Microsoft Corporation and Skype v. ATF The Veil Super Fund / K. Veil ATF The Veil Super Fund / The Veil Super Fund Klaus Veil ATF
Claim Number: FA1211001470016
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is ATF The Veil Super Fund / K. Veil ATF The Veil Super Fund / The Veil Super Fund Klaus Veil ATF (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <free-skype-download.net>, <msn-messenger-download.com>, <powerskype.com>, <skypefreedownload.org>, <skype09.info>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, , <skype-secrets.com>, <skype-sender.info> and <skype-wow.info>, registered with GoDaddy.com, LLC and <skype-mail.com> registered with Aust Domains International Pty Ltd dba Aust Domains, 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 6, 2012; the National Arbitration Forum received payment on November 6, 2012.
On November 6, 2012, Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <skype-mail.com> domain name is registered with Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. and that Respondent is the current registrant of the names. Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. has verified that Respondent is bound by the Aust Domains International Pty Ltd d/b/a Aust Domains, 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 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <free-skype-download.net>, <msn-messenger-download.com>, <powerskype.com>, <skypefreedownload.org>, <skype09.info>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names are registered with GoDaddy.com, LLCand that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@free-skype-download.net, postmaster@msn-messenger-download.com, postmaster@powerskype.com, postmaster@skypefreedownload.org, postmaster@skype09.info, postmaster@skype-backup.com, postmaster@skype--free--download.com, postmaster@skypehelper.com, postmaster@skype-mail.com, postmaster@skype-secrets.com, postmaster@skype-sender.info, and postmaster@skype-wow.info. Also on November 8, 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 December 11, 2012, 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.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <free-skype-download.net>, <msn-messenger-download.com>, <powerskype.com>, <skypefreedownload.org>, <skype09.info>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-mail.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names are confusingly similar to Complainant’s MSN and SKYPE marks.
2. Respondent does not have any rights or legitimate interests in the <free-skype-download.net>, <msn-messenger-download.com>, <powerskype.com>, <skypefreedownload.org>, <skype09.info>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-mail.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names.
3. Respondent registered or used the <free-skype-download.net>, <msn-messenger-download.com>, <powerskype.com>, <skypefreedownload.org>, <skype09.info>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-mail.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” There are two Complainants in this matter: Microsoft Corporation and Skype. Skype is a wholly-owned subsidiary of Microsoft Corporation.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel notes that Complainant does not explicitly state that there is only one Respondent; however, the Panel notes that Complainant provides Respondent’s contact information, which is nearly identical for each of the registrants—ATF The Veil Super Fund, K. Veil ATF The Veil Super Fund, and The Veil Super Fund Klaus Veil ATF—listed in the disputed domain names’ WHOIS information.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
i. Respondent is not commonly known by the disputed domain names where the WHOIS information identifies “ATF The Veil Super Fund / K. Veil ATF The Veil Super Fund / The Veil Super Fund Klaus Veil ATF” as the registrant.
ii. Respondent’s <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, and <skype-sender.info> domain names resolve to pages that employ highly misleading links and banners to suggest that Complainant’s SKYPE software can be downloaded from these pages but instead divert consumers to Complainant’s competitors.
iii. Respondent’s <msn-messenger-download.com>, <skypefreedownload.org>, <skype-backup.com>, and <skypehelper.com> domain names are inactive.
iv. Respondent’s <skype-wow.info> domain name is parked at a pay-per-click page that also promotes the “Skyp Download.”
v. Respondent’s <skype09.info> and <skype--free--download.com> domain names lead to an error page at <ehws.net.au>, a site entitled “eHealth Web Services.”
vi. Using Complainant’s famous trademarks to attract traffic and generate revenue by misdirecting consumers to competing goods and services does not reflect a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
i. Respondent registered the disputed domain names with knowledge of Complainant’s rights in the MSN and SKYPE marks as evidenced by the fame of Complainant’s trademarks, the clear references to Complainant and Complainant’s SKYPE services on the resolving websites, and the registration of multiple domain names infringing on Complainant’s marks. This knowledge indicates registration in bad faith.
ii. Respondent has failed to make an active use of some of the disputed domain names, which is evidence of bad faith.
iii. Respondent is offering all but one of the disputed domain names for sale.
iv. Respondent has registered at least twelve domain names that incorporate Complainant’s MSN and SKYPE marks, reflecting a pattern of conduct that has deprived Complainant from reflecting its mark in a corresponding domain name and constituting bad faith under Policy ¶ 4(b)(ii).
v. Respondent’s promotion of Complainant’s competitors disrupts Complainant’s business.
vi. Respondent’s disputed domain names promote, link to and attempt to trick consumers into visiting third parties not affiliated with Complainant. Respondent has attempted to commercial benefit from the goodwill associated with Complainant’s marks by promoting unrelated businesses through the disputed domain names, which shows bad faith according to Policy ¶ 4(b)(iv).
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.”).
Complainant, Microsoft Corporation, contends that it is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Complainant asserts that it uses and has registered various well-known marks in conjunction with its business, including MSN and SKYPE. Complainant contends that Skype, a wholly-owned subsidiary of Complainant, is a real time instant messaging and voice communication technology used over the Internet. Complainant asserts that it owns and shows evidence of trademark registrations with the USPTO for the MSN mark (e.g., Reg. No. 2,153,763, registered April 28, 1998) and for the SKYPE mark (e.g., Reg. No. 3,005,039, registered October 4, 2005). Complainant also owns trademark registrations with IPAustralia for the MSN mark (e.g., Reg. No. 822,226, registered February 3, 2000) and for the SKYPE mark (e.g., Reg. No. 988,248, registered February 9, 2004). Complainant also owns trademark registrations for the MSN and SKYPE marks in numerous countries throughout the world. The Panel finds that Complainant’s registration with numerous trademark offices is sufficient to establish its rights in the MSN and SKYPE marks under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <free-skype-download.net>, <msn-messenger-download.com>, <powerskype.com>, <skypefreedownload.org>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-mail.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names are confusingly similar to Complainant’s MSN and SKYPE. The Panel notes that the <free-skype-download.net>, <powerskype.com>, <skypefreedownload.org>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-mail.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names should be compared with the SKYPE mark. Complainant asserts that the disputed domain names wholly incorporate Complainant’s SKYPE mark, adding only generic or descriptive terms such as “backup,” “download,” “free,” “helper,” “mail,” “power,” “secrets,” “sender,” or “wow.” The Panel finds that the addition of generic terms does not distinguish Respondent’s disputed domain names from Complainant’s marks under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant argues that in one disputed domain name, <skype09.info>, Respondent merely adds the number “09.” The Panel finds that the addition of numerals does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that the respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the complainant’s mark). Complainant contends that some of Respondent’s disputed domain names add one or more hyphens to the mark. The Panel finds that the addition of hyphens does not differentiate Respondent’s disputed domain names from Complainant’s marks under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Complainant argues that Respondent has added a gTLD to each of the disputed domain names. The Panel finds the addition of a gTLD does not eliminate confusing similarity between Respondent’s disputed domain names and Complainant’s marks. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel concludes that Respondent’s <free-skype-download.net>, <powerskype.com>, <skypefreedownload.org>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-mail.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names are confusingly similar to Complainant’s SKYPE marks under Policy ¶ 4(a)(i).
The Panel notes that the <msn-messenger-download.com> domain name should be compared with the MSN mark. Complainant argues that the disputed domain name includes one or more generic term, such as “messenger” or “download,” hyphens and the gTLD “.com,” in addition to Complainant’s MSN mark. The Panel finds that none of these modifications differentiates the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel therefore concludes that Respondent’s <msn-messenger-download.com> domain name is confusingly similar to Complainant’s MSN mark pursuant to Policy ¶ 4(a)(i).
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 contends that Respondent is not commonly known by the disputed domain names where the WHOIS information identifies “ATF The Veil Super Fund / K. Veil ATF The Veil Super Fund / The Veil Super Fund Klaus Veil ATF” as the registrant. See Complainant’s Exhibit A. The Panel notes that Respondent does not provide additional evidence showing that it is known by the disputed domain names. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, and <skype-sender.info> domain names resolve to pages that employ highly misleading links and banners to suggest that Complainant’s SKYPE software can be downloaded from these pages but instead use the links to divert consumers to Complainant’s competitors, including “ooVoo.” Complainant asserts that Respondent’s <skype-wow.info> is parked at a pay-per-click page that also promotes the “Skyp Download.” See Complainant’s Exhibits F, G, & I. The Panel infers that Respondent presumably profits from these pay-per-click links in some way. The Panel determines that Respondent’s use of the disputed domain names to display pay-per-click links to divert consumers to Complainant’s competitors is not 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant further argues that Respondent’s <msn-messenger-download.com>, <skypefreedownload.org>, <skype-backup.com>, and <skypehelper.com> are inactive. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is not 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent’s <skype09.info> and <skype--free--download.com> lead to an error page at <ehws.net.au>, a site entitled “eHealth Web Services.” See Complainant’s Exhibit I. Previous panels have held that the use of a complainant’s mark in a disputed domain name that resolves to an unrelated and/or competing website is neither a bona fide offering of goods/services or a legitimate noncommercial or fair use of the disputed domain. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel therefore determines that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that Respondent is offering all but one of the disputed domain names for sale. The Panel notes that while the evidence in Complainant’s Exhibits G and I illustrate that the websites resolving from the <skype-wow.info>, <skype-sender.info>, and <skype-mail.com> domain names explicitly offer these domain names for sale, there is no explicit evidence as to whether any of the other domain names are in fact being offered by sale by either Respondent or the registrar. Previous panels have held that the express sale offering of a disputed domain name is evidence that the domain name has been registered and is being used in bad faith. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). The Panel agrees and find that Respondent’s general offer of the <skype-wow.info>, <skype-sender.info>, and <skype-mail.com> domain names for sale indicates that these three domain names were registered and are being used in bad faith under Policy ¶ 4(b)(i).
Complainant next argues that because Respondent has registered twelve domain names that incorporate Complainant’s MSN and SKYPE marks, there is a pattern of bad faith registration that deprives Complainant of the ability to reflect its marks in a corresponding domain name. Previous panels have held that a respondent’s registration of multiple domain names that feature a complainant’s mark illustrates the bad faith intentions of the respondent in registering and using the domain names. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Therefore the Panel finds that Respondent registered and uses the disputed domain names as part of pattern of bad faith under Policy ¶ 4(b)(ii).
Complainant next generally argues that Respondent is using the disputed domain names to disrupt Complainant’s business. The Panel finds that this argument applies only to the <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, <skype-sender.info>, and <skype-wow.info> domain names as the other disputed domain names resolve to either inactive websites or an error message at an unrelated third-party website. Complainant contends earlier in its Complainant that hyperlinks on the <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, <skype-sender.info>, and <skype-wow.info> domain names suggest to the Internet user that they shall be directed to Complainant’s products, when in fact they are directed to competing products such as “ooVoo.” Previous panels have held that a bad faith use and registration exists when a respondent uses a disputed domain name to direct Internet users to products in competition with the complainant’s mark. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). The Panel agrees that the hyperlinks on Respondent’s <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, <skype-sender.info>, and <skype-wow.info> domain names resolve to competitors of Complainant such as “ooVoo,” and the Panel finds that Respondent attempts to facilitate competition with Complainant and disrupt Complainant’s business, which indicates bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s disputed domain names promote, link to, and attempt to trick consumers into visiting third parties not affiliated with Complainant. Complainant alleges that Respondent has commercially benefited from Complainant’s marks by promoting unrelated businesses through the disputed domain names. The Panel notes that the record validates Complainant’s concerns in regards to the <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, <skype-sender.info>, <skype-wow.info>, <skype09.info>, and <skype--free--download.com> domain names. The Panel also notes that while the <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, and <skype-sender.info> and <skype-wow.info> domain names resolve to websites that feature deceptive and/or competing hyperlinks, the skype09.info> and <skype--free--download.com> domain names resolve to an error page for an unrelated “eHealth web services” website. Previous panels have made it clear that the operation of a disputed domain name to feature hyperlinks to products that compete with or are unrelated to complainant’s registered mark is evidence of an intent by Complainant to attract and confuse consumers for its own commercial gain, which demonstrates bad faith use and registration of the domain name. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Previous panels have also held that the use of a disputed domain name featuring a registered mark to redirect Internet users to unrelated websites is evidence of bad faith registration because Internet users may become confused as to the sponsorship or affiliation of the unrelated site with the holder of the registered mark. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). Therefore, the Panel agrees and finds that the <free-skype-download.net>, <powerskype.com>, <skype-secrets.com>, <skype-mail.com>, <skype-sender.info>,<skype-wow.info>, <skype09.info>, and <skype--free--download.com> domain names were registered and used in bad faith according to Policy ¶ 4(b)(iv) by Respondent to confuse Internet users into visiting the domain name’s resolving websites and consequently generate profits for Respondent.
Complainant finally contends that Respondent has failed to make an active use of the <msn-messenger-download.com>, <skypefreedownload.org>, <skype-backup.com>, and <skypehelper.com> disputed domain names. The Panel notes that Complainant’s Exhibit I illustrates that each of these domain names resolves to websites featuring several hyperlinks and a message stating “Hmmm, [insert domain name] isn’t loading right now.” The Panel notes that each of Respondent’s <msn-messenger-download.com>, <skypefreedownload.org>, <skype-backup.com>, and <skypehelper.com> disputed domain names have been registered from anywhere between a minimum of a year to up to three years. Previous panels have found that holding a disputed domain name without intending to put that domain name to an active use is evidence of Respondent’s bad faith use and registration of the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). For these reasons, the Panel finds that the <msn-messenger-download.com>, <skypefreedownload.org>, <skype-backup.com>, and <skypehelper.com> domain names were registered and are being used in bad faith under Policy ¶ 4(a)(iii).
Complainant generally argues that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the MSN and SKYPE marks. Although constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <free-skype-download.net>, <msn-messenger-download.com>, <powerskype.com>, <skypefreedownload.org>, <skype09.info>, <skype-backup.com>, <skype--free--download.com>, <skypehelper.com>, <skype-mail.com>, <skype-secrets.com>, <skype-sender.info> and <skype-wow.info> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 20, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page