Microsoft Corporation and Skype v. Nabil Lolz
Claim Number: FA1305001500156
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Nabil Lolz (“Respondent”), Algeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skype-credits.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he has acted independently and impartially and to the best of his 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 May 16, 2013; the National Arbitration Forum received payment on May 16, 2013.
On May 20, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <skype-credits.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 May 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@skype-credits.com. Also on May 21, 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 June 18, 2013, 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 has continuously used the SKYPE mark since 2003 in connection with real-time instant voice and video messaging communication through the Internet. Complainant has registered the SKYPE mark with the United States Patent & Trademark Office (“USPTO). (Reg. No. 3,005,039 registered on Oct. 4, 2005). Complainant has created a business system wherein SKYPE users can acquire credits towards use of SKYPE products.
Respondent registered the <skype-credits.com> domain name, which merely takes the SKYPE mark, tags on a hyphen and the generic top-level domain (“gTLD”) “.com,” and inserts the generic term “credits.”
Respondent is not commonly known by the <skype-credits.com> domain name. The WHOIS information states that “Nabil Lolz” is the registrant of the domain name. Respondent is not authorized or permitted to use Complainant’s marks in domain names. Respondent is using the <skype-credits.com> domain name to address a website wherein Respondent offers “Free Skype Credits.” Respondent includes the MICROSOFT mark in the footer of the domain name’s website, and purports to claim copyright to “Skype Free Credits 2013.” Internet users that click on the free credit offerings are told to “complete one short offer to proceed.” Upon doing so a listing of unrelated and possibly competing offers shows up. Internet users that click on any of these offers will be informed that the website seeks to install software onto their device.
Respondent has no bona fide offering or legitimate use in luring Internet users to its website with the SKYPE mark, only to later solicit unrelated and mysterious software downloads. Respondent is seeking to pass itself off as Complainant in hopes that Internet users will download the software packages that are presented through the free-offer page. Respondent use of the SKYPE mark to lure Internet users into taking surveys is in itself evidence that there is nothing bona fide or legitimate occurring on the disputed domain name’s website.
Respondent’s decision to promote competing media players while using the SKYPE trademark is nothing less than an attempt to disrupt Complainant’s business. Respondent also disrupts Complainant’s business by offering credits to Internet users for free, and allowing the public to assume that Respondent’s surveys have received Complainant’s approval.
Respondent’s use of the SKYPE mark to identify itself on the <skype-credits.com> domain name creates the false impression that the domain name’s website is somehow affiliated with, or endorsed by, Complainant. Respondent then promotes surveys and other unrelated products that are advertised by third parties.
Respondent’s bad faith is apparent through its attempt to disguise itself as Complainant and then offer potentially malicious software downloads to the public.
Respondent knew of Complainant’s rights in the SKYPE mark. This is apparent from Respondent’s efforts to pass itself off as Complainant through use of the SKYPE mark, SKYPE logos, and Complainant’s other MICROSOFT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns registered trademarks for SKYPE in the United States, and elsewhere throughout the world.
Respondent is not affiliated with Complainant and had not been authorized to use the SKYPE mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in SKYPE.
The <skype-credits.com> domain name addresses a website where Respondent offers “Free Skype Credits,” links to competitors, loads potentially malicious software, and attempts to capture personal information from website visitors. The <skype-credits.com> website is designed to deceive visitors in to believing that it is sponsored by Complainant.
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.”).
Preliminary Issue: Multiple 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.”
Rule 1(e) allows multiple complainants to proceed as one complainant where, as here, the complainants demonstrate there is a nexus between them such as a license or partnership. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (two complainants treated as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also Am. Family Health Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004) (Finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
Here, the Complaint and accompanying papers show that Skype is a wholly-owned subsidiary of Microsoft Corporation. This relationship between Complainants creates a sufficient nexus for Complainants to be treated as a single entity in this proceeding and references throughout this decision to “Complainant” are thus references to both named complainants.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights under Policy ¶ 4(a)(i) via its registration of the SKYPE mark with the USPTO even if Respondent resides outside of the United States. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO; see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
The <skype-credits.com> domain name takes the SKYPE mark, adds a hyphen and the descriptive term “credits,” and appends the top level domain name, “.com” thereto. The resulting differences between the mark and domain name fail to distinguish the two for the purposes of Policy ¶4(a)(i). Therefore, the Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s SKYPE trademark. 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 Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen")see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “nabil lolz / Email:islamjeu@hotmail.fr / hamida boualem” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Respondent is using the <skype-credits.com> domain name to address a website where Respondent offers “Free Skype Credits.” Respondent includes the MICROSOFT mark in the site’s footer, and purports to claim copyright to “Skype Free Credits 2013.” When Internet users click on the free credit offerings, they are told to “complete one short offer to proceed.” A listing of unrelated and possibly competing offers shows up after Internet users accept one of the several offers on the website. Internet users clicking on any of these offers are informed that the website seeks to install software onto their computer. Respondent has no bona fide offering or legitimate use in luring Internet users to its website with the SKYPE mark, only to later present unrelated and mysterious software downloads. Likewise, Respondent’s excessive use of the SKYPE mark to offer unrelated and competing materials as well as to promote the several other foul devices used by Respondent in conjunction with the <skype-credits.com> website is neither a Policy ¶ 4(c)(i) bona fide offerings of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses of the domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii),.
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s use of the at-issue domain name to promote competing products by using the SKYPE trademark is nothing less than an attempt to disrupt Complainant’s business. Respondent also disrupts Complainant’s business by offering credits to Internet users for free, and allowing the public to assume that Respondent’s surveys have received Complainant’s approval. Offering Complainant’s credits for “free” without authorization, and further offering competing services, indicates that Respondent registered and uses the <skype-credits.com> domain name to disrupt Complainant’s business and demonstrates bad faith under Policy ¶ 4(b)(iii). See Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)); Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”).
Respondent’s use of the SKYPE mark to identify itself on the <skype-credits.com> domain name creates the false impression that the domain name’s website is somehow affiliated with, or endorsed by, Complainant. Respondent promotes surveys and other unrelated products that are advertised by third parties on its website. Respondent’s offering of unrelated and competing services is likely to cause Internet users to be confused into believing Complainant must have endorsed the offers (based on the excessive use of the SKYPE mark), thereby Respondent commercially benefits. Using the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also 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).
Furthermore, Respondent’s bad faith is apparent through its attempt to disguise itself as Complainant and then offer potentially malicious software downloads to the public. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”.
Finally, prior to registering the at-issue domain name Respondent had actual knowledge of Complainant’s rights in the SKYPE mark. Respondent’s prior knowledge is inferred from the fact that the <skype-credits.com> domain name contains Complainant’s entire SKYPE trademark and is used to address a website that is clearly designed to appear as if it were sponsored by Complainant. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's 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 <skype-credits.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 19, 2013
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