Microsoft Corporation and Skype v. M-Style / Viacheslav Morgun
Claim Number: FA1303001491620
Complainant is Microsoft Corporation and Skype (collectively, “Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is M-Style / Viacheslav Morgun (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypeclubs.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
Scott R. Austin, 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. Complainant submitted an Amended Complaint on March 27, 2013 to amend the name and contact information of Respondent when disclosed by the above referenced Registrar upon receipt of the Complaint.
On March 27, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <skypeclubs.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@skypeclubs.com. Also on March 27, 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.
A timely Response was received and determined to be complete on April 16, 2013.
Complainant’s Additional Submission was received on April 19, 2013 in a timely manner and found to be compliant with Supplemental Rule 7. Respondent was notified of this Additional Submission on April 22, 2013.
On April 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Scott R. Austin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Microsoft Corporation acquired Skype Corporation and the Complaint refers to Skype as both a wholly owned subsidiary and in Exhibit B a division within Microsoft, to establish an affiliation sufficient for Microsoft to have standing to bring this proceeding on behalf of Skype and its registered marks and allow multiple parties to proceed as one party;
2. Complainant has registered the SKYPE word mark, considered famous, all over the world, including within the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039 registered October 4, 2005);
3. Complainant also registered Skype logo designs as marks with the USPTO (e.g., Reg. No. 3,263,305, registered July 10, 2007 and Reg. No. 3,773,537, registered April 6, 2010);
4. Respondent’s <skypeclubs.com> domain name is confusingly similar to Complainant’s SKYPE mark;
5. Respondent is not known by the disputed domain name, nor could he be;
6. Respondent’s use of the Skype marks on his website constitutes passing off;
7. Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, nor a bona fide offering of goods or services;
8. Respondent resolves the disputed domain name to a website using Complainant’s SKYPE mark to promote competing services and adult oriented content to diverted Internet users;
9. Respondent prominently displays Complainant’s SKYPE mark Skype logo marks on Respondent’s website, while also offering pay-per-click links to third-party websites;
10. Respondent is capitalizing on the likelihood that consumers will confuse the source of the disputed domain names as being affiliated with Complainant;
11. Respondent registered the disputed domain name in bad faith because he had actual and constructive knowledge of Complainant’s rights in its famous SKYPE mark when Respondent registered the disputed domain name on September 17, 2009.
B. Respondent makes the following contentions:
1. Respondent is using the disputed domain name to operate a social club he refers to as the Sky Peoples Club, which has over 20,000 users, who use his site to discuss their lives, learn, and search for friends with similar interests.
2. Respondent chose the domain name on the Internet merely by seeking an abbreviated form for his “SKY People Clubs” social club to operate from the disputed domain name;
3. Respondent had no knowledge of Complainant ‘s SKYPE marks when he registered the disputed domain name;
4. Respondent is a resident of the Ukraine and Complainant’s marks are not registered in his country;
5. Respondent offers no services that compete with Complainant’s mark for Class 38 services for peer-to-peer VOIP communications. Although videos are posted on the domain name’s content pages, there is no chat function, the “Chat” hyperlink on the domain name’s main page never worked and Respondent will delete this button in the future;
6. Respondent cannot find any of the content on the disputed domain name that Complainant claims to be adult-oriented or pornographic.
7. Respondent does not control the advertising on the disputed domain name, and any allegedly adult-oriented material is a result of Google’s advertising services, which services tailor advertisements to the Internet user’s search history.
C. Complainant’s Additional Submission – A Reply to Respondent’s Contentions
1. Complainant’s failure to file for trademark registration in Respondent’s country is not required under UDRP policy for Complainant to prevail.
2. Respondent is using the domain name to compete with Complainant because Respondent acknowledges that his domain name is part of an advertising program which promotes other websites that provide chat services in direct competition with Complainant;
3. Respondent’s use of the domain name is commercial because Respondent admits he uses Google services that are intended to generate advertising revenue;
4. Respondent’s use of Google’s advertising services is not a bona fide offering of goods and services;
5. Respondent had knowledge of the SKYPE mark in spite of his denial because his domain name originally featured the SKYPE mark in its entirety on its header;
6. Further investigation has shown that each user profile on the domain name’s websites is hard-coded to link the Internet user to SKYPE services.
Microsoft and Skype have a corporate affiliation with each other, as parent – subsidiary or as a business division of one another, sufficient to be treated as a single entity for filing the Complaint;
Complainant owns numerous registrations for the SKYPE word mark and logo design marks throughout the U.S. and around the world, but not in Ukraine.
Complainant’s marks were registered in the U.S and many other countries, including the Russian Federation, well before Respondent registered its domain name on September 17, 2009;
Respondent’s disputed domain name, <skypeclubs.com> domain name is substantially similar to Complainant’s mark, because it incorporates
Complainant’s SKYPE mark in its entirety, and adds only the generic term “clubs” and the gTLD “.com.”
Respondent’s WHOIS information identifies Respondent as “M-Style / Viacheslav Morgun.”
Respondent is not commonly known by Complainant’s SKYPE trademark.
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 or services.
Respondent uses the <skypeclubs.com> domain name to offer hyperlinks to other businesses’ websites, advertising services that are in competition with
Complainant’s services that allow Internet users to communicate with one another via video and voice chat.
The products and services offered by Complainant under the SKYPE
trademark are confusingly similar to at least some of the identified business
objectives and services offered by Respondent.
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.
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. It is alleged that because Microsoft Corporation is the parent company and sole owner of Skype, and operates as a business division of Microsoft Corporation a sufficient nexus is established so that Microsoft has standing to bring this claim on behalf of Skype, and the two may be treated as a single complainant.
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 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. Similarly, in Vancouver Org. Comm. for the 2010 Olympic and Paralympics Games & Int’l Olympic Comm. v. Mali, 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.
This Panel finds that there is sufficient nexus between Skype, a wholly owned subsidiary, and its corporate parent, Microsoft Corporation, to allow the two parties here to submit a single complaint.
The at-issue domain name is confusingly similar to a mark in which the
Complainant has trademark rights.
Complainant owns the SKYPE mark and the Skype logo marks by way of acquiring Skype Corporation as its wholly owned subsidiary. Complainant has rights in these marks by registration of the SKYPE mark and Skype logo marks with the USPTO and other trademark agencies around the world. See, e.g., USPTO Reg. No. 3,005,039 registered Oct. 4, 2005; USPTO Reg. No. 3,263,305 registered July 10, 2007; USPTO Reg. No. 3,263,303 registered July 10, 2007; and USPTO Reg. No. 3,773,537, registered April 6, 2010. Complainant claims that it uses its SKYPE mark primarily to provide services that allow Internet users to communicate with one another via video and voice chat.
While the Panel notes that Complainant does not assert trademark registration rights in the SKYPE mark in Respondent’s country of residence, Ukraine, this Panel agrees with previous panels as noted in decisions cited by Complainant in its Additional Submission that registration of a mark with the USPTO is a satisfactory showing of Policy ¶ 4(a)(i) rights in the mark, regardless of the fact that Respondent resides in another country. See Chevron Intellectual Prop. LLC v. Pandey / BABA, FA1302001486872 (Nat. Arb. Forum April 1, 2013)(“Any one of Complainant’s USPTO registrations is sufficient evidence of rights in a mark under Policy ¶ 4(a)(i) … [i]t is insignificant that Respondent may reside outside the jurisdiction of trademark registration”); W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”); Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007)(“it has been held in numerous decisions, that under the Policy it is not necessary that a complainant’s mark be registered in the country in which the respondent operates, and that it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
Complainant next argues that the <skypeclubs.com> domain name is confusingly similar to the SKYPE mark. Complainant asserts that the domain name incorporates the SKYPE mark in its entirety, and adds only the generic term “clubs” and the gTLD “.com.” The Panel agrees that neither generic terms, like “clubs,” nor gTLDs impact a finding of confusing similarity. 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); 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). The Panel agrees, therefore, that the <skypeclubs.com> domain name is confusingly similar to the SKYPE mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Respondent lacks rights and legitimate interests in respect of the at-issue domain
name.
Under Policy ¶ 4(a)(ii) Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 argues that Respondent is not commonly known by the <skypeclubs.com> domain name. Complainant notes that Respondent’s WHOIS information identifies Respondent as “M-Style / Viacheslav Morgun.” Complainant asserts that Respondent is not affiliated with Complainant in any way. Complainant also states that it has not licensed or otherwise authorized Complainant’s use of the SKYPE mark in Respondent’s domain names.
This Panel agrees that, taking all of this evidence together, along with Respondent’s failure to rebut these allegations, Respondent is not commonly known by the <skypeclubs.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent has made the landing page for the <skypeclubs.com> domain name into a page that prominently displays Complainant’s own SKYPE mark and logos, and uses the mark to promote Respondent’s offer of “online ladies,” “photo art,” and video downloads that trade off of Complainant’s legitimate SKYPE products and services. Complainant argues that Respondent’s excessive use of the SKYPE mark in promoting its own business is nothing more than an attempt by Respondent to pass itself off as Complainant. Complainant argues that Respondent’s use of this domain name to host services that compete directly with Complainant’s SKYPE business is neither a bona fide offering, nor a legitimate noncommercial or fair use.
Having reviewed Complainant’s Amended Complaint Annex Exhibit G, this Panel finds that the disputed domain name’s resolving website appears to be a social networking website that includes a “CHAT” button along with excessive use of the SKYPE mark and affiliated logos. In fact one page includes Complainant’s logo with the literal element SKYPE in white letters over a blue cloud-like design, and to the right is the same cloud design in blue but with the word “CLUBS” added in white letters – a clear indication that Complainant’s mark has been used and altered by Respondent to create an illusion of affiliation to consumers visiting Respondent’s site. See Complainant’s Ex. G.
The Panel agrees that Respondent’s decision to make heavy usage of the SKYPE mark in promoting its domain name’s web content illustrates neither a Policy ¶ 4(c)(i) bona fide offering of goods and services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant further argues in its additional submission that Respondent’s admitted use of Google, Inc.’s advertising services on the disputed domain name is evidence that Respondent used this domain name to accrue click-through advertising revenue, thus barring Respondent from alleging its use was purely noncommercial. Complainant also argues that such a use is not a bona fide offering of goods and services. The Panel notes that the domain name’s resolving websites include links to “More online ladies,” which purportedly take the Internet user to the <idateasia.com> domain name, a website soliciting video chatting services, services totally unrelated to those of Complainant. See Complainant’s Ex. G.
The Panel agrees that Respondent cannot claim that its commercial use of the domain name is a Policy ¶ 4(c)(i) bona fide offering of goods and services. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant also argues that Respondent’s use of the SKYPE trademark in conjunction with websites that provide adult-oriented material is not a bona fide offering, nor a legitimate noncommercial or fair use. The Panel finds that the domain name’s resolving website includes links to the <advseek.com> domain name, wherein there are a number of images that constitute adult-oriented material. See Complainant’s Ex. G. Since the Panel agrees that this content is adult-oriented it finds that Respondent’s decision to link the disputed domain name’s content pages to websites that display adult-oriented material constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Respondent registered and uses the at-issue domain name in bad faith.
Complainant argues that Respondent is engaging in bad faith commercial disruption. Complainant asserts that Respondent is using the <skypeclubs.com> domain name to offer video chatting services that compete directly with SKYPE video chatting services, all the while using the SKYPE marks and logos to proliferate this endeavor. Complainant further alleges in its Additional Submission that this argument is bolstered by Respondent’s acknowledgement that its domain name is involved in an advertising program that promotes other chat service websites that are in direct competition with Complainant.
The Panel agrees that the screen shots of Responent’s web pages submitted by Complainant show Respondent’s domain name resolves to a website that features Complainant’s SKYPE mark, complete with a “tm” notice, in conjunction with several chat options. See Complainant’s Ex. G.
The Panel agrees that the use by Respondent of his domain name to profit from diverting traffic to direct competitors of Complainant using Complainant’s SKYPE mark, whether through hyper-links or explicit use, is evidence of bad faith commercial disruption under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent is creating the false impression that Complainant is affiliated with, or a sponsor of, the content viewable on the <skypeclubs.com> domain name’s content pages. Complainant argues that Respondent is seeing a commercial benefit in the form of increased web traffic by using the SKYPE mark to promote its activities on the disputed domain name. Complainant goes further in its Additional Submission in clarifying the basis upon which Respondent’s use of the domain name can be characterized as commercial—Respondent is enrolled in Google AdSense.
The Panel agrees that Respondent’s extensive use of the SKYPE mark in promoting its website over a period of time is evidence for finding that Respondent sought commercial profits by confusing Internet users into believing there was some connection between the content of the disputed domain name and Complainant. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant next argues that Respondent’s decision to host adult-oriented content on the <skypeclubs.com> domain name illustrates Respondent’s bad faith use and registration. Complainant contends that Respondent is ultimately responsible for the content of the web site located at the disputed domain name, so it is fruitless for Respondent to point to Google, Inc., as the source of the adult-oriented material. The Panel finds the materials on the disputed domain name to be adult-oriented, and as such finds bad faith use and registration under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the 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).
Complainant finally argues that Respondent had actual knowledge of Complainant and its rights in the SKYPE mark, as evidenced by its explicit and extensive use of the SKYPE mark and logos on the domain name’s resolving content pages. In its Additional Submission Complainant develops this knowledge argument further with more detail. Complainant dismisses Respondent’s assertion that it had no knowledge of the SKYPE mark as implausible.
Complainant notes that the domain name originally featured the SKYPE mark in its entirety on its header. See Complainant’s Ex. G. Complainant argues that Respondent is providing baseless post-hoc excuses for his infringement of the SKYPE mark. Complainant believes that Respondent’s claim that it intended the domain name to be an abbreviation of “SKY PEople Clubs” is a fiction that Respondent did not think of until after it was served the Complaint.
Complainant avers that it has found through further investigation that each user profile on the domain name’s website was hard-coded to link the Internet user to SKYPE services. See Complainant’s Additional Submission Ex. 3. Complainant concludes that Respondent’s entire website is based upon its employment of SKYPE services to conduct its allegedly independent endeavor.
From its review of the Complaint and web page displays set forth in the Complaint Annex Exhibits, the Panel finds that Respondent had actual knowledge of Complainant's rights in its marks prior to registering the disputed domain name and finds that such actual knowledge is adequate 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeclubs.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: May 10, 2013
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