Skype Limited and Skype Technologies S.A. v. yanghongmei
Claim Number: FA0607000755416
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 yanghongmei (“Respondent”), Shanghai 200035, China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cnskype.com>, registered with Xin Net Technology Corporation.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 21, 2006. The Complaint was submitted in both Chinese and English.
On July 27, 2006, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <cnskype.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 August 7, 2006, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 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@cnskype.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cnskype.com> domain name is confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <cnskype.com> domain name.
3. Respondent registered and used the <cnskype.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skype Technologies SA, registered the SKYPE mark with the United States Patent and Trademark Office (Reg. No. 3,005,039 issued October 4, 2005 filed January 15, 2004). Complainant, Skype Technologies SA, assigned its rights in the SKYPE mark to Complainant, Skype Limited. These two entities shall be referred to collectively as “Complainant” for purposes of this Decision. Complainant provides goods and services related to enabling voice and data communications over the Internet under the SKYPE mark. Complainant’s major product is a service called Voice Over Internet Protocol “VoIP.”
Complainant registered the <cnskype.com> domain name on November 17, 2004. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website. Respondent’s website appears to be mimicking Complainant’s genuine website, including Complainant’s logo. Respondent’s website offers competing Internet communication goods and services for sale under the headings “products” and “tech support.”
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 has established rights in the SKYPE mark through registration with the USPTO. While Respondent registered the <cnskype.com> domain name on November 17, 2004, prior to the issuance of Complainant’s USPTO registration on October 4, 2005, Complainant filed its application with the USPTO on January 15, 2004, prior to Respondent’s registration of the disputed domain name. The panel in Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002), found that the effective date of rights in a mark that was eventually registered with the USPTO was the filing date of the complainant’s application. The panel in Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003), agreed with that reasoning, stating that, “as Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.” Further, despite the fact that Respondent apparently is located in China, it is not necessary for Complainant to hold a registration of its mark in that jurisdiction since Respondent holds a valid registration of its mark in at least one legitimate jurisdiction by virtue of its USPTO registration. The panel in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), held that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction. Similarly, the panel in KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001), found that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business. Thus, the Panel finds that Complainant has established rights in the SKYPE mark as required by Policy ¶ 4(a)(i).
Respondent’s <cnskype.com> domain name is confusingly similar to Complainant’s SKYPE mark. The disputed domain name contains Complainant’s mark in its entirety adding only the term “cn” and the top-level domain “.com.” The term “cn” is a geographic term referring to China. The addition of the top-level domain “.com” also does not distinguish the disputed domain name from Complainant’s mark since all domain names require the addition of a top-level domain. In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found that the <pomellato.com> domain name was identical to the complainant’s POMELLATO mark because the generic top-level domain “.com” was not relevant. Thus, the Panel finds that the <cnskype.com> domain name is confusingly similar to Complainant’s SKYPE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights or
legitimate interests in the disputed domain name, thus shifting the burden to
Respondent to demonstrate that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). In G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), the panel
stated that, “because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).” By not
submitting a Response, Respondent has failed to avail itself of the opportunity
to present the Panel with evidence or arguments to demonstrate that it does
have rights or legitimate interests in the disputed domain name. The panel in Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002), found that in such circumstances “Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.” The Panel will nonetheless
review the available evidence to determine whether or not Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent is using the <cnskype.com> domain
name to redirect Internet users to Respondent’s website. Respondent’s website includes Complainant’s
SKYPE mark and logo prominently, and the overall impression of Respondent’s
website is that it is mimicking Complainant’s genuine websites. Respondent’s website appears to be a
commercial website offering Internet voice and data communication goods and
services in competition with Complainant under the headings “products” and
“tech support.” In Crow v. LOVEARTH.net,
FA 203208 (Nat. Arb. Forum Nov. 28, 2003), the panel held that, “it is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .” The panel in Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003), found that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website in competition with the complainant. Thus, the Panel finds that Respondent’s use
of the disputed domain name to redirect Internet users to a commercial website
made to appear affiliated with Complainant which in actuality offers goods and
services in competition with Complainant is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use pursuant to
Policy ¶¶ 4(c)(i) and (iii).
Furthermore, there is no available evidence that Respondent is commonly known by the <cnskype.com> domain name. Respondent’s WHOIS information identifies Respondent as “yanghongmei,” a name apparently unrelated to the disputed domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel found that what the WHOIS information implies about whether the respondent is commonly known by the disputed domain name is one factor in determining whether the respondent is commonly known by the disputed domain name. Additionally, Complainant asserts that Respondent is not sponsored by or affiliated with Complainant and does not have permission from Complainant to reflect Complainant’s SKYPE mark in a domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel considered the lack of relationship between the complainant and the respondent as well as the fact that the respondent did not have authorization from the complainant to use the mark as evidence that the respondent was not commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <cnskype.com> domain name and thus, lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <cnskype.com> domain name is confusingly similar to Complainant’s mark. Internet users seeking Complainant’s genuine website in China may combine the geographical term “cn” with the SKYPE mark and find themselves redirected to Respondent’s website. Respondent is presumably profiting from this confusion by running a commercial website offering Internet voice and data communications goods and services. Under similar circumstances, the panel in Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004), found that, “Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Additionally, in both Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel found that the respondent’s use of the disputed domain name to redirect Internet users to a website offering goods and services in competition with the complainant was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Thus, the Panel finds that Respondent’s use of a confusingly similar domain name to attract Internet users to its website in order to sell goods and services in competition with Complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent is not only attracting Internet users to its website for its own financial gain, it is also harming Complainant’s business in the process. When Internet users are redirected to Respondent’s website because of the confusing similarity to Complainant’s mark, those Internet users may purchase goods and services from Respondent instead of from Complainant, thus disrupting Complainant’s business. The panel in Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003), held that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with.” The circumstances in the case at hand are similar to Lambros in that Respondent has included Complainant’s business logo on its website and is selling goods and services similar to hose of Complainant. In S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel found evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the respondent attracted Internet users to a website that competed with the complainant’s business. Thus, the Panel finds that Respondent’s use evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <cnskype.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 14, 2006
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