Four letter domain transferred to Apple based on content of parking page.
Last month I wrote about how Apple had filed a complaint with World Intellectual Property Forum to get the domain name Appl.com.
Apple just one the case. But before you get upset about a four letter generic domain name being surrendered through UDRP you should read panelist Richard G. Lyon’s decision.
Lyon notes that Apple doesn’t have rights to any domain containing the word “apple” or a typo of it. In the instant case the domain name owner (who didn’t respond to the complaint) had a parked page showing links related to Apple products. In other words, the iPod manufacturer was being targeted. Lyon cautioned against Apple getting overzealous with this victory. Responding to Apple’s assertion that “Where, however, as here, Complainant’s APPLE Marks are so well-known and recognized, there can be no rights or legitimate use by Respondent”, Lyon wrote:
The predicate for this contention, that Complainant’s mark is distinctive, is accurate but not complete. Complainant’s mark is undeniably distinctive for computers and the other products and services offered by Complainant. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2, however, “apple†is a dictionary word and not necessarily distinctive for apples, fruit, groceries, or similar produce. Similarly, the four-letter sequence that comprises the disputed domain name could be an abbreviation for other common words, such as “appliance†or “applicationâ€. What makes Respondent’s conduct obvious cybersquatting is the similarity of the disputed domain name to the APPLE mark combined with competitive use, sometimes called “targeting†Complainant and its marks. Even the renown of Complainant and its marks does not confer a worldwide monopoly on the right to use the word APPLE or a variant in a domain name, under the Policy or under United States trademark law. The Panel points this out in the hope that Complainant, unlike some other owners of famous brands that incorporate common words, will limit its vigilance to proper circumstances, as it apparently has so far done.
Lyon footnoted his comment on “some owners of famous brands”, directly calling out Ralph Lauren for its attempts to get domain names including “polo” that didn’t have to do with its brand.
Uzoma says
Mr. Lyon has plenty of brains.
His reasoning, I believe, is as balanced as Solomon’s.
Ms Domainer says
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Definitely a common sense decision.
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Joey Starkey says
Not responding is just like saying I know Im caught.
If you are in the right fight. If not just fold I guess.
Best practice is jut don’t be a squatter.
mansour says
With the prices of domain names in the 6 and 7 figures, using WIPO is the way to go to get a domain name that you otherwise have to pay 6 figures for. Everyone thinks that responding to UDRP is a simple procedure but it is not, and you will say ‘why don’t you use a lawyer to respond.’ Not everyone has $10,000 to defend his right to a domain name against multi-billion dollar companies. The poor owner is using the domasin name with SEDO parking and has no control over what SEDO would put on the parking page. Why doesn’t the panelist, rather than giving the domain name to Apple order the domain owner not to use the domain name with products in conflict with Apples’s products, rather than ordering them to turn to the domain name over to them. The panelist is giving the domain owner the death penalty for an infraction. I am surprised that everyone is applauding this decision, no matter how big of a corporation Apple is. Adam and Eve were the originators of the apple fame.
John says
It’s “fruit” with Adam and Eve, not “apple” 🙂
Steve says
“Why doesn’t the panelist, rather than giving the domain name to Apple order the domain owner not to use the domain name with products in conflict with Apples’s products, rather than ordering them to turn to the domain name over to them.”
– Exactly, 1st time maybe a mistake if it happens again you lose it. Seems unfair when a company puts it’s products all over the planet and then is surprised when they see people linking or selling those items. As well shouldn’t the parking companies have programs that catch these trademark links. If sedo or any parking company is putting up the links should they not be somewhat responsible for content?
Cheers.
jonty says
The owner has little or no control over what Sedo put on the site. How would someone with 1000’s of domains monitor what a parking company is putting on the parked pages?
The complainant would have to prove that it was registered in bad faith. I doubt that was done here.
It is a bad decision.
Andrew Allemann says
@ jonty – the respondent could have tried to argue that if he bothered to respond. Absent a response, the panel could assume that Apple was targeted given the content of the page.
Uzoma says
It is a bad outcome for the owner of the domain, but a terrific opinion for the domainer. Make no mistake about it, certain times, it’s better to lose a battle, but win the war. The domainer has mighty forces arrayed against him, so this is momentous. Firstly, it soundly admonished Apple not to get carried away. That alone is priceless.
Jason says
The owner may have not responded because they knew it could be a lengthy battle. I know of an owner who was presented a letter from a company stating their .co was in direct violation of the tm.
However, he used the domain for something other than their products. He wrote the lawyer back. Explained the reason he registered the name before .co was made public – petitioned for name.
Companies will attempt to take names without paying for them. I find that companies snooze, and then try to go after owners who are not using the names they know are valuable to them.