Skype Limited v. skype-directory.com Private Registrant c/o DreamHost Web Hosting
Claim Number: FA0704000956410
Complainant is Skype Limited (“Complainant”), represented by Don
C. Moody, of Genga & Associates, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <skype-directory.com>, registered with New Dream Network, Llc d/b/a DreamHost Web Hosting.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 2007 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-directory.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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-directory.com> domain name is confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skype-directory.com> domain name.
3. Respondent registered and used the <skype-directory.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skype Limited,
is a global provider of software services that allow voice and data
communications over the Internet.
Complainant has over 147 million registered users of its services and
Complainant’s software application has been downloaded over 400 million
times. In connection with its Internet
communications products and services, Complainant has registered the SKYPE mark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,005,039
issued
Respondent registered the <skype-directory.com>
domain name on
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
pursuant to Policy ¶
4(a)(i) through its registration of the mark with the USPTO. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <skype-directory.com>
domain name is confusingly similar to Complainant’s SKYPE mark pursuant to
Policy ¶ 4(a)(i) because the domain name contains the SKYPE mark in its
entirety and merely adds a hyphen, the generic term “directory,” and the
generic top-level domain “.com.” The
Panel finds that these additions do not sufficiently distinguish Respondent’s
domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb.
Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark
and merely added the descriptive terms “traffic school,” “defensive driving,”
and “driver improvement” did not add any distinctive features capable of
overcoming a claim of confusing similarity); see also Arthur Guinness Son & Co. (
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or
legitimate interests in the <skype-directory.com> domain name. Complainant has the intitial burden of proof
in asserting that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima facie case under Policy ¶ 4(a)(ii), and this
Complainant is found to have established such facts to constitute such prima facie case, the burden then shifts to Respondent to show that it
does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <skype-directory.com> 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 Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum
Respondent is using the <skype-directory.com> domain name, which is
confusingly similar to Complainant’s SKYPE mark, to divert Internet users to a website that advertises
links to websites that sell Internet communications services that compete with
Complainant. The Panel finds that such
use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to
market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services.”).
Complainant asserts that Respondent is not authorized to use Complainant’s SKYPE mark and that Respondent is not associated with Complainant in any way. Despite Respondent’s WHOIS information listing Respondent as “skype-directory.com Private Registrant,” there is no affirmative evidence in the record that Respondent has ever been commonly known by the <skype-directory.com> domain name prior to its registration of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using a domain name confusingly similar to
Complainant’s SKYPE mark to operate a commercial website purporting to compile
a directory of users of Complainant’s services and which also features links to
other companies providing competing products and services. As a result of the disputed domain name,
Complainant is prevented from developing and providing its own directory website. The Panel finds such use indicates bad faith
according to Policy ¶ 4(b)(iii) because it appears that Respondent has registered
and is using the <skype-directory.com>
domain name for the primary purpose of disrupting Complainant’s business. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO
Respondent is using the <skype-directory.com> domain name, which is confusingly similar to Complainant’s SKYPE mark, to divert Internet users to a website containing links to competing Internet communications products and services. Presumably, Respondent is profiting from those links by collecting pay-per-click fees for diverting Internet users to the third-party websites. Therefore, Respondent is taking commercial advantage of the confusing similarity between Respondent’s domain name and Complainant’s mark, and profiting from the goodwill associated with the SKYPE mark. Use of the disputed domain name for this purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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-directory.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 31, 2007
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