Microsoft Corporation and Skype v. Skype Guru / Carol Fanelli
Claim Number: FA1306001503668
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Skype Guru / Carol Fanelli (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skype-webcam.com>, registered with NAME.COM LLC.
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 June 7, 2013; the National Arbitration Forum received payment on June 7, 2013.
On June 7, 2013, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <skype-webcam.com> domain name are registered with NAME.COM LLC and that Respondent is the current registrant of the name. NAME.COM LLC has verified that Respondent is bound by the NAME.COM LLC 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 to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skype-webcam.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 8, 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 has rights in the SKYPE mark, used in connection with real-time instant messaging and voice communication technology over the Internet. Complainant is the owner of registrations for the SKYPE mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039 registered Oct. 4, 2005). The disputed domain name is confusingly similar to Complainant’s marks. Respondent’s <skype-webcam.com> domain name contains the SKYPE mark in its entirety, adding only a hyphen, the generic word “webcam,” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not own any rights nor have any legitimate interests in the <skype-webcam.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Skype Guru/Carol Fanelli.” Further, Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <skype-webcam.com> domain name. The disputed domain name resolves to a website that displays advertisements for video conferencing and Voice Over Internet Protocol (“VOIP”) services that compete with Complainant’s business.
Respondent registered and is using the disputed domain name in bad faith.
Respondent was aware of Complainant’s famous and familiar mark when Respondent registered the disputed domain name. Complainant has used the mark since 2003, and by 2010 its service provided in connection with the SKYPE mark had connected 170 million users who conducted over 207 billion minutes of voice and video conversations. Respondent’s promotion of alternative video conferencing and VOIP services is disrupting Complainant’s business. Respondent is promoting its unrelated business using Complainant’s SKYPE mark and attempting to commercially benefit from the goodwill associated with Complainant’s mark. Respondent’s use of Complainant’s Skype logo and SKYPE trademark on the resolving website create a false impression of affiliation with Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns registered trademarks for SKYPE in the United States 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.
Respondent’s at-issue domain name is used to promotion alternative video conferencing and VOIP services, as well as to market SKYPE related products.
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
In the instant proceedings, there are two named 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 the complainants demonstrate there is a nexus between them 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, 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 and therefore references throughout this decision to “Complainant” are thus references to both named complainants. See Microsoft Corporation and Skype v. Nabil Lolz (Nat. Arb. Forum Jun. 19, 2013) (finding a parent/subsidiary relationship between co-complainants is sufficient to allow co-complainants to proceed as a single complainant.)
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights under Policy ¶ 4(a)(i) via its registration of the SKYPE mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <skype-webcam.com> domain name contains the SKYPE mark in its entirety, adding only a hyphen, the generic word “webcam,” and the top level domain name “.com.” Merely adding the generic word “webcam” does not sufficiently distinguish the at-issue domain name from Complainant’s mark under Policy ¶ 4(a)(i). Likewise, the addition of a hyphen and a top level domain name, do nothing to differentiate the domain name from Complainant’s SKYPE mark. 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that pursuant to the Policy Respondent’s <skype-webcam.com> domain name is confusingly similar to Complainant’s SKYPE trademark.
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 “Skype Guru/Carol Fanelli” however the record before the Panel contains no corroborating evidence that might tend to prove that Respondent is commonly known by the at-issue domain name. Furthermore, Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. Therefore, the Panel concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <skype-webcam.com> domain name. Respondent’s at-issue domain name addresses a website that displays advertisements for video conferencing and VOIP services that compete with Complainant’s business. Hosting advertising services competing with Complainant 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 Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
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’s advertising of competing services constitutes a disruption to Complainant’s business and demonstrates bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Additionally, by promoting its business using Complainant’s SKYPE mark and attempting to commercially benefit from the goodwill associated with Complainant’s trademark Respondent creates the false impression that it is affiliated with Complainant. These circumstances demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Finally, Respondent was aware of Complainant’s well-known and familiar mark when it registered the at-issue domain name. Complainant has used the SKYPE mark since 2003, and by 2010 its services had connected 170 million users who had conducted over 207 billion minutes of voice and video conversations. Significantly, Respondent displays Complainant’s trademarked SKYPE logo and SKYPE word mark on the at-issue <skype-webcam.com> website. It is therefore inconceivable that Respondent was unaware of Complainant’s mark when it registered <skype-webcam.com>. Respondent’s actual knowledge of Complainant and Complainant’s rights in the SKYPE mark prior to registering the domain name shows that Respondent registered the at-issue domain name in bad faith 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 "actual knowledge of Complainant's mark when registering the disputed domain name"); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skype-webcam.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 10, 2013
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