Skype v. Giuseppe Caruso
Claim Number: FA1202001431445
Complainant is Skype (“Complainant”), represented by Don C. Moody of Genga & Associates, P.C., California, USA. Respondent is Giuseppe Caruso (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypehotgirls.com>, registered with Tucows, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 26, 2012.
On February 27, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <skypehotgirls.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 February 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2012 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@skypehotgirls.com. Also on February 28, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant and/or its affiliated entities have been granted trademark registration for the term “SKYPE” in the United States (USPTO Reg. Nos. 3005039, registered October 10, 2005 in Class 38, and 3263302, registered July 10, 2007, in classes 9 and 42), and the following additional countries: Argentina, Australia, Brazil, the Benelux Countries, Canada, Chile, China, Colombia, the Czech Republic, Egypt, Estonia, Finland, Hong Kong, Hungary, Indonesia, Israel, Japan, the Republic of Korea, Liechtenstein, Malaysia, Mexico, Morocco, New Zealand, Norway, Poland, the Russian Federation, Singapore, South Africa, Switzerland, Taiwan, Thailand, Turkey, the UAE, Venezuela and Vietnam.
Complainant uses the SKYPE mark in connection with a software client that allows users to make voice and data communications over the Internet and via mobile devices.
Respondent uses the at-issue domain name to host photos of various women, and encourages Internet users to “find [their] sexy skype girl.” Each photo purportedly links to the woman’s “profile,” however the links include advertisements for an unrelated third-party site. The advertisements feature adult-oriented material.
Respondent’s disputed domain name is confusingly similar to Complainant’s SKYPE mark.
Respondent is not commonly known by the disputed domain name and is not make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name resolves to a website that attracts Internet users for commercial gain by creating a likelihood of confusion as to Complainant’s sponsorship or affiliation with the disputed domain name and tarnishes Complainants mark by displaying adult-oriented material.
Respondent had actual and constructive knowledge of Complainant’s SKYPE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its SKYPE mark at all times relevant to this proceeding. Complainant’s trademark is confusingly similar to Respondent’s at-issue domain name.
Respondent has no authority to use Complainant’s trademark in a domain name or otherwise.
The disputed domain name has resolved to a website that attracts Internet users by creating a likelihood of confusion as to Complainant’s sponsorship or affiliation with the disputed domain name and tarnishes Complainants mark by displaying adult-oriented material.
Respondent had actual knowledge of Complainant’s Skype trademark at the time he registered the at-issue domain name.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Respondent’s domain name is confusingly similar to a trademark in which the Complainant has rights.
Complainant shows that it has numerous trademark registrations with the USPTO for, and related to, its SKYPE mark (e.g. USPTO Reg. Nos. 3005039, registered October 10, 2005 in Class 38, and 3263302, registered July 10, 2007, in classes 9 and 42). The existence of the registrations supports a finding that Complainant has established rights in the SKYPE mark pursuant to Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s disputed domain name is confusingly similar to Complainant’s SKYPE mark. The at-issue domain name merely appends the generic/descriptive term “hotgirls” (or terms “hot” + “girls”) and the gTLD “.com” to Complainant’s mark. Adding a generic/descriptive term or terms and a generic top-level domain (“gTLD”) to Complainant’s trademark does not sufficiently distinguish the at-issue domain name from Complainant’s mark pursuant to Policy ¶4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names)
Even taken cumulatively, the alternations to Complainant’s well know trademark are insufficient to differentiate it from the at-issue domain. Therefore, Complainant’s trademark and the at-issue domain name are confusingly similar under Policy ¶4(a)(i)
Respondent lacks rights and interests in respect of the domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainant’s prima facie showing will be conclusive.
Respondent is not commonly known by the <skypehotgirls.com> domain name as the WHOIS information for the at-issue domain name is not similar to the disputed domain name. “Giuseppe Caruso” is identified as the domain name’s registrant. Moreover, Respondent fails to present any evidence in support of a finding that it is commonly known by the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). Therefore, Respondent is not commonly known by the <skypehotgirls.com> domain name under Policy ¶ 4(c)(ii).
Furthermore, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name since Respondent has used the disputed domain name to resolve to a website containing hyperlinks to an unrelated site. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Respondent’s <skypehotgirls.com> domain name has resolved to a website featuring various pictures of women and that each photo links to that woman’s “profile.” The links on that site resolve to advertising for a third-party site unrelated to Complainant’s SKYPE mark. Respondent thereby fails to make any bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the dispute domain name under Policy ¶ 4(c)(iii).
Finally, evidence of adult-oriented material is further affirmation that Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Links from Respondent’s <skypehotgirls.com> website have included advertisements that feature nudity or are otherwise sexually explicit. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).
Respondent registered and used the at-issue domain name in bad faith.
Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and its referenced website. Respondent’s registration and use of the at-issue domain name to resolve to a website containing hyperlinks to an unrelated site is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Respondent used the disputed domain name to attract Internet users in order to redirect them to purchase services at an unrelated site. This use attracts Internet users for commercial gain because there is a likelihood of confusion as to Complainant’s affiliation and sponsorship of the unrelated site. It is more likely than not that Respondent does, or intends to, commercial benefit from such attraction. Therefore Respondent’s registration and use of the <skypehotgirls.com> domain name was, and is, in bad faith under Policy ¶ 4(b)(iv).
Evidence of adult-oriented material, note above, is further support for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). As noted above, Respondent ‘s <skypehotgirls.com> resolved to adult oriented material.
Additionally, it is inconceivable that Respondent could have registered the <skypehotgirls.com> domain name without actual knowledge of Complainant's rights in the mark. Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name is further evidences Respondent’s bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypehotgirls.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 4, 2012
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