Skype Limited v. Jan Jensen
Claim Number: FA0611000842091
PARTIES
Complainant is Skype Limited (“Complainant”), represented by Don
C. Moody, of Genga & Associates, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skype.us>, registered with Tucows Inc.,
and <skypeshop.us>, registered with Go Daddy
Software, 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.
Calvin A. Hamilton as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 14, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 16, 2006.
On November 14, 2006, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <skype.us> domain name is registered
with Tucows Inc. and that the Respondent
is the current registrant of the name. Tucows Inc. has verified that Respondent is
bound by the Tucows 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 November 14, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <skypeshop.us> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the Policy.
On November 16, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 6, 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.us and
postmaster@skypeshop.us by e-mail.
A timely Response was received and determined to be complete on December 6, 2006.
An Additional Submission was submitted by Complainant on December 15,
2006 and was determined to be deficient according to Supplemental Rule 7. Therefore, we have not considered the
arguments contained therein as the Additional Submission was untimely filed.
Respondent
has filed an Additional Submission on December 18, 2006, in a timely manner,
which exclusively deals with issues raised by Complainant in its Additional
Submission. Therefore, because we have
not considered these additional arguments made by Complainant, we find no need
to consider the responses made by Respondent.
In addition, and after reviewing Respondent’s allegations contained in
its Additional Submission, we further conclude that there are no change of
circumstances in Respondent’s position as regards the Response filed and/or new
facts which may further benefit its consideration as regards the present
decision.
On December 12, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Calvin A. Hamilton as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following assertions:
1.
The
domain names <skype.us> and <skypeshop.us> are
identical and/or confusingly similar to a trademark or service mark in which
the Complainant has rights;
2.
Respondent
has no rights or legitimate interests in respect of the domain names that are
subject to the complaint;
3.
Respondent
registered and used the domain names in bad faith.
B. Respondent makes the following assertions:
1.
As
regards the domain <skype.us>, its registration predated
Complainant’s registration of the trademark SKYPE;
2.
As
regards the domain <skypeshop.us>, the Complainant does not hold
any published trademark with the word “skypeshop.” Further, the domain
registration of <skypeshop.us>, on July 16, 2005, was a natural
extension to <skypeshop.com>, which was registered by Respondent on
September 29, 2003;
3.
There is
no likelihood of confusion between the trademark SKYPE and the disputed domain
names;
4.
The
Complainant has failed to establish a prima facie case in support of its
allegations that Respondent lacks rights and legitimate interests under Policy
¶ 4 (a) (ii);
5.
For the
purpose of <skype.us>, this domain’s use was a temporary website
but only to see if there existed any traffic levels of relevance. As this was not the case, the Site has been
kept inactive.
6.
For the
purpose of <skypeshop.us>, it has also been a temporary website
with its own implemented “logo.”
7.
Respondent
did not register and use the domain names in bad faith.
FINDINGS
1) Skype is in the business of software that enables voice and data
communications over the internet.
Complainant uses the Skype mark to market the Skype software client and
other services associated therewith. Users of the software can make and receive
calls to and from landline and mobile phones, as well as voicemail and call
forwarding. This service is commonly
known as “Voice Over Internet Protocol” (“VoIP”).
2) Complainant owns the registered
4) Respondent is an individual and registered the two domain names
<skype.us> and <skypeshop.us> on September 16, 2003
and July 16, 2005, respectively.
5) First use in commerce by Complainant of Skype mark was on November
1, 2003 (see Complainant Annex A). The
domain name <skype.us> predated this date as well as the actual
registration of the trademark which took place later in time, as seen
above. Complainant did not provide
evidence as to the existence of common law rights on the trademark. For the abovementioned and subsequent
reasons, we conclude that Complainant has not satisfied the requisites of
Policy ¶ 4(a)(i).
6) The domain name <skypeshop.us> was registered before
the trademark was registered by Complainant, although Complainant has supported
by sufficient evidence the existence of common law rights prior to Respondent
registration of the disputed domain and this evidence has not been contradicted
by Respondent.
7) <skypeshop.us> is identical or confusingly similar to
the Complainant trademark Skype.
8) Respondent
has no rights or legitimate interests in respect of the domain
name <skypeshop.us>.
9) Registration and use of <skypeshop.us> was made in bad
faith.
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.
We should start by differentiating the two
disputed domain names as different issues and criteria must be taken into
consideration in each case.
Complainant’s rights in respect of <skype.us>
The domain <skype.us>,
registered by Respondent on September 16, 2003, predated the Complainant’s
trademark registration, which took place on October 4, 2005. Further, the domain <skype.us>
was registered before Complainant filed for its trademark application with the
USPTO for the Skype mark on January 15, 2004.
Thus, Respondent’s rights in the disputed domain name predate
Complainant’s rights in the mark.
Notwithstanding the above, trademark
registration is unnecessary for purposes of satisfying the Policy ¶ 4(a)(i). The Policy does
not require that the rights have been registered in order to determine that
said rights do exist. See
Unregistered rights may be protected as long
as their prior existence is shown. However, no evidence has been provided by
Complainant to show the existence of said rights and the Complainant’s Skype
mark failed to acquire secondary meaning in connection with Complainant’s
products and services before Respondent registered the disputed domain
name. Therefore, we can conclude that
Complainant does not have common law rights in the mark under Policy ¶ 4(a)(i)
that predate Respondent’s registration of the disputed domain name. See Intermark Media, Inc. v. Wang Logic Corp, FA 139660 (Nat. Arb.
Forum Feb. 19, 2003) (finding that any enforceable interest that the
complainant may have in its common law mark did not predate the respondent’s
domain name registration, therefore finding that UDRP ¶ 4(a)(i) had not been satisfied).
Additional evidence as to the lack of
Complainant’s common law rights may be inferred from the USPTO information on
the mark registration (Complainant Annex A). According to said information, the
first use in commerce by Complainant of said trademark is dated November 2003.
We must conclude that Respondent did not know
the existence of Complainant’s rights at the time of registering its domain
<skype.us> and that Complainant has failed to sustain its burden
under the Policy ¶ 4(a)(i) to prove that it had prior rights as regards the
disputed <skype.us> domain name.
Therefore, failing application of Policy ¶
4(a)(i), there is no need to analyze the other two elements of the Policy as
regards the <skype.us> domain name. See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002) (finding that because Complainant must prove all three elements under
the Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining elements unnecessary); see also 01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig,
D2004-0541 (Wipo Sept. 10, 2004) (holding that the Policy requires that the
Complainant prove all elements of paragraphs 4(a)(i-iii)
of the Policy. Thus, since the Complainant has failed to prove 4(a)(i), the
Panel need not discuss whether the Respondent has legitimate rights and
interests in the disputed domain name, under Policy ¶ 4 (a) (ii), or whether
the Respondent registered and was using the disputed domain in bad faith, under
Policy ¶ 4 (a)(iii)).
Complainant’s rights in respect of <skypeshop.us>
The domain <skypeshop.us> was
registered by Respondent on July 16, 2005 and Complainant registered the
trademark Skype on October 4, 2005, although it was filed on January 15, 2004
and published for opposition on November 2, 2004.
Because Complainant‘s rights in the Skype
mark relate back to the filing date, Complainant has rights in the Skype mark
that predate Respondent’s registration of the <skypeshop.us>
domain name on July 16, 2006.
In addition, Complainant Annexes C and D
amount to sufficient evidence that Complainant was already known and had
initiated its VoIP activities in the market prior to the actual registration of
the trademark. Complainant had common law
rights in the mark at the time Respondent registered the domain name <skypeshop.us>. The record shows sufficient public use of
Complainant’s name to establish common law rights prior to Respondent’s
registration of the domain name.
Further, we can rely on the USPTO information as to the date of first
use in commerce of the trademark Skype, on November 1, 2003, which predated
Respondent registration of <skypeshop.us>.
Respondent does not show that Complainant
lacks common law rights prior to <skypeshop.us> domain name
registration. Therefore, we may conclude that Policy ¶ 4(a)(i)
is applicable as regards Complainant’s rights to the trademark at issue.
We may turn now to the issue of identity or
confusing similarity of the domain name <skypeshop.us> with
Complainant’s trademark, Skype. Respondent's domain name, <skypeshop.us>,
is comprised of Complainants' mark and a generic term plus the suffix
“.us.” Under such circumstances, a
disputed domain name is confusingly similar to a Complainant's well-established
mark. See L.L. Bean, Inc. v. ShopStarNetwork,
FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the
generic word "shop" with the Complainant's registered mark
"llbean" does not circumvent the Complainant's rights in the mark nor
avoid the confusing similarity aspect of the ICANN Policy); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n]either the addition of an
ordinary descriptive word...nor the suffix '.com' detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY" and thus Policy 4(a)(i) is satisfied); see also Sutton Group Financial Services Ltd. and Sutton Group Realty
Services, Inc. v. Bill Rodger, D2005-0126 (WIPO June 27, 2005) (finding
that the domain name in dispute <suttonpromo.com> is comprised of the
distinctive element SUTTON and the descriptive element promo, which is an
abbreviation for promotion or promotional items and the element “.com” which is
a TLD indicator. The addition of descriptive or non-distinctive elements to the
distinctive element in the domain name in dispute is immaterial to the
confusion analysis).
Moreover, the disputed domain name here is so
confusingly similar that a reasonable Internet user would assume that the
domain name is somehow associated with Complainants' mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat.
Arb. Forum Dec. 18, 2000) (finding that confusion would result when
Internet users, intending to access Complainant's web site, think that an
affiliation of some sort exists between the Complainant and the Respondent,
when in fact, no such relationship would exist).
The Panel finds that the disputed domain name
<skypeshop.us> is identical to and confusingly similar to
Complainants' mark under Policy ¶ 4(a)(i).
The Complainant has made a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii), and now the
burden shifts to Respondent to show it does have rights or legitimate
interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
International, D2001-0376 (WIPO May 17, 2001) (“Proving that the Respondent
has no rights or legitimate interests in respect of the Domain Name requires
the Complainant to prove a negative. For the purpose 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 the 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
interest in respect of the domain name in question.”).
Respondent has not provided any evidence
sufficient to conclude that he is the owner or beneficiary of a trade or
service mark that is identical to the domain name <skypeshop.us>
under Policy ¶ 4(c)(i) nor has the Respondent provided evidence to establish
that it has been commonly known by the domain name under Policy ¶ 4(c)(iii).
Complainant holds that Respondent registered the domain name under the name
“Jan Jensen,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the disputed domain names. See
Meow Media Inc. v. John Basil a/k/a American Software Factory Corp., Inc.,
FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that no evidence has been
presented to show that the Respondent is commonly known by the domain
name. Further, it does not appear that
the Respondent is the owner or beneficiary of a trademark or service mark that
is identical to the domain name at issue); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use).
Complainant has established a prima facie
case that, before any notice of the dispute, Respondent did not use the domain
name in connection with a bona fide offering of goods and services under
Policy ¶ 4(c)(ii) and that Respondent is not making a
legitimate noncommercial or fair use of the domain name <skypeshop.us>
without an intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue, under Policy ¶ 4(c)(iv).
Complainant Annex F shows that Respondent has
offered for sale unlicensed Skype products and services, utilizing a website
which is confusingly similar to Skype’s website and utilizing confusingly
similar domains. Complainant alleges
that Respondent’s domain name revolves to a website offering Complainant’s
products for sale. Complainant asserts that it has not given Respondent a
license to sell its products. It is an
uncontested fact that Respondent is not and has never been a member of
Complainant’s affiliate program.
Respondent has affirmatively denied having any such affiliation or
having been authorized to hold itself out as being
associated with the Complainant or to sell Complainant’s products.
Evidence provided by Respondent is not
sufficient for purposes of determining that the offering of products in the
<skypeshop.us> website is a bona
fide conduct as regards Policy ¶ 4(c)(ii).
Respondent’s assertion in this regard is that
the website has been a temporary website with its own implemented “logo”
differentiating both in color, shape, form and with implementation of figure
elements in the word. However,
Respondent does not provide any evidence to refute Complainant’s arguments to
the contrary or to contradict the evidence provided thereof, as Annex F,
whereby the confusing similarity, precisely with Complainant’s logo, is
evident, together with the offering of unauthorized products and services
pertaining to Complainant.
Moreover, the allegation that the website was
only temporary, or even purportedly inactive, has not been supported by any
evidence. In any event, it is not
relevant for purposes of showing lack of Respondent rights or legitimate
interests in respect to the domain name. See
Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) even though
Respondent has not used the domain name because “It makes no sense whatever to
wait until it actually ‘uses’ the name, when inevitably, when there is such
use, it will create the confusion described in the Policy.”).
Respondent did not provide any evidence to
refute any of the abovementioned circumstances and thus, Respondent cannot
claim that it had any right or legitimate interest in or to Complainant’s trade
name or the domain <skypeshop.us>.
Therefore, Respondent’s unauthorized sale of Complainant’s products at
the disputed domain name <skypeshop.us> does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept.
3, 2002) (holding that because of the fame of the PEPSI and PEPSI-COLA marks,
any use by Respondent of the disputed domain name will result in Internet user
confusion as to the source, sponsorship and affiliation of the
<pepsicola.us> domain name. As a
result, Internet users looking for Complainant will be diverted to Respondent’s
website. Such use does not constitute a
bona fide offering of goods or services pursuant to usDRP Policy ¶ 4(c)(ii), or
a legitimate noncommercial or fair use pursuant to usDRP Policy ¶ 4(c)(iv); see also Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by using Complainant’s
trademarks).
Based on the above, Respondent has not rights
or legitimate interests in respect of the domain name <skypeshop.us>
as per Policy ¶ 4(c)(ii).
The Panel concludes that Respondent
registered the <skypeshop.us> domain name in order to prevent the
Complainant from reflecting the mark in a corresponding domain name, under
Policy ¶ 4(b)(ii).
In fact, Respondent knew the increasing fame and commercial standing of
Complainant before registering the <skypeshop.us> domain
name. As a result, we infer an
opportunistic and spurious motive for Respondent registering the domain name.
Moreover, evidence provided as Complainant
Annex L, show that Respondent had engaged in a pattern of bad faith conduct by
maintaining a massive portfolio of domain names containing well known marks,
leading this Panel to conclude that Respondent fits the profile of a domain
name speculator hoping to reap financial benefits from the goodwill associated
with trade names it does not own. See Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that through this
pattern of preventing Registrants from reflecting their previously utilized
marks online, Respondent exposed itself to attack under Policy ¶ 4(b)(ii), and
its activity in this dispute equates to bad faith use and registration of the
<tercent.com> domain name pursuant to that provision); see also Pep Boys Manny, Moe, & Jack v.
E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that,
where the Respondent registered many domain names, held them hostage, and
prevented the owners from using them, the behavior constituted bad faith); see also Gamesville.com, Inc. v. Zuccarini,
FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent engaged in a
pattern of conduct of registering domain names to prevent the owner of the
trademark from reflecting the mark in a corresponding domain name, which is
evidence of registration and use in bad faith).
It can be concluded that the Respondent is
using the disputed domain names in order to disrupt Complainant’s business
under the Skype mark, under Policy ¶ 4(b)(iii).
Respondent was on notice of Skype existing trademark, and by registering the
confusingly similar domain name, intended to divert internet traffic away from
Complainant’s website and disrupt the business of same. Registration of confusingly similar domain
names to divert internet traffic to alternate sites has been found to be
evidence of bad faith disruption of Complainant’s business. See Ticketmaster Corporation v. netAfrik,
D2001-0906 (WIPO Aug. 30, 2001), (finding bad faith where the domain names and
the services offered were similar such that there was "no doubt the
Respondent deliberately chose the disputed domain names"); see also EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that
the minor degree of variation from the complainant's marks suggests that the
respondent registered the names primarily for the purpose of disrupting the
complainant's business).
The intentions behind Respondent registration
of <skypeshop.us> domain name were to attract, for commercial
gain, internet users seeking Complainant’s voice and data communication
products to Respondent’s own website where it offers the same products for
sale. Policy ¶ 4(b)(iv). Respondent is taking advantage of the
likelihood of confusing similarity between the disputed domain names and the
Skype mark (as to the source, sponsorship, affiliation or endorsement of
Respondent website or of a product on Respondent website) in order to profit
from the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See Spark Networks PLC v. Sean Houlihan, FA 653476 (Nat. Arb.
Forum, April 18, 2006) (finding that Respondent is using the
<hotamericansingles.com> domain name, which it maintains is confusingly
similar to its AMERICAN SINGLES mark, to redirect Internet users to Respondent’s
own website providing substantially similar online dating services that compete
with Complainant. Complainant contends
that Internet users seeking Complainant’s online dating website are confused as
to the source, sponsorship, affiliation or endorsement of Respondent’s website,
and thus Respondent is taking advantage of the confusing similarity between the
<hotamericansingles.com> domain name and the AMERICAN SINGLES mark in
order to profit from the goodwill associated with the mark. The Panel finds that such diversionary use of
the disputed domain name constitutes bad faith registration and use under
Policy ¶ 4(b)(iv); see also
MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a
domain name confusingly similar to the complainant’s mark and the domain name
was used to host a commercial website that offered similar services offered by
the complainant under its mark); 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).
DECISION
Having considered all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED as regards the <skype.us> domain name and GRANTED as
regards the <skypeshop.us> domain name.
Accordingly, it is Ordered that the <skypeshop.us> domain name be TRANSFERRED
from Respondent to Complainant.
Calvin A. Hamilton,
Panelist
Dated: December 26, 2006
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