Microsoft Corporation and Skype v. Michel Van de Morton / CASH TELECOM SA
Claim Number: FA1309001518222
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Michel Van de Morton / CASH TELECOM SA (“Respondent”), Belgium.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com>, registered with GAL COMMUNICATION (COMMUNIGAL) LTD.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2013; the National Arbitration Forum received payment on September 6, 2013.
On September 9, 2013, GAL COMMUNICATION (COMMUNIGAL) LTD. confirmed by e-mail to the National Arbitration Forum that the <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com> domain names are registered with GAL COMMUNICATION (COMMUNIGAL) LTD. and that Respondent is the current registrant of the names. GAL COMMUNICATION (COMMUNIGAL) LTD. has verified that Respondent is bound by the GAL COMMUNICATION (COMMUNIGAL) LTD. 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 September 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@skypegay.com, postmaster@skypegays.com, postmaster@skypegirls.com, postmaster@skyperencontre.com, postmaster@skyperencontres.com, postmaster@skypesexe.com, postmaster@skypesexo.com, and postmaster@skypesexy.com. Also on September 12, 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 October 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Respondent is not commonly known by Complainant’s SKYPE trademark.
ii. The landing pages for the disputed domains <skypegirls.com>, <skypesexy.com>, and <skypesexo.com> are saturated with adult images, paid adult videos, and chat via non-SKYPE communication platforms.
iii. The landing pages for the disputed domains <skyperencontre.com>, <skyperencontres.com>, <skypegay.com>, and <skypegays.com> solicit personal information and are plainly commercial in nature, promoting Respondent’s paid dating services and non-SKYPE messaging platforms, as well as various affiliate programs.
i. Respondent registered no fewer than 8 domain names containing SKYPE, most of them on the same day. This evidences Respondent’s intent to prevent Complainant from reflecting its marks in corresponding domain names.
ii. Respondent’s promotion of competing messaging and video transmission platforms under the SKYPE trademark diverts and disrupts Complainant’s business.
iii. By using Complainant’s mark to generate viewing, membership and affiliate fees, and to increase traffic to its adult content and dating services, Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s trademark.
iv. Respondent is promoting adult content and dating sites using Complainant’s famous trademark.
v. At the time that Respondent registered the disputed domain names, Complainant’s SKYPE trademark was famous and familiar to countless consumers worldwide.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Microsoft Corporation and Skype. Complainant contends that Skype is a wholly-owned subsidiary of Microsoft Corporation.
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 Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep 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 Investments, 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 American Family Health Services 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.
The Panel accepts that the evidence in the Complaint establishes a sufficient nexus or link between the Complainants and treats them all as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends that it is a worldwide leader in software, services, and solutions that help people and business realize their full potential. Complainant argues that it began using the SKYPE trademark in 2003 in connection with real time instant messaging and voice communication technology over the Internet. Complainant asserts that it is the owner of trademark registrations with the USPTO for the SKYPE mark (e.g., Reg. No. 3,005,039, registered October 4, 2005). The Panel notes that Respondent appears to operate in Belgium. However, the Panel finds that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent operates so long as it establishes rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel determines that Complainant has established rights in the SKYPE mark pursuant to Policy ¶ 4(a)(i) by registering its mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com> domain names are confusingly similar to Complainant’s SKYPE trademark. Complainant asserts that Respondent’s domain names incorporate Complainant’s famous SKYPE mark in its entirety, adding only the generic terms “gay/gays,” “girls,” “recontre,rencontres” (French for “meeting”), “sexe/sexo” (French/Spanish for “sex”), or “sexy,” and the gTLD “.com.” The Panel holds that Respondent’s addition of generic terms to Complainant’s mark in a domain name does not differentiate the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark). The Panel also finds that Respondent’s inclusion of a gTLD to Complainant’s mark in its domain names is irrelevant to a Policy ¶ 4(a)(i) determination. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that Respondent’s Respondent’s <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com> domain names are confusingly similar to Complainant’s SKYPE mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); 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 contends that Respondent is not commonly known by Complainant’s SKYPE trademark. Complainant argues that Respondent is not affiliated with Complainant in any way. Complainant claims that Respondent is not licensed by Complainant to use Complainant’s SKYPE trademark. Complainant further alleges that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. The Panel notes that the WHOIS information identifies “Michel Van de Morton / CASH TELECOM SA” as the registrant of the <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com> domain names. Therefore, based on the lack of evidence in the record and WHOIS information, the Panel holds that Respondent is not commonly known by the disputed domain names under 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).
Complainant argues that the landing pages for the disputed domains <skypegirls.com>, <skypesexy.com>, and <skypesexo.com> are saturated with adult images and offer paid adult videos and chat via non-SKYPE communication platforms. Complainant contends that Respondent’s websites also promote various commercial affiliate programs. In Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002), the panel found that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). Accordingly, the Panel concludes that Respondent’s use of the <skypegirls.com>, <skypesexy.com>, and <skypesexo.com> domain names to redirect consumers to adult-oriented content is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant claims that the landing pages for the disputed domains <skyperencontre.com>, <skyperencontres.com>, <skypegay.com>, and <skypegays.com> solicit personal information and are plainly commercial in nature, promoting Respondent’s paid dating services and non-SKYPE messaging platforms, as well as various affiliate programs. Complainant argues that Respondent’s promotion of competing messaging/chat platforms is not a bona fide or legitimate use. The Panel agrees that Respondent’s use of the <skyperencontre.com>, <skyperencontres.com>, <skypegay.com>, and <skypegays.com> domain names is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant has proven this element.
Complainant alleges that Respondent adopted at least eight domain names containing Complainant’s SKYPE mark, and contends that such behavior is evidence of Respondent’s bad faith. Previous panels have found that by registering a multitude of domain names using the complainant’s mark, a respondent demonstrates bad faith registration and use. See Time Warner Inc. v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that the respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> in bad faith when the respondent registered them after an announced merger between Time Warner Inc. and EMI Group, and the respondent previously registered fifteen other domain names that incorporated the complainant’s mark, showing the requisite pattern of conduct). The Panel agrees and concludes that Respondent’s Policy ¶ 4(b)(ii) bad faith registration of the domain names at issue is shown by registering eight domain names using Complainant’s SKYPE mark.
Complainant alleges that Respondent promotes competing messaging and video transmission platforms under the SKYPE mark, thereby diverting and disrupting Complainant’s business and showing bad faith. Previous panels have agreed that disrupting a complainant’s business by diverting consumers to competing services constitutes bad faith registration and use. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). The Panel determines that Respondent similarly displays competing services available at its resolving websites, and thus concludes that Respondent registered and uses each of the <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com> domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent makes a profit by offering Internet visitors services at the resolving websites that compete with Complainant’s services. The Panel notes that the Complainant provided screen shots showing that the <skyperencontre.com>, <skyperencontres.com>, <skypegay.com>, and <skypegays.com> domain names resolve to websites generally offering dating opportunities and interactive web experiences. The Panel infers such services to be accompanied by a fee of some sort, thereby resulting in a profit to Respondent. The Panel agrees that Respondent’s uses of the resolving websites constitute competition with Complainant, the Panel determines that Respondent registered and uses the <skyperencontre.com>, <skyperencontres.com>, <skypegay.com>, and <skypegays.com> domain names to confuse Internet traffic and attract consumers to its website, resulting in a commercial gain, and demonstrating bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant asserts that Respondent uses the <skypesexe.com>, <skypegirls.com>, <skypesexy.com>, and <skypesexo.com> domain names to host adult oriented material, including a chat platform, and a place for website visitors to enter credit card information. The Panel finds that by hosting adult oriented content at the websites resolving from the skypesexe.com>, <skypegirls.com>, <skypesexy.com>, and <skypesexo.com> domain names, Respondent registered and uses the domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).
Complainant lastly argues that Respondent registered each of the disputed domain names with knowledge of Complainant’s rights in the SKYPE mark. Complainant contends that its mark is famous and familiar to consumers worldwide. The Panel agrees that because Respondent incorporates Complainant’s mark in each of the domain names, Respondent demonstrates actual knowledge of Complainant’s rights in the SKYPE mark and therefore concludes that Respondent registered each of the <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com> domain names 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").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <skypegay.com>, <skypegays.com>, <skypegirls.com>, <skyperencontre.com>, <skyperencontres.com>, <skypesexe.com>, <skypesexo.com>, and <skypesexy.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink, (Ret.), Panelist
Dated: October 14, 2013
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