Microsoft Corporation and Skype v. Employmentconnect
Claim Number: FA1205001442348
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Employmentconnect (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypejobs.com>, registered with Melbourne IT 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2012; the National Arbitration Forum received payment on May 3, 2012.
On May 6, 2012, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <skypejobs.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT 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 May 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2012 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@skypejobs.com. Also on May 10, 2012, 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.
An untimely response dated June 5, 2012 was received in which Respondent did not contest the Complaint.
On June 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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.
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. Complainants claim that Complainant, Skype, is a wholly owned subsidiary of Complainant, 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. The Panel will treat them as a single entity in this proceeding, and will refer to them as Complainant.
A. Complainant
Complainant owns trademark rights through trademark registrations of its SKYPE mark with the United States Patent and Trademark Office (“USPTO”) and submits proof of its trademark registrations (e.g., Reg. No. 3,005,039 registered October 4, 2005). Complainant also submits evidence of trademark rights in the SKYPE mark through trademark registrations of the mark with IP Australia (“IPA”) (e.g., Reg. No. 988,248 registered February 9, 2004). Complainant has used the SKYPE mark in its real time Internet messaging and voice communication technology business since 2003. Complainant’s business is used internationally for voice and video conversations over the Internet.
Respondent uses the <skypejobs.com> domain name to host a website that uses Complainant’s SKYPE logo and promotes a job placement service. The disputed domain name is confusingly similar to Complainant’s SKYPE mark and causes confusion as to the affiliation between Complainant’s business and Respondent’s website. Respondent is not commonly known by the <skypejobs.com> domain name and is not licensed by Complainant to use the SKYPE mark. Respondent attempts to attract Internet users to its website for commercial profit and had actual and constructive knowledge of Complainant’s rights in the SKYPE mark.
B. Respondent
Respondent submitted a letter which did not contest the Complaint and stated Respondent has stopped using the domain name.
For the 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 contest Complainant’s allegations, 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 owns trademark rights in its SKYPE mark through its trademark registrations with the USPTO (e.g., Reg. No. 3,005,039 registered October 4, 2005) as well as with the IPA (e.g., Reg. No. 988,248 registered February 9, 2004). The Panel concludes that Complainant’s multiple trademark registrations with international authorities establishes Complainant’s rights in the SKYPE mark pursuant to Policy ¶ 4(a)(i). See Austl. & N.Z. Banking Group Ltd v. Maria, FA 1409084 (Nat. Arb. Forum Nov. 21, 2011) (stating that evidence of trademark registration with the IPA establishes Policy ¶ 4(a)(i) rights in a mark); see also Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”).
Complainant asserts that the <skypejobs.com> domain name is confusingly similar to its SKYPE mark, claiming that the disputed domain name incorporates the entire SKYPE mark and adds the generic term “jobs,” as well as the generic top-level domain (“gTLD”) “.com.” The Panel concludes that the changes made in the disputed domain name do not alter the domain name’s confusing similarity to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Amazon.com, Inc. v. The Krablin Group, FA 593326 (Nat. Arb. Forum Dec. 29, 2005) (concluding that the disputed domain names were confusingly similar by their addition of generic terms to the distinctive AMAZON mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
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 argues that Respondent lacks rights or legitimate interests in the <skypejobs.com> domain name because Respondent is not commonly known by the SKYPE mark. Complainant claims that Respondent is not licensed to use the mark and is not a vendor, supplier, or distributor of Complainant’s services. Complainant provides evidence that Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS information, which identifies “Employmentconnect” as the registrant. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), held that the respondent was not commonly known by the domain name because the WHOIS information did not support such a finding, as well as complainant’s assertion that it did not consent to the respondent’s use of its mark. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel concluded that a respondent does not have rights in a disputed domain name when the respondent is not known by the mark. The Panel finds that, based on the WHOIS information as well as Respondent’s failure to contest Complainant’s claims that Respondent does not have permission to use the mark, Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii).
Complainant claims that Respondent’s use of the <skypejobs.com> domain name to host a commercial site that appears to copy Complainant’s site is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant provides evidence of Respondent’s use of the disputed domain name, which shows screenshots of Respondent using Complainant’s mark on the website. The Panel notes that Respondent uses a color scheme similar to the color scheme used by Complainant in association with the SKYPE mark. Complainant argues that Respondent uses the disputed domain name to promote Respondent’s commercial job placement service and that Respondent attempts to pass its website off as Complainant’s. Complainant asserts in its Policy ¶ 4(b)(iv) paragraph that the resolving website is maintained for purely commercial purposes and that Complainant’s logo is prominently featured on Respondent’s website, which Complainant argues leads Internet users to believe that the website is endorsed by Complainant. Respondent’s use of the disputed domain name to host a commercial site that attempts to pass itself off as Complainant’s website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. 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).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Complainant has proven this element.
Complainant contends that Respondent registered the <skypejobs.com> domain name with the purpose of disrupting Complainant’s business because Respondent’s resolving website is likely to cause Internet consumers to believe that problems resulting from Respondent’s services are attributable to Complainant. Previous panels have defined “competitor” under Policy ¶ 4(b)(iii) as an entity who acts as a rival or opponent. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). The Panel determines that Respondent’s use of the disputed domain name competes with Complainant’s business and disrupts Complainant’s business, and concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant contends that Respondent commercially benefits from the disputed domain name in a manner that falls under Policy ¶ 4(b)(iv). Complainant states in its Policy ¶ 4(c)(i) and ¶ (4)(iii) argument that Respondent uses the resolving website for commercial profit. Complainant alleges that Respondent’s use of its SKYPE trademark and logo confuses consumers and attracts Internet users to the website with the impression that Complainant sponsors the website. The Panel concludes that Respondent’s registration and use of the website to create confusion, attract Internet traffic, and make a financial profit demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Complainant alleges that Respondent registered the <skypejobs.com> domain name in order to capitalize on the fame associated with the mark, which Complainant claims leaves a “false impression of a site that originates with or is sponsored by Complainant.” Complainant claims that Respondent takes advantage of the fame and goodwill connected with the SKYPE mark, which Complainant asserts demonstrates bad faith registration and use. The Panel concludes that Respondent is attempting to pass itself off as Respondent by creating a website that is calculated to appear to belong to Complainant and uses Complainant’s logo, color scheme, and mark, which the Panel treats as evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Complainant alleges that Respondent had constructive and actual knowledge of Complainant’s rights in the SKYPE mark at the time Respondent registered the disputed domain name. Complainant claims that the global fame associated with its SKYPE mark demonstrates that Respondent was familiar with the mark prior to creating the resolving web page and intentionally registered the domain name to create a false association with Complainant. Further, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark, as evidenced by Respondent’s use of the SKYPE trademark and logo at the corresponding website. The Panel finds that, based on the content in Respondent’s website, Respondent had actual knowledge of Complainant’s rights in the SKYPE mark and therefore registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <skypejobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 14, 2012
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