Skype Limited v.
Hosterix.com c/o Ramin Behzadi
Claim Number: FA0704000960654
PARTIES
Complainant is Skype Limited (“Complainant”), represented by Don
C. Moody, of Genga & Associates, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypeforuae.com>, registered with Enom, Inc.
PANEL
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 16, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 18, 2007.
On April 17, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <skypeforuae.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-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 24, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 14, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration as
technical, administrative and billing contacts, and to postmaster@skypeforuae.com by e-mail.
A Response was received on May 14, 2007. It was deemed deficient under ICANN Rule 5 as
the hard copy was not timely filed.
PROCEDURAL ISSUE
Although Respondent’s electronic
submission was received in a timely manner, Respondent’s hard copy was not
timely filed as required by ICANN Rule 5, and is accordingly deficient. The Panel, in its
discretion, will consider the Response. See
Bd. of Governors of the Univ.
of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel
may consider a response which was one day late, and received before a panelist
was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen,
FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims
decided on the merits and not by default and because Complainant has not been
prejudiced in the presentation of its case by the late submission, Respondent’s
opposition documents are accepted as timely.”).
On May 23, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant, Skype Limited, makes the following assertions:
1. Respondent’s <skypeforuae.com> domain name is confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skypeforuae.com> domain name.
3. Respondent registered and used the <skypeforuae.com> domain name in bad faith.
B. Respondent, Hosterix.com c/o Ramin Behzadi, asserts that he is
using the <skypeforuae.com> domain name to promote Complainant’s
product in the United Arab Emirates (UAE), as well as its services. Respondent says that he is one of the first
users of the Skype program. He did not
register the <skypeforuae.com>
domain name in bad faith. Respondent
says that his company has developed software called SpeedVPN. One feature of SpeedVPN unblocks Skype and
other VoIP applications in places in which the ISP has blocked and filtered
them, such as the
FINDINGS
Complainant owns a registered
Respondent registered the <skypeforuae.com> domain name on November 29, 2006.
When loading the webpage, a payment page is immediately displayed soliciting money for a license to use the SpeedVPN software. Respondent markets SpeedVPN to users of Complainant’s product who reside in or are nationals of the U.A.E. through the use of Complainant’s mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
Complainant asserts rights in the SKYPE mark through various trademark registrations, including one with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,005,039 issued October 4, 2005). The Panel finds that Complainant has established rights in the SKYPE mark through this and numerous other trademark registrations under Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <skypeforuae.com>
domain name is confusingly similar to Complainant’s SKYPE mark under
Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its
entirety with the addition of the common term “for,” the geographic
abbreviation “UAE” and the generic top-level domain (“gTLD”) “.com.” The addition of the common term “for” and the
geographic abbreviation for the
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent lacks rights and legitimate interests in the <skypeforuae.com> domain name under Policy ¶ 4(a)(ii). Complainant asserts that Respondent is using the disputed domain name to operate a website that displays Respondent’s “SpeedVPN” product for purchase, and that such an offering suggests to Internet users that Respondent is associated with Complainant. The Panel finds that such commercial use of Complainant’s SKYPE mark is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods).
Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) as
there is no information in the record to suggest that Respondent is or has ever
been known by the <skypeforuae.com> domain name. Moreover, there is no evidence to indicate
that Complainant has authorized Respondent to use its mark, or that Respondent
is affiliated with Complainant in any way.
See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
use of the <skypeforuae.com> domain name
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). Respondent is using the disputed domain name
to market a product that competes with Complainant’s goods and services, and
thus registered the domain name to disrupt the business of a competitor. See S.
Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered
the domain name in question to disrupt the business of the complainant, a
competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
the complainant's marks suggests that the respondent, the complainant’s
competitor, registered the names primarily for the purpose of disrupting the
complainant's business).
Respondent
registered the disputed domain name for the purposes of commercially benefiting
from the goodwill associated with Complainant’s mark. Respondent’s <skypeforuae.com>
domain name is capable of creating a likelihood of confusion as to the source
and affiliation of Complainant to the disputed domain name and corresponding
website, thereby constituting bad faith registration and use under Policy ¶
4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain);
see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent).
Furthermore,
Respondent had actual knowledge of Complainant’s mark when registering the
disputed domain name. Complainant
contends that the content of Respondent’s website indicates that Respondent
knew of Complainant’s mark. Moreover,
Complainant has asserted that Respondent is a customer of Complainant. Additionally, in the Response, Respondent
acknowledges that he knows of Complainant’s mark and services. Accordingly, the Panel finds bad faith
registration and use under Policy ¶ 4(a)(iii).
See eBay, Inc v. Progressive Life Awareness
Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to
Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with
the complainant’s EBAY mark and profited from it by diverting users seeking the
complainant to the respondent’s website); see also Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer
chooses a mark he knows to be similar to another, one can infer an intent to
confuse.").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeforuae.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 5, 2007
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