondent merely adds generic or descriptive terms to an otherwise distinctive and widely known trademark, the domain name should be considered confusingly similar to the registered trademark. Bayer Aktiengesellschaft v. Henrik Monseen, WIPO Case No. D2003-0275; Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. 2002-0363; Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.
Therefore, the Panel finds that Complainant’s APPLE trademark and the domain names <applefans.com> and <applefansgallery.com> are confusingly similar, and that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
Respondent states that <applefans.com> is a user group approved by Apple Computer, Inc. However, Complainant expressly denied in the Complaint having granted to Respondent any authorization to include the trademark APPLE in the disputed domain names or on the related websites.
The question which arises is whether the use of the word “fan” associated with a widely known registered trademark might constitute a right or legitimate interest in a disputed domain name. Respondent’s contention implies that user groups might be entitled to own a domain name that includes a registered trademark if such domain name is to identify a user group.
This issue has been addressed in previous WIPO decisions where the panels have indicated that the relevant site should be non-commercial and clearly distinctive from any official site in order to make a showing of rights or legitimate interests under paragraph 4(c) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.5.
The domain name <applefans.com> was apparently used to offer not only new and second hand APPLE products but also to advise users in connection with these products. Reference is made to Annex 9 of the Complaint. This commercial activity clearly does not provide Respondent with a legitimate interest to register and use that disputed domain name.
The Panel conducted an independent verification by accessing the “www.applefans.com” website on different occasions and noted that Internet users are currently directed to the “User Groups” web page of Complainant’s official website “www.apple.com”. The Panel finds that such redirection is per se likely to confuse and deceive the public into believing that Respondent is affiliated with or sponsored by Complainant.
A distinction should be made between the domain names <applefans.com> and <applefansgallery.com>. Respondent argues that the second domain name resolves to a website designed “to promote Colombian artist(s)”. Therefore, Respondent’s “user group” contention clearly does not apply to the second disputed domain name. The Panel also visited the “www.applefansgallery.com” website on different occasions and noted that (a) the design of the website (including its logo) does not look like Complainant’s official site, but (b) the website provides a link (called “applefans”) which directs users to the “User Groups” website of Complainant’s official website “www.apple.com”.
The Panel has already found that Complainant’s APPLE trademark and the domain name <applefansgallery.com> are confusingly similar. By using such domain name, Respondent deliberately attracts potential consumers of APPLE products to its website for commercial purposes. Respondent’s intent of commercial gain is evidenced in the fact that the <applefansgallery.com> website provides sponsored links to art galleries.
The consensus view in WIPO decisions is that “[w]hile the overall burden of proof rests with the complainant, … this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
The Panel finds that Complainant has made out a prima facie case. Respondent has not established that he is making a legitimate noncommercial or fair use of the disputed domain names or that he has any other rights or legitimate interests to the domain names.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
Respondent acknowledged in previous correspondence with Complainant that he was always fully aware of Complainant’s APPLE trademarks. Reference is made to Annex 6 of the Complaint where Respondent stated that he has considered using the APPLE trademark since 1985.
Therefore, the Panel finds that, since Respondent formed both the domain names <applefans.com> and <applefansgallery.com> by only adding generic terms to a widely known trademark, Respondent’s motivation was to take advantage of the prestige of the APPLE trademark. As a result, the Panel concludes that Respondent registered the disputed domain names in bad faith.
The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website. Pursuant to paragraph 4(b)(iv) of the Policy this is evidence of use in bad faith.
The fact that Respondent changed the contents of the “www.applefans.com” website to redirect Internet users to Complainant’s official website at “www.apple.com” is a further indication of bad faith on the part of Respondent. Confusion is particularly insidious in this case because Respondent’s website was previously offering new and second hand APPLE products, and advice to users in connection therewith. Internet users who had visited the “www.applefans.com” before would certainly be led now to conclude that such website was always approved and endorsed by Apple Computer, Inc.
There is one final question that should be addressed: whether the fact that Complainant delayed bringing an action against Respondent for a couple of years following the registration of the disputed domain names bars from ruling in favor of Complainant.
The Panel is of the view that a delay in bringing a claim does not generally operate as a waiver. As decided in Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, there is no meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name. In addition, there is no indication, express or tacit, that Complainant ever consented to Respondent’s use of its trademark in the disputed domain names and the records show that Complainant sent Respondent at least three cease and desist letters since 2002 to stop such use.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <applefans.com> and <applefansgallery.com> be transferred to Complainant.
Manoel J. Pereira dos Santos Presiding Panelist
Miguel B. O’Farrell Panelist
Daniel Peña Panelist
Dated: November 21, 2006
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