Microsoft Corporation v. Temp name Temp Last Name c/o Temp Organization
Claim Number: FA1107001397752
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington, D.C., USA. Respondent is Temp name Temp Last Name c/o Temp Organization (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skype-microsoft.com> and <skype-microsoft.net>, registered with Nics Telekomünikasyon Ticaret Ltd. Sti.
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 July 8, 2011; the National Arbitration Forum received payment on July 8, 2011. The Complaint was received in both Turkish and English.
On July 14, 2011, Nics Telekomünikasyon Ticaret Ltd. Sti. confirmed by e-mail to the National Arbitration Forum that the <skype-microsoft.com> and <skype-microsoft.net> domain names are registered with Nics Telekomünikasyon Ticaret Ltd. Sti. and that Respondent is the current registrant of the names. Nics Telekomünikasyon Ticaret Ltd. Sti. has verified that Respondent is bound by the Nics Telekomünikasyon Ticaret Ltd. Sti. 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 July 19, 2011, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of August 8, 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@skype-microsoft.com and postmaster@skype-microsoft.net. Also on July 19, 2011, the Turkish language 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 August 11, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skype-microsoft.com> and <skype-microsoft.net> domain names are confusingly similar to Complainant’s MICROSOFT and SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skype-microsoft.com> and <skype-microsoft.net> domain names.
3. Respondent registered and used the <skype-microsoft.com> and <skype-microsoft.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures and markets computer software and related products and services. Complainant owns the MICROSOFT mark and has used the mark since 1975 in connection with its goods and services. “Skype”, a provider of real-time instant messaging and voice communication technology over the Internet, was founded in 2003 by Skype Global S.a.r.l. Complainant recently acquired “Skype” and all of its accompanying trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039 registered April 10, 2005) and with the Directorate General of Copyrights and Cinema (“DGCC”) in Turkey (Reg. No. 2004 02797 registered October 24, 2005). Complainant also holds trademark registrations for its MICROSOFT mark around the world including with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982) and with the DGCC (e.g., Reg. No. 156,935 registered October 24, 1994).
Respondent, Temp name Temp Last Name c/o Temp Organization, registered the <skype-microsoft.com> and <skype-microsoft.net> domain names on May 10, 2011. The disputed domain names resolve to an inactive website.
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 MICROSOFT and SKYPE marks. A trademark registration with a trademark authority permits a complainant to establish rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Here, Complainant holds numerous trademark registrations for its MICROSOFT mark around the world, including with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982) and in Turkey with the DGCC (e.g., Reg. No. 156,935 registered October 24, 1994). Complainant also holds a number of trademark registrations for its SKYPE mark with the USPTO (e.g., Reg. No. 3,005,039 registered April 10, 2005) and with the DGCC (Reg. No. 2004 02797 registered October 24, 2005). The Panel concludes that Complainant has established its rights in the MICROSOFT and SKYPE marks through its numerous federal trademark registrations according to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <skype-microsoft.com> and <skype-microsoft.net> domain names are confusingly similar to Complainant’s MICROSOFT and SKYPE marks. The disputed domain names incorporate both Complainant’s MICROSOFT and SKYPE marks and change them simply by adding a hyphen and the generic top-level domain (“gTLD”) “.com” and “.net.” The Panel finds that adding a hyphen and gTLD does not sufficiently distinguish the disputed domain name from Complainant’s marks. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Furthermore, the Panel holds that combining marks does not avoid a finding of confusing similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name) Therefore, the Panel holds that Respondent’s disputed domain names are confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Complainant has made a prima facie showing in support of its assertions. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Temp name Temp Last Name c/o Temp Organization,” which is not similar to the disputed domain names. Moreover, Complainant claims that it has not licensed or authorized Respondent to use its MICROSOFT or SKYPE marks within the disputed domain names. In light of this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to 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); see also 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’s <skype-microsoft.com> and <skype-microsoft.net> domain names do not resolve to an active website. Respondent’s failure to make an active use of the disputed domain names demonstrates its lack of rights and legitimate interests under Policy ¶ 4(a)(ii). 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 VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
The Panel may consider the totality of the circumstances outside of ¶ 4(b) when analyzing bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant claims that Respondent’s disputed domain names are being inactively held. The Panel concludes that Respondent’s failure to make an active use of the disputed domain names is evidence of Respondent’s bad faith use and registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant claims that Respondent registered the disputed domain names on May 10, 2011, mere hours after Complainant announced its acquisition of “Skype.” The Panel finds opportunistic bad faith registration under Policy ¶ 4(a)(iii) given the distinct timing of Respondent’s registration. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
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 <skype-microsoft.com> and <skype-microsoft.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 17, 2011
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