Microsoft Corporation and Skype v. Contact Privacy Inc. Customer 0126766269
Claim Number: FA1303001491615
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Contact Privacy Inc. Customer 0126766269 (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypesexcontacts.com>, registered with GoDaddy.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.
On March 27, 2013, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skypesexcontacts.com> 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 March 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2013 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@skypesexcontacts.com. Also on March 28, 2013, 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 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Founded in 1975, Microsoft Corporation is a worldwide leader in software, services and solutions that help people and businesses realize their full potential.
Skype is a wholly-owned subsidiary of Microsoft Corporation. As used herein, “Complainant” means Microsoft Corporation, Skype, and their respective licensees, related companies, and predecessors in interest.
Complainant owns numerous proprietary trademarks for its goods and services, including the world famous trademark SKYPE®.
Complainant began using the SKYPE trademark in 2003 in connection with real time instant messaging and voice communication technology over the Internet. By 2010, the SKYPE® service had 170 million connected users who conducted over 207 billion minutes of voice and video conversations using the service. Id. Through longstanding, extensive, and widespread use, promotion and publicity, the SKYPE trademark has become famous. See e.g. Microsoft Corp. v. Arruda, FA1107001396768 (Nat. Arb. Forum Aug 9, 2011)(referencing Complainant’s “famous MICROSOFT and SKYPE marks”); and Microsoft Corp. and Skype v. ATF The Veil Super Fund, FA1211001470016 (Nat. Arb. Forum Dec. 20, 2012)(finding that “Complainant uses and has registered various well-known marks in conjunction with its business, including … SKYPE”).
The SKYPE trademark is registered in the United States and elsewhere around the world. These registrations issued well before the registration date for the disputed domain. Id.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s SKYPE trademark.
Respondent’s domain name incorporates Complainant’s famous SKYPE mark in its entirety, adding only the generic phrase “sex contacts” and the generic TLD “.com.”
Adding a generic phrase such as “sex contacts” to a well-known mark such as SKYPE is not sufficient to avoid confusion. See Skype v. Sonora Consulting, FA 1436490 (Nat. Arb. Forum, May 7, 2012)(finding <skype-sex-chat.com> confusingly similar to Complainant’s SKYPE mark); Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(finding <skypehotgirls.com> confusingly similar to SKYPE and noting, that “[t]he at-issue domain name merely appends the generic/descriptive term ‘hotgirls’ (or terms ‘hot’ + ‘girls’) and the gTLD ‘.com’ to Complainant’s mark … [a]dding 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)”); Microsoft Corp. v. Private Registrant, FA1105001390487 (Nat. Arb. Forum June 20, 2011)(finding <microsoftporn.com> confusingly similar to MICROSOFT and noting that “[t]he Panel finds that the addition of the word ‘porn’ and a gTLD do not sufficiently differentiate the disputed domain name from Complainant’s mark”); and Amazon.com, Inc. v. Dauphin, FA0402000235822 (Nat. Arb. Forum April 5, 2004)(finding <adultamazon.com> confusingly similar to AMAZON and noting, that “Respondent’s addition of a generic term ‘adult’ is insufficient to distinguish the domain name from the mark”).
See also America Online, Inc. v. aolgirlsgonewild.com, FA0207000117319 (Nat. Arb. Forum Sep. 19, 2002)(finding <aolgirlsgonewild.com> confusingly similar to AOL and awarding transfer); Microsoft Corp. v. Logan, FA0801001139572 (Nat. Arb. Forum Feb. 28, 2008)(finding <msnforadults.com> and <msnadultcams.com> confusingly similar to MSN and awarding transfer); Skype Ltd. v. Roeshar LLC, FA0811001234547 (Nat. Arb. Forum Jan. 5, 2008)(finding <skypeacademy.com> confusingly similar to SKYPE); Skype Ltd. v. Minikhanov, FA 1356196 (Nat. Arb. Forum Dec. 28, 2010)(finding <skypeaccess.com> confusingly similar to SKYPE); and Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Plainly, the disputed domain name is confusingly similar to Complainant’s famous SKYPE trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s SKYPE trademark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent’s identity is shielded and WHOIS identifies Respondent as Contact Privacy Inc. Customer 0126766269. Respondent is not commonly known by Complainant’s SKYPE trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s SKYPE trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004)(finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain <skypesexcontacts.com> resolves to an adult-oriented web site that sells memberships and otherwise charges fees to users.
Using another’s trademark to promote adult content is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii). See Skype v. Sonora Consulting, FA 1436490 (Nat. Arb. Forum, May 7, 2012)(finding the use of <skype-sex-chat.com> for an adult oriented website was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name); Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002)(holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003)(finding that “diversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶4(c)(i) and (iii).”); Yahoo! Inc. v. Zuccarini, FA 183997 (Nat. Arb. Forum Oct. 20, 2003)(“Respondent's use of the disputed domain names to redirect Internet users to [adult] websites, where the names were selected specifically for the purpose of trading on the goodwill of Complainant's marks, cannot qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the names under the Policy”); Microsoft Corp. v. Taylor, FA1105001389985 June 20, 2011 (use of <msncamcrush.com>, <msncaminvite.com>, and <msncamlink.com> to resolve to a website featuring adult-oriented video content was note 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)); and Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“evidence of adult-oriented material [at <skypehotgirls.com>] is further affirmation that Respondent lacks rights and legitimate interests in respect of the at-issue domain name”).
Respondent has taken Complainant’s SKYPE trademark without authorization in order to misleadingly and deceptively divert Internet users to its web site for commercial gain. The use of a domain name that is confusingly similar to Complainant’s trademark to attract consumers to Respondent’s own website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). Microsoft Corp. v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004). See also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002)(finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s SKYPE trademark was famous and familiar to countless consumers worldwide. It is clear that Respondent was not only familiar with Complainant’s SKYPE trademark at the time of registration of the domain name, but intentionally adopted a domain name incorporating this mark in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“…it is inconceivable that Respondent could have registered the <skypehotgirls.com> domain name without actual knowledge of Complainant's rights in the [SKYPE] 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).”); Microsoft Corp. v. Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
As is noted above, Respondent’s web site promotes mature/adult content using Complainant’s SKYPE mark and attempts to commercially benefit by creating likelihood of confusion as to Complainant’s endorsement of the disputed domain name and the resolving website. This is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii) and 4(b)(iv). See Skype v. Sonora Consulting, FA 1436490 (Nat. Arb. Forum May 7, 2012)(finding that registration and use of <skype-sex-chat.com> for an adult oriented site in and of itself is bad faith registration and use pursuant to Policy ¶4(a)(iii)); Microsoft Corp. v. Private Registrant, FA1105001390487 (Nat. Arb. Forum June 20, 2011)(“the Panel finds that Respondent’s use of [<microsoftporn.com>] to redirect Internet users to a site offering adult oriented material constitutes bad faith registration and use under Policy ¶4(a)(iii)”); Amazon.com, Inc. v. Dauphin, FA0402000235822 (Nat. Arb. Forum April 5, 2004)(“Respondent registered and used the <adultamazon.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because the domain name takes advantage of the goodwill associated with Complainant’s mark and redirects unsuspecting Internet users to an adult-oriented website unaffiliated with Complainant”); Target Brand, Inc. v. Niazov, FA0412000381229 (Nat. Arb. Forum Jan. 25, 2005)(“Respondent’s use of a domain name confusingly similar to Complainant’s famous mark to direct Internet users to a website featuring pornographic material is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(a)(iii)”); 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); Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002)(respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name); Yahoo! Inc. v. Whois Privacy Protection Service, Inc., FA1206001450606 (Nat. Arb. Forum Aug. 8, 2012)(“the Panel agrees with the decisions cited by Complainant that registering and using a domain name that is confusingly similar to a well-known trademark in connection with an adult website constitutes bad faith under the Policy, including paragraphs 4(b)(iii) and 4(b)(iv)”); Microsoft Corp. v. Logan, FA0801001139572 (Nat. Arb. Forum Feb. 28, 2008)(“Respondent’s undenied use of the disputed domain names to redirect Internet users to websites featuring adult-oriented content further indicates that Respondent registered and is using the disputed domain names in bad faith under Policy ¶4(a)(iii)”) and Google v. Bassano, FA 232958 (Nat. Arb. Forum, Mar. 8, 2004)(holding that respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶4(b)(iv).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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 has been a wholly owned subsidiary of Microsoft Corporation since 2011.
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 Org. Comm. for the 2010 Olympic and Paralympics Games & Int’l Olympic Comm. v. 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 Invs., 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 Am. Family Health Servs. 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 evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, allowing the Panel to treat them as a single entity in this proceeding.
Complainant owns trademark registration for the SKYPE mark both with the United States Patent & trademark Office (“USPTO”) and other trademark agencies. See e.g., USPTO Reg. No. 3,005,039 registered on Oct. 4, 2005; see also CIPO TMA 721,178 registered on Aug. 18, 2008. Complainant uses the SKYPE mark to provide an array of video and voice chatting services to its customers. Registration of the trademark in both the United States and Canada sufficiently shows Complainant’s rights under Policy ¶4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”).
Complainant argues Respondent’s domain name is confusingly similar because it incorporates the entirety of the famous SKYPE mark, along with the gTLD “.com” and the generic phrase “sex contacts.” The presence of a gTLD is not considered under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The addition of “sex” and “contacts” to the SKYPE mark increases the confusing similarity because these terms are generic when compared to the SKYPE mark. See Eastman Kodak Company v. Igor Zaicev, FA 1262000 (Nat. Arb. Forum July 1, 2009) (finding that the <kodakeasysexnk.com> to be confusingly similar because it “adds the generic phrase ‘easy sex nk,’ and adds the generic top-level domain ‘.com.’”). The Panel concludes the <skypesexcontacts.com> domain name is confusingly similar to the SKYPE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known as the disputed domain name. Respondent purchased this domain name using a privacy service, which only discloses the owner as “Contact Privacy Inc. Customer 0126766269.” This name is in no way related to the disputed domain name. Respondent is not otherwise affiliated with, have a license with or been authorized to use the SKYPE mark in its domain names. Respondent has provided no evidence to conclude Respondent is commonly known by the <skypesexcontacts.com> domain name. See Ed. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant claims Respondent is not making a bona fide offering through its explicitly commercial use of the domain name. Respondent is using the SKYPE mark solely to solicit adult-oriented content to Internet users. Respondent’s is using the domain name is to sell memberships to its adult-oriented website as well as to charge fees to its members. The <skypesexcontacts.com> domain name resolves to a website featuring explicitly adult-oriented content, with a terms and conditions page that makes it clear Respondent charges fees for adult-oriented content. The commercial motive behind the website prevents Respondent’s use from being a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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))
Respondent cannot acquire any rights to the domain name in a commercial context because the legal owner of the domain name is not the beneficial owner of the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent seeks to commercially benefit by creating a likelihood of confusion amongst Internet users. Respondent is using the SKYPE mark explicitly in its domain name and resolving websites to commercially benefit Respondent’s business. Respondent’s is using a famous mark to attract customers to its own business for Respondent’s own profit. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant more generally contends Respondent’s use of the SKYPE mark in conjunction with soliciting adult-oriented content is in itself evidence of bad faith. Given the domain name at issue, the Panel is not persuaded the use of sexually explicit material is evidence of bad faith. What else would one expect to find at the disputed domain name but sexually explicit material?
Complainant claims Respondent knew of Complainant and the SKYPE mark in forming this domain name. Complainant’s trademark is famous and has become familiar in the minds of consumers worldwide. It seems obvious Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. This is sufficient evidence of 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).
Finally, Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. That alone justifies a finding of bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <skypesexcontacts.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 6, 2013
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