Microsoft Corporation and Skype v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1306001503261
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <softedskype.com> and <downloadedskype.com>, registered with INTERNET.BS CORP.
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 June 5, 2013; the National Arbitration Forum received payment on June 5, 2013.
On June 6, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arb-itration Forum that the <softedskype.com> and <downloadedskype.com> domain names are registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Re-spondent is bound by the INTERNET.BS CORP. 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 June 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2013 by which Respondent could file a Response to the Complaint, via e-mail messages ad-dressed to all entities and persons listed on Respondent’s registration as tech-nical, administrative, and billing contacts, and to postmaster@softedskype.com and postmaster@downloadedskype.com. Also on June 7, 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 July 3, 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 Not-ices, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SKYPE mark in connection with the marketing of instant messaging and voice communication technology.
Complainant holds registrations for the SKYPE service mark, on file with the Un-ited States Patent and Trademark Office (“USPTO”), (including Registry No. 3,005,039, registered October 4, 2005).
Respondent registered the domain name <softedskype.com> on October 5, 2012 and the domain name <downloadedskype.com> on November 21, 2012.
Both of the disputed domain names are confusingly similar to Complainant’s SKYPE mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not licensed or otherwise authorized Respondent’s use of the SKYPE mark.
Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
The disputed domain names resolve to the same landing page, which expressly indicates that Complainant is the author of that page.
The same resolving website includes Complainant’s logo and the SKYPE mark, as well as the link “Download Skype.”
Respondent benefits commercially from the operation of the resolving website.
Respondent has no rights to or legitimate interests in either of the disputed do-main names.
Respondent creates the false impression that the disputed domain names origin-ate with or are sponsored by Complainant.
Respondent knew of Complainant and its rights in the SKYPE mark when it reg-istered the contested domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
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 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 representa-tions 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 a UDRP 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 alle-gations of the Complaint.”
Complainant has rights in the SKYPE service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, a panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demon-strates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Panama). See KCTS Tele-vision Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of Policy ¶ 4(a)(i) whether a UDRP complain-ant’s mark is registered in a country other than that of a respondent’s place of business).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that each of the contested domain names, <softedskype.com> and <downloadedskype.com>, is confusingly similar to Complainant’s SKYPE service mark. Each of the domain names incorporates the entire SKYPE mark, adding only the word “softed” or “downloaded,” which can be interpreted to relate to an aspect of Complainant’s business, and the generic top-level domain “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that addition of the term “batteries,” which described a UDRP complainant’s products, and of the generic top-level domain “.com,” were insuf-ficient to distinguish a respondent’s <duracellbatteries.com> from that complain-ant’s DURACELL mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by <softedskype.com> and <downloadedskype.com>, the disputed domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the SKYPE service mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Fundacion Private Whois / Domain Administrator,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have acquired rights to or legitimate interests in either of them within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indica-tion that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, in that the domain names both resolve to the same landing page, which page includes Complainant’s logo and the SKYPE mark, and which expressly indicates that Complainant is the author of the page and includes the link: “Download Skype.” This use of the domain names, which must be presumed to be done for Re-spondent’s financial gain, 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 Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs both of the dis-puted domain names, <softedskype.com> and <downloadedskype.com>, which are confusingly similar to Complainant’s SKYPE service mark, to benefit com-mercially from the operation of the website resolving from the domain names in the manner alleged in the Complaint. This is evidence of bad faith in the regis-tration and use of the domain names under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that a re-spondent took advantage of the confusing similarity between the domain names <theotheraol.com> and <theotheraol.net> and a UDRP complainant’s AOL mark, which indicated bad faith registration and use of the domain names under Policy ¶ 4(b)(iv)).
Moreover, we are convinced by the evidence that Respondent knew of Com-plainant and its rights in the SKYPE service mark when it registered the contest-ed domain names. This is further proof of bad faith registration of the domain names. See, for example, Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the link between a UDRP complainant's mark and the content advertised on a respondent's website was obvious, that respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that each of the domain names <softedskype.com> and <downloadedskype.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 12, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page