national arbitration forum

 

DECISION

 

Shawn Harris v. SkyTel

Claim Number: FA1101001367877

 

PARTIES

Complainant is Shawn Harris (“Complainant”), represented by Rob Kosier, Nevada, USA.  Respondent is SkyTel (“Respondent”), represented by Wayne M. Serra of ULMER & BERNE LLP, Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skywire.com>, registered with NETWORK SOLUTIONS, LLC.

 

PANEL

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.

 

Charles A. Kuechenmeister

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2011; the National Arbitration Forum received payment on January 17, 2011.

 

On January 18, 2011, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <skywire.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name.  NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 February 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2011 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@skywire.com.  Also on February 2, 2011, 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.

 

A timely Response was received and determined to be complete on February 23, 2011.

 

On March 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.

 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Skywire Media, Inc.

 

PARTIES' CONTENTIONS

A.   Complainant

1.         Skywire Media, Inc. (“Skywire Media”) has trademarked the name SKYWIRE in International Class 35 for advertising and marketing services by means of electronic transmission of messages and data, namely text messages, ring tones and voice recordings, image messages, postcards and group messages to mobile communications devices (Reg. No. 3,235,622 Registered May 1, 2007).

 

2.         Skywire Media is also conducting its business under the name SKYWIRE.

 

3.         The disputed domain name, <skywire.com> (the “Domain Name”) is not being used to offer goods or services or hosting an active website or conducting any business.

 

4.         Respondent is not known by the name SKYWIRE.  Its name is SkyTel.  There is no mention of the name SKYWIRE on any Respondent company information on the company’s website, and there are no email addresses with SKYWIRE or products with that name.  Its administrative contact, John Nagel, works for American Messaging.  There is no mention of SKYWIRE on any of that company’s information on the company website or Facebook page.  There is no mention of any American Messaging products or services with the name SKYWIRE.

 

5.         Respondent has not trademarked the name SKYWIRE.

 

6.         When Skywire Media offered to purchase the Domain Name for $5,000 Respondent referred it to Mr. Nagel, who advised that Respondent believed that it was worth more than that, mentioning the range of $40,000 to $50,000.  Mr. Nagel advised Skywire Media to submit its best offer.

 

7.         American Messaging is a competitor of Skywire Media, and is keeping the Domain Name to prevent Skywire Media from using its trademarked name.

 

B.   Respondent

 

1.            Respondent is the operator of the SkyTel ® wireless messaging network.

 

2.            Complainant Shawn Harris has not demonstrated any interest he may have in the mark SKYWIRE.   His allegations and evidence all point to a company named Skywire Media, Inc. (Skywire Media) as the owner of that mark.

 

3.            The Domain Name consists of the common root words “sky” and “wire.”  Anyone is entitled to such common words, alone or in combination, in a domain name on a first-come, first-served basis, as long as there is no intent to target a trademark.

 

4.            Respondent first registered the Domain Name on June 24, 1998, more than seven years before Skywire Media’s stated first use of the trademark in 2005.  Skywire Media was not even in existence prior to its incorporation in November 2005.

 

5.            Respondent has registered and maintained a number of domain names which, like skywire.com, begin with the word “sky,” including skydial.com, skymail.com, skytell.com, skytext.net, skywired.com and others.  It has historically used the Domain Name to redirect traffic to its main website, which constitutes a bona fide offering of goods and services.  Its use of the Domain Name, and all the others beginning with the word “sky” fit within Respondent’s overall business activities.

 

6.            When Respondent registered the Domain Name it had no knowledge of Skywire Media or its trademark, neither of which even existed at that time.

 

7.            Respondent did not register the Doman Name with the intent to sell it to Complainant  or Skywire Media, to disrupt the business of Complainant or Skywire Media, or to confuse consumers seeking to find the website of Complainant or Skywire Media.

 

8.            Based upon Respondent’s registration of the Domain Name some seven years before Skywire Media’s incorporation and claimed first use of the mark SKYWIRE, it is impossible for its registration to have been in bad faith.

 

9.            Based upon this, and upon the fact that the Complainant Shawn Harris has no interest whatever in the SKYWIRE mark, the Panel should find that Complainant is guilty of bad faith in bringing this proceeding and that the same constitutes an abuse of the administrative proceeding.  Complainant is guilty of reverse domain name hijacking.

 

DISCUSSION AND FINDINGS

 

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.

 

Identical and/or Confusingly Similar

 

The Complainant in this case is named Shawn Harris, who has no apparent interest in the Domain Name.  Mr. Harris appears to be acting herein in a representative capacity for a corporation named Skywire Media, Inc.  His email address is given as sharris@skywiremedia.com, and his requested remedy is that the Domain Name be transferred not to him but to Skywire Media, Inc.  Email correspondence offered by Complainant in this case is to and from one Rob Kosier, whose title is Director of Product Development for Skywire Media, Inc., and Mr. Kosier is named in the Complaint as the person representing Complainant.  Based upon these facts the Panel elects to proceed on the basis that the Complainant real party in interest is Skywire Media, Inc., and not Shawn Harris.

Skywire Media, Inc. (“Skywire Media”) conducts business in electronic data and messaging services.  It holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its SKYWIRE mark (Reg. No. 3,235,622; filed February 13, 2006; issued May 1, 2007).  Pursuant to Policy ¶ 4(a)(i), a trademark registration with a governmental trademark authority is sufficient to establish its rights in a mark, going back to the date of filing.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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”).  Accordingly, the Panel finds that Skywire Media has established rights in the SKYWIRE mark through its registration with the USPTO, pursuant to Policy ¶ 4(a)(i).

Although Complainant makes no argument to this effect, the Panel finds that Respondent’s <skywire.com> domain name (the “Domain Name”) is identical to Skywire Media’s SKYWIRE mark under Policy 4(a)(i).  It contains Complainant’s entire SKYWIRE mark, merely adding the generic top-level domain (“gTLD”) “.com.”  The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).

            The Panel finds that the Domain Name is identical to the SKYWIRE mark for the purposes of Policy ¶4(a)(i), and that Skywire Media has substantial and demonstrated rights in that mark.

 

Rights or Legitimate Interests

 

If a complainant makes a prima facie case that the respondent lacks rights and legitimate interest in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interest.  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 interest 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.”).

            Skywire Media asserts, and the WHOIS information confirms, that the registrant of the domain name is “SkyTel,” an entity whose name is other than the Domain Name.  Skywire Media further asserts that there is no mention of the name SKYWIRE on any Respondent company information on that company’s website, and there are no email addresses with SKYWIRE, or products with that name.  Its administrative contact, John Nagel, works for an entity named American Messaging.  There is no mention of SKYWIRE on any of that company’s information on its website or Facebook page.  There is no mention of any American Messaging products or services with the name SKYWIRE.  Skywire Media further notes that Respondent has not trademarked the name SKYWIRE.  On these facts it appears that Skywire Media has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name.  It is thus incumbent upon Respondent to demonstrate that it does.

To this end, Respondent shows that, in addition to the Domain Name, it registered and has maintained a number of domain names, including “skydial.com,” “skymail.com,” “skytell.com,” “skytext.net,” “skywired.com” and others, that begin with the word “sky,” which is a part of Respondent’s business name, SkyTelRespondent uses and has used all of these domain names to redirect Internet traffic to its website, where it markets its goods and services.  This use fits within Respondent’s overall business activities and constitutes a bona fide offering of goods and services.

Respondent further shows that it registered the Domain Name in 1998, many years before Skywire Media registered its SKYWIRE mark, and before Skywire Media even became incorporated.  At the time it registered the Domain Name and began using it as described above, it had no knowledge of Skywire Media or its SKYWIRE mark.  Indeed, it could not have had such knowledge because neither Skywire Media nor its mark even came into existence until several years later.

The Panel concludes that Respondent is using the Domain Name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its dermapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services); see also Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).  Such uses apparently began long before Skywire Media was even organized, when it would therefore have been impossible for Respondent to have any notice whatever of Skywire Media’s interest in or claim to the mark SKYWIRE.

Based upon the foregoing, the Panel finds that Respondent has demonstrated that it has rights or legitimate interests in the Domain Name pursuant to Policy  ¶ 4(c)(i).


Registration and Use in Bad Faith

 

            In light of the Panel’s finding and determination with respect to the Rights or Legitimate Interests element of the Complaint, the Panel declines to review or comment upon the allegations regarding bad faith.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).

 

DECISION

Skywire Media having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <skywire.com> domain name remain with Respondent.

 

REVERSE DOMAIIN NAME HIJACKING

 

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this proceeding.  Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <skywire.com> domain name, of its rights to use the Domain Name.  Respondent reiterates that its registration of the Domain Name predates the registration of the SKYWIRE mark, and the incorporation of the Skywire Media company.  Respondent also reiterates that it registered multiple other domain names with the word “sky” attached and the disputed domain name in this case is just one of such domains.  Thus, argues Respondent, the Panel should find that Complainant knew or should have known that it would be unable to prove that Respondent lacks rights or legitimate interests in the Domain Name, or that Respondent registered and is using the Domain Name in bad faith. 

It is clear that, if Complainant had known or had reasonable cause to know the information asserted in the Response when he filed his Complaint, there would be a basis to find bad faith in the filing of this proceeding.  However, at the time he filed the Complaint, the information available to him was that the registered owner of the Domain Name was an entity named SkyTel.  Although the word “sky” appears in both that name and the Domain Name, SkyTel is not Skywire, and Complainant was justified in assuming that Respondent was not known generally as Skywire.  Further, there is no evidence that Complainant knew or should have known about Respondent’s use of many domains having the word “sky” in them to direct traffic to its website where it did offer goods and services under its own name.  Indeed, some of Respondent’s email correspondence o Complainant referred to the Domain Name possibly being for sale, that it might not be “really the best fit for the business.”  There was no discussion of Respondent’s actually using the Domain Name as part of its business program.

On the other hand, the WHOIS report submitted with the Complaint shows a “Creation date” of 24-jun-1998, and it could be argued that this should have put Complainant on notice that it would likely be very difficult if not impossible to prove bad faith registration and use.  Whether this factor alone should be sufficient to support a finding of bad faith filing is difficult to determine.  The Panel is not unmindful of the fact that Complainant’s filing this proceeding put Respondent to significant trouble and expense to defend a case that should probably not have been brought.  Nevertheless, the Panel concludes that Complainant’s filing of the case is attributable more to unfamiliarity with the UDRP and the standards of proof required to make a case than to actual malice or intent to harass.  His failure correctly to identify his company as the real party in interest, and his failure to make the standard allegations about “confusingly similar or identical to” is evidence of the level of sophistication involved here.  Accordingly, the Panel finds that the proceeding was not brought in bad faith and declines to grant Respondent’s claim for a finding of reverse domain name hijacking.  See, NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”) see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

 

                       

Charles A. Kuechenmeister, Panelist

Dated:  March 14, 2011

 

 

 

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