Skype Limited v. and-arts.com
Claim Number: FA1111001415592
Complainant is Skype Limited (“Complainant”), represented by Don C. Moody of Genga & Associates, P.C., California, USA. Respondent is and-arts.com (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skype.ws>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2011; the National Arbitration Forum received payment on November 15, 2011.
On November 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skype.ws> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 November 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2011 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@skype.ws. Also on November 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 November 18, 2011.
On November 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skype.ws> domain name is confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skype.ws> domain name.
3. Respondent registered and used the <skype.ws> domain name in bad faith.
B. Respondent denies each of Complainant’s three assertions.
Complainant holds multiple trademark registrations for the SKYPE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,005,039 filed January 15, 2004; registered October 4, 2005) together with numerous foreign trademark offices.
Respondent and-arts.com, registered the <skype.ws> domain name in March, 2004. The disputed domain name resolves to a site that displays Complainant’s SKYPE trademark and content that relates to software, products and services that compete with Complainant, such as “Google Voice”, “JahJah”, and “Fringe” together with unrelated products.
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 argues that it has rights in the SKYPE mark because it holds multiple trademark registrations for the SKYPE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,005,039 filed January 15, 2004; registered October 4, 2005), the Hong Kong Trade Marks Registry (“HKTMR”) (Reg. No. 300156546 registered February 11, 2004), and the Malaysia Intellectual Property Corporation (“MIPC”) (Reg. No. 04001014 registered May 10, 2006), among other trademark offices. In prior UDRP cases, the panels have concluded that registration with a trademark authority confirms a complainant’s rights in a mark, even if the mark is not registered with the trademark authority of the respondent’s country. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Past panels have also determined that a complainant’s rights in a mark date back to the filing date of a mark with the USPTO. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds in accordance with this precedent and hold that Complainant has proven rights in the SKYPE mark, dating back to the filing date with the USPTO of January 15, 2004, for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <skype.ws> domain name is identical to Complainant’s SKYPE mark because the single addition of the “.ws” country-code top-level domain (“ccTLD”) should be ignored by the Panel in the determination of identicality. It has prior been established that the addition of a ccTLD does not affect the panel’s decision of whether a domain name is identical to a mark, as a gTLD or ccTLD is required in domain names. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”); see also Citigroup Inc. v. CAAB, FA 1231645 (Nat. Arb. Forum Dec. 8, 2008) (finding that the presence of the “.ws” ccTLD for Western Samoa was “without significance to this analysis” under Policy ¶ 4(a)(i)). The Panel may therefore conclude that Respondent’s <skype.ws> domain name is identical to Complainant’s SKYPE mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <skype.ws> domain name is comprised of a common and generic term and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds for the Complainant as to this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that it never gave Respondent permission to use the SKYPE mark in any way. Complainant also contends that Respondent is not, and has never been, commonly known by the SKYPE mark or the <skype.ws> domain name. Complainant argues that Respondent is instead known as “and-arts.com,” which is how it is identified in the WHOIS record for the disputed domain name, and that such a name reveals no connection to the disputed domain name. The Panel accordingly concludes that Respondent is not commonly known by the <skype.ws> domain name and therefore has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Complainant argues that Respondent’s <skype.ws> domain name currently resolves to a website that displays Complainant’s SKYPE trademark and content relating to software, products, and/or services that compete with Complainant, such as “Google Voice,” “JahJah,” and “Fring,” as well as links advertising Respondent’s own web design and marketing business. Complainant asserts that Respondent is therefore using the disputed domain name to operate a website to provide information and links to products in competition with Complainant, which the Panel may find is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also argues that Respondent questioned Complainant about buying the <skype.ws> domain name or providing compensation to Respondent for its transfer after Complainant filed this Complaint. Complainant contends that this communication constitutes an offer to sell the disputed domain name, which supports a finding against Respondent. The Panel determines that Respondent accordingly lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) because of its willingness to sell the disputed domain name to Complainant. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds for the Complainant as to this element.
Complainant alleges that, shortly after it filed this action, Respondent’s representative contacted Complainant’s counsel and asked whether Complainant would be prepared to buy the <skype.ws> domain name or otherwise “compensate [his] party for the eventual transfer to skype limited.” Complainant asserts that, even without specifying a price, this is a general offer to sell that demonstrates that Respondent registered the disputed domain name in bad faith for the purpose of selling it. The Panel agrees with Complainant and finds bad faith according to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant claims that Respondent’s <skype.ws> domain name resolves to a website that hosts content relating to software, products, and/or services that compete with Complainant, such as “Google Voice,” “JahJah,” and “Fring.” According to Complainant, the website also contains advertising for Respondent’s design and marketing business. The Panel determines that Respondent registered and uses the <skype.ws> domain name for the purpose of providing information and links to products in competition with Complainant, and concludes that Respondent registered and uses the <skype.ws> domain name in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant alleges that Respondent registered the <skype.ws> domain name that integrates Complainant’s highly distinctive mark in order to maintain a website that hosts links to Respondent’s own for-profit web design and marketing business, as well as links to competing software, products, and services, such as “Google Voice” and “Fring.” Complainant asserts that the use of its mark in the disputed domain name and on the resolving website creates confusion among Internet users as to whether Respondent’s business and the other advertised links are somehow affiliated with or endorsed by Complainant. The Panel finds that this confusion translates into commercial gain for Respondent as Respondent may get new customers for its own business and/or profit via pay-per-click fees generated by the links displayed. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
For each of these reasons, the Panel finds for the Complainant as to this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skype.ws> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 15, 2011
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