Microsoft Corporation and Skype v. Sergey Nikolaevich Yacenuk
Claim Number: FA1304001492766
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Sergey Nikolaevich Yacenuk (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypegirl.net>, registered with CENTER OF UKRAINIAN INTERNET NAMES.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2013; the National Arbitration Forum received payment on April 3, 2013.
On April 3, 2013, the Forum requested information from the Registrar regarding Respondent’s identity and asking the Registrar to lock the domain name. On April 16, 2013, after multiple requests, to which the Registrar did not respond, the Forum reported the non-compliance to ICANN.
On April 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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@skypegirl.net. Also on April 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.
On April 16, 2013, the Registrar replied to the Forum, asking to have its privacy service stricken as Respondent, noting that it needed to get permission from its customer to release personally identifiable information under Ukrainian law.
A timely Response from Sergey Nikolaevich Yacenuk was received and determined to be complete on April 23, 2013.
On April 23, 2013, CENTER OF UKRAINIAN INTERNET NAMES confirmed by e-mail to the National Arbitration Forum that the <skypegirl.net> domain name is registered with CENTER OF UKRAINIAN INTERNET NAMES and that Respondent is the current registrant of the name. CENTER OF UKRAINIAN INTERNET NAMES has verified that Respondent is bound by the CENTER OF UKRAINIAN INTERNET NAMES 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, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered the disputed domain name in bad faith.
Complainant is Microsoft Corporation and its wholly-owned subsidiary, Skype. Microsoft Corporation is a worldwide leader in software and related services. Skype is an Internet-based service providing real-time voice and video communication services. Complainant claims it has used the SKYPE mark since 2003 and has registered the mark and associated logos in the United States and around the world. See, e.g., United States Patent & Trademark Office (“USPTO”) Reg. No. 3,005,039 registered on Oct. 4, 2005. All of these registrations were made prior to the November 28, 2012 registration of the Disputed Domain Name.
Complainant argues that the Disputed Domain Name is confusingly similar to its SKYPE trademark because it incorporates the Complainant’s trademark in its entirety with the addition of the generic word “girl” and the generic top-level domain “.net.” According to Complainant, the addition of such a generic word is insufficient to avoid confusion with the SKYPE trademark.
Complainant also contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not known by the Complainant’s trademark, nor is Respondent a licensee of Complainant or affiliated with Complainant in any way. Complainant further contends that Respondent has not used the Disputed Domain Name to offer bona fide goods and services or for a legitimate noncommercial or fair use. Both the SKYPE mark and the corresponding logos are prominently featured on the landing page of the Disputed Domain. These marks are used to promote Respondent’s business scheme along with competing video chat and messaging services offered via “Bridge of Love” and “Wives from Ukraine.” Such use of the Complainant’s trademarks is likely to mislead the public and is Respondent’s attempt at passing itself off as Complainant.
Lastly, Complainant contends that Respondent’s registration and use of the mark was in bad faith because the extensive use of Complainant’s logos indicate that Respondent intentionally adopted the Disputed Domain Name in order to create the impression of a non-existent association with Complainant and its products and services. Respondent reaps a commercial benefit through this confusion of Internet users and the promotion of competing services discussed above.
B. Respondent
Respondent answered by way of e-mail and confirmed ownership of the Disputed Domain Name.
Respondent contends that the purpose of the Disputed Domain is not to confuse Internet users, but rather to encourage users to exchange contact information and subsequently connect using Complainant’s SKYPE services. Respondent further contends that the Disputed Domain does not promote the use of competing services. According to Respondent, the “Bridge of Love” and “Wives from Ukraine” advertisements were generated by the “Advertising banner” and were not intended to attract Internet users to competing services. Instead, Respondent claims to be promoting SKYPE services through his use of the Disputed Domain Name.
In a second e-mail, Respondent confirmed that the initial correspondence constituted his entire Response to the Complaint.
Complainant is the owner of numerous registrations for the SKYPE trademark worldwide, including in the United States. See e.g. USPTO Reg. No. 3,005,039 registered Oct. 4, 2005; see also Complainant’s Ex. D.
Respondent registered the Disputed Domain Name on November 28, 2012.
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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two 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.” Here, the evidence in the Complaint demonstrates that Skype is a wholly owned subsidiary of Microsoft Corporation. See Complainant’s Ex. C. The Panel finds that this is sufficient to establish a nexus between the two Complainants and treat them as a single entity. See Staples, Inc. v. Skylabs Corporation, D2004-0220 (WIPO June 4, 2004) (allowing multiple complainants where the entities were a parent company and two wholly-owned subsidiaries).
As stated above, Complainant has rights to the SKYPE trademark in numerous countries worldwide, including the United States. While these rights do not include registration in Ukraine, where Respondent is located, USPTO registration alone is sufficient under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (finding USPTO registration sufficient to establish Policy ¶ 4(a)(i) rights even when respondent lives or operates in a different country).
The Disputed Domain Name, <skypegirl.net> consists of the Complainant’s SKYPE trademark along with the generic word “girl” and the generic top-level domain “.net.” SKYPE is the salient feature of the domain and the addition of the generic word “girl” does nothing to reduce the likelihood of confusion in this case. In previous cases, panels have found the addition of similar words including “girls,” “babes,” and “women” to be insufficient to distinguish the domain name from famous trademarks. See Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000); see also Nat’l Spiritual Assembly of the Bahá’ís v. Buy This Name, D2001-1302 (WIPO Dec. 18, 2001) (finding bahaiwomen.com confusingly similar to BAHÁ’Í); America Online, Inc. v. E. Coast Exotics, D2001-0661 (WIPO July 10, 2001) (finding aolwomen.com confusingly similar to AOL and AOL.COM);Advance Magazine Publishers, Inc. v. Lisa Whaley, D2001-0248 (WIPO May 7, 2001) (finding gqbabe.com confusingly similar to GQ). Previous panels have recognized the SKYPE trademark as famous. See e.g. Microsoft Corp. v. Arruda, FA 1396768 (Nat. Arb. Forum Aug 9, 2011).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark.
Under Policy ¶ 4(c), Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A Complainant must make a prima facie case that Respondent lacks rights and legitimate interests before the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent is not commonly known by Complainant’s SKYPE mark, nor is Respondent a licensee of Complainant or affiliated with Complainant in any way. Complainant has not authorized Respondent to register the Disputed Domain Name or utilize the SKYPE mark and logos to promote Respondent’s business. Therefore, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain name.
Respondent claims his use of the Disputed Domain Name is a valid one in which he has legitimate rights and interests under Policy ¶ 4(a)(ii). According to Respondent, the Disputed Domain was intended to serve as a place for people to meet one another and exchange SKYPE usernames and subsequently connect using Complainant’s SKYPE services. Despite the advertisements for competing services generated in the advertising banner, Respondent contends that the entire purpose of the site was to promote the use of SKYPE services, not to compete with them. This type of nominative use may result in a finding of rights or legitimate interests. In Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006), the panel found that the respondent’s nominative use of the complainant’s OEX mark created rights or legitimate interests in <oexstreet.com> because the respondent used the domain to provide information about the complainant’s Options Exchange and did not compete with the complainant.
Here, however, Respondent’s claim of nominative use is negated by the presence of hyperlinks to competing services, even though those services are operating on the domain <bridge-of-love.com>. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Respondent’s claim to a nominative use is also negated by the excessive use of Complainant’s trademarks and web-design, which is evidence of an attempt to pass off Respondent’s content as affiliated with Complainant. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that passing-off is a blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); compare Complainant’s Ex. F with Complainant’s Ex. B.
In light of the above, the Panel finds that Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Respondent’s stated intention in registering the Disputed Domain Name, along with his use of both the SKYPE mark and the associated logos, clearly indicate that Respondent was aware of Complainant’s trademark rights at the time of the registration. The presence of advertisements directing Internet users to competing services is evidence of bad faith interference with Complainant’s business. Whether by using the services provided by Respondent or by following an advertisement to a competitor’s services, Internet users may believe they are doing business with Complainant when Complainant has not provided, approved of, or otherwise sponsored these services in any way. In doing so, Respondent is “taking a free ride on the goodwill of Complainant’s … trademark.” Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000). It appears, then, that Respondent is using Complainant’s SKYPE trademark “to attract, for commercial gain, Internet uses to [Respondent’s] website … by creating a likelihood of confusion with [Complainant’s] mark.” Policy ¶ 4(b)(iv).
The Panel therefore finds the Disputed Domain Name has been registered and is being used in bad faith.
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 <skypegirl.net> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: June 3, 2013
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