Skype Limited v. China Online Limited / ZHANG Gangjian
Claim Number: FA1012001362243
Complainant is Skype Limited (“Complainant”), represented by Don C. Moody of Genga & Associates, P.C., California, USA. Respondent is China Online Limited / ZHANG Gangjian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skypechina.com> and <chinaskype.net>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2010; the National Arbitration Forum received payment on December 7, 2010.
On December 8, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <skypechina.com> and <chinaskype.net> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. 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 December 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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@skypechina.com, postmaster@chinaskype.net. Also on December 9, 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 January 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skypechina.com> and <chinaskype.net> domain names are confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skypechina.com> and <chinaskype.net> domain names.
3. Respondent registered and used the <skypechina.com> and <chinaskype.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skype Limited, is owner of the SKYPE mark and has used this mark since 2003 in connection with its software which allows users to communicate over the Internet and mobile devices, a function known as Voice Over Internet Protocol (“VoIP”). Complainant holds trademark registration of its SKYPE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,005,039 filed January 15, 2004; issued October 4, 2005).
Respondent, China Online Limited / ZHANG Gangjian, registered the disputed domain name <chinaskype.net> on June 13, 2007. The disputed domain name <skypechina.com> was registered on May 8, 2004, however, Respondent did not acquire the domain name until 2008. Respondent uses the disputed domain names to operate websites to promote Respondent’s China Online Limited company and feature an extensive domain name portfolio.
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 holds a trademark registration with the USPTO for its SKYPE mark (Reg. No. 3,005,039 filed January 15, 2004; issued October 4, 2005). The Panel finds that Complainant has established rights in its SKYPE mark dating back to January 15, 2004 under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s SKYPE mark. The disputed domain names both incorporate Complainant’s mark in its entirety and differ only by the addition of the geographic term “China” and the addition of the generic top-level domains (“gTLD”) “.com” and “.net.” The Panel finds that the addition of a geographic term does not properly distinguish the disputed domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also finds that the addition of a gTLD is not a sufficient change to avoid a finding of confusing similarity to Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s SKYPE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel established that once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. Here, Complainant has established a prima facie showing in support of its allegations. Respondent failed to respond to the Complaint, therefore, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant maintains that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “China Online Limited / ZHANG Gangjian,” which is not similar to the disputed domain names. Complainant asserts that it has not given any permission or authorization to Respondent to use its SKYPE mark in the disputed domain names. The Panel also finds no additional evidence in the record that would support a finding that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under 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); M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the disputed domain names to operate a website which promotes and advertises its “China Online Limited” business and displays an extensive domain name portfolio. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to host a website unrelated to Complainant’s business for its own benefit, is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
The disputed domain names resolve to a website which advertises Respondent’s business and lists an extensive domain name portfolio. Internet users searching for Complainant’s communication services may instead find Respondent’s website as a result of Respondent’s use of the confusingly similar disputed domain names. Users may then become confused as to Complainant’s sponsorship of, or association with, the disputed domain name, resolving website, and services offered. Respondent attempts to profit from this confusion through the promotion of its own business on the resolving website. The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith use and registration 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); see also America Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
The Panel finds that Policy 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypechina.com> and <chinaskype.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 17, 2011
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