WIPO Domain Name Decision: D2005-1112

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skype Limited v. Benjamin Decraene

Case No. D2005-1112

1. The Parties

The Complainant is Skype Limited of Dublin, Ireland, represented by Genga & Associates, P.C., of the United States of America.

The Respondent is Benjamin Decraene of Brussels, Belgium, represented by Simont Braun of Belgium.

2. The Domain Name and Registrar

The disputed domain name <skyp.com> (the “Domain Name”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2005. On October 27, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On October 27, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 2, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 6, 2005. The Response was filed with the Center on December 1, 2005.

The Center appointed Anders Janson as the Sole Panelist in this matter on December 20, 2005. 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established.

The Complainant, the Irish company Skype Limited, is incorporated in Ireland and has its principal business in London, United Kingdom. The Complainant is a subsidiary responsible for enforcing the intellectual property rights for the Skype Group of companies. The Complainant owns the SKYPE mark and uses it continually to identify and market software that enables voice and data communications over the Internet. Skype has registered the trademark SKYPE in the following countries: Hong Kong, Korea, Taiwan, Israel, Liechtenstein, Finland, Australia, New Zealand and Switzerland.

The Respondent asserted, and provided evidence in support of, the following facts, which the Panel finds established.

The Respondent is an amateur photographer, painter and sculptor and registered the Domain Name on May 24, 2002.

The Panel furthermore finds established that, a conclusion that is drawn from Annex C to the Complaint, the first trademark registration by the Complainant of the trademark SKYPE was carried out in the United States on January 15, 2004, before the United States Patent and Trademark Office.

5. Parties’ Contentions

A. The Complainant

The Complainant contends that:

- The Domain Name is identical and confusingly similar to trademarks or service marks in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the Domain Name;

- The Domain Name has been registered and is being used in bad faith; and

- The Domain Name <skyp.com> should be transferred to the Complainant.

B. The Respondent

The Respondent contends that:

- The first condition of paragraph 4(a)(i) of the Policy is not satisfied based on the fact that the Complainant is not the owner of the trademark SKYPE;

- The first condition of paragraph 4(a)(i) of the Policy is not satisfied based on the fact that the Complainant did not acquire trademark registration until 19 months after the registration of the Domain Name and has not provided any evidence of the use of SKYPE prior to the trademark registrations and therefore has not proven that the Complainant has procured common-law trademark rights, which – if proven – still would predate the registration of the Domain Name by at least nine months;

- The Respondent did not strategically modify the word “Skype” by omitting the letter “e” to create the new word “Skyp”, which is confusingly similar to “Skype”. The Respondent does not deny that the Domain Name is similar to the trademark SKYPE;

- The Respondent has rights and/or legitimate interests in respect of the Domain Name, the Respondent registered the Domain Name before the Complainant used the mark SKYPE or filed a trademark registration. Furthermore, the Complainant has authorized the Respondent to use the Domain Name in order to promote the services of Skype; and

- There was no bad faith registration of the Domain Name and there is no bad faith use of the Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) 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

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the Policy. Some relevant decisions dealing with this matter are Telcel, C.A. v. jerm and Jhonattan Ramírez, WIPO Case No. D2002-0309 <telcelbellsouth.com>, Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624 <lexusmichaels.com> and Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796 <televisadeporte.com>. The Panel finds that Skype Limited, as a subsidiary within the Skype Group, has rights to the trademark SKYPE under the Policy.

To successfully assert common-law or unregistered trademark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit a complainant’s rights in a common-law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction. The Panel finds it established that the Complainant has not sufficiently proven common-law or unregistered trademark rights.

Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The Policy makes no specific reference to the date on which the owner of the trade or service mark acquired rights. This has been found by numerous panels, for instance in the following decisions: Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 <digitalvision.com>, AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527 <svenskaspel.com>, Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544 <iogen.com> and MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 <madrid2012.com>. It is therefore, in this case, possible for the Panel to examine whether there is an identity or a confusing similarity. However, given that the Respondent has not denied that the Domain Name and the trademark of the Complainant are confusingly similar, there is no need for further consideration.

The Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof rests with the Complainant. A complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. However, the overall burden of proof rests with a complainant.

After reviewing all of the proof provided by the Complainant and the Respondent, the Panel finds it established that the Respondent has been allowed – on several occasions – to insert a hyperlink on his website to the Complainant’s website within the scope of different affiliation programs. The fact that an announcer expressly accepts – as in this case – that an affiliate becomes part of an affiliation program hyperlinking to the announcer’s website may, according to this Panel, be considered as an authorization/permission to use the Domain Name. The Complainant, by accepting the Respondent as an affiliate, could perhaps be regarded as having recognized the rights and/or legitimate interests of the Respondent in the Domain Name.

The Panel finds it established that the Respondent registered the Domain Name before the Complainant used the mark SKYPE or filed a trademark registration. This fact, together with the fact that the Domain Name was and is used by the Respondent without objection from the Complainant, may, according to the Panel, be enough to conclude that the Complainant has not proved that the Respondent has no rights and/or legitimate interests in the Domain Name.

Be that as it may, the Complainant has to prove all three elements of the Policy and, as is evident from the discussion below, it has failed under the third element. It is therefore unnecessary for the Panel to conclude under this second element.

C. Registered and Used in Bad Faith

Several UDRP panels have found, in previous decisions, that when a domain name is registered before a trademark right is established, the domain name was most likely not registered in bad faith because the registrant could not have contemplated the complainant’s non-existent rights. Examples hereof are: John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074 <ode.com>, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 <digitalvision.com> and PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182 <print4business.com>.

There are, however, certain situations when a respondent is clearly aware of a complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any of the complainant’s potential rights. In these cases, bad faith can be found. This could occur when a respondent is aware of a complainant’s potential rights and registers the domain name to take advantage of any rights that may arise from a complainant’s enterprises.

The Complainant, under paragraph 4(a)(iii) of the Policy, must prove the existence of both bad faith registration of the Domain Name and continuing bad faith use of the Domain Name. The Panel finds that there is not enough proof of a bad faith registration. The Complainant has not provided enough proof that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor. Nor has the Complainant provided enough proof for other circumstances indicating a bad faith registration.

The Complainant has furthermore asserted that the Domain Name is being used in bad faith. The Respondent may well have, as established above, rights and/or legitimate interests in the Domain Name. Even if no such legitimate rights and/or interest had been found, the proof provided by the Complainant would not have been enough to prove that the Respondent used the Domain Name in order to intentionally attempt to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on his website or location.

In conclusion, the Complainant has not proven the conditions set forth in paragraph 4(a)(iii) of the Policy.

The Panel would like to point out that this finding does not in any way attempt to prejudge the serving or outcome of any eventual trademark dispute between the parties under the relevant national law.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Anders Janson
Sole Panelist

Dated: January 3, 2006