The Complainant is Skype Limited of Dublin, Ireland, represented by Genga & Associates, P.C., United States of America.
The Respondent is Mobitronix LLC of Dubai, United Arab Emirates, represented internally.
The disputed domain name <skype.ae> is registered with AE Domain Administration (.aeDA).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2011. On October 17, 2011, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On October 25, 2011, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 4, 2011, the Center requested the Complainant to confirm in an amendment to the Complaint that a copy of the Complaint, together with the Complaint Transmittal Coversheet, had been sent or transmitted to the Respondent in accordance with paragraph 2(b) of the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and to select panel candidates. On November 7, 2011, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Policy”), the Rules and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 29, 2011. On November 20, 2011, the Center received a communication from the Respondent requesting an extension to the due date for Response for translation purposes. On November 21, 2011, the Center acknowledged receipt of such request and invited the Complainant to comment thereon. On November 22, 2011, the Complainant agreed to a 10-day extension. On November 23, 2011, the Center acknowledged receipt of the Complainant’s communication, and noting exceptional circumstances according to paragraph 5(d) of the Rules, agreed to extend the Response due date until December 9, 2011. The Response was filed with the Center on December 9, 2011.
The Center appointed Brigitte Joppich, Mohamed-Hossam Loutfi and Anders Janson as panelists in this matter on January 9, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
The Complainant markets communications client software, which allows users to make voice and data communications over the Internet and via mobile devices, a function commonly known as “Voice over Internet Protocol” (“VoIP”). The Complainant and/or its affiliated entities have used SKYPE continuously since 2003. The Complainant and its software received worldwide recognition by the latest when the Complainant was acquired by eBay Inc., the acquisition was first reported on September 12, 2005. In June 2010, the SKYPE software application had accumulated over 560 million registered users, with 28 million people using it online at any given moment.
The Complainant is the registered owner of numerous trademarks for SKYPE worldwide, including in the United Arab Emirates, where the Respondent is located, inter alia United Arab Emirates trademark Registration No. 84483, registered on September 27, 2007, United Arab Emirates trademark Registrations Nos. 93807 and 93808, registered on March 16, 2009, and United States trademark Registration No. 3005039, registered on October 4, 2005 and applied for on January 15, 2004, claiming first use in commerce as of November 1, 2003 (hereinafter referred to as the “SKYPE Marks”). The Complainant provides and markets its products and services on the Internet at numerous domain names, including “www.skype.com”, which was registered in April 23, 2003.
According to the Registry’s verification response, the disputed domain name was registered on September 27, 2005. The disputed domain name currently does not resolve to an active page. The disputed domain name was used in connection with sponsored links promoting several of the Complainant’s competitors on May 19, 2006.
The Complainant sent a cease and desist letter to the Respondent on June 7, 2011. On June 15, 2011, the Respondent replied that it was unaware of the SKYPE software or its basic function when it received the cease and desist letter and that certain unspecified “government regulations” in the United Arab Emirates (hereinafter referred to as “U.A.E”) had prevented the Respondent from learning about Skype. The Respondent further stated that it had its own project named “Sky Private Executive” and that the disputed domain name had been registered as an abbreviation thereof.
The Complainant contends that each of the three elements specified in paragraph 6(a) of the Policy is given in the present case:
(1) The disputed domain name is identical and/or confusingly similar to the highly distinctive SKYPE Marks as it consists only of the term “skype”, the addition of a wholly generic top level domain being irrelevant;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as there were no actual or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before notice of the dispute, as the Complainant never authorized or gave any permission to the Respondent to use the SKYPE Marks in a domain name, or in any other manner, as the Respondent is not commonly known by the disputed domain name, and as the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further states that the Respondent was well aware of the Complainant long before the present dispute arose, given that a person called “M.” (who first replied to the Complainant’s cease and desist letter) and the Respondent’s Office Relations Manager list their SKYPE usernames in their email signatures and that these usernames were created on March 11, 2007 and April 11, 2008 respectively;
(3) The Complainant contends that the disputed domain name was registered or has been used in bad faith as set out in the Policy. The Complainant argues that the Respondent posted sponsored links promoting the Complainant’s competitors. Furthermore, the Complainant states that the Respondent challenged the Complainant by refusing to transfer a domain name identical to the Complainant’s well-known registered U.A.E. mark, and by utilizing the most logical and valuable domain name promoting the Complainant’s mark in the U.A.E. The Complainant also contends that the Respondent disrupts its business by, inter alia, diverting Internet users trying to find the Complainant’s website within the “.ae” country code top-level domain extension. The Complainant finally states that the Respondent is engaged in “passive holding” and that the incorporation of a well known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.
The Respondent denies the Complainant assertions. It contends that it invented the term “skype” in 2002 and that it enjoys common law rights in the term under the legislation of the U.A.E and Shariah norms.
The Respondent states that the Respondent’s shareholder registered the first entity “SKY LIGHT SANITARY WARE TRADING” (using the word “SKY”) on August 13, 2001 for trading sanitary ware, and that the company name was changed to “SKY LIGHT INTERNATIONAL TRADING” when the company expanded its business activities internationally. The Respondent further states that, on December 15, 2002, it decided to provide its customers with an additional service and to start a project named “SKY PRIVATE EXECUTIVE” (SKYPE). On April 5, 2003, the company’s owner and his partner registered a new business for international trading, Mobitronix LLC.
The Respondent states that, to ensure smooth workflow and time management for all of the companies’ customers, it was intended to create an environment on the Intranet with later expansion to the Internet under the disputed domain name, which was registered for that purpose on September 25, 2005. The Respondent states that the disputed domain name was registered as an abbreviation of “Sky Private Executive”, that the SKYPE project was extensively promoted in all corporate correspondence, invoices and documentation, and that the Respondent established strong common law trademark rights with regard to “SKYPE” in the U.A.E., Oman, Kuwait, Ethiopia, Tunisia and the Kingdom of Saudi Arabia.
The Respondent further states that, upon receipt of the Complaint, it successfully applied for registration of trade mark “SKYPE” to protect its rights and interests related to the “Sky Private Executive”-Project (SKYPE) and that the U.A.E. Trade Mark Registrar confirmed that there were no similar or confusing trademarks.
The Respondent argues that it enjoys rights or legitimate interests in the disputed domain name since it has used the abbreviation of a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services since December 15, 2002. Furthermore, between October 2005 and 2008, the Respondent inserted the disputed domain name details in all its correspondence and invoices in order to promote its project. In 2008, due to a crisis, it had to put its Internet project on hold. Furthermore, the Respondent states that it is commonly known by the disputed domain name.
Finally, with regard to bad faith, the Respondent states that, due to internal regulations of the U.A.E Telecommunication Authority, the Complainant’s domain names “www.skype.com”, “www.skype.net”, “www.skype.org” and “www.skype.co.uk” are blocked and are not accessible from the U.A.E., and that the Complainant’s services are therefore completely unknown in the U.A.E. Furthermore, the Respondent states that it had no intention or interest in registering the disputed domain name for the purposes of selling, renting or otherwise disposing of it for financial benefit, except for the benefit of its Sky Private Executive (SKYPE) project, that the disputed domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, that the Complainant and the Respondent are not competitors, that the disputed domain name was not registered by the Respondent to disrupt the Complainant’s business or to attract for commercial gain Internet users to the Respondent’s website 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 website or location. With regard to the “sponsored links”, the Respondent states that the availability of such links might result from a technical error of its DNS-provider or of its IT Department, and that it never intended to misleadingly divert consumers for commercial gain or to tarnish the Complainant’s trademark.
Under paragraph 6(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the 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 domain name; and
(iii) the domain name has been registered or is being used in bad faith.
The disputed domain name fully incorporates the Complainant’s SKYPE Marks and is identical to such marks. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the domain name (cf. Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson c/o Sony Ericsson Mobile Communications AB, Sony corporation, c/o Sony Ericsson Mobile Communications AB v. Mohamed Ali Aal Ali, WIPO Case No. DAE2006-0002; Yahoo! Inc. v. Fady Alassahd a/k/a Fady Al Assaad, WIPO Case No. DAE2008-0001; eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 6(a)(i) of the Policy.
Paragraph 6(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 6(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case (that is not contested and persuasive on the record) to fulfill the requirements of paragraph 6(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 6(a)(ii) of the Policy.
In the view of the Panel, the Respondent did not provide sufficient evidence that it has own rights or legitimate interests in the disputed domain name. The Respondent claims to own rights or to have legitimate interests in the disputed domain name since it has used the abbreviation of a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services since December 15, 2002 and inserted the disputed domain name details in all its correspondence and invoices between October 2005 and 2008. According to the documentary evidence provided by the Respondent, the disputed domain name was registered on September 25, 2005. Prior to that date, the Respondent had not used “SKYPE” but rather “Sky Private Executive” in its correspondence. The Panel accepts that the Respondent, which had already been doing business under the names “SKY LIGHT SANITARY WARE TRADING” and “SKY LIGHT INTERNATIONAL TRADING”, intended to use “Sky Private Executive” back in 2002 as an additional company name and started to communicate such name in its correspondence. However, the Respondent did not provide sufficient evidence with regard to its use of “SKYPE”, as it only provided three invoices dated October 2, 2005, October 4, 2005 and October 6, 2005 respectively, which include the disputed domain name at the very bottom. Furthermore, the Respondent provided some kind of advertising for its alleged “SKYPE” services, stating that “SKYPE” would be launched on August 8, 2008, but without any reference to “Sky Private Executive” or the Respondent’s company. Considering that the Complainant announced its acquisition by eBay, Inc. on September 12, 2005, which was broadly covered by the media worldwide, only 13 days before the Respondent registered the disputed domain name, the Panel assumes that, on balance, it is more likely than not that the Respondent, which had already intended to use “Sky Private Executive” for more than three years without registering a corresponding domain name, heard of eBay’s acquisition of the Complainant in 2005 and then started using “SKYPE” as an acronym for “Sky Private Executive” and registered the disputed domain name in September 2005.
The Panel also notes that the Respondent alleges to have a trademark in U.A.E. for the term “skype”, and attaches an Arabic language document as evidence without translation thereof. While the Panel could request further statements, including a translation, regarding the existence of such trademark registration, if such exists, the Panel need not make a finding on such in light of the present circumstances indicating the lack of good faith on the part of the Respondent in purporting to use the term “skype”. The Panel looks to such UDRP cases as Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, where the panel stated, “… it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. [….] To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.”. Such good faith is absent on the present record, and as such, the Panel does not find a basis to find legitimate interests on the part of the Respondent in the disputed domain name.
Based on these circumstances, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 6(a)(ii) and 6(c) of the Policy.
Paragraph 6(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 6(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has 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.
On balance, the Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the SKYPE Marks for the following reasons:
First of all, the Panel is aware that the Complainant’s acquisition by eBay, Inc. in 2005 received broad media coverage worldwide. Given the time frame, the Respondent’s registration of the disputed domain name only 13 days after the public announcement of the Complainant’s acquisition by eBay, Inc. was most likely not a coincidence. Moreover, the Respondent states that the Complainant’s websites are today completely blocked in the U.A.E due to internal regulations of the UAE Telecommunication Authority, but does not refer to the situation in 2005 when it registered the disputed domain name. Most likely, the Complainant’s websites were accessible from the U.A.E. at an earlier stage. Furthermore, the Respondent claims to have established strong common law trademark rights in “SKYPE” in the U.A.E., Oman, Kuwait, Ethiopia, Tunisia and the Kingdom of Saudi Arabia and not only in the U.A.E. Therefore, the Panel assumes that the Respondent is doing business in all of these countries, where the Complainant’s services are not supposed to be blocked. The fact that the Respondent’s staff members use the Complainant’s services themselves reveals that the alleged blocking of the Complainant’s websites within the U.A.E. does not to prevent residents from using the Complainant’s services. Finally, the fact that the Complainant had no registered trademark rights in the U.A.E at the time of the registration of the disputed domain name does not prevent a finding of registration in bad faith, as the non-registration of a well-known mark in the Respondent’s jurisdiction does not automatically exclude trade mark rights, while the use of a well-known mark on the Internet may lead to its protection, as well as any common law rights it has been acquired beforehand.
The Respondent’s use of the disputed domain name in connection with a parking website providing links to the Complainant’s direct competitors would have constituted bad faith use under paragraph 6(b)(iv) of the Policy. With regard to parking websites, it is well established that a respondent (as the registered owner of the website at a disputed domain name) is ultimately responsible for the information available at the website and for all content posted there, regardless of how and by whom such content was generated (cf. Baccarat SA v. Hiro, WIPO Case No. D2010-1315; Hanover Company Store, LLC v. Domains by Proxy, Inc. / Martha Osborne, WIPO Case No. D2010-1182; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; Sanofi-aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636; State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Owens Corning v. NA, WIPO Case No. D2007-1143; Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381; Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutschland GmbH v. 1N4 Web Services, WIPO Case No. D2005-0938).
Consequently, the Panel finds that the Respondent registered or used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 6(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <skype.ae> be transferred to the Complainant.
Brigitte Joppich
Presiding Panelist
Mohamed-Hossam Loutfi
Panelist
Anders Janson
Panelist
Dated: January 23, 2012