Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang
Claim Number: FA1401001538218
Complainants are Microsoft Corporation and Skype (collectively “Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is zhong biao zhang / Unknown company / zhong zhang (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skypeenglish.com> and <skypejapanese.com>, registered with Register.com, and <skypeyingyu.com>, registered with GoDaddy.com, LLC.
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 January 9, 2014; the National Arbitration Forum received payment on January 9, 2014.
On January 9, 2014 GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <skypeyingyu.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 14, 2014, Register.com confirmed by e-mail to the National Arbitration Forum that the <skypeenglish.com> and <skypejapanese.com> domain names are registered with Register.com and that Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com 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 January 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2014 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@skypeenglish.com, postmaster@skypejapanese.com, and postmaster@skypeyingyu.com. Also on January 14, 2014, 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 February 7, 2014, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two Complainants in this matter: Microsoft Corporation (a Washington, USA corporation) and Skype (an Irish corporation). Skype is a wholly-owned subsidiary of Microsoft Corporation, and that both entities possess rights to the SKYPE mark. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003); Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004).
Because the Panel accepts that the evidence presented is sufficient to establish a sufficient nexus or link between both parties to the Complaint, the Panel will treat both parties as a single entity in this proceeding.
A. Complainant
1. Skype is a wholly-owned subsidiary of Microsoft Corporation, and that both entities possess rights to the SKYPE mark.
2. Complainant began using the SKYPE mark in 2003 in connection with real time instant messaging and voice communication technology over the Internet (“VOIP”). By 2010, its SKYPE service had 170 million connected users who conducted over 207 billion minutes of voice and video conversations using the service.
3. Complainant owns trademark registrations throughout the world for its SKYPE mark, including registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,005,039 registered October 4, 2005) and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA721178 registered August 18, 2008).
4. The <skypeenglish.com>, <skypejapanese.com>, and <skypeyingyu.com> domain names are confusingly similar to Complainant’s SKYPE mark.
5. The disputed domain names incorporate Complainant’s SKYPE mark in its entirety, adding only a language/geographical identifier – “english,” “japanese” or “yingyu,” – and the generic top-level domain (“gTLD”) “.com.” “Yingyu” is the Pinyin word for “English.”
6. Respondent is not commonly known by Complainant’s SKYPE mark.
7. WHOIS identifies Respondent as “Unknown Company / zhong biao zhang aka zhong zhang.”
8. Respondent is not affiliated with Complainant in any way. Respondent is not licensed to use Complainant’s SKYPE mark, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s goods and services.
9. Respondent’s <skypejapanese.com> domain name points to a pay-per-click page displays links unrelated to Complainant.
10. Respondent’s <skypeyingyu.com> domain name is parked at a page entitled, “Coming Soon - Future home of something quite cool.”
11. Respondent’s <skypeenglish.com> domain name resolves to the website of an unaffiliated commercial business offering online courses for a fee.
12. In this case Respondent has registered three domain names incorporating variants of Complainant’s SKYPE mark, reflecting a pattern of bad faith registration under Policy ¶ 4(b)(ii).
13. By using Complainant’s SKYPE mark to promote Respondent’s unaffiliated business at <skypeenglish.com>, and to generate pay-per-click revenue at <skypejapanese.com>, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark. This conduct of diversion based on likelihood of confusion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
14. Respondent’s failure to make an active use of the <skypeyingyu.com> domain name evidences bad faith.
15. Respondent had knowledge of Complainant and its SKYPE mark at the time Respondent registered the disputed domain names.
16. Respondent registered the disputed domain names on the following dates:
a. <skypeenglish.com> on July 29, 2013;
b. <skypejapanese.com> on July 25, 2013; and
c. <skypeyingyu.com> on October 2, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKYPE mark. Respondent’s domain names are confusingly similar to Complainant’s SKYPE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skypeenglish.com>, <skypejapanese.com>, and <skypeyingyu.com> domain names, and that Respondent registered and uses the domain names 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 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. 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 owns trademark registrations throughout the world for its SKYPE mark, including registrations with the USPTO (e.g., Reg. No. 3,005,039 registered October 4, 2005) and the CIPO (Reg. No. TMA721178 registered August 18, 2008). In light of these registrations, the Panel holds that Complainant has demonstrated its rights in the SKYPE mark for the purposes of Policy ¶ 4(a)(i). See Seiko Epson Corp. v. Citizens News Network, FA 1389991 (Nat. Arb. Forum June 30, 2011) (finding that complainant had established Policy ¶ 4(a)(i) rights in its mark through its trademark registrations with the USPTO and CIPO).
Complainant contends that the <skypeenglish.com>, <skypejapanese.com>, and <skypeyingyu.com> domain names are confusingly similar to Complainant’s SKYPE mark. Each incorporates Complainant’s SKYPE mark in its entirety, adding only a language or geographical identifier – “english,” “japanese” or “yingyu,” – and the gTLD “.com.” Complainant explains that “yingyu” is the Pinyin word for “English.” Neither the addition of such geographical or linguistic identifiers nor the affixation of gTLD defeats a claim of confusing similarity. See Chan Luu Inc. v. Jdvnj, FA1308001517436 (Nat. Arb. Forum Sep. 30, 2013)(finding <chanluusjapanese.com> confusingly similar to complainant’s CHAN LUU mark and awarding transfer); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Thus, the Panel holds that Respondent’s <skypeenglish.com>, <skypejapanese.com>, and <skypeyingyu.com> domain names are confusingly similar to Complainant’s SKYPE mark according to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by Complainant’s SKYPE mark. Complainant maintains that Respondent is not affiliated with Complainant in any way. Respondent is not licensed to use Complainant’s SKYPE mark, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s goods and services. Complainant points out that WHOIS identifies Respondent as “Unknown Company / zhong biao zhang aka zhong zhang,” a name which bears no similarity to the disputed domain names. The panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name, because the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it was commonly known by the domain name. Given Respondent’s failure to provide any evidence that would refute Complainant’s claims in this case, the Panel concludes that Respondent is not commonly known by the <skypeenglish.com>, <skypejapanese.com>, or <skypeyingyu.com> domain names within the meaning of Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not used the disputed domain names in c
onnection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant first points out Respondent uses the <skypejapanese.com> domain name to point to a pay-per-click page displaying links unrelated to Complainant. In Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panel refused to recognize rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) because the respondent was merely using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant. This Panel likewise holds that Respondent’s use of the <skypejapanese.com> domain name to operate a website featuring unrelated links represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant next argues that Respondent has no rights or legitimate interests in the <skypeyingyu.com> domain name, because the domain is parked at a page entitled “Coming Soon - Future home of something quite cool.” A domain name used under such circumstances is not engaged in the bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). Given Respondent’s failure to provide any evidence of preparation to make an active use of the <skypeyingyu.com> domain name, the Panel determines that Respondent has not made a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain.
Complainant further argues that Respondent has no rights or legitimate interests in the <skypeenglish.com> domain name, because Respondent uses the domain to resolve to the website of an unaffiliated commercial business offering online courses for a fee. The panel in Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) found no rights or legitimate interests in a disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering services unrelated to those services legitimately offered under the complainant’s mark. This Panel applies similar reasoning and holds that Respondent has failed to use the <skypeenglish.com> domain name in connection with 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that in this case, Respondent’s registration of three domain names incorporating variants of Complainant’s SKYPE mark reflects a pattern of bad faith registration under Policy ¶ 4(b)(ii). The Panel agrees. See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Complainant further contends that by using Complainant’s SKYPE mark to promote Respondent’s unaffiliated business at <skypeenglish.com>, and to generate pay-per-click revenue at <skypejapanese.com>, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark. Complainant urges the Panel to find this diversionary conduct representative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Because the Panel concludes that Respondent’s registration of these domain names, which incorporate Complainant’s mark, was calculated to create a likelihood of confusion with Complainant in order to bring such pecuniary gain to Respondent, the Panel determines that Respondent registered and uses the <skypeenglish.com> and <skypejapanese.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Complainant urges a finding of bad faith registration and use with respect to the <skypeyingyu.com> domain name based on Respondent’s failure to make an active use of the resolving website. This domain resolves to a parked webpage showing the message “Coming Soon - Future home of something quite cool.” Inactivity by a respondent may support a finding that the domain name was registered and used in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel agrees and determines that Respondent registered and uses the <skypeyingyu.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant adds that Respondent acted in bad faith because Respondent had knowledge of Complainant and its SKYPE mark at the time Respondent registered the disputed domain names. In support of this contention, Complainant asserts that its SKYPE mark had already achieved worldwide fame by the time of Respondent’s registrations. Complainant also notes that Respondent registered at least three domains containing the mark, and that Respondent provides links to SKYPE software on the landing page for <skypeenglish.com>. Registration of an infringing domain name with actual knowledge of a complainant and its rights in the at-issue mark constitutes bad faith. See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding bad faith where there were reasonable grounds to infer that the respondent had actual notice of the complainant's rights in the mark). Because the Panel concludes that Respondent registered the disputed domain names with actual knowledge of Complainant and its SKYPE mark, the Panel finds bad faith under Policy ¶ 4(a)(iii) with respect to Respondent’s registration of the <skypeenglish.com>, <skypejapanese.com>, and <skypeyingyu.com> domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeenglish.com>, <skypejapanese.com>, and <skypeyingyu.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 20, 2014
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