The Complainant is Marlink SAS, France, represented by INLEX IP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Brian Sacash, United States of America, self-represented1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 6, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 19, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 21, 2019. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2019. The Response was filed with the Center on December 11, 2019. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 20, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a French company which provides telecommunications services, particularly communications services for the maritime industry including equipment for satellite communications. Amongst other things, the Complainant owns numerous registered trademarks for SKYFILE around the world including: - French Registered Trademark No. 3147842 for goods and services in International Classes 9, 16, 35, 38 and 42, which was filed on and registered from February 14, 2002; - United States Registered Trademark No. 2930461 in the same International Classes, which was filed on March 5, 2002 and registered on March 8, 2005 - International Registration No. 796142 in the same International Classes designating Austria, Australia, Benelux, China, Denmark, Finland, Germany, Greece, Ireland, Italy, Japan, Norway, Portugal, Singapore, Spain, Sweden, Turkey and the United Kingdom. The Panel notes from the information filed with the Complaint, however, that protection in classes 9 and 16 was refused in the United Kingdom. The Complainant registered the domain name, According to the Registrar, the disputed domain name was registered by the Respondent on April 10, 2019. When the Complaint was filed, the disputed domain name resolved to a website which was in effect a parking page. The parking page included pay-per-click (PPC) links to a number of “associated links” including Iridium Satellite, Cmap, Globalstar, Feet, Mer Sea, Iridium, Mistral, Telefoni, Marine National and Satellitentelefon. This page also includes a disclaimer: “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with [the advertisers].” 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of numerous registered trademarks around the world for SKYFILE, some examples of which are identified in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. Disregarding the “.net” gTLD, therefore, the disputed domain name is identical to the Complainant’s trademark. Accordingly, the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. It is not in dispute between the parties that the Complainant has not licensed or authorised the Respondent to use the Complainant’s trademark. Nor is the Respondent associated in any way with the Complainant. The disputed domain name is not derived from the Respondent’s own name and the Respondent does not hold any registered trademarks for “Skyfile”. In addition, the disputed domain name resolves to a website which includes PPC links to various products and services. Two of those links are to “Iridium/Iridium Satellite”. The services offered by the Complainant include the distribution of products supplied by Iridium. Others appear to be competitive with the Complainant’s offerings. These facts, together with the Complainant’s longstanding registration of its trademark are sufficient to raise a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent denies, however, that he registered the disputed domain name with an intent to misleadingly divert browsers for commercial gain. The Respondent contends that he registered the disputed domain name for personal use to host a private file hosting server with the open source Nextcloud software. According to the Response, the Respondent chose the name as a combination of “sky” and “file”, where “sky” has a similar connotation to “cloud”, but is not used as heavily for software as a service applications and “file” denotes file storage. The Respondent contends, therefore, that he is making a legitimate non-commercial or fair use of the disputed domain name. Where a claim of this nature is made, panels usually require some independent corroboration of the claimed intent rather than mere assertion. See e.g., WIPO Overview 3.0, section 2.2 and Autodesk, Inc. v. Brian Byrne, meshIP, LLC,WIPO Case No. D2017-0191 (in the case of an allegedly good faith offering of services) and, more particularly WIPO Overview 3.0, sections 2.4 and 2.5. The Respondent has not offered any supporting corroboration in the present case. Moreover, the disputed domain name resolves to a website which contains PPC links only, and those PPC links can be fairly characterised as competitive with the Complainant’s business. The Respondent does point out the disclaimer at the foot of the page to which the disputed domain name resolves and contends that shows he is not associated with, or deriving any commercial benefit from, the PPC advertising. The Respondent points out that the Complainant’s own advertising reproduced in a Google search uses the words, “Skyfile”, “Marklink” and “Iridium” in the one advertisement, thereby linking the three terms together. The Respondent contends, therefore, it is not surprising that the linkage of the three terms has propagated through the Internet into automatically generated sponsored listings such as the PPC links on the webpage. It has long been established, however, that domain name holders are responsible for the use their domain names are put to since, as a general rule, the domain name holder has the potential to control whether the domain name is used for such purposes or not. This principle may not apply where the Respondent demonstrates it has actively taken steps to prevent PPC links trading on a trademark. There is no evidence that the Respondent took such steps in the present case. Accordingly, the disclaimer is insufficient in itself to avoid responsibility for the use of PPC links in this fashion. See e.g., WIPO Overview 3.0, section 3.5 (in the context of bad faith). In these circumstances, the Panel is unable to accept the Respondent’s claim of legitimate non-commercial use and, accordingly, the Complainant’s prima facie case stands unrebutted. The Complainant has therefore established the second requirement under the Policy. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Paragraph 4(b) identifies situations which may demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy: For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith: (i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or (ii) [the Respondent has] registered the [disputed] domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or (iii) [the Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or location. The Complainant points to the identity between its trademark and the disputed domain name and the presence of PPC links competing with its business to contend that the Respondent has registered and is using the disputed domain name in bad faith. Prima facie that conduct is the type of conduct which paragraph 4(b)(iv), above, strikes against. The reasons for the failure of the Respondent’s claim that the disputed domain name was registered for a legitimate non-commercial purpose also lead to a finding that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy also. 6. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, Warwick A. Rothnie 1 As the first named Respondent is the Registrar’s privacy service and the Registrar has confirmed that the second name Respondent is in fact the registrant, the Panel will refer to the second named Respondent as “the Respondent” for simplicity.
Sole Panelist
Date: January 3, 2020
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