Skype Limited and Skype Technologies S.A. v.
Marcelo Sacramento
Claim Number: FA0607000747948
PARTIES
Complainants are Skype Limited and Skype Technologies S.A. (collectively “Complainant”), represented by Don C. Moody, of Genga & Associates, P.C., 15260 Ventura Boulevard, 20th Floor, Sherman Oaks, CA 91403. Respondent is Marcelo Sacramento (“Respondent”), av alexandre ferreira, 420/202 lagoa, Rio De Janeiro 22470220, BR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypebrasil.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Professor Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 12, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 14, 2006.
On July 17, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <skypebrasil.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On July 19, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 8, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@skypebrasil.com by e-mail.
A Response was received in electronic, but not hard copy on August 8,
2006 and thus the National Arbitration Forum has deemed the Response deficient
according to Supplemental Rule #5(a).
However, the Panel has decided to consider the response in reaching its
decision.
On August 16, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it is the owner of the fanciful term “Skype”
and has used the same since 2003 to identify and market voice and data
communications software over the Internet.
Complainant also states that the mark is famous, having been registered
in the U.S. and several countries throughout the world and that Complainant
holds common law trademark rights in all countries that recognize such. Complainant contends that Respondent’s
domain <skypebrasil.com> is
confusingly similar to its mark SKYPE, that respondent has no rights or
legitimate interests in the domain in dispute, and as such registered the
domain name in bad faith.
B. Respondent
Respondent asserts that he is not responding in order to fight for the
domain name in dispute but only wants “to change the image of me that was
created by this situation.” Respondent
states that he started the “newbie homepage” to help Skype’s Brazilian
community that did not speak English very well. Respondent contends that he did not know he could not use the
SKYPE mark in creating his website or acting as a reseller, but it was not his
intention to break any rules and now that he knows he was wrong “the site
wouldn’t be working anymore.”
FINDINGS
Complainant, Skype Limited and Skype
Technologies S.A. is the owner of the mark SKYPE. Complainant markets software and communication services that
enable voice over Internet protocol (“VoIP”).
Due to extensive marketing through various mediums the SKYPE mark has
become well-known throughout the world.
Complainant owns several trademark registrations in numerous countries
including the U.S. (USPTO Serial #78352663),
Australia, Hong Kong, Israel, and the Benelux countries. Complainant either owns or has pending
applications in nations on nearly every continent in the world, including
Brazil. The SKYPE mark is known globally and is thus famous to some extent as
Complainant claims.
Respondent Marcelo Sacramento registered the
disputed domain name <skypebrasil.com>
with Enom, Inc. Respondent completed an
online form provided by Complainant for those desirous of entering Skype’s
affiliate program. Complainant
terminated Respondent’s affiliate status due to Respondent’s repeated failure
to comply with the terms of the program, including the registration and use of
Skype-related domains. Upon receiving
notice of this case filed by Complainant, Respondent indicated that he really
no longer cared about the domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 Respondent’s <skypebrasil.com> domain name is
confusingly similar to its registered trademark, SKYPE (USPTO Reg. No.
3,005,039 issued October 4, 2005) because the disputed domain contains the
entire registered mark and merely adds the geographic term “brasil” and the generic top level (“gTLD”)
“.com.” The addition of the geographic
term does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i). See
Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000)
(finding <walmartcanada.com> confusingly similar to complainant’s famous
WALMART mark). Nor does the addition of
a “gTLD” prevent a finding of identical or confusing similarity. 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).
Complainant has proven this element.
Complainant asserts that Respondent has no
rights or legitimate interest in the disputed domain name pursuant to Policy ¶
4(a)(ii). Respondent does not contest
this assertion. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (holding that, where the complainant has asserted that the respondent has
no rights or legitimate interests with respect to the domain name, it is
incumbent on the respondent to come forward with concrete evidence rebutting
this assertion because this information is “uniquely within the knowledge and
control of the respondent”).
Complainant also states that Respondent’s use of <skypebrasil.com> is for offering the resale of Complainant’s
services in violation of Complainant’s affiliate program and that Respondent’s
affiliate status was terminated on February 22, 2006 due to his repeated
failure to comply with various program requirements. See Barnesandnoble.com LLC
v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006),
(finding that the respondent’s use of the disputed domain names to divert
Internet users attempting to reach the complainant’s website and in breach of
the complainant’s affiliate program is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial
or fair use pursuant to Policy ¶ 4(c)(iii)).
See also, Nat’l Collegiate
Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that
domain names used to sell the complainant’s goods without the complainant’s
authority, as well as others’ goods, was not bona fide.).
Respondent also nowhere asserts that he is or
has ever been commonly known by the domain name in question. See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4 (c)(ii) “to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
Complainant has proven this element.
Respondent knew or should have known of
Complainant’s SKYPE trademark at the time it registered the disputed domain
name <skypebrasil.com> since
the trademark was registered and widely used throughout the world. The mark is well-known and Respondent
applied to be a member of Complainant’s affiliate program. See
Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001)
(finding that “[i]n light of the notoriety of Complainant’s famous mark,
Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks
at the time [Respondent] registered the disputed domain name” and such knowledge
constituted bad faith); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the
respondent had actual and constructive knowledge of the complainant’s EXXON
mark given the worldwide prominence of the mark and thus the respondent
registered the domain name in bad faith).
Complainant additionally asserts that
Respondent’s <skypebrasil.com>
domain name resolves to a commercial website that offers the resale of
Complainant’s services. Respondent
counters that he was just offering an option, but indicated to his site
visitors that his site was not official and it was better to use Complainant or
some other means to secure the services if possible. See Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent’s use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site); see also
Luck’s Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum
Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant).
While Respondent claimed ignorance of the
rules involved in establishing the website and using the disputed domain,
neither lack of actual knowledge at the outset nor being apologetic in
hindsight are sufficient to offset a finding that policy ¶ 4(a)(iii) has been
violated.
Complainant has proven this element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypebrasil.com>
domain name be TRANSFERRED from Respondent to Complainant.
Professor Darryl C. Wilson, Panelist
Dated: August 30, 2006
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