Skype Limited and Skype Technologies S.A. v. Orhan Yucal
Claim Number: FA0608000777149
Complainant is 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 Orhan Yucal (“Respondent”), Kartal Maltepe No 32, Istanbul, Merkez 34100, TR.
The domain name at issue is <skype-turkiye.net>, registered with Enom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 16, 2006.
On August 14, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <skype-turkiye.net> domain name is registered with Enom, Inc. and that 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 August 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 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@skype-turkiye.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <skype-turkiye.net> domain name is confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skype-turkiye.net> domain name.
3. Respondent registered and used the <skype-turkiye.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Skype Technologies S.A. promotes software that enables voice and data communications over the Internet. In connection with the identification and marketing of its software, Skype Technologies S.A. holds a trademark registration for the SKYPE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,005,039 issued October 4, 2005). On October 21, 2005, Skype Technologies S.A. assigned its rights in the SKYPE mark to Skype Limited, a wholly owned subsidiary.
Respondent registered the <skype-turkiye.net> domain name on July 26, 2006. Respondent has used the disputed domain name to send numerous unsolicited e-mails from the e-mail address “suport@skypeturkiye.net” in which Respondent purports to be a distributor of Complainant’s software and links unsuspecting recipients to a malicious executable file located at the resulting website.
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 of the mark with the USPTO.
See Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant contends that the <skype-turkiye.net> domain name is confusingly similar to its SKYPE mark. The disputed domain name contains Complainant’s SKYPE mark in its entirety, inserts a hyphen, and adds the geographic term “Turkiye,” which is the Turkish equivalent for the nation of “Turkey.” The Panel finds that neither the use of hyphens nor the addition of a geographical indicator such as “Turkiye” successfully differentiate the disputed domain name from Complainant’s registered mark. See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum August 30, 2006) (finding the <skypebrasil.com> domain name to be confusingly similar to the complainant’s SKYPE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to make a prima facie showing that Respondent does not have rights or legitimate interests in this disputed domain name. Once such a showing is established, the burden shifts to Respondent to affirmatively prove that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”). The Panel finds that Complainant has successfully established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent’s failure to submit a Response in this proceeding raises a presumption that Respondent lacks legitimate rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“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.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel chooses to analyze the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
According to the WHOIS registry, the registrant of the
disputed domain name is “Orhan Yucal” of Istanbul, Turkey. Because there is no evidence in the record
to suggest otherwise, the Panel finds that Respondent is not commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent
is not commonly known by the [<awvacations.com>] domain name.”); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent has used the disputed domain name to send numerous unsolicited e-mails from the e-mail address “suport@skypeturkiye.net” in which Respondent purports to be a distributor of Complainant’s software and links unsuspecting recipients to a malicious executable file located at the resulting website. The misleading use of a domain name that is confusingly similar to Complainant’s mark to distribute unsolicited e-mails in which Respondent purports to be affiliated with Complainant and attempts to distribute malicious executable files is likely to jeopardize the goodwill associated with Complainant’s mark. The Panel finds that Respondent’s use of the disputed domain name to distribute unsolicited e-mails and malicious executable files does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See Google, Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (“The Panel finds the use of domain names that are confusingly similar to Complainant’s mark to attract Internet users to a website that may annoy or harm the users in some way, and that appears to serve no legitimate function, is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”); see also Blue Cross and Blue Shield Ass’n v. Kraus, D2004-0756 (WIPO Nov. 15, 2004) (finding that using a domain name that is confusingly similar to a complainant’s mark to lure consumers into a mousetrapping situation is of little or no benefit to anyone and is not a legitimate noncommercial use of the domain name, because it harms the complainant for no reason other than spite or malice).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant contends that Respondent registered and used the disputed domain name in bad faith. The Panel agrees. The Panel finds that Respondent’s misleading use of the confusingly similar domain name to distribute unsolicited e-mails that contained links to malicious executable files amounts to bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel emphasizes that Respondent’s registration and use of the disputed domain name to send unsolicited e-mails in which it purports to be affiliated with Complainant is, in and of itself, evidence of bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). The fact that Respondent was using its misleading unsolicited e-mails to point unsuspecting recipients to the disputed domain name that resolved to a website that automatically downloaded a malicious executable file further evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Banco Itau S.A. v. Miller, D2005-0748 (WIPO Nov. 4, 2005) (finding bad faith registration and use when the respondent sent unsolicited bulk e-mails from the disputed domain name that contained a virus that allowed hackers to harvest passwords); see also Société des Produits Nestlé SA v. HAES Inc., D2002-0887 (WIPO Dec. 3, 2002) (finding bad faith registration when the disputed domain name resolved to a website that automatically downloaded a virus onto the visitor’s computer).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skype-turkiye.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 28, 2006
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