Microsoft Corporation and Skype v. Konstantine Pyatibrat
Claim Number: FA1408001576780
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas. Respondent is Konstantine Pyatibrat (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypeqa.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2014; the National Arbitration Forum received payment on August 25, 2014.
On August 27, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <skypeqa.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 August 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2014 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@skypeqa.com. Also on August 27, 2014, 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 September 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant owes the SKYPE mark via trademark registrations around the world. Complainant has used the SKYPE mark since 2003 in connection with Internet communication services. The <skypeqa.com> domain name is confusingly similar to the SKYPE mark.
2. Respondent is lacking rights in the domain name. The available record demonstrates that Respondent is not commonly known by the disputed domain name. Further, the resolving page includes content taken from Complainant’s own website. Users on the landing page are asked for an e-mail address and password. The page also includes advertising unrelated to Complainant, from which Respondent receives click-through revenue.
3. Respondent registered the <skypeqa.com> domain name with knowledge of Complainant’s rights in the SKYPE mark.
4. Respondent has attempted to create the false impression that Complainant is affiliated with the disputed domain name and resolving content.
5. Respondent seeks to profit from this scheme through click-through fees.
6. Respondent registered the domain name on August 27, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKYPE mark. Respondent’s domain name is confusingly similar to Complainant’s SKYPE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skypeqa.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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 (collectively referred to herein as”Complainant”). 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 Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. 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 Am. 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. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel finds there is sufficient nexus or link between Microsoft Corporation and Skype and therefore treats them as a single entity in this proceeding.
Complainant has used the SKYPE mark since 2003 in connection with Internet communication services. Complainant claims rights in the SKYPE mark via trademark registrations around the world. Specifically, Complainant cites to registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,005,039 registered Oct. 4, 2005). The USPTO registration establishes Complainant’s rights in the SKYPE mark for purposes of Policy ¶ 4(a)(i). See 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.”).
Complainant argues that the <skypeqa.com> domain name is confusingly similar to the SKYPE mark. The domain name includes the letters “qa,” which likely stands for “question and answer,” and the generic top-level domain (“gTLD”) “.com.” Such alterations do not distinguish the disputed domain name from the SKYPE mark under Policy ¶ 4(a)(i). See, e.g., Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends the available record demonstrates that Respondent is not commonly known by the disputed domain name. The WHOIS record identifies “Konstantine Pyatibrat” as the domain name registrant. Further, Complainant asserts that it has no relationship or affiliation with Respondent. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel determined 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. Considering the available evidence in this proceeding, the Panel concludes that Respondent is not commonly known by the <skypeqa.com> domain name pursuant to Policy ¶ 4(c)(ii).
Further, Complainant argues that the domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant has shown that the resolving page includes content taken from Complainant’s own website. Complainant has further shown that Respondent seeks user’s e-mail addresses and passwords, and promotes unrelated advertising, from which Respondent profits. The Panel agrees that Respondent has not engaged in conduct protected by Policy ¶¶ 4(c)(i) or (iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has attempted to create the false impression that Complainant is affiliated with the disputed domain name and resolving content in an effort to commercially benefit Respondent. The evidence described above supports that assertion. In considering Policy ¶ 4(b)(iv), the Panel will follow the decision of Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002), where the panel found that because the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name. Other panels have also recognized the use of unrelated click-through advertising, itself, as evidence of bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Accordingly, the Panel agrees that Respondent’s efforts to copy Complainant’s own website content to effectuate the interception of user information and generate advertising revenue evinces Policy ¶ 4(b)(iv) bad faith.
Complainant also argues that Respondent registered the <skypeqa.com> domain name with knowledge of Complainant’s rights in the SKYPE mark, in violation of Policy ¶ 4(a)(iii). The evidence indicates Respondent has taken content directly from Complainant’s own website. Based on these facts, the Panel agrees that Respondent was aware of Complainant’s rights in the SKYPE mark at the time the disputed domain name was registered; therefore, the Panel finds additional evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeqa.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 30, 2014
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