Microsoft Corporation and Skype v. Ryan G Foo / PPA Media Services
Claim Number: FA1401001537663
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com>, registered with Internet.Bs Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2014; the National Arbitration Forum received payment on January 7, 2014.
On January 10, 2014, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.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 Respondent 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 January 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2014 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@eskype.com, postmaster@skypec.com, postmaster@skypelog.com, postmaster@skypemate.com, and postmaster@www-skype.com. Also on January 13, 2014, 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 February 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Founded in 1975, Microsoft Corporation is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Skype is a wholly-owned subsidiary of Microsoft Corporation. As used herein, “Complainant” means Microsoft Corporation, Skype, and their respective licensees, related companies, and predecessors in interest.
Complainant owns numerous proprietary trademarks for its goods and services, including the world famous trademark SKYPE. Complainant began using the SKYPE trademark in 2003, well prior to registration of any of the disputed domains, in connection with real time instant messaging and voice communication technology over the Internet (“VOIP”). By 2004, the SKYPE® service was reported to have more than 10 million users in 212 countries, and to be gaining 70,000 users per day. By 2010, the SKYPE service had 170 million connected users who conducted over 207 billion minutes of voice and video conversations using the service.
Through longstanding, extensive and widespread use, promotion and publicity, the SKYPE trademark has become famous. See e.g. Microsoft Corp. v. Arruda, FA1107001396768 (Nat. Arb. Forum Aug 9, 2011)(referencing Complainant’s “famous MICROSOFT and SKYPE marks”); and Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Nat. Arb. Forum May 6, 2013)(“Complainant’s trademark is famous and has become familiar in the minds of consumers worldwide”).
The SKYPE trademark is registered in the United States and elsewhere around the world. (U.S. Registration No.’s 3,005,039 and 3,263,302). “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007)(“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain names are confusingly similar to Complainant’s SKYPE trademark.
The disputed domain names incorporate Complainant’s famous SKYPE trademark in its entirety, adding only a single letter, “c” or “e,” the generic words “mate” or “log,” or the prefix “www” which stands for World Wide Web. One domain also adds a hyphen. All of the domains add the generic TLD .com.
Respondent has undoubtedly chosen the domain names <eskype.com>, <skypec.com> and <www-skype.com> because they are predictable misspellings and mis-typings of the URL www.skype.com. Deliberate registration of a domain name that constitutes a common mistyping of a famous mark is known as “typo-squatting.” These domain names were chosen by Respondent precisely because they are confusingly similar to and easily mistaken for Complainant’s SKYPE trademark.
ICANN Panelists have invariably found that adding “www” or a single letter to a trademark does not avoid confusion. See e.g., Bank of America Corp. v. InterMos, FA0006000095092 (Nat. Arb. Forum August 1, 2000)(finding <wwwbankofamerica.com> confusingly similar to BANK OF AMERICA and noting that adding “www” to a mark merely “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); The Neiman Marcus Group, Inc. v. S1A, FA0210000128683 (Nat. Arb. Forum Dec. 6, 2002)(finding <wwwneimanmarcus.com> confusingly similar to NEIMAN-MARCUS and noting that “[t]he ‘www’ prefix does nothing to distinguish the domain name, but rather duplicates a common typing error that results from typing a Uniform Resource Locator that accidentally omits the period between the World Wide Web abbreviation (www) and the second-level domain name”); Bloomberg L.P. v. Ballic Consultants Ltd., FA 095834 (Nat. Arb. Forum Nov. 20, 2000)(noting that "[t]he variation or addition of a single letter or generic word in [c]omplainant's mark is precisely what the "Identical or Confusingly Similar" language of the [UDRP] envisions"); and Microsoft Corp. and Skype v. Song Bin, FA1305001502643 (Nat. Arb. Forum July 2, 2013)(finding <skyped.com> confusingly similar to SKYPE and noting “Respondent’s addition of the letter ‘d’ to Complainant’s mark does not differentiate the domain name from Complainant’s SKYPE mark.”).
Likewise, adding generic terms like “mate” or “log” to Complainant’s well-known and distinctive mark does not avoid confusion. See e.g. Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(finding <skypehotgirls.com> confusingly similar to SKYPE and noting that “[a]dding a generic/descriptive term or terms and a generic top-level domain (‘gTLD’) to Complainant’s trademark does not sufficiently distinguish the at-issue domain name from Complainant’s mark pursuant to Policy ¶4(a)(i)”); and Seiko Epson Corp. et al. v. Mats Elmstrom Spas, FA1003001314045 (Nat. Arb. Forum April 28, 2010)(finding <epsonmoviemate.com> confusingly similar to EPSON and awarding transfer).
Likewise, “addition of a hyphen or a top level domain name are never significant changes to a trademark under the Policy.” Microsoft Corp. v. The Private Whois Privacy Svc., FA1302001484502 (Nat. Arb. Forum March 24, 2013).
Plainly, the disputed domain names are confusingly similar to Complainant’s famous SKYPE trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s SKYPE mark, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Ryan G Foo / PPA Media Services. Respondent is not commonly known by Complainant’s SKYPE trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s SKYPE trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004)(finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)(finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
Landing pages for the disputed domain names present a pop up indicating, “WARNING! You should update your Media Player Immediately.” The next screen presents a software installation/download button. The fine print at the bottom of the install screen indicates that the installer carries a payload of additional “free popular software that you may be interested in” including “toolbars, browser add-ons, game applications, anti-virus applications, and other types of applications.” The disputed domains also generate malware warnings. The disputed domain names also intermittently redirect to Complainant’s web site, skype.com.
Respondent’s use of domain names that are confusingly similar to Complainant’s SKYPE trademark to attract consumers to unrelated software downloads and 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). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002)(finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003)(finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)(no rights or legitimate interest found where respondent did not apply for permission or license from complainant to use mark, nor was respondent commonly known by the mark).
Furthermore, using a domain containing Complainant’s famous mark as a means to lure visitors to potentially malicious sites is not a legitimate use. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sep 23, 2010)(“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011)(finding that use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv)); and Grappone TS, Inc. v. Zhu, FA 1424557 (Nat. Arb. Forum, Feb. 29, 2012)(finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)).
Furthermore, Respondent has registered the disputed domain names to take advantage of innocent typographical errors made by Internet users seeking Complainant’s web site, a practice known as “typo-squatting.” This is not a legitimate use, and Respondent’s use of this method indicates that Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (typo-squatting is evidence that Respondent lacks rights or legitimate interests in the disputed domain names); and IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting”).
Finally, redirecting the disputed domains to Complainant’s own web site is not a legitimate or bona fide use. See e.g. The Office Club, Inc. and Office Depot, Inc. v. Lim Chu Ltd, FA1103001375599 (Nat. Arb. Forum March 30, 2011)(“The Panel finds that using a domain name that is identical to another’s mark to resolve to the trademark owner’s website does not amount to 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)”); Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002)(holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007)(finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”); and Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of [UDRP] ¶4(c)(i) or ¶4(c)(iii) . . .”).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain names in bad faith.
At the time that Respondent registered the disputed domain names,[1] Complainant’s SKYPE trademark was already famous and familiar to countless consumers worldwide. It is clear from the fact that Respondent registered at least five domains containing Complainant’s mark SKYPE and intermittently directs these domains to Complainant’s web site, that Respondent was not only familiar with Complainant’s SKYPE trademark at the time of registration of these domain names, but intentionally adopted domain names incorporating Complainant’s trademark in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“…it is inconceivable that Respondent could have registered the <skypehotgirls.com> domain name without actual knowledge of Complainant's rights in the [SKYPE] mark… Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”); Microsoft Corp. v. Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)(finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Furthermore, by promoting downloads of unrelated software from unaffiliated businesses using Complainant’s well-known SKYPE trademark, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); Microsoft Corp. and Skype v. Fundacion Private Whois / Domain Administrator, FA1305001502022 (Nat. Arb. Forum July 12, 2013)(“ Respondent’s efforts to attract users for commercial gain from affiliate, adware, and/or malware revenue is evidence of bad faith pursuant to Policy ¶4(b)(iv)”); and G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Furthermore, Respondent is disrupting Complainant’s business by causing the public to associate Complainant with Respondent’s deceptive download scheme, malware warnings and potentially malicious websites. Respondent’s domain names’ strong association with Complainant’s famous trademark provides an air of false legitimacy which may fool consumers into authorizing malware downloads. This is further evidence of bad faith use and registration under the Policy. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sept. 23, 2010)(finding bad faith registration and use of a contested domain name under Policy ¶4(b)(iv) where the domain name resolved to a website that distributed malware); Microsoft Corp. v. ABK et al., FA1211001473573 (Nat. Arb. Forum Jan 21, 2013)(“Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s [sic] with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”); Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004)(use of the disputed domain name for fraudulent purposes constituted bad faith); and Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006)(finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
Even if the disputed domains merely redirect to Complainant’s official site, this amounts to bad faith under Policy ¶4(a)(iii). The Office Club, Inc. and Office Depot, Inc. v. Lim Chu Ltd, FA1103001375599 (Nat. Arb. Forum March 30, 2011). See also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007)(finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").
Furthermore, Respondent has engaged in the practice of typo-squatting by intentionally registering domain names that are misspellings of Complainant’s SKYPE trademark, or associated URL’s, with the intent to divert Internet users for commercial gain. Previous Panels have found that typo-squatting constitutes bath faith registration and use pursuant to the Policy. See Yahoo, Inc.! v. Zviely, et al., FA 162060 (Nat. Arb. Forum July 24, 2003)(typosquatting constitutes bad faith registration and use); Nat’l Ass’n of Prof’l Basketball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)(“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); and L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001)(finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).
Furthermore, Respondent has registered at least five domains incorporating variants of Complainant’s SKYPE trademark. This reflects a pattern of conduct that has deprived the trademark owner from reflecting its mark in a corresponding domain name, and therefore constitutes bad faith under 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000)(finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶4(b)(ii)); EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005)(finding that the respondent’s registration of three domains was sufficient to constitute a pattern pursuant to Policy ¶4(b)(ii)) and Microsoft Corp. v. Eliran Mishal, FA1101001370342 (Nat. Arb. Forum March 16, 2011)(registration of nine domain names incorporating Complainant’s mark is evidence of a pattern of bad faith registration and use under Policy ¶4(b)(ii)).
Furthermore, Respondent has been previously found to have acted in bad faith in numerous adverse UDRP decisions including but not limited to: Homer TLC, Inc. v PPA Media Services / Ryan G Foo, FA1111001416637 (Nat. Arb. Forum Jan 13, 2012)(wwwhomedepotrebates.com); American Sports Lic., Inc. v PPA Media Services / Ryan G Foo, FA1201001426016 (Nat. Arb. Forum March 2, 2012)(discksportinggoods.com); American Sports Lic., Inc. v PPA Media Services / Ryan G Foo, FA1201001426024 (Nat. Arb. Forum March 6, 2012) (dicksportgoods.com); Univision Comm. Inc. v PPA Media Services / Ryan G Foo, FA1202001429880 (Nat. Arb. Forum April 11, 2012)(elgordoylaflaca.com); Univision Comm. Inc. v PPA Media Services / Ryan G Foo, FA1202001429889 (Nat. Arb. Forum April 11, 2012) (primerimpacto.com); AOL Inc. v PPA Media Services aka Ryan G Foo, FA1203001432688 (Nat. Arb. Forum April 24, 2012)(classicmapquest.com); Strathmore Partners LP v PPA Media Services / Ryan G Foo, FA1204001438428 (Nat. Arb. Forum May 21, 2012)(bjsclub.com); FANDANGO, LLC v PPA Media Services / Ryan G Foo, FA1204001439412 (Nat. Arb. Forum June 4, 2012)(fangango.com, fandingo.com, fandadgo.com, fanadango.com); Euromarket Designs, Inc. d/b/a Crate & Barrel v. PPA Media Services / Ryan G Foo, FA1204001440326 (Nat. Arb. Forum May 28, 2012)(createandbarrel.com, creatandbarrel.com, crateandbareel.com, craateandbarrel.com); and Getty Images (US), Inc. v PPA Media Services / Ryan G Foo, FA1205001443660 (Nat. Arb. Forum July 2, 2012)(istockphot.com, istochphoto.com, istockohoto.com).
This evidences a pattern of conduct and is further evidence of bad faith. See Vera Bradley, Inc. v. PPA Media Services / Ryan G Foo, FA1308001516883 (Nat. Arb. Forum Oct. 16, 2013)(finding that Respondent “is a recalcitrant, serial cybersquatter” and that “Respondent’s multiple prior adverse UDRP decisions suggest[ed] bad faith registration and use in the instant proceeding under Policy ¶4(b)(ii)”); Provide Commerce, Inc. v. Jardimar Holdings Corp / Charingola, FA1305001502077 (Nat. Arb. Forum June 27, 2013)(“the existence of previous UDRP decisions where Respondent was found to have registered a domain name in bad faith reveals Respondent’s pattern of cybersquatting behavior”); Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003)(finding bad faith pursuant to Policy ¶4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); and Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Based on the foregoing, Respondent has registered the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant is a worldwide software company. Complainant began using the SKYPE trademark in 2003, well prior to registration of any of the disputed domains, in connection with real-time instant messaging and voice communication technology over the Internet (commonly called VOIP). Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the SKYPE mark (e.g., Reg. No. 3,005,039, registered October 4, 2005). Respondent appears to operate in Panama. However, Policy ¶4(a)(i) does not require Complainant to register its mark in the country where Respondent operates as long as it can establish rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant’s registration of the SKYPE mark with the USPTO adequately proves its rights in the mark pursuant to Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
Complainant claims Respondent has chosen the domain names <eskype.com> and <skypec.com> because they are predictable misspellings and mis-typings of the URL <www.skype.com>. Respondent’s misspelling of Complainant’s SKYPE mark is inconsequential to a Policy ¶4(a)(i) analysis. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). Respondent adds the “www” mark to its <www-skype.com> domain name. Respondent’s inclusion of “www” to a Complainant’s mark does not adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶4(a)(i). See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). Respondent’s adding of generic terms like “mate” or “log” to the <skypelog.com> and <skypemate.com> domain names to Complainant’s SKYPE mark does not adequately avoid confusion. Respondent’s addition of a generic term to Complainant’s mark does not adequately distinguish the disputed domain name from the mark according to Policy ¶4(a)(i). Respondent’s addition of a hyphen or top-level domain name are not significant changes to this trademark. Respondent’s addition of punctuation or a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶4(a)(i) determination. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”). Respondent’s <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names are confusingly similar to Complainant’s SKYPE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names. The WHOIS information identifies Respondent as “Ryan G Foo / PPA Media Services.” Respondent is not licensed by Complainant to use Complainant’s SKYPE trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel concludes Respondent is not commonly known by the <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names under Policy ¶4(c)(ii).
Each web landing page first presents a pop up indicating “WARNING! You should update your Media Player Immediately.” Respondent’s next screen presents a software installation/download button. In fine print at the bottom of the install screen, language indicates the installer carries a payload of additional “free popular software that you may be interested in” including “toolbars, browser add-ons, game applications, anti-virus applications, and other types of applications.” Respondent’s <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names also generate malware warnings. A respondent’s use of a disputed domain name to generate malicious software is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website,…[which] may annoy or harm the users in some way,…is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶4(c)(i) or (iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has registered at least five domains incorporating variants of Complainant’s SKYPE trademark. Complainant argues this reflects a pattern of conduct that has deprived the trademark owner from reflecting its mark in a corresponding domain name, constituting bad faith under Policy ¶4(b)(ii). This argument is not persuasive because Complainant has not been prevented from using its mark in a domain name. Complainant has registered Skype.com. Therefore, Respondent has not registered the <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names in bad faith under Policy ¶4(b)(ii).
Complainant claims Respondent is disrupting Complainant’s business by causing the public to associate Complainant with Respondent’s deceptive download scheme, malware warnings and potentially malicious websites. Each landing page first presents a pop up indicating “WARNING! You should update your Media Player Immediately.” Respondent is using the <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names to generate malware and deliver it to unsuspecting visitors. This disrupts Complainant’s business, showing Respondent’s bad faith under Policy ¶4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant claims Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark. Respondent promotes downloads of unrelated (malicious) software from unaffiliated business using Complainant’s well-known SKYPE trademark. Respondent’s <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names also generate malware warnings. In Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010), the panel found that disputed domain names which distribute malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). This Panel agrees and holds Respondent’s use of the disputed domain names to deliver malware attracts Internet users to its own website for commercial gain, showing bad faith use and registration under Policy ¶4(b)(iv).
Complainant claims Respondent registered the <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names knowing Complainant’s SKYPE trademark was already famous and familiar to countless consumers worldwide. It is clear from the fact Respondent registered at least five domains containing Complainant’s mark SKYPE and intermittently directs these domains to Complainant’s website that Respondent actually knew about Complainant’s SKYPE trademark at the time of registration of these domain names. Respondent intentionally adopted domain names incorporating Complainant’s trademark to create an association with Complainant and its products and services. This Panel finds Respondent had actual knowledge of Complainant’s SKYPE mark and registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <eskype.com>, <skypec.com>, <skypelog.com>, <skypemate.com>, and <www-skype.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, February 10, 2014
[1] Where a domain name is transferred from one entity to another entity, this is treated as a fresh “registration” for the purposes of the Policy. See ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009).
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