Microsoft Corporation and Skype v. Abdu lSalam / jus2communications
Claim Number: FA1308001513504
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Abdu lSalam / jus2communications (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypeplus.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR).
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 August 7, 2013; the National Arbitration Forum received payment on August 7, 2013.
On August 9, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) confirmed by e-mail to the National Arbitration Forum that the <skypeplus.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) 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 August 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@skypeplus.org. Also on August 9, 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 September 5, 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, Skype, is a wholly owned subsidiary of Complainant Microsoft Corporation. Complainant uses its SKYPE mark in connection with its provision of real time instant messaging and voice over Internet protocol (“VOIP”) technology.
Complainant owns rights in the SKYPE trademark through registrations with government agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039, registered October 4, 2005).
Respondent’s <skypeplus.org> domain name is confusingly similar to Complainant’s SKYPE mark, because the domain name incorporates the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.org” and the generic term “plus.”
Respondent is not commonly known as <skypeplus.org>, because the WHOIS information identifies the registrant as “Abdu lSalam/jus2communications.” Furthermore, although the website resolving from the disputed domain name identifies Respondent as “Skype Plus, The likeable VOIP Company,” Complainant has not authorized Respondent to use its SKYPE mark in a domain name or for any other use. Thus, Respondent is not legitimately known as <skypeplus.org>.
Respondent’s use of the <skypeplus.org> domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is using the disputed domain name for the following unprotected purposes: 1) to promote services that directly compete with the services provided by Complainant under its SKYPE mark; 2) to pass itself as Complainant; and 3) to promote hyperlinks unrelated to Complainant that facilitate the download of adware and/or malware. Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), because the resolving website indicates that the disputed domain name is available for purchase at a price higher than Respondent’s out-of-pocket expenses. Additionally, Respondent has no rights or legitimate interests in the <skypeplus.org> domain name under Policy ¶ 4(a)(ii), because Respondent is using the disputed domain name to engage in phishing by seeking personal information, including usernames and passwords.
Respondent’s <skypeplus.org> domain name targets Internet users seeking the services provided under Complainant’s SKYPE mark, diverting them to Respondent’s own website, which in turn offers VOIP services that directly compete with those provided by Complainant. Respondent’s registration and use of the <skypeplus.org> domain name thus constitutes bad faith disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). The disputed domain name’s resolving website uses Complainant’s SKYPE mark and logo, and also imitates the color scheme and graphics corresponding to the services offered by Complainant under the SKYPE mark. Respondent has thus attempted to pass itself off as Complainant in order to commercially benefit from the goodwill associated with Complainant and its SKYPE mark. Accordingly, Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv).
At the time Respondent registered the <skypeplus.org> domain name, it had actual knowledge of Complainant’s interests in the SKYPE mark, which tends to show Respondent’s bad faith under Policy ¶ 4(a)(iii). Respondent is using the <skypeplus.org> domain name to engage in a phishing scheme by seeking Internet users’ personal information, including usernames and passwords. This phishing behavior also tends to show that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Respondent first registered the disputed domain name on June 28, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”
In the instant proceeding, Complainants allege that they can be viewed as a single person or entity because Complainant Skype is a wholly-owned subsidiary of Complainant Microsoft Corporation. The Panel agrees. 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.)
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.
The website addressed by the at-issue domain name uses Complainant’s trademark, logo and trade dress.
Respondent’s at-issue domain name is used to promotion VOIP services that directly compete with the services offered by Complainant.
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.”).
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. Such is the case even if Respondent resides outside of the United States. 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; see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s at-issue domain name incorporates Complainant’s famous SKYPE mark in its entirety, adding only the generic term “plus” and then appending the top level domain name “.org.” Respondent’s addition of “plus” to Complainant’s mark does not differentiate the domain name from Complainant’s SKYPE mark and the addition of a top level domain name is irrelevant to the Panel’s analysis. Accordingly, the Panel concludes that Respondent’s <skypeplus.org> domain name is confusingly similar to Complainant’s SKYPE mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
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 “Abdu lSalam/jus2communications.” Furthermore, Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services and there is nothing in the record which tends to otherwise show that Respondent may be known by the at-issue domain name except perhaps the appearance of “Skype Plus” on Respondent’s website as discussed below. The Panel views Respondent’s use of “Skype Plus” as simply another misappropriation of Complainant’s mark. 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 using the <skypeplus.org> domain name to promote services that directly compete with the VOIP services provided by Complainant under the SKYPE mark. On the <skypeplus.org> website Respondent promotes itself as “Skype Plus, The Likeable VOIP Company,” and further displays a login entitled “My SkypePlus Account.” Using the domain name in this manner 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (holding that the respondent was not using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant offers additional evidence and argument which further suggests that Respondent lacks rights and interests in respect of the at-issue domain name. However, the abridged set of relevant factors, discussed by the Panel above, are sufficient to conclusively find in Complainant’s favor with regard to Policy 4(a)(ii). Thus given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and used the at-issue domain name in bad faith.
First, as mentioned above, Respondent’s <skypeplus.org> domain name targets Internet users seeking the services provided under Complainant’s SKYPE mark and diverts such users to Respondent’s website. The website, replete with Complainant’s SKYPE trademark, logo and other trade dress, offers VOIP services that directly compete with those provided by Complainant. Respondent’s misappropriation of Complainant’s SKYPE mark and logo and use of the confusingly similar domain name to address its <skypeplus.org> website disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use of the <skypeplus.org> domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (finding that respondent’s appropriation of the complainant’s mark to divert complainant’s customers to respondent’s competing business was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)).
Second, the <skypeplus.org> website’s use of Complainant’s SKYPE mark, logo, and trade dress urge that Respondent is intent on passing itself off as Complainant so that it may benefit from the goodwill associated with Complainant and its SKYPE mark. These circumstances demonstrate bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) ( finding that respondent had demonstrated bad faith under Policy ¶ 4(b)(iv) where it used the disputed domain name to resolve to a website on which complainant’s trademarks and logos were prominently displayed); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business…to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Third, Respondent registered the <skypeplus.org> domain name with actual knowledge of the SKYPE trademark. Respondent’s actual knowledge of Complainant’s SKYPE mark is inferred from the notoriety of the SKYPE mark, and Respondent’s scheme to exploit the mark as discussed above. Significantly, Respondent displays Complainant’s trademarked SKYPE logo and SKYPE word mark on its at-issue website. It is therefore inconceivable that Respondent was unaware of Complainant’s mark when it registered <skypeplus.org>. 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 had "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).
Finally, Respondent uses the <skypeplus.org> domain name to engage in a phishing scheme designed to obtain third party login information, including usernames and passwords. Respondent’s phishing additionally shows it acted in bad faith under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (defining “phishing” as using various methods to “trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website so that it might fraudulently acquire personal information from the complainant’s clients).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeplus.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 9, 2013
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