The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests: Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c))

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name”; “(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; “(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”; or and “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on your website or location”.

As noted above, a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain was to profit from and exploit the complainant’s trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra. The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry Preston, supra. The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant’s rights. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 0285459.

The Panel notes that Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, where a registrant is engaged in the wholesale registration of large numbers of domain names. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. However, Paragraph 2 of the Policy has generally not been read as routinely requiring registrants to conduct trademark searches, see, e.g., Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254, and a complainant generally must proffer some evidence, whether direct or circumstantial, indicating that the respondent had the complainant’s mark in mind when registering the disputed domain name. See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661.

No such showing has been made by the Complainant in this case. The circumstances as reflected in the record do not indicate that the Respondent actually knew, reasonably should have known, or could even be deemed to have constructive notice of the Complainant’s rights in the FRONTRUNNERS mark at the time the Respondent acquired the disputed domain name. Clearly, a search of the USPTO trademark database at that time would not have alerted the Respondent to the Complainant’s rights in the mark. Further, while the Respondent has been a party to a number of UDRP proceedings, this without more does not establish a clear pattern of abusive domain name registration practices which may under other circumstances support an inference of the Respondent’s bad faith in this case. And as noted above, the registration of a domain name in order to generate pay-per-click advertising revenue is not a per se violation of the Policy where the registrant is not seeking to take advantage of the complainant’s rights.

The Panel does not see how that certification properly could have been made because before filing this proceeding, there was apparently no attempt to confirm whether Respondent possessed a legitimate interest in using his given name. Nonetheless, the Policy is clear that being commonly known by the disputed domain name is a clear ground establishing a respondent’s right or legitimate interest. Complainant has therefore disregarded the mandatory rules governing this dispute, in particular, Policy paragraph 4(c)(ii).7

As also explained above, Respondent registered the disputed domain name corresponding to his given name 10-years ago, and has seemingly used the disputed domain name with a live website since then. The Complaint fails to present any basis for suggesting that Respondent’s conduct was or is in bad faith, and misrepresents readily available facts respecting how (and whether) the website is and has been used.

The misleading factual allegations of the Complaint present the Panel with inaccurate and incomplete information, in contradiction of the certification quoted above. This contradiction is combined with a failure of diligence and the absence of the Complaint to present any arguments or authorities which might underpin a legal position that is contrary to the plain meaning of the Policy......For all the foregoing reasons, the Complaint is denied. The Panel further declares that the Complaint constitutes an abuse of the administrative proceeding.

Identical and/or Confusingly Similar. With respect to Complainant’s pending trademark application for EDIBLE BRANDS, which is closely similar to the Domain Name, the Panel agrees with the Respondent that this application confers no enforceable rights as against the Respondent. As Complainant itself has stated in its complaint, the date of January 2, 2009 is the date of application and first use for this mark. This is in contrast to Respondent’s registration of the Domain Name in July 2005.

The Panel does find that some of the trademarks relied upon by the Complainant – some of the EDIBLE ARRANGEMENTS and related family of marks – pre-date registration of the Domain Name. However, the Domain Name differs from Complainant’s EDIBLE ARRANGEMENTS mark in three ways: (1) the term ARRANGEMENTS has been removed; (2) the descriptive term BRANDS has been added to the end of the term EDIBLE; and (3) the generic top-level domain “.com” has been added.

In this case, where the Respondent’s Domain Name has replaced the term ARRANGEMENTS with another non-synonymous, generic term, BRAND, the Panel finds that this change is sufficient to distinguish the Domain Name, , from the Complainant’s EDIBLE ARRANGEMENT mark, which must be taken as a whole. In this respect, the Panel agrees with the Respondent’s contention to refute Complainant’s claim that EDIBLE is the dominant and distinctive portion of Complainant’s EDIBLE ARRANGEMENTS mark. The Panel finds that the term EDIBLE alone is not distinctive of the Complainant. The comparison should be between the Domain Name and the EDIBLE ARRANGMENTS mark as an indivisible whole.

One way of looking at this is by analogy with the concepts of agency that exist in various legal systems, whereby the principal is responsible for the actions of his agent. However, the Panel would approach this issue somewhat more simply. A domain name registrant is under the Policy responsible for the way in which a domain name has been and is used (at least so far as a website that is operating directly from the domain name without further addition is concerned).

A registrant cannot avoid responsibility for the way in which that domain name is used by saying these are the actions of a third party. The registrant ultimately has control over the way in which a domain name is used and should he decide to cede control of the domain name to a third party (whether by contract or otherwise) he nevertheless remains responsible for how that domain name is used. Were this not the case the whole purpose and intent of the Policy could be undermined by the use of such contracts. That cannot have been the intent of the framers of the Policy.

Both Complainant’s domain name registration and its use of the name in commerce were substantially subsequent to Respondent’s registration of the disputed domain name. Obviously then, Complainant had acquired no rights in a common law trademark or service mark at the time of Respondent’s registration of the disputed domain name. It may be assumed, arguendo, that Complainant’s domain name and the disputed domain name are confusingly similar (which they are). It may also be assumed, arguendo, Respondent does not have a legitimate interest or rights in the disputed domain name (which it does have). It may even be assumed, arguendo, Respondent is using the domain name in bad faith (which it is not).

Nevertheless, the essential prerequisite which Complainant cannot demonstrate is bad faith registration of the disputed domain name by Respondent. The disputed domain name was registered before Complainant’s business began, and, indeed, before he had even commenced acquiring a common law trademark. (See Interep National Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26 2000), wherein on page 5 it is said: "6.4 Although the Panel has found that Complainant has satisfied Policy 4(a)(i) and 4(a)(ii), it cannot find bad faith use and registration pursuant to Policy 4(a)(iii) on this record. The fact that Respondent registered its domain name two years before the intent to use application of Complainant was filed and three years before Complainant started using the mark is persuasive to the Panel none of the bad faith factors in Policy 4(b) apply.")

There is no question the Respondent, or related parties, have been found in the past to have engaged in the practice of cyber-squatting. In particular, (S.P) who appears to be related to the Respondent, is known to CIRA domain name panels. However, this is not relevant to this particular case, which relates to what is undoubtedly a generic domain name registration. While the Panel does not endorse the Respondent’s unauthorized domain name registrations, it needs to be proven that the Respondent was cyber-squatting in this case, which has not been established.

The registration of domain names which are descriptive, generic, or otherwise not known to infringe on the rights of current trade-mark holders is an acceptable practice in the area precisely because they do not infringe on trade-mark rights. Note, however, that descriptive or generic domain names may still be found to have been registered in bad faith. In this case, though, the domain name is so clearly generic that its registration cannot be seen as being registered in bad faith.

In all past cases decided under the Policy, the existence of a confusing trade-mark has been sufficient to defeat a claim of reverse domain name hijacking. While the existence of a trade-mark registration is most certainly a relevant consideration in deciding whether a Complaint was filed in good faith, a Panel must also consider other factors, including the conduct of the complainant and the nature of the domain name. The Panel is well aware of the extraordinary nature of a ruling of Reverse Domain Name Hijacking under the Policy, as it includes the potential for an award of costs of up to $5,000. Indeed, to date there have been no awards of cost under the Policy. Yet the extraordinary behaviour of the Complainant cannot be tolerated or endorsed by the Panel and merits a ruling on costs.

As a result, this Panel finds the Complainant has engaged in Reverse Domain Name Hijacking under paragraph 4.6 of the Policy. The Panel may therefore award the Respondent up to $5000 to defray its costs. However, before such an award can be made, the Panel invites the Respondent to make its submissions on costs. Thereafter, the Panel will render its decision on the quantum of costs. ORDER ON COSTS: The Panel hereby directs the Registrant (Respondent) to provide its submissions on costs within 5 business days in connection with the Panel's finding of Reverse Domain Name Hijacking. The submissions are to include legal fees incurred as well as disbursements.

The Complainant’s name never appears on any Apple products or services. No reference is made to the Complainant on packaging or marketing materials. The Complainant’s employer has a corporate strategy which minimises the contributions of individual designers, by labeling all products as “designed by Apple in California”. It is therefore not possible to claim that JONATHAN IVE or JONY IVE performs the function of a trade mark. Each component of the names (“Jonathan”, “Jony” and “Ive”) are not inherently distinctive. The Complainant only filed its Community Trade Mark applications in October 2008, after Apple Inc. had tried to coerce the Respondent into assigning the disputed domain names in July 2008.

The Respondent has a clear right and legitimate interest in the disputed domain names. In particular, the Respondent used the disputed domain names before any notice of a dispute arose, as an educational fan site. Respondent obtained the disputed domain name in 2004, before any allegation of trade mark rights existing in the Complainant’s name were raised. The Respondent launched his fan site in January 2006, which is also before any dispute existed. The Complainant and the Respondent spoke for the first time in April 2008, at which time the Respondent was unwilling to sell the disputed domain names. This conversation did not constitute a dispute. When the Complainant and Respondent spoke, an agreement was reached that the Respondent would give the Complainant a right of first refusal to purchase the disputed domain names, should the Respondent ever tire of managing the site. A dispute only arose in July 2008, when the Complainant’s solicitors wrote to the Respondent alleging an action in passing off. This came two years after Apple Inc. had approved the Respondent’s fan site.

The Respondent and his fan site have become commonly known by the disputed domain name . This website is well established and regarded, according to Google search ranking and Wikipedia. The Respondent receives emails via the website addressed to the Respondent personally. He has thus become commonly known by the disputed domain names and has acquired a right in them. The web site is a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue. The Respondent has been using the domain names to produce an educational fan site, which constitutes legitimate and fair use. The Respondent has never sought to sell the disputed domain names. He reluctantly agreed to name a possible sale price in February 2008 after he was threatened with litigation. He mentioned a high amount in order to dissuade Apple Inc. from contacting him further. The Respondent expressly stated that he did not need or want to sell the disputed domain names.

The Respondent’s legitimate interest in the disputed domain names has been acknowledged by the Complainant on at least three previous occasions where the parties discussed the contents of the Respondent’s fan site and the Complainant approved the contents. Apple Inc. has admitted that the fan site does not tarnish its trade marks, and this is evidence from the fact that the website advertises Apple Inc.’s own products and provides links to its online store. The Respondent regularly updates the website. The information on the website was properly researched. While Google ads are used on some pages, they are not for the sale of products or services belonging to the Complainant. The advertisements have generated an amount of less than USD500 since Feb 2006, and hardly amounts to commercial activity. Such ads are clearly not central to the site.

Apple Inc. first sought to acquire the Respondent’s disputed domain names in February 2008. Prior to this date the Complainant or Apple Inc. never challenged the Respondent’s rights or legitimate interests. Rather, other employees of Apple Inc. acknowledged that the Respondent was operating a legitimate fan site. The Respondent was asked to add a clearer disclaimer, and this was done by the Respondent immediately (after seeking and obtaining approval from Apple Inc.). The Respondent is not a competitor of the Complainant, and the disputed domain names were not registered by the Respondent primarily to disrupt the Complainant’s business. The Respondent’s fan website cannot be perceived as having any detrimental impact on the Complainant’s business, or to have diverted any Internet traffic away from it. The website does not lead to any disreputable sites or products, and Apple Inc. actually benefits from and advertises on the fan site using Google advertisements.

As discussed above, the Respondent did not acquire the disputed domain names primarily for the purpose of selling, renting or transferring them to the Complainant The evidence provided indicates the Complainant (and Apple Inc.) do not promote the Complainant’s name as a brand or trade mark, and therefore do not use it in trade or commerce. Firstly, because the Complainant’s work for which he is most famous is publicly recognised and primarily attributable to Apple Inc. rather than the Complainant. Secondly, despite having the opportunity to pursue individual endeavours outside his employment, which under certain circumstances might be branded under his personal name, the Complainant has made a conscious decision not to do so. In fact, the Complainant has actively sought to keep his personal name out of trade and commerce. As was the case in The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohen, Profile.net and God.Info, WIPO Case No. D2002-0184: “Complainant is careful to avoid any suggestion that he has exploited his name for ‘materialistic’ or ‘commercial’ purposes.”

On the material before the panel the Respondent has shown he and his brother are and have been for some time commonly known by the names "muscle" and "fitness". The Respondent also submitted evidence that prior to this dispute (namely on January 1, 2001), he and his brother prepared a document entitled "Website Project". That document contains the words "Muscle" and "Fitness", followed in parentheses by the names "Donho and Namho" and the names of their father, mother, sister and brother-in-law, as well as the brothers’ names in full. The document comprises a summary description of the contents and structure of a proposed website. There is a "Project Progress Schedule" showing the various planned stages from "Project Plan", starting on January 1, 2001, through to "Test and Completion" ending on January 30, 2001. The Respondent stated that the intended opening of the website on February 1, 2001, was delayed by the bringing of this complaint.

On the material before the panel, there is no reason to doubt Respondent’s assertion and the panel accepts that, before the Respondent received notice of this dispute, he engaged in demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services, namely information about his family and about heath and fitness in general.

The panel finds the Complainant has failed to prove the Respondent has no rights or legitimate interests in respect of the disputed domain name under Rule 4(a)(ii) and the Respondent has demonstrated he does have rights or legitimate interests in and to that name, under Rule 4(c)(i). Bad faith: Since it is unnecessary to deal with this issue, it may be noted simply the Respondent’s lack of knowledge of the trademark prior to this dispute is fatal to this aspect of the Complainant’s case. In any event, prior knowledge of a weak mark does not, without more, establish bad faith: Goldline International Inc., v. Gold Line WIPO Case (D2000-1151). The complainant has not shown either bad faith registration or bad faith use.