Microsoft Corporation and Skype v. Majed Alsmashal
Claim Number: FA1404001556747
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Majed Alsmashal (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com>, registered with GoDaddy.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 April 30, 2014; the National Arbitration Forum received payment on April 30, 2014.
On April 30, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 May 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@skypehelp.com, postmaster@oldskype.com, postmaster@emoticonsskype.com, and postmaster@skype4arab.com. Also on May 2, 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 May 28, 2014, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant’s company, founded in 1975, 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.
Complainant began using the SKYPE trademark in 2003 in connection with real time instant messaging and voice communication technology over the Internet. Complainant’s SKYPE trademark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039, registered Oct. 4, 2005).
Respondent’s <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com> domain names are confusingly similar to Complainant’s SKYPE mark. Respondent’s disputed domain names incorporate Complainant’s SKYPE mark in its entirety, with the addition of the generic or descriptive terms “help,” “old,” “emoticons,” or “4arab.” Respondent’s disputed domain names all contain the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com> domain names. Respondent is not commonly known by the disputed domain names or by Complainant’s SKYPE mark. The WHOIS information for the disputed domain names lists Respondent as “Majed Alsmashal.” Respondent is not affiliated with Complainant in any way. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent’s <skypehelp.com> domain name resolves to a website displaying significant information regarding Complainant’s SKYPE product and includes a copyright notice that states, “SKYPE is a registered trademark of Skype Limited” without qualifying the website as belonging to Respondent. There is a “Contact Us” tab featured on Respondent’s resolving website that redirects internet users to <skype.com> furthering the illusion that the website is actually operated by Complainant when it is not. Additionally, Respondent also features advertisements for Vonage and other unrelated companies. Respondent’s <oldskype.com> domain name resolves to a website prominently displaying Complainant’s SKYPE logo and other Microsoft marks such as WINDOWS. Respondent’s resolving website also contains links back to <skypehelp.com> and <emoticonsskype.com>. Respondents website features advertisements for third-party services that are unrelated to Complainant and also competes with Complainant. Respondent’s <emoticonsskype.com> domain name displays advertisements for third-parties that are unrelated to Complainant, including telephone service providers such as “Cbeyond” and “Vontage.” As with the other disputed domain names, Respondent is presumably collecting pay-per-click revenue from the displayed advertising. Respondent’s <skype4arab.com> domain name resolves to a website displaying the SKYPE logo and containing advertisements for third-party goods and services including “Vonage,” and “PlayStation” which are completely unrelated to Complainant. Respondent’s resolving website additionally states “Skype is a registered trademark of Skype Limited.” Respondent uses the disputed domain names in order to attempt to pass itself off as Complainant.
Respondent registered and is using the <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com> domain names in bad faith.
Respondent has registered at least four domain names incorporating variants of Complainant’s SKYPE trademark, thereby indicating a pattern of bad faith registrations. Respondent uses the disputed domain names to promote competing telecommunication services, thereby disrupting Complainant’s business. Respondent is creating the false impression of websites that originate with or are sponsored by Complainant. Respondent is attempting to commercially benefit, unfairly and opportunistically, from the goodwill association with Complainant’s famous mark.
Respondent not only knew of Complainant and Complainant’s famous SKYPE mark when Respondent registered the disputed domain names, but Respondent intentionally adopted domain names incorporating Complainant’s trademark to create an association with Complainant and its products and services.
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.”
Here, Complaints “can be viewed as a single person or entity because Complainant Skype is a wholly-owned subsidiary of Complainant 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. Abdu lSalam / jus2communications, FA1513504 (Nat. Arb. Forum September 9, 2013)
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 names after Complainant acquired trademark rights in SKYPE.
The websites addressed by the at-issue domain name use Complainant’s trademarks, logos and trade dress.
Respondent’s at-issue domain name is used to promotion products and 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 names each combine Complainant’s SKYPE mark in its entirety with one of the generic terms “help,” “old,” “emoticon,” or “4arab” and has the top level domain name “.com” appended thereto. Respondent’s addition of generic terms to Complainant’s trademark does not differentiate any of the at-issue domain names from Complainant’s SKYPE mark, and the addition of the “.com” top level domain name is irrelevant to the Panel’s analysis. Accordingly, the Panel concludes that Respondent’s at-issue domain names are each 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 “Majed Alsmashal.” 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. 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 any of 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).
Furthermore, Respondent’s <skypehelp.com> domain name resolves to a website displaying significant information regarding Complainant’s SKYPE product and includes a copyright notice that states, “SKYPE is a registered trademark of Skype Limited.” Additionally, there is no indication on the <skypehelp.com> website suggesting that the website belongs to Respondent, but there is a “Contact Us” tab that directs internet users to <skype.com>. Respondent evidently employs the link to feign that the website is operated by or affiliated with Complainant, when it is not. Respondent also features advertisements for unrelated competing companies. Next, Respondent’s <oldskype.com> domain name addresses a website prominently displaying Complainant’s SKYPE logo and other Microsoft marks such as its famous WINDOWS trademark. Respondent’s <oldskype.com> website also contains links back to <skypehelp.com> and <emoticonsskype.com>. The <oldskype.com> website features advertisements for third-party services that are unrelated to Complainant but nevertheless compete with Complainant. Similarly, Respondent’s <emoticonsskype.com> domain name displays advertisements for competing third-parties, including telephone service providers such as “CBeyond” and “Vonage.” As with Respondent’s other at-issue websites, Respondent is presumably collecting pay-per-click revenue. Finally, Respondent’s <skype4arab.com> domain name addresses a website again displaying the SKYPE logo and containing advertisements for third-party goods and services such as “Vonage,” and “PlayStation” which are unrelated to Complainant. . Respondent’s <skype4arab.com> website also states “Skype is a registered trademark of Skype Limited.”
Using a confusingly similar domain name to display links to Complainant’s competition 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).
Moreover, Respondent’s use of the at-issue domain names to pass itself off as Complainant by displaying Complainant’s SKYPE mark and messages including “SKYPE is a registered trademark of Skype Limited” in no way indicates Respondent having rights or interests in the domain names pursuant to either Policy ¶ 4(c)(i) or 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).”).
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 is using the <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com> domain names in bad faith.
First, Respondent registered at least four domain names incorporating variants of Complainant’s SKYPE trademark, thereby suggesting a pattern of bad faith registrations under Policy ¶ 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)).
Second, Respondent uses the at-issue domain names to promote services which compete with Complainant’s services. Doing so demonstrates Respondent’s bad faith under Policy ¶4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007)(finding that respondent utilized the disputed domain name, <usaa-insurance.net>, to resolve to a website that featured links to third-party competitors of Complainant and thereby established that Respondent registered and was using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii)).
Third, Respondent intentionally creates the false impression that each of the at-issue websites are sponsored by or affiliated with Complainant, and uses Complainant’s SKYPE mark to attract Internet traffic and commercially profit through pay-per-click links. Thereby, Respondent seeks to commercially benefit, unfairly and opportunistically, from the goodwill association with Complainant’s SKYPE trademark. Using the domain names in this manner demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006)(finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Respondent’s use of Complainant’s SKYPE mark in conjunction with the at-issue domain names and further use of the SKYPE mark and logo on corresponding websites shows that Respondent is attempting to pass itself off as Complainant and again demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). See 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”).
Finally, Respondent registered each of the <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com> domain names with actual knowledge Complainant’s SKYPE trademark. Respondent’s knowledge of Complainant’s SKYPE mark is inferred from the notoriety of the mark, as wells as from Respondent’s scheme to improperly exploit the mark as discussed above. Under the circumstances, it is inconceivable that Respondent was unaware of Complainant’s mark when it registered each of the four at-issue domain names. Respondent’s actual knowledge of Complainant’s rights in the SKYPE mark prior to registering the domain names further urges that Respondent registered such domain names 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypehelp.com>, <oldskype.com>, <emoticonsskype.com>, and <skype4arab.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 28, 2014
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