Microsoft Corporation and Skype v. Song Bin
Claim Number: FA1305001502643
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Song Bin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skyped.com>, registered with Dynadot, LLC.
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 31, 2013; the National Arbitration Forum received payment on May 31, 2013.
On May 31, 2013, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <skyped.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 3, 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@skyped.com. Also on June 3, 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 July 1, 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, Microsoft Corporation and Skype, began using the SKYPE trademark in 2003 in connection with real time instant messaging and voice communication technology over the Internet and associated software. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SKYPE mark (Reg. No. 3,263,302, registered July 10, 2007).
Respondent’s at-issue domain name is confusingly similar to Complainant’s SKYPE trademark because it incorporates Complainant’s famous SKYPE mark in its entirety, adding only the letter “d” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by Complainant’s SKYPE mark. The disputed domain name forwards to the website <veri24.org> which displays a message that reads “Attention! We are notifying you that your current version of skype may be out of date. Download the latest update now!” over a large SKYPE logo. Respondent’s fine print also discloses that its website is used to promote paid offers.
Respondent’s prominent and pervasive use of Complainant’s trademarks, including logos, is calculated and likely to lead visitors to believe that Respondent’s site originates with or is endorsed by Complainant. Respondent’s site includes a generic disclaimer of affiliation with trademark owners, but it is only visible after a user has clicked through a pop-up and the first webpage, and even then only in fine print.
Respondent has registered the disputed domain name to take advantage of innocent typographical errors made by Internet users seeking Complainant’s website.
Respondent registered the disputed domain name in bad faith. Respondent has been previously found to have acted in bad faith in numerous adverse UDRP decisions.
Respondent is disrupting Complainant’s business by causing the public to associate Complainant with Respondent’s scheme, in which the public is tricked into disclosing personal information and completing offers in order to receive software that is provided free on Complainant’s site.
By using Complainant’s famous marks to generate revenue from offers by unrelated third parties, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademarks.
By using Complainant’s SKYPE logos at its website, Respondent creates the false impression of a site and/or business that originates with or is sponsored by Complainant.
Respondent’s bad faith is not mitigated by the inclusion of a vague disclaimer in fine print after the user is several clicks into Respondent’s website.
Respondent has engaged in the practice of typosquatting by intentionally registering a name that is a misspelling of Complainant’s SKYPE trademark, with the intent to divert Internet users for commercial gain.
It is clear from Respondent’s website, which prominently displays Complainant’s SKYPE logos, 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.
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 at-issue domain name forwards to a website addressed by the domain name <veri24.org> which displays a message stating: “Attention! We are notifying you that your current version of skype may be out of date. Download the latest update now!” The website solicits data from visitors under the pretense of facilitating an update of the visitors’ SKYPE software. Complainant’s trademark and logos are used throughout the website and the website is used to promote paid offers.
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
In the instant proceedings, there are two named 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. See Microsoft Corporation and Skype v. Nabil Lolz (Nat. Arb. Forum Jun. 19, 2013) (finding a parent/subsidiary relationship between co-complainants is sufficient to allow co-complainants to proceed as a single complainant.)
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. Such is the case 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).
Respondent’s at-issue domain name incorporates Complainant’s famous SKYPE mark in its entirety, adding only the letter “d” and then appending the top level domain name “.com.” Respondent’s addition of the letter “d” to Complainant’s mark does not differentiate the domain name from Complainant’s SKYPE mark. Likewise, the addition of a top level domain name is irrelevant for the purposes of the Policy. Accordingly, the Panel concludes that Respondent’s <skyped.com> domain name is confusingly similar to Complainant’s SKYPE mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
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 “Song Bin” 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).
The at-issue domain name forwards to <veri24.org> which displays an entry webpage with a message that reads “Attention! We are notifying you that your current version of skype may be out of date. Download the latest update now!” Users selecting “Continue” are directed to a new webpage which prominently displays a SKYPE logo and are then asked, among other things, to disclose their mobile phone number. Within the context surrounding the request, asking Internet users to disclose their mobile phone number or any other personal information constitute phishing. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). Respondent’s fine print also discloses that its website is used to promote paid offers. The fine print disclaimer states: “you will be presented with third party advertisements that may require a paid subscription and other charges,” and making it clear that the at-issue domain name is being used to generate revenue for Respondent. Under the circumstances described above, Respondent is neither using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Furthermore, Respondent registered the disputed domain name hoping to take advantage of innocent typographical errors made by Internet users seeking Complainant’s website. The letter “d” is adjacent to the letter “e” on a standard QWERTY keyboard, making “skyped” a predictable misspelling of SKYPE. Respondent’s typosquatting demonstrates its lack of rights and legitimate interests in the <skyped.com> domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), (finding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”)
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 has been found to have acted in bad faith in numerous adverse UDRP decisions, including: Backcountry.com, LLC v. Song Bin, FA1004001317284 (Nat. Arb. Forum April 30, 2010); Karmaloop, Inc. v. Song Bin/ Song Bin, FA1212001475963 (Nat. Arb. Forum Feb. 6, 2013); Quibids Holdings LLC v. Song Bin, FA1301001480765 (Nat. Arb. Forum March 8, 2013); and Aéropostale Procurement Co., Inc. v. Song Bin, FA1303001488824 (Nat. Arb. Forum April 18, 2013). Respondent pattern of registering the trademarks of others in domain names suggests bad faith registration and use of the <skyped.com> domain name under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), (finding that “prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations.”
Furthermore, Respondent is disrupting Complainant’s business by causing consumers to associate Complainant with a scheme by which the Internet users are tricked into disclosing personal information in exchange for the promise of receiving updated SKYPE software. Respondent, in effect, competes with Complainant when it improperly offers to update SKYPE software since Complainant alone has legitimate dominion over such software and its updates. Therefore, Respondent’s use of the <skyped.com> domain name demonstrates bad faith use and registration under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
In using Complainant’s famous mark to generate revenue, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s SKYPE trademark. One of Respondent’s webpages features a fine print disclaimer stating: “you will be presented with third party advertisements that may require a paid subscription and other charges.” As mentioned above, this shows that Respondent’s <skyped.com> domain is being used to generate revenue. These circumstances constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
As noted above, Respondent has engaged in the practice of typosquatting by registering a name that is a misspelling of Complainant’s SKYPE trademark with the intent to divert Internet users from Complainant for commercial gain. Respondent’s typosquatting evidences bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent was familiar with Complainant’s SKYPE trademark at the time it registered the <skyped.com> domain name and intentionally adopted a domain name incorporating Complainant’s mark. Respondent’s actual knowledge of Complainant's mark and rights prior to its registration of the domain name additionally shows that Respondent registered the at-issue domain name in bad faith 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 "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 <skyped.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 2, 2013
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