Microsoft Corporation and Skype v. LSCH / Krisztian Tamberger
Claim Number: FA1303001491618
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is LSCH / Krisztian Tamberger (“Respondent”), Hungary.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypeon.com>, registered with ENOM, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.
On March 27, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <skypeon.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 March 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2013 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@skypeon.com. Also on March 28, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant owns trademark registrations for the SKYPE mark with the United States Patent & Trademark Office (“USPTO”) and other trademark agencies, in particularly USPTO Reg. No. 3,005,039 registered on Oct. 4, 2005 and Hungarian Intellectual Property Office (“HIPO”) Reg. No. 183,753 registered on May 3, 2004.
Complainant uses the mark to provide voice and video chatting services.
Respondent’s domain name incorporates the entirety of the famous SKYPE mark, along with the generic top-level domain “.com” and the generic term “on.”
Respondent is not commonly known as the disputed domain name. Respondent lists “LSCH/Krisztian Tamberger” as the registrant of the domain name. Complainant has not otherwise affiliated with, granted license to, or authorized Respondent and its use of the SKYPE mark in its domain names.
Respondent is not making a bona fide offering through its explicitly commercial use of the domain name. Respondent is using the SKYPE mark solely to distribute adult-oriented content to Internet users. Respondent’s sole purpose in using the domain name is to sell memberships to its adult-oriented website as well as devise ways of charging fees to its members.
Respondent seeks to commercially benefit by creating a likelihood of confusion among Internet users. Respondent is using the SKYPE mark explicitly in its domain name and resolving websites as an attempt to prop up and legitimize its independent, unauthorized, use of the SKYPE mark in furtherance of a scheme to propagate adult-oriented content.
Respondent’s use of the SKYPE mark in conjunction with a commercial operation focused on distributing adult-oriented content is in itself evidence of bad faith.
Respondent knew of Complainant and the SKYPE mark in forming this domain name. Complainant’s trademark is famous and has become familiar in the minds of consumers worldwide.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns registered trademarks for SKYPE in the United States, Hungary, and elsewhere throughout the world.
Respondent is not affiliated with Complainant and had not been authorized to use the SKYPE mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in SKYPE.
The <skypeon.com> domain name addresses an online business that offers adult-oriented online content.
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(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.”).
Preliminary Issue: Multiple Complainants
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.”
Rule 1(e) allows multiple complainants to proceed as one complainant where, as here, the complainants demonstrate a nexus between complainants such as a license or partnership. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (two complainants treated as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also Am. Family Health Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004) (Finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
Here, the Complaint and accompanying papers show that Skype is a wholly-owned subsidiary of Microsoft Corporation. This relationship between Complainants creates a sufficient nexus for Complainants to be treated as a single entity in this proceeding and references throughout this decision to “Complainant” are thus references to both named complainants.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark registrations for its SKYPE mark with both the USPTO and the HIPO, as well as other trademark agencies. Any one of these registrations is sufficient to show Complainant’s rights under Policy ¶4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. 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).”).
In forming the at-issue domain name Respondent incorporates the entirety of Complainant’s famous SKYPE mark, adds the generic term “one” and appends the top level domain name “.com” thereto. The resulting differences between the mark and domain name fail to distinguish the two for the purposes of Policy ¶4(a)(i). Therefore the Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s SKYPE trademark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “LSCH/Krisztian Tamberger” and the record before the Panel contains no evidence that might otherwise tend to prove contrary to the WHOIS information that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The <skypeon.com> domain name resolves to a website featuring explicitly adult-oriented content. The website has a registration page that facilitates charging viewer by the minute. It is apparent that Respondent’s sole purpose in using the domain name is to address a website that sells memberships and charges fees for viewing adult material. Using the domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii),.
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent seeks to commercially benefit from any confusion among Internet users as to the source and/or sponsorship of the <skypeon.com> domain name. Respondent uses the SKYPE mark to prop up and legitimize its independent, unauthorized use of the SKYPE mark in furtherance of its scheme to drive traffic to its commercial adult-oriented website. Respondent does so by improperly trading off the notoriety of Complainant’s SKYPE trademark. Respondent’s activities demonstrates bad faith registration and use pursuant to Policy ¶4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4 (b)(iv).”). Additionally, using the domain name in this manner is likely to disrupt Complainant’s business and indicates Respondent’s bad faith under Policy ¶4 (b)(iii). See Skype v. Sonora Consulting, FA 1436490 (Nat. Arb. 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))
Finally, prior to registering the at-issue domain name Respondent had actual knowledge of Complainant’s rights in the SKYPE mark. Respondent’s prior knowledge is clear from the fact that the <skypeon.com> domain name contains Complainant’s entire SKYPE trademark and is used for a business that apparently relies on Complainant’s SKYPE telecommunication services in its business model. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeon.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 1, 2013
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