Skype Limited and Skype Technologies S.A. v. Ryan Clark
Claim Number: FA0605000697904
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 Ryan Clark (“Respondent”), 7175 Fleming St, Vancouver, BC V5P 3J1, Canada.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <skypecasts.com> and <skype-casting.com>, registered with Go Daddy Software, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2006.
On May 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <skypecasts.com> and <skype-casting.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 31, 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@skypecasts.com and postmaster@skype-casting.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skypecasts.com> and <skype-casting.com> domain names are confusingly similar to Complainant’s SKYPE mark.
2. Respondent does not have any rights or legitimate interests in the <skypecasts.com> and <skype-casting.com> domain names.
3. Respondent registered and used the <skypecasts.com> and <skype-casting.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 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, Complainant 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 <skypecasts.com> and <skype-casting.com> domain names on December 15, 2005. Neither of the disputed domain names have ever resolved to an active website since being registered. Sometime after the registration date, Respondent posted the disputed domain names for sale at a price of $300 on a popular online auction 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 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 asserts that Respondent’s <skypecasts.com> and <skype-casting.com> domain names are confusingly similar to its SKYPE mark. The <skypecasts.com> domain name contains Complainant’s SKYPE mark in its entirety and adds the generic term “casts” and the top-level domain “.com.” Similarly, the <skype-casting.com> domain name contains Complainant’s SKYPE mark in its entirety and adds a hyphen, the generic term “casting” and the top-level domain “.com.” The Panel finds that the additions of generic terms, a hyphen and the top-level domain “.com” to Complainant’s registered mark fail to distinguish the disputed domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent lacks rights or legitimate interests in the <skypecasts.com> and <skype-casting.com> domain names. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to prove it does 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).”).
Respondent’s failure to submit an answer creates a
presumption that Respondent lacks rights or legitimate interests in the
disputed domain names. See Do the
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertions in this regard.”); see
also 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.”).
The Panel, however, chooses to analyze the record to determine if
Respondent has rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c).
Complainant asserts that neither
of the confusingly similar domain names have ever resolved to an active website
since being registered. Because
Respondent has not used the domain names since the December 15, 2005
registration date, and has failed to come forward with evidence to show
preparations to use the domain names, the Panel finds that Respondent is
neither using the domain names in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where the respondent failed to submit a response to the
complaint and had made no use of the domain name in question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's
passive holding of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”).
Additionally, Complainant asserts
that Respondent is not commonly known by either of the disputed domain
names. According to the WHOIS database,
Respondent registered the disputed domain names under the name “Ryan Clark” and
there is no other evidence in the record to suggest that Respondent is commonly
known by either of the disputed domain names.
The Panel therefore finds that Respondent is not commonly known by the
disputed domain names and has not established rights or legitimate interests pursuant
to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant contends that the disputed domain names have never resolved to an active website since being registered on December 15, 2005. It follows that Respondent’s passive holding of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Furthermore, Complainant submits that Respondent posted the
disputed domain names for sale at a price of $300 on a popular third-party
auction website while passively holding the domain names. The Panel concludes that the attempted sale
of the domain names for an amount in excess of the registration cost evidences
bad faith under to Policy ¶ 4(b)(i). See
CBS Broad. Inc. v. Worldwide Webs,
Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently
wrongful in the offer or sale of domain names, without more, such as to justify
a finding of bad faith under the Policy. However, the fact that domain name
registrants may legitimately and in good faith sell domain names does not imply
a right in such registrants to sell domain names that are identical or
confusingly similar to trademarks or service marks of others without their
consent”); see also Wrenchead.com, Inc. v. Hammersla,
D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale
at an auction site is evidence of bad faith registration and use).
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 <skypecasts.com> and <skype-casting.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: June 19, 2006
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