Skype Limited v. Renat Minikhanov / System Shock
Claim Number: FA 1356196
Complainant is Skype Limited (“Complainant”), represented by Jerl B. Leutz of Genga & Associates, P.C., California, USA. Respondent is Renat Minikhanov / System Shock (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <skypeaccess.com>, registered with DOMAINPEOPLE, INC.
The domain names at issue are <skypeplanet.com>, <skypewirelessphone.com>, <skypewirelessphones.com> and <skypewireless.net>, registered with TUCOWS, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2010; the National Arbitration Forum received payment on November 4, 2010.
On November 3, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <skypeplanet.com>, <skypewirelessphone.com>, <skypewirelessphones.com> and <skypewireless.net> domain names are registered with TUCOWS, INC. and that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 November 18, 2010, DOMAINPEOPLE, INC. confirmed by e-mail to the National Arbitration Forum that the <skypeaccess.com> domain name is registered with DOMAINPEOPLE, INC. and that Respondent is the current registrant of the names. DOMAINPEOPLE, INC. has verified that Respondent is bound by the DOMAINPEOPLE, 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 November 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2010 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@skypeaccess.com, postmaster@skypeplanet.com, postmaster@skypewirelessphone.com, postmaster@skypewirelessphones.com and postmaster@skypewireless.net. Also on November 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.)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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skypeaccess.com>, <skypeplanet.com>, <skypewirelessphone.com>, <skypewirelessphones.com> and <skypewireless.net> domain names are confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skypeaccess.com>, <skypeplanet.com>, <skypewirelessphone.com>, <skypewirelessphones.com> or <skypewireless.net> domain names.
3. Respondent registered and used the <skypeaccess.com>, <skypeplanet.com>, <skypewirelessphone.com>, <skypewirelessphones.com> and <skypewireless.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skype Limited, owns the exclusive rights to its SKYPE mark which it uses in connection with its software that enables voice and data communication over the Internet. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office for its USPTO mark (e.g., Reg. No. 3005039 issued Oct. 4, 2005).
Respondent, Renat Minikhanov / System Shock, registered the disputed domain names. The earliest registration was March 20, 2006. Respondent uses the disputed domain names as either a parked website or fails to make an active use of the sites.
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."
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.”).
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.
Complainant contends that it has established rights in the SKYPE mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient in establishing rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant holds numerous trademark registrations with the USPTO for its SKYPE mark (e.g., Reg. No. 3005039 issued Oct. 4, 2005). Therefore, the Panel finds that Complainant has established rights in the SKYPE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <skypeaccess.com>, <skypeplanet.com>, <skypewirelessphone.com>, <skypewirelessphones.com> and <skypewireless.net> domain names are confusingly similar to Complainant’s SKYPE mark. The disputed domain names all contain Complainant’s entire SKYPE mark, each adds terms descriptive of Complainant’s business (“access,” “planet,” “wireless phone,” “wireless phones” and “wireless”), and adds a generic top level domain (“gTLD”) “.com” or “.net.” Earlier panels have asserted that the addition of descriptive terms and a gTLD to a complainant’s mark do not sufficiently distinguish the disputed domain name from said mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel finds that the disputed domain names are all confusingly similar to Complainant’s SKYPE mark, pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden of proof shifts to the respondent to show that they have rights or legitimate interests under Policy 4(a)(ii). In this instance, the Panel finds Complainant to have made a prima facie case. Due to Respondent’s failure to respond to the complaint, the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
When there is no indication in the record to show that a respondent has been commonly known by a disputed domain name, previous panels have taken such as proof that such respondent lacks rights or legitimate interests in the disputed domains. In this case, the WHOIS information identifies the domain name registrant as “Renat Minikhanov / System Shock.” Complainant asserts that Respondent has never been authorized to use the SKYPE mark. There is no other evidence being set forth to indicate that Respondent is commonly known by any of the disputed domain names. Therefore, the Panel finds Respondent has not established any rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name).
For the <skypeaccess.com>, <skypeplanet.com>, <skypewirelessphone.com> and <skypewireless.net>domain names, Respondent fails to make an active use. When this is the case, the Panel finds that an inactive use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
For the <skypewirelessphones.com> domain name, Respondent maintains a parked website which displays links that compete with Complainant’s business. Complainant indicates that it is likely Respondent is profiting from such an arrangement. The Panel finds that parking does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent’s parking of the disputed domain names, constitutes a competing use, as the links resolve to competitors of Complainant. The Panel finds this to be a disruption of Complainant’s business and evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Given the uniqueness of the SKYPE mark, it is likely that Internet users will become confused as to any affiliation between Complaianant and Respondent when they visit any of the disputed domain names. Respondent likely profits from this confusion, as at least one of the disputed domain names is parked and contains links to sites of Complainant’s competitors. According, the Panel asserts that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeaccess.com>, <skypeplanet.com>, <skypewirelessphone.com>, <skypewirelessphones.com> and <skypewireless.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 28, 2010
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