The Complainant is Skype Limited of Dublin, Ireland, represented by Hogan Lovells (Paris) LLP, Paris, France.
The Respondent is Leize Ang, Leize of Manila, Philippines. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with DotPH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2011. On March 24, 2011, the Center transmitted by email to DotPH a request for registrar verification in connection with the Disputed Domain Name. On March 25, 2011, DotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(1) and 4(1), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2011. In accordance with the Rules, paragraph 5(1), the due date for Response was April 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on May 9, 2011. 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.
On May 11, 2011, after the appointment of the Panel, the Center was copied in an email communication by the Complainant to a third-person in which it appeared that the Complainant was refusing an offer by the Respondent to transfer the Disputed Domain Name for monetary consideration. The Panel rules these inadmissible and will not draw any inference from them. In doing so, this Panel is mindful of its obligations to be procedurally efficient, to treat each Party with equality and to ensure that each Party has had a fair opportunity to present its case and recognises the legal costs of representation that the Parties to a case may incur. This Panel is of the view that it would not be fair to the Respondent to permit the Complainant to present arguments and evidence by which it may demonstrate the relevance of these emails as a supplemental filing to the present case, or to make even further submissions as to whether and why it was unable to provide this evidence with the Complaint, or to request the Respondent to file a Response to the Complainant’s supplementary evidence. The Panel considers that it has fully discharged its obligations to both Parties in this regard.
The language of the administrative proceeding is English, for two reasons: first, the language of the registration agreement is English; second, paragraph 11 of the Rules, requires that the language of the administrative proceeding be English. 4. Factual Background
The Complainant, Skype Limited, is a company registered in the Republic of Ireland that has operated an Internet communications business based on proprietary voice-over-internet-protocol (VOIP) software since 2003.
The Complainant holds separate registrations for the SKYPE mark, and variations of that mark, in numerous countries including, but not limited to, the United States, the European Union, Taiwan, Province of China, Australia, New Zealand, the Russian Federation, Switzerland, Hong Kong, SAR of China, Canada, and Japan. As an example, its Australian registration for the word SKYPE (No 988248) is registered from February 9, 2004 in class 38 for “Providing voice over Internet protocol (VOIP) peer-to-peer communications, and file sharing, and instant messaging services over a global computer network”. Variations on the mark SKYPE are also registered in various geographies in classes 9, 35, 38 and 42.
The Complainant conducts business on the Internet using numerous domain names containing the word “Skype” including with its VOIP communications business website resolving from this domain name. The Complainant is well-known globally.
On October 18, 2005 the Respondent registered the Disputed Domain Name .
The Respondent used the Disputed Domain Name to resolve to a website which advertised a communications modality called “USB Phone - P1K / P4K / P5D” which it stated was “to call his (the call recipient’s) traditional landlines or mobile phones”. 5. Parties’ Contentions A. Complainant
The Complainant cites its worldwide registrations of the trademark SKYPE including in the United States, European Union and related trademarks consisting of, or including this word, and, alternatively, its logo, as prima facie evidence of ownership.
The Complainant submits that its trademark is distinctive and well-known and that its rights in this mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the trademark SKYPE and that the similarity is not removed by the addition of the country code “.ph” (citing Microsoft Corporation v. Maganda Industries and/or Douglas Morris a.k.a. Douglas Morrison,WIPO Case No. DPH2004-0001).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademarks. The Complainant also contends that use which intentionally trades on the “tremendous goodwill established by the Complainant” can not constitute a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to paragraph 4(1)(3) of the Policy making contentions in relation to each of the non-exhaustive indicia listed in paragraph 4(2). On the issue of registration, the Complainant contends as follows: “The term SKYPE is neither generic nor a dictionary term but on the contrary it is a made up and invented term consisting of the highly unlikely combination of the letters S-K-Y-P-E which is exclusively associated with the Complainant and its software” and that this is indicative of bad faith registration by the Respondent. The Complainant also argues that its mark is so well-known that it would be “inconceivable” the Respondent was not aware of its mark when registering the Disputed Domain Name (presumably alluding to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). On the decision issue of use, the Complainant contends that the Respondent uses the Disputed Domain Name for directing traffic to its webpage “for commercial gain” and that such use constitutes the kind of opportunistic bad faith that is expressly prohibited by paragraph 4(2) of the Policy and “countless UDRP decisions” (presumably alluding to cases such as Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; and Houghton Mifflin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(1) of the phDRP Policy, a complainant has the burden of proving the following:
(1) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and is being used by the Respondent in bad faith.
Paragraph 15(1) of the Rules instructs the 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.”
If a respondent does not submit a response, paragraph 5(5) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(2) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate. The Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate registered trademark rights in the mark SKYPE in many countries throughout the world, commencing in or around 2003. The Panel finds that although the SKYPE mark is not a registered trademark in the Philippines, the Complainant nevertheless has unregistered trademark rights in it for purposes of the Policy. This is achieved through extensive usage of the SKYPE mark by the Complainant throughout the Philippines supported by uncontested evidence of Philippine-based subscriber figures to the SKYPE VOIP service exceeding 6 million people. Further, in certain circumstances, unregistered marks may also be protected under unfair competition law in the Philippines. The Panel notes that several panels under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) have decided that the UDRP affords protection not only to those having rights in registered trademarks but also to those having common law or unregistered trademark rights in their trade or service marks ( e.g. Bennett Coleman & Co. Ltd v. Steven S. Lalwani,WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood,WIPO Case No. D2000-0131). Therefore, the Panel finds that Complainant also has rights in the SKYPE mark in the Philippines.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark SKYPE (b) followed by the top level domain suffix “.com” (c) followed by the country code “.ph” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded. Nor does the addition of country code ".ph" have the necessary distinguishing effect sufficient to prevent the Disputed Domain Name from being confusingly similar to the Complainant’s trademark (Microsoft Corporation v. Maganda Industries and/or Douglas Morris a.k.a. Douglas Morrison), supra. In this case, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “skype”.
In this case, it is the well-known trademark SKYPE that has been appropriated and wholly incorporated into the Disputed Domain Name.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(1) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(3) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(1) before any notice of the dispute, 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
(2) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(3) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
The Policy places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0“), paragraph 2.1).
Here the phDRP differs from the UDRP in one material respect. Under paragraph 4(c) of the UDRP, a nameholder may not claim rights and legitimate interests if he or she uses the domain "to tarnish the trademark or service mark at issue." However, this provision does not appear in the phDRP.
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic if the domain name was not registered because of its value as a trademark (WIPO Overview 2.0, paragraph 2.2).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant further contends that the Respondent is “seeking to unduly gain benefit from the tremendous goodwill established by the Complainant as well as disrupting the Complainant's business.” The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a webpage with minimal content that includes the statement "Not able to get in touch with your friend who is not with Skype? Simply use USB Phone - P1K / P4K / P5D to call his traditional landlines or mobile phones. With USB Phone - P1K / P4K / P5D you can make phone calls to friends wherever you are, and they are pretty cheap, actually.". Prima facie, it appears that the Respondent is directing Internet users to a page bearing an advertisement in connection with the same industry sector as the Complainant’s trademarks, indeed, referring to an apparent competitor technology to VOIP.
Therefore, this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name to misleadingly divert consumers and opportunistically using the Complainant’s mark in order to attract Internet users to its website for the purpose of bait-and-switch advertising (see Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313; Nikon, Inc. and Nikon Corporation v. Technilab Inc.,WIPO Case No. D2000-1774; Kanao v. J.W. Roberts Co., CPR Case No. 0109.)
In the absence of a Response, the Panel finds for the Complainant on the second element of the Policy C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(2) of the Policy sets out certain circumstances to be construed as evidence of both.
“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 a domain name in bad faith:
(1) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(2) you have registered the 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 you have engaged in a pattern of such conduct; or
(3) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “you will not knowingly use the domain name in violation of any applicable laws or regulations effective in the jurisdiction where you reside or conduct business. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights in the manner described in this Paragraph”. The evidence is that the SKYPE mark occupies the first several pages of search results on the Google search engine. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademark SKYPE is so well-known in the Philippines for VOIP communications that it is inconceivable that the Respondent might have registered a domain name comprising or incorporating the SKYPE mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, supra). Indeed, the content of the Respondent’s website includes the words "Not able to get in touch with your friend who is not with Skype?” from which the Panel infers that the Respondent is plainly aware of the Complainant’s rights to the SKYPE trademark, indicating that such use is in bad faith.
The Panel has considered a difference between the UDRP and the phDRP which bears upon the issue of third party rights. Under paragraph 2(b) of the UDRP, the nameholder warrants that "to (his) knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and under paragraph 2(d) that he "will not knowingly use the domain name in violation of any applicable laws or regulations." Since these representations cover the "rights of any third party" arising under the law of any country, it was considered by the drafters of the phDRP overbroad such that nameholders may not intelligently make such representations as they cannot be expected know all the laws and regulations of all countries as well as the rights of third parties thereunder. Hence, the phDRP limits those representations to the laws existing where the nameholder resides or conducts business.
The Panel therefore has had appropriate regard to the unfair competition laws of the Philippines, including as they are enumerated in the relevant statute.
The Panel finds two conclusions can be drawn about Respondent from its use of the Disputed Domain Name resolving to such a page. First, its conduct in diverting Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814). Second, in this Panel’s view, it is also in breach of the paragraph J of the “Domain Name Service Agreement” of the Registrar for breach of the warranty: “to the best of the Nameholder's knowledge and belief, neither the registration of the Domain nor the manner in which it is to be directly or indirectly used infringes the intellectual property rights of another party in accordance with the law effective in the jurisdiction/s where the Nameholder resides or conducts business.”
This Panel finds that the Respondent has taken the Complainant’s well-known trademark SKYPE and incorporated that mark into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to a webpage for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(1)(3) of the Policy 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(9) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: May 23, 2011
Full & Egal Universal Law Academy