Microsoft Corporation v. WHOISAGENT WHOISAGENT / DSA QWE INC.
Claim Number: FA1609001694679
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is WHOISAGENT WHOISAGENT / DSA QWE INC. (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypebookings.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2016; the Forum received payment on September 21, 2016.
On September 21, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <skypebookings.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2016 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@skypebookings.com. Also on September 22, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Respondent’s <skypebookings.com> domain name is identical to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skypebookings.com> domain name.
3. Respondent registered and uses the <skypebookings.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
SKYPE is a well-known trademark registered by Complainant with numerous trademark authorities around the world, including Belize (Reg. No. 8,581.12, registered Aug. 20, 2012) and the United States (Reg. No. 3,005,039, registered Oct. 4, 2005).
Respondent registered the <skypebookings.com> domain name on July 16, 2015, and uses it to attract Internet traffic to its website hosting competing links.
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(f), 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 (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.”).
The Panel finds that Complainant’s registrations for its SKYPE mark are sufficient to establish its Policy ¶ 4(a)(i) rights. See Morgan Stanley v. Fitz-James, FA 571918 (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).”).
Respondent’s <skypebookings.com> domain name incorporates the SKYPE mark and merely adds the descriptive term “bookings” and the gTLD “.com.” These changes are insufficient to distinguish the disputed domain name from Complainant’s mark. See Accor v. SANGHO HEO / Contact Privacy Inc., wherein the panel stated, “The addition of . . . “-bookings” to ACCORHOTELS does nothing to change a consumer’s perception of the disputed domain name in relation to the . . . ACCORHOTELS Trademarks.” D2014-1471 (WIPO Nov. 13, 2014).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 argues that Respondent has no rights or legitimate interests in the <skypebookings.com> domain name and is not commonly known by that name. Respondent has engaged a privacy protection service to shield its actual identity. Complainant states that Respondent has not been authorized/licensed to use the SKYPE mark. Based on the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).
Complainant argues that Respondent uses the domain name to attract Internet traffic to its hotel booking website, which includes a search box that takes users to third-party websites, through which Respondent presumably gains click-through revenue. Even where a respondent’s use can be considered unrelated to a complainant’s normal business operations under a relevant mark, panels have found a lack of rights and legitimate interests. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”). Accordingly, the Panel finds that Complainant has satisfied its prima facie case, and that Respondent has not used <skypebookings.com> to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is attempting to attract Internet users by using Complainant’s SKYPE mark in its domain name to commercially profit, demonstrating bad faith. The Panel agrees and finds that Respondent’s registration and use of <skypebookings.com> is bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the SKYPE mark when registering and using <skypebookings.com>. Complainant contends that its mark is famous and familiar to consumers worldwide. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation and Skype v. Michel Van de Morton / CASH TELECOM SA, FA 1518222 (Forum Oct. 14, 2013) (finding that the respondent’s incorporation of the SKYPE mark in the disputed domain names was indicative of actual knowledge.)
The Panel finds that 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 <skypebookings.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 26, 2016
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