Microsoft Corporation and Skype v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1305001502022
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypesofts.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2013; the National Arbitration Forum received payment on May 28, 2013.
On Jun 06, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <skypesofts.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 June 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@skypesofts.com. Also on June 4, 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 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
a. Complainant’s mark:
i. Complainant owns the SKYPE mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039 registered on October 4, 2005).
ii. The SKYPE mark is registered with various other international trademark agencies, including Brazil’s National Institute of Industrial Property (“INPI”) (e.g., Reg. No. 826,695,655 registered July 5, 2011) and the European Union Office for the Harmonization of the Internal Market (“OHIM”) (e.g., Reg. No. 5,903,786 registered May 14, 2007).
iii. Complainant began using the SKYPE mark in 2003 in connection with real time instant messaging and voice communication technology, and has made substantial contributions to the promotion and publicity of the mark, such that it is currently famous throughout the world.
b. Respondent’s Infringing Activities:
i. Policy ¶ 4(a)(i)
1. The <skypesofts.com> domain name is confusingly similar to the SKYPE mark as it uses the mark entirely with the mere addition of the word “soft,” an “s,” and the generic top-level domain “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name. Further, Complainant has not licensed or otherwise authorized to use the SKYPE mark.
2. Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
3. The resolving site of <skypesofts.com> displays Complainant’s logo and SKYPE trademark in an effort to pass itself off as Complainant and mislead users as to the source of the site and the legitimacy of its offerings. The landing page also includes the link “Download Skype,” which initiates an executable file download. Respondent receives affiliate revenue and/or injects adware or malware through the page.
4. Even if Respondent is providing a genuine link to Complainant’s software download, it still does not constitute a legitimate of bona fide use.
iii. Policy ¶ 4(a)(iii)
1. Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s mark through affiliate, adware, and/or malware revenue. In so doing, Respondent intentionally creates the false impression that the disputed domain name originates with or is sponsored by Complainant. Respondent is passing off as Complainant.
2. Respondent distributes adware and/or malware software through a link on the resolving page.
3. Even if Respondent’s link merely redirects users to Complainant’s official site, such conduct is still evidence of bad faith.
4. Respondent had actual knowledge of Complainant’s right in the SKYPE mark as evidenced by the use of Complainant’s logo and the mark at issue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Microsoft Corporation which list its address as Redmond, WA, USA. Microsoft is a worldwide leader in software, services, and solutions. Complainant was founded in 1975 and uses, and has registered, various well-known marks in conjunction with its business, including the mark SKYPE. Complainant used, and domestically as well as internationally registered, the SKYPE mark at least as early as 2005.
Respondent is Fundacion Private Whois/Domain Admisnistrator which list its address as Zone 15, Panama. Respondent’s registrar’s address is listed as Nassau, Bahamas. Respondent registered the domain name at issue on August 6, 2012.
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 claims to own the SKYPE mark through its trademark registration with the USPTO (e.g., Reg. No. 3,005,039 registered October 4, 2005). Additionally, Complainant claims to own the mark through numerous internationally registrations, such as a registration with the INPI (e.g., Reg. No. 826,695,655 registered July 5, 2011), and the OHIM (e.g., Reg. No. 5,903,786 registered May 14, 2007). Previous panels have found that a Complainant’s holding of numerous trademark registrations around the world creates a prima facie case of Complainant’s rights in the mark. 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).”). The Panel finds that Complainant’s USPTO registration, and numerous international registrations, establish Complainant’s rights in the SKYPE mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides outside of the United States. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends the <skypesofts.com> domain name is confusingly similar to the SKYPE mark as it uses the mark in its entirety with the mere addition of the word “soft,” an “s,” and the generic top-level domain “.com.” Complainant asserts that the word “soft” is commonly used to denote software. The Panel finds that “soft” is a generic or descriptive word, and that the “s” and “.com” are insufficient to differentiate the disputed domain from the mark. As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to the SKYPE mark 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)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends Respondent is not commonly known by the <skypesofts.com> domain name. Complainant asserts the WHOIS information does not suggest Respondent is commonly known as such, and further, Complainant asserts that it has not licensed or otherwise authorized Respondent’s use of the SKYPE mark. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant contends the resolving site of <skypesofts.com> displays Complainant’s logo and SKYPE trademark in an effort to pass Respondent off as Complainant and mislead users as to the source of the site and the legitimacy of its offerings. Complainant notes the landing page also includes the link “Download Skype,” which initiates an executable file download. Complainant alleges that Respondent receives affiliate revenue and/or injects adware or malware through the link. The Panel finds that Respondent’s use of the domain name in dispute does not constitute 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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 even if Respondent is providing a genuine link to Complainant’s software download, it still does not constitute a legitimate of bona fide use. The Panel finds that such use does not constitute 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 Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s mark through affiliate, adware, or malware revenue. Complainant contends Respondent intentionally attempts to create confusion among users as to Complainant’s association with the disputed domain name as the disputed domain names contains Complainant’s mark in its entirety and the resolving page includes Complainant’s logo and mark. The Panel finds that Respondent’s efforts to attract users for commercial gain from affiliate, adware, and/or malware revenue is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Further, Complainant alleges that Respondent purports to be acting in association with Complainant through its use of the domain and resolving website by intentionally creating the false impression that the disputed domain name originates with or is sponsored by Complainant. Complainant notes that Respondent uses Complainant’s logo and mark on the resolving page and prompts visitors to a link titled “Download Skype.” The Panel finds that Respondent’s efforts to pass itself off as Complainant, and commercially gain from the resulting confusion, constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
Complainant alleges the resolving page directs visitors to a link titled “Download Skype,” which initiates an executable file download that injects the adware or malware to the user’s computer. The Panel finds that the distribution of adware or malware software demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <skypesofts.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 12, 2013
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