Microsoft Corporation and Skype v. Ivan Vujic
Claim Number: FA1308001515805
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Ivan Vujic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypefreecredits.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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2013; the National Arbitration Forum received payment on August 21, 2013.
On August 22, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <skypefreecredits.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 August 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@skypefreecredits.com. Also on August 26, 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 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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.
Preliminary Issue: Multiple Complainants
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.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Complaint refers to the two entities Microsoft Corporation and Skype as a singular “Complainant,” as Skype is a wholly-owned subsidiary of Microsoft Corporation.
In light of the foregoing, the Panel finds the two Complainants have a sufficient nexus under Paragraph 1(e) of the Forum’s Supplemental Rule and decides to treat the two Complainants as a single entity in this proceeding. Throughout the below decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant began using the SKYPE mark in 2003 in connection with real time instant messaging and voice communication technology over the Internet.
i. By 2010, Complainant’s SKYPE service had 170 million connected users who conducted over 207 billion minutes of voice and video conversations using the service.
ii. Complainant’s SKYPE users can purchase “Skype Credit” for use to make calls and use other services.
b. Complainant owns trademark registrations for its SKYPE mark throughout the world, including registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039 registered October 4, 2005).
c. The disputed domain name is confusingly similar to Complainant’s SKYPE trademark.
i. Respondent’s domain name incorporates Complainant’s SKYPE mark in its entirety, adding only the phrase “free credits,” which is a direct reference to the Skype Credit system, and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by Complainant’s SKYPE trademark.
i. The WHOIS information identifies the domain name’s registrant as “Ivan Vujic.”
ii. Respondent is not affiliated with Complainant in any way.
iii. Respondent is not licensed by Complainant to use Complainant’s SKYPE trademark.
iv. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
b. Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
i. The landing page for the disputed domain prominently displays Complainant’s Skype logos, and uses Complainant’s SKYPE and MICROSOFT marks to identify Respondent and promote an offer for “Skype Free Credits.” See Complainant’s Exhibit E. Respondent’s use of Complainant’s logos and marks to identify itself is calculated and likely to confuse and mislead the public as to the source of Respondent’s site and constitutes passing off.
ii. Visitors to Respondent’s site that choose a free credit denomination are presented with a pop up asking them to “complete one short offer” to proceed. See Complainant’s Exhibit E. A list of offers having no relationship to Complainant is then presented, including offers for goods that compete with Complainant, such as a third-party media player. Respondent’s use of a domain name that is confusingly similar to Complainant’s SKYPE trademark to attract consumers to unrelated offers is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
3. Policy ¶ 4(a)(iii)
a. Respondent’s promotion of a competing media player under the SKYPE trademark diverts and disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
b. By identifying itself as Complainant and promoting the products and services of unaffiliated third parties using Complainant’s marks, along with a dubious promise of “free” Skype credits, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s marks. This diversionary conduct shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
c. Respondent had knowledge of Complainant and its SKYPE mark at the time Respondent registered the disputed domain name.
i. At the time that Respondent registered the disputed domain name, Complainant’s SKYPE trademark was famous and familiar to countless consumers worldwide.
ii. Respondent also adopted Complainant’s Skype logos and has included Complainant’s MICROSOFT mark on its website.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <skypefreecredits.com> domain name on March 5, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 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 decides 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 draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel accepts 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.”).
Complainant states that it began using the SKYPE mark in 2003 in connection with real time instant messaging and voice communication technology over the Internet. According to Complainant, its SKYPE service had 170 million connected users who conducted over 207 billion minutes of voice and video conversations using the service by 2010. Complainant also provides evidence of its registration of the SKYPE mark with the USPTO (e.g., Reg. No. 3,005,039 registered October 4, 2005). Previous panels have agreed that registration of a mark with the USPTO confers rights pursuant to Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”). The Panel holds that Complainant has established rights in the SKYPE mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides outside of the United States. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that Respondent’s <skypefreecredits.com> domain name is confusingly similar to Complainant’s SKYPE trademark under Policy ¶ 4(a)(i). Complainant notes that the disputed domain name incorporates Complainant’s SKYPE mark in its entirety, adding only the phrase “free credits” and the gTLD “.com.” Complainant elaborates that the phrase “free credits” is a direct reference to the Skype Credit system, which allows Complainant’s users to purchase “Skype Credit” for use in making calls and other services. The Panel agrees that Respondent’s registration of a domain name which differs from Complainant’s mark by only a descriptive phrase and gTLD does not defeat a claim of confusing similarity under Policy ¶ 4(a)(i).
See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 alleges that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant first claims that Respondent is not commonly known by Complainant’s SKYPE trademark. Complainant points to the WHOIS information, which identifies Respondent as “Ivan Vujic.” Complainant claims that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services, and Respondent is in fact not affiliated with Complainant in any way. Complainant further claims that it has not licensed Respondent to use its SKYPE trademark. In light of the foregoing, the Panel concludes that Respondent is not commonly known by the <skypefreecredits.com> domain name within the meaning 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further alleges that Respondent has not used the <skypefreecredits.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant claims that Respondent uses the disputed domain name in an attempt to pass itself off as Complainant by using Complainant’s Skype logos and SKYPE and MIRCOSOFT marks to identify itself at the resolving website. See Complainant’s Exhibit E. Complainant claims that visitors to Respondent’s site are also presented with an offer for “Skype Free Credits,” and are then presented with a pop-up asking them to “complete one short offer” to proceed after choosing a free credit denomination. Complainant provides that a list of offers having no relationship to Complainant is then presented, including offers for goods that compete with Complainant such as a third-party media player. See id. Complainant argues that Respondent’s use of a domain name that is confusingly similar to Complainant’s SKYPE trademark, as well as Respondent’s use of Complainant’s logos and marks to identify itself, is calculated and likely to confuse and mislead the public as to the source of Respondent’s site. The Panel finds that Respondent’s attempt to pass itself off as Complainant in order to extend to consumers offers for goods, some of which compete with Complainant, is not a use of the <skypefreecredits.com> domain name that constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> 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).”); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant contends that Respondent’s promotion of a competing media player under the SKYPE trademark at the <skypefreecredits.com> domain name diverts and disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). Complainant posits that Respondent’s registration of a confusingly similar domain name increases the likelihood that Internet users will inadvertently visit Respondent’s website when they had in fact intended to visit Complainant’s site. Complainant argues that by presenting these misdirected visitors with offers for products that compete with those offered by Complainant, Respondent has disrupted Complainant’s business in bad faith. Past panels have recognized such competing conduct as indicative of bad faith. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel likewise finds that Respondent registered and used the <skypefreecredits.com> domain name in bad faith under Policy ¶ 4(b)(iii) by improperly disrupting Complainant’s business.
Complainant next contends that Respondent’s conduct shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Complainant asserts that by identifying itself as Complainant and promoting the products and services of unaffiliated third parties using Complainant’s marks, along with a dubious promise of “free” Skype credits, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s marks. The panel in Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) found that if a respondent profits from its diversionary use of the complainant's mark when the contested domain name resolves to a commercial website, and the respondent fails to contest the complaint, the respondent can be held to be using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). The Panel here infers that Respondent generates a commercial gain through its operation of the <skypefreecredits.com> domain name. As such, the Panel finds that Respondent registered and uses this confusingly domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by attempting to achieve commercial gain by creating a false association with Complainant.
Complainant additionally contends that Respondent had knowledge of Complainant and its SKYPE mark at the time Respondent registered the disputed domain name, as Complainant’s SKYPE trademark was already famous and familiar to countless consumers worldwide at that time. Complainant states that Respondent also adopted Complainant’s Skype logos and includes Complainant’s MICROSOFT mark on its website, which Complainant views as additional evidence that Respondent registered the disputed domain name with knowledge of Complainant and its rights. The panel in Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) found that the respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of [c]omplainant's mark when registering the disputed domain name." The Panel similarly finds that Respondent in this case registered the <skypefreecredits.com> domain name with knowledge of Complainant’s SKYPE mark, and thus the Panel holds that Respondent registered the <skypefreecredits.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <skypefreecredits.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: September 26, 2013
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