Microsoft Corporation and Skype v. Kay Mandel
Claim Number: FA1301001480097
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Kay Mandel (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypecreditgenerator.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 14, 2013; the National Arbitration Forum received payment on January 14, 2013.
On January 15, 2013, ENOM, INC. confirmed by e-mail to the National Arbitra-tion Forum that the <skypecreditgenerator.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 January 16, 2013, the Forum served the Complaint and all Annexes, include-ing a Written Notice of the Complaint, setting a deadline of February 5, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@skypecreditgenerator.com. Also on January 16, 2013, 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 which was compliant with the requirements of the Policy and its associated Rules, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant Microsoft Corporation is a worldwide leader in the development and marketing of software and related services, and Complainant Skype Limited is its wholly-owned subsidiary.
Complainants began using the SKYPE mark in 2003 in connection with real time instant messaging and voice communication technology over the Internet.
The SKYPE trademark and service mark is registered throughout the world, in-cluding in the United States (on file with the United States Patent and Trademark Office as Registry No. 3,263,302, registered July 10, 2007).
By 2010, SKYPE services had connected 170 million users worldwide.
SKYPE users can purchase “credit” towards calls and other SKYPE services.
The <skypecreditgenerator.com> domain name is confusingly similar to the SKYPE mark.
Respondent does not use the <skypecreditgenerator.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has not been commonly known by either the SKYPE mark or the <skypecreditgenerator.com> domain name.
Respondent is not affiliated with Complainant nor is Respondent licensed to use the SKYPE mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
The landing page for the disputed domain name is entitled “The Skype Credits Generator” and prominently features Complainant’s SKYPE logo in order to pass off as Complainant.
Respondent claims on its website that its downloadable software “Generates unlimited Skype Credits so you can call anyone around the world for as long as you want!”
The resolving website displays links to “GET FREE SKYPE CREDITS” and “DOWNLOAD THE SKYPE CREDITS GENERATOR.”
Following the links leads to an intermediate advertisement and then a series of product/prize/survey offers which must be completed to receive the purported credit generator.
Selecting such offers triggers a malicious site warning.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent has attempted unfairly and opportunistically to benefit commercially from the goodwill associated with Complainant’s SKYPE trademark.
Respondent knew of Complainant and of its rights in the SKYPE mark when it registered the contested domain name.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, in an exchange of e-mail messages with the National Arbitration Forum, Respondent has declared that: “i [sic] will cancel the domain…,” and that “i [sic] decided to give away that domain,….”
Preliminary Issue: Multiple Complainants
Two Complainants have been identified in this proceeding: Microsoft Corporation and Skype Limited. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.”
It is well accepted that the Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. 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 part-nership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Similarly, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), a UDRP panel found a sufficient link between two complainants where there was a license between them regarding use of the trademark there in issue.
Here it is alleged that Complainant Skype Limited is a wholly-owned subsidiary of Complainant Microsoft Corporation. Respondent does not contest this assertion. This undenied affiliation between the Complainant enterprises is sufficient to permit us to admit them as a joint Complainant for all purposes in this proceeding. Accordingly, we will use the appellation “Complainant” throughout this Decision to refer to the two enterprises taken as a whole.
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, 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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration to a complainant upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004; see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)).
DECISION
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Rather Respondent has expressed in writing its willingness that the domain name be surrendered to Complainant. Thus the parties have effectively agreed to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.
It is therefore Ordered that the <skypecreditgenerator.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 26, 2013
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