Microsoft Corporation and Skype v. Mathis COLANGE
Claim Number: FA1307001511569
Complainant is Microsoft Corporation and Skype (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Mathis COLANGE (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skype2ip.org>, registered with OVH sas.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
On July 26, 2013, OVH sas confirmed by e-mail to the National Arbitration Forum that the <skype2ip.org> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 August 2, 2013, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of August 22, 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@skype2ip.org. Also on August 2, 2013, the French language 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 September 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
TRADEMARK/SERVICE MARK INFORMATION
Founded in 1975, Microsoft Corporation is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Skype is a wholly-owned subsidiary of Microsoft Corporation. As used herein, “Complainant” means Microsoft Corporation, Skype, and their respective licensees, related companies, and predecessors in interest.
Complainant owns numerous proprietary trademarks for its goods and services, including the world famous trademark SKYPE. Complainant began using the SKYPE trademark in 2003 in connection with real time instant messaging and voice communication technology over the Internet. By 2010, the SKYPE® service had 170 million connected users who conducted over 207 billion minutes of voice and video conversations using the service.
Through longstanding, extensive and widespread use, promotion and publicity, the SKYPE trademark has become famous. See e.g. Microsoft Corp. v. Arruda, FA1107001396768 (Nat. Arb. Forum Aug 9, 2011)(referencing Complainant’s “famous MICROSOFT and SKYPE marks”); and Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Nat. Arb. Forum May 6, 2013)(“Complainant’s trademark is famous and has become familiar in the minds of consumers worldwide”).
The SKYPE trademark is registered in the United States and elsewhere around the world. “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007)(“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
Complainant uses the following logo, among others, in connection with its Skype software and services (the “Skype Logo”):
<image removed>
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s SKYPE trademark.
Respondent’s domain incorporates Complainant’s famous SKYPE mark in its entirety, adding only the numeral “2,” the abbreviation “ip,” and the generic TLD “.org.” IP stands for Internet Protocol. Complainant provides Voice over Internet Protocol services (also known as VOIP), in which voice communication is transmitted among users’ IP addresses. Id. As such, the abbreviation “ip” relates to Complainant’s business.
The foregoing differences are not sufficient to distinguish the disputed domain from Complainant’s famous and distinctive mark, particularly where the added subject matter directly relates to Complainant’s business. See Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA0708001059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”); Caterpillar Inc. v. personal, D2010-2190 (WIPO Feb 8, 2011)(adding the name of a product the Complainant markets to Complainant’s mark is “likely to compound the likelihood of confusion”)(emphasis added); Qwest Communications Int’l Inc. v. Dwyer, FA0407000302104 (Nat. Arb. Forum Sept. 7, 2004)(finding <qwestvoip.com> confusingly similar to QWEST and finding that “the mere addition of a generic sequence of letters obviously tied to Complainant’s business does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶4(a)(i)”); and Skype Ltd. v. SADECEHOSTING.COM, FA0708001059477 (Nat. Arb. Forum Sept. 27, 2007)(finding <freeskypecredits.com> confusingly similar to SKYPE and noting that, “[t]he addition of words which have a relationship to Complainant’s services, as well as a gTLD, do[es] not negate the confusingly similar aspects of the disputed domain name”).
See also Google Inc. v. QQ 775202678 a/k/a Yu, FA1011001360208 (Nat. Arb. Forum Jan. 30, 2011)(finding <googleipv6.com> confusingly similar to GOOGLE and awarding transfer); Exxon Mobil Corp. v. AlMusalami, FA0811001235534 (Nat. Arb. Forum Jan. 6, 2009)(finding <exxon2.com> confusingly similar to EXXON and awarding transfer); Daimler AG v. Koop, FA1012001362436 (Nat. Arb. Forum Jan 4, 2011)(“merely adding a single numeral” to MERCEDES failed to distinguish <4mercedes.com> therefrom); and Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Plainly, the disputed domain name is confusingly similar to Complainant’s famous SKYPE trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s SKYPE trademark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Mathis COLANGE. Respondent is not commonly known by Complainant’s SKYPE trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s SKYPE trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004)(finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)(finding that WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for the disputed domain prominently displays Complainant’s Skype Logo, as shown below.
<image removed>
Respondent also uses this logo on its PayPal account page. Id. Respondent also uses Skype2IP.org as its trade name in the copyright notice for its home page, which reads, “© Skype2ip.org 2013.”
Respondent’s site offers to hack Complainant’s Skype services to determine the IP address of any Skype user, or as Respondent puts it, a “victim.” (emphasis added). Those who wish to avoid becoming a victim of Respondent’s service can pay Respondent a 1€ ransom. Respondent also profits by (a) selling access to its API (programming interface), and (b) selling advertising. Respondent’s prominent advertisements promote third party web services and a third party media player software download.
Threatening to expose Skype users’ private information unless potential “victims” pay a 1€ ransom is (a) commercially motivated and (b) not a bona fide offering of goods or services.
Furthermore, Respondent’s use of Complainant’s Skype Logo and the SKYPE trademark to identify itself, on its web site and within PayPal, is calculated and likely to confuse and mislead the public as to the source of Respondent’s site and/or Respondent’s association with Complainant, and constitutes passing off. This is not a fair, nominative or otherwise legitimate use. See Microsoft Corp. and Skype v. M-Style / Morgun, FA1303001491620 (Nat. Arb. Forum May 10, 2013)(“Respondent’s decision to make heavy usage of the SKYPE mark in promoting its domain name’s web content illustrates neither a Policy ¶4(c)(i) bona fide offering of goods and services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use”); Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)(“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is 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)”); Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010)(“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services.”); Microsoft Corp. v. Lafont, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010)(finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)); and Johnson & Johnson v. Bertisch, FA1104001385725 (Nat. Arb. Forum June 6, 2011)(finding passing off and lack of legitimate interests based on, among other things, a copyright notice that used the complainant’s mark as a trade name).
Furthermore, Respondent’s use of a domain name that is confusingly similar to Complainant’s SKYPE trademark to attract consumers to advertisements for unrelated goods and services (i.e., third party web services and a media player software download) is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002)(finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)(no rights or legitimate interest found where respondent did not apply for permission or license from complainant to use mark, nor was respondent commonly known by the mark).
Furthermore, using Complainant’s SKYPE trademark to promote a third party media player, which competes with media player software offered by Complainant, is not a legitimate use. See Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012)(finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Florists' Transworld Delivery v. Malek, FA0604000676433 (Nat. Arb. Forum June 6, 2006)(finding no rights or legitimate interests where the disputed domain was “used in connection with a business that directly competes with Complainant’s business”); Fossil, Inc. v. Fong, FA 1116234 (Nat. Arb. Forum Jan. 10, 2007)(finding no legitimate interest where the domain name resolved to a website featuring links to third party websites); TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb. Forum Dec. 31, 2002)(finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003)(finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); and Vance International, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007)(finding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself profiting commercially from the click-through fees).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s SKYPE trademark was famous and familiar to countless consumers worldwide. It is clear from the fact that Respondent also adopted Complainant’s Skype Logo for its own identity that Respondent was not only familiar with Complainant and Complainant’s SKYPE trademark at the time of registration of the domain name, but intentionally adopted a domain name incorporating this mark in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)(holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“…it is inconceivable that Respondent could have registered the <skypehotgirls.com> domain name without actual knowledge of Complainant's rights in the [SKYPE] mark… Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name is further evidences Respondent’s bad faith under Policy ¶4(a)(iii).”); Microsoft Corp. v. Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Furthermore, by using Complainant’s Skype Logo and SKYPE trademark to identify itself, Respondent creates the false impression of a site and/or business that originates with or is sponsored by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006)(finding bad faith where the respondent’s web site gave the false impression of being affiliated with the complainant). See also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001)(“the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith”); MidFirst Bank v. Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001)(finding that respondent’s use of the disputed domain name misrepresent itself as a complainant supported a finding of bad faith); and Microsoft Corp. v. Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009)(finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Furthermore, by identifying itself and promoting the products and services of unaffiliated third parties using Complainant’s famous trademarks, as well as collecting a ransom from Skype members that do not wish to have their private information disclosed, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademarks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004)(“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”); Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007)(finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Furthermore, Respondent is disrupting Complainant’s business by compromising the privacy of Skype users, who even Respondent characterizes as “victims” of this service, and/or extorting fees from those who do not wish to have their IP addresses disclosed.
Moreover, Respondent’s promotion of a competing media player under the SKYPE trademark diverts and disrupts Complainant’s business and falls under Policy ¶4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006)(use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶4(b)(iii)); Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011)(featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)); Nortel Networks Ltd. v. BuyMeBuyMe.com Inc., FA0604000671847 (Nat. Arb. Forum May 16, 2006)(deriving revenue from links to competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)); and Fossil, Inc. v. Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007)(holding that respondent registered and used the domain name in bad faith by diverting computer users to a website featuring links to Complainant’s competitors).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order transferring or cancelling a domain name:
(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. 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.”).
Complainant began using its SKYPE trademark in 2003 in connection with real time instant messaging and voice communication technology over the Internet. By 2010, Complainant’s SKYPE service had 170 million connected users who conducted over 207 billion minutes of voice and video conversations using the service. Complainant registered its SKYPE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039 registered October 4, 2005). USPTO registration adequately establishes rights in a mark under the Policy. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”). The Panel finds Complainant has sufficiently established rights in the SKYPE mark pursuant to Policy ¶4(a)(i), even though Respondent resides in France. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant claims Respondent’s <skype2ip.org> domain name is confusingly similar to Complainant’s SKYPE trademark under Policy ¶4(a)(i). The domain name incorporates Complainant’s SKYPE mark in its entirety, adding the abbreviation “ip,” the numeral “2,” and the generic top-level domain (“gTLD”) “.org.” Complainant believes “IP” stands for Internet Protocol, which is descriptive of Complainant’s business because Complainant provides Voice over Internet Protocol services (also known as VOIP). The numeral 2 suggests this is a new version of Skype. The gTLD must be disregarded when confusing similar is determined under Policy ¶4(a)(i). Complainant claims these differences are not sufficient to distinguish the disputed domain from Complainant’s mark. The Panel agrees and finds the disputed domain name is confusingly similar to Complainant’s SKYPE mark for the purposes of Policy ¶4(a)(i). See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i).”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. 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 interests 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.”).
Complainant claims Respondent is not commonly known by Complainant’s SKYPE trademark and this is evidenced by the disputed domain’s WHOIS information (which lists Respondent as “Mathis COLANGE”). Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services, and is not affiliated with Complainant in any way. Complainant has not licensed Respondent to use the SKYPE trademark. With these facts, Complainant has made a prima facie case under Policy ¶4(c)(ii). Respondent has failed to rebut Complainant’s prima facie case. Therefore, the Panel finds Respondent is not commonly known by the <skype2ip.org> domain name for the purposes of Policy ¶4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant claims Respondent has not used the <skype2ip.org> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. First, Respondent attempts to pass itself off as Complainant through Respondent’s use of the disputed domain name. Respondent identifies itself using Complainant’s Skype logo and SKYPE trademark on Respondent’s website and on its PayPal account page. Respondent’s use of Complainant’s mark in connection with a PayPal account means Respondent generates some amount of financial gain through its operations at the disputed domain name. Respondent also uses “Skype2IP.org” as its trade name in the copyright notice for its home page, which reads, “© Skype2ip.org 2013.” The panel in Mortgage Research Ctr. LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) found that the respondent was not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use where respondent was attempting to pass itself off as the complainant, presumably for financial gain. This Panel agrees and finds Respondent has not used the <skype2ip.org> domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Respondent threatens to expose Skype users’ private information unless users pay Respondent a 1€ ransom, which Respondent claims will “blacklist” a user from its IP address discovering service. Respondent’s site offers to hack Complainant’s Skype services to determine the IP address of any Skype user. In order to avoid becoming a ‘victim’ of Respondent’s service, Internet users must effectively pay Respondent a 1€ ransom. Respondent’s use of a domain name confusingly similar to Complainant’s mark to take advantage of Complainant’s users for Respondent’s own commercial gain does not represent a Policy ¶4(c)(i) bona fide offering of goods and services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use. 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).”).
Respondent generates an improper commercial gain through its use of the <skype2ip.org> domain name by selling access to its API (programming interface) and selling advertising on its site. Specifically, Respondent’s advertisements promote third-party web services, including a download link for a third party’s media player software which competes with Complainant’s media player. Previous panels have found a respondent’s use of a disputed domain name to offer its own and products and services does not demonstrate rights or legitimate interests in the domain under Policy ¶4(a)(ii). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). A respondent’s use of a disputed domain name to offer third-party products and services that compete with those offered by the complainant does not prove rights or legitimate interests in the domain under Policy ¶4(a)(ii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Accordingly, the Panel finds Respondent has not used the <skype2ip.org> domain name in connection with a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of the <skype2ip.org> domain name disrupts Complainant’s business in bad faith under Policy ¶4(b)(iii). First, Respondent is disrupting Complainant’s business by compromising the privacy of users of Complainant’s Skype service and by “extorting” “fees” from users who do not want their IP address disclosed. Second, Respondent’s promotion of a competing media player at the disputed domain name also disrupts Complainant’s business. In Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006), the panel held that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to a competing website. It certainly seems as though the parties are competitors (at least on some level). Therefore, this Panel finds Respondent registered and used the <skype2ip.org> domain name in bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent’s registration and use of the <skype2ip.org> domain name demonstrates bad faith under Policy ¶4(b)(iv). Respondent creates the false impression that its website originates with or is sponsored by Complainant by using Complainant’s Skype logo and SKYPE mark to identify itself. Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademarks by promoting the products and services of unaffiliated third parties, as well as collecting a ransom from Skype members who do not want their private information disclosed. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found the respondent registered and used the disputed domain name in bad faith where the respondent hosted a website that “duplicated [c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.” More generally, the panel in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), found that by appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, the respondent had registered and used the domain in bad faith pursuant to Policy ¶4(b)(iv). It appears Respondent’s registration and use of the <skype2ip.org> domain name is bad faith under Policy ¶4(b)(iv).
Respondent almost certainly knew of Complainant and Complainant’s rights in the SKYPE trademark at the time Respondent registered the <skype2ip.org> domain name. Complainant’s SKYPE mark is famous and familiar to countless consumers worldwide. Respondent’s web site uses Complainant’s logo and references Complainant’s Skype service, so it seems impossible for Respondent not to know about Complainant’s rights and services. This Panel finds Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <skype2ip.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, September 10, 2013
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