Microsoft Corporation v. Jean Francois Hervouet / FTL Internet Solutions
Claim Number: FA1710001752170
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Jean Francois Hervouet / FTL Internet Solutions (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skypeprivates.com>, (‘the Domain Name’) registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2017; the Forum received payment on October 4, 2017.
On October 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <skypeprivates.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skypeprivates.com. Also on October 5, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant’s contentions can be summarised as follows:
Complainant is a worldwide leader in software and related services and began using the SKYPE trade mark in 2003 for voice communication technology over the Internet. The SKYPE trademark is registered in the USA and elsewhere around the world by a wholly owned subsidiary of Complainant.
The Domain Name is confusingly similar to Complainant’s SKYPE mark incorporating it in its entirety along with the generic word ‘privates’ and a common gTLD .com. These additions are not sufficient to distinguish the Domain Name from the SKYPE trade mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by Complainant’s SKYPE mark, nor has Respondent used the Domain Name in connection with a bona fide offering of goods and services or for a legitimate non commercial or fair use. Complainant is not authorised or licensed to use the SKYPE Mark.
Respondent was using a privacy shield. Now that this is removed, Complainant believes Respondent may be related to another case pending before the Forum which resolves to the same domain. The Domain Name redirects to the domain name the subject of this other proceeding skyprivate.com and to a site which allows nude models to sign up and solicits members to open accounts to have live calls with those nude models. This site also refers to Skype pay-per minute technology that Respondent allegedly created. This use is designed to confuse the public that there is some relationship between Respondent and Complainant when there is not. Using another’s trade mark to promote adult content is not a bona fide offering of goods and services or legitimate noncommercial or fair use.
The Domain Name registered in 2017 has been registered and used in bad faith. The numerous mentions of Complainant’ SKYPE service on the site attached to the Domain Name is evidence of Respondent’s knowledge of Complainant’s rights. Redirecting users to a site that displays adult content is evidence of bad faith registration and use pursuant to Policy 4 (b) (iii) and (iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a worldwide leader in software and related services and began using the SKYPE trade mark in 2003 for voice communication technology over the Internet. The SKYPE trademark is registered in the USA and elsewhere around the world by a wholly owned subsidiary of Complainant.
The Domain Name redirects to a site offering adult content which also prominently uses Complainant’s SKYPE trade mark.
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."
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.
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(f), 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 (Forum July 31, 2000) (holding that 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s SKYPE mark (registered in the USA for computer and telecommunications services with first use recorded as 2003), the generic term ‘privates’ and the gTLD .com.
The addition of this generic word ‘privates’ does not serve to distinguish the Domain Name from Complainant’s SKYPE mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i).)
The gTLD .com does not serve to distinguish the Domain Name from the SKYPE mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent has used a privacy service and does not appear to be commonly known by SKYPE Complainant’s mark. Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
It it is clear from the evidence that Respondent has used the site attached to the Domain Name to promote computer services which are not connected with Complainant. The usage of Complainant’s SKYPE mark which has a significant reputation in relation to computer services in relation to other computer services not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant. As such it cannot amount to the bona fide offering of goods and services.
Further the use of a domain name containing a well known mark to resolve to adult orientated material cannot constitute a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v xiazihong, FA 1732665 (Forum July 7, 2017).
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
It seems clear that the use of Complainant’s mark in the Domain Name and prominently on the website attached to the Domain Name would cause people to associate this website with Complainant and its business and services. The use of the SKYPE mark to refer to Complainant’s technology on the web site attached to the Domain Name shows Respondent was aware of Complainant and its business as time of registration. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site under Policy 4 (b)(iv).
Further use in relation to a web page hosting adult material is evidence of bad faith registration and use under Policy 4 (b)(iii). See Molson Canada 2005 v JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb 10, 2015).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skypeprivates.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 7, 2017
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