national arbitration forum

 

DECISION

 

Microsoft Corporation and Skype v. Attila Zilahi

Claim Number: FA1303001489200

 

PARTIES

Complainant is Microsoft Corporation and Skype (together, “Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Attila Zilahi (“Respondent”), Budapest, Hungary.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <skypelivegirls.com> and <msnlivegirls.com>, registered with Wild West Domains, 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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2013; the National Arbitration Forum received payment on March 11, 2013.

 

On March 12, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <skypelivegirls.com> and <msnlivegirls.com> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names.  Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 March 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2013 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@skypelivegirls.com and postmaster@msnlivegirls.com.  Also on March 12, 2013, 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 April 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in SKYPE and MSN and alleges that the disputed domain names are confusingly similar to the respective trademarks. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Microsoft Corporation owns, inter alia, United States Trademark Reg. No. 2,153,763 registered Apr. 28, 1998 for the plain letter mark MSN;

2.    Skype (or rather one or other of a number of corporate entities which the Panel is content to treat as the same as the named complainant) owns, inter alia, United States Trademark Reg. No. 3,005,039 registered Oct. 4, 2005 for the word mark SKYPE;

3.    The disputed domain name <msnlivegirls.com> was registered on July 9, 2012, and the <skypelivegirls.com> domain name was registered on August 29, 2011;

4.    The domain names resolve to websites featuring adult-related material;

5.    There is no agreement of any kind between the parties.

 

DISCUSSION

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. 

 

Preliminary Issue: Multiple 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.”

 

Previous panels have interpreted Rule 1(e) to allow multiple parties to proceed as one complainant where the parties demonstrated a relationship such as a license or partnership (see Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006); see also Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004).

 

In this case, the Complaint carries evidence that Skype is a wholly-owned subsidiary of Microsoft Corporation.  Panel accepts that this evidence shows a sufficient nexus between the named complainants and is so prepared to treat them as a single entity in this proceeding and references throughout this decision to “Complainant” are references to both named complainants.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  Since Complainant provides evidence of its United States Patent and Trademark Office trademark registrations for both  MSN and SKYPE, the Panel is satisfied that it has trademark rights in those terms (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

 

The remaining questions are whether the disputed domain name <msnlivegirls.com> is confusingly similar to Complainant’s trademark MSN, and whether the disputed domain name <skypelivegirls.com> is confusingly similar to Complainant’s trademark SKYPE.  Panel finds that they are since in each case the domain name takes the trademark and adds non-distinctive elements – namely, the gTLD, “.com” and the non-distinctive or descriptive (however it is viewed) words “live girls”, added matter which does not distinguish the domain name from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) finding the addition of generic terms to the complainant’s HARRY POTTER mark in the domains <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to prevent confusing similarity).

 

Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of each disputed domain name. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006);  see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).

 

The publicly available WHOIS information identifies Respondent as “Attila Zilahi” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain names.  There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use either trademark and Complainant denies any such authorization.

 

There is no evidence that the disputed domain names has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  On the contrary, Complainant provides evidence that, in one case, the domain name resolves to an adult-oriented website that provides a “pornstar name generator” and sells placements for “Skype Live Girls Ads” and, in the other, the domain name resolves to a website with numerous pay-per-click links to third-party providers of salacious material.  Neither use is in legitimate for the purposes of this aspect of the Policy (see Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent.”).

 

Panel finds that Complainant has, in each case, established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names.  In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in relation to each domain name.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and were used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that use of the domain names falls squarely under paragraph 4(b)(iv) above.  Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademarks.   The evidence is clearly that Respondent is financially profiting from use of the domain names by reason of the confusion.  In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademarks.

 

DECISION

Having established all three elements required under the ICANN Policy in respect of both disputed domain names, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the domain names <skypelivegirls.com> and <msnlivegirls.com> be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  April 18, 2013

 

 

 

 

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