Microsoft Corporation v. Alexandru Negru/PPM Internet Inc.
Claim Number: FA1709001748755
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Alexandru Negru/PPM Internet Inc. (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypeprivate.com>, registered with eNom, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically September 13, 2017; the Forum received payment September 13, 2017.
On September 13, 2017, eNom, LLC confirmed by e-mail to the Forum that the <skypeprivate.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 September 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2017, 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@skypeprivate.com. Also on September 14, 2017, 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 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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”s Allegations in this Proceeding:
Complainant, Microsoft Corporation, uses the SKYPE mark to provide and market products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,005,039, registered Oct. 4, 2005). See Compl., Attached Ex. E. Respondent’s <skypeprivate.com> is confusingly similar as it contains Complainant’s mark in its entirety, merely adding the descriptive term “private” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <skypeprivate.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the SKYPE mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain name to redirect to another site owned by Respondent to promote adult content. See Compl., Attached Ex. F. Additionally, Respondent is seeking to attract Internet users using Complainant’s famous mark for commercial gain.
Respondent registered and used the <skypeprivate.com> in bad faith. Respondent uses the <skypeprivate.com> domain name to redirect Internet users to a site that displays adult content and attempts to commercially benefit. See id. Also, Respondent registered the disputed domain with actual knowledge of Complainant’s SKYPE mark and business.
B. Respondent’s Contentions in Response:
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent created the disputed domain name February 19, 2013.
Complainant established rights in the disputed domain name containing Complainant’s protected mark in its entirety.
Respondent has no such rights or legitimate interests in the disputed domain
name containing Complainant’s protected mark.
Respondent registered a disputed domain name that is confusingly similar to complainant’s protected mark and registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant claims rights in the SKYPE mark based upon its registration with the USPTO (Reg. No. 3,005,039, registered Oct. 4, 2005). See Compl. at Attached Ex. E. Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the SKYPE mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that <skypeprivate.com> is confusingly similar to the SKYPE mark as it contains the mark in its entirety and adds the descriptive term “private” along with the gTLD “.com.” Slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark or removal of a space, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA 1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”) Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <skypeprivate.com> does not contain changes that would sufficiently distinguish it from the SKYPE mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark, contained in its entirety within it; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 <skypeprivate.com> as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the SKYPE mark in any way. Where a response is not filed, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Alexandru Negru/PPM Internet Inc.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evidenced by failure to use the name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent uses the <skypeprivate.com> domain name to redirect Internet users to another site owned by Respondent. See Compl. at Attached Ex. F. Using another’s trademark to promote adult content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (c)(iii). See Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA 1491615 (Forum, May 6, 2013) (finding the use of <skypesexcontacts.com> in connection with a site that provides adult content was not a bona fide offering of goods or services or a legitimate noncommercial or fair use.). Here, Respondent solicits nude models to sign up on Respondent’s site and solicits members to open accounts to allow them to have live calls with the nude models. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Additionally, seeking to attract traffic and revenue using Complainant’s famous SKYPE trademark to redirect to another site owned by Respondent that displays nude models does not reflect a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Microsoft Corp. v. WHOISAGENT WHOISAGENT/DSA QWE INC., FA 1694679 (Forum, Oct. 16, 2016) (finding the use of <skypebookings.com> which contained links to third party sites through which Respondent presumably gained click through revenues was not a bona fide offering of goods or services or a legitimate noncommercial or fair use.). Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests In the disputed domain name or Complainant’s protected mark contained in its entirety within it; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and uses the <skypeprivate.com> domain name in bad faith because Respondent uses the famous SKYPE mark to redirect users to a site that displays adult content and attempts to commercially benefit by that use. Using a disputed domain name to redirect Internet users to a site that displays adult content is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii) and 4(b)(iv). See Skype v. Sonora Consulting, FA 1436490 (Forum May 7, 2012)(finding that registration and use of <skype-sex-chat.com> for an adult oriented site in and of itself is bad faith registration and use pursuant to Policy ¶4(a)(iii)). The Panel agrees that Respondent’s adult oriented content supports findings of bad faith.
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s famous SKYPE mark and business. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). At the time that Respondent registered the disputed domain name, Complainant’s SKYPE trademark was already famous and familiar to countless consumers worldwide. It is clear that Respondent was not only familiar with Complainant’s SKYPE trademark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating Complainant’s trademark in order to create a purported association with Complainant and its products and services. Therefore, the Panel may find that Respondent registered and used the disputed domain name in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <skypeprivate.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 20, 2017
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