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Apple Wins and Why It Was the Right Decision

December 16, 2010Domaining, Domainnamewire, ipod, Policy & Law, udrpComments Off on Apple Wins and Why It Was the Right Decision

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

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 “application”. 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.

© 2010.

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