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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MARLINK SAS v. WhoisGuard Protected, WhoisGuard, Inc. / Remi Law

Case No. D2020-3287

1. The Parties

The Complainant is MARLINK SAS, France, represented by Inlex IP Expertise, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Remi Law, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <skyflle.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2020. On December 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2020, 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 December 10, 2020.

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 December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 15, 2021. 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 providing telecommunications services, and in particular cybersecurity services, in the international maritime industry.

The Complainant holds several trade mark registrations, including the following:

-French word mark SKYFILE registered on February 14, 2002 under No. 3147842;
-Canadian word mark SKYFILE registered on February 16, 2005 under No. 1131757;
-United States of America word mark SKYFILE registered on March 8, 2005 under No. 2930461;
-Philippines word mark SKYFILE registered on December 19, 2005 under No. 4-2002-2155;
-International Registration word mark SKYFILE registered on June 18, 2002 under No. 796142;
-Hong Kong word mark SKYFILE registered on May 7, 2010 under No. 301496205,

The Complainant’s trade marks are hereafter together referred to as the “Trade Marks”.

The Domain Name was registered on November 15, 2020. As provided in the Complaint, the Domain Name resolves to an error page.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Domain Name is almost identical to the Complaint’s trade mark SKYFILE, the only difference being the letter “l” which replaces the “i”: “skyfile” vs “skyflle”. The Complainant submits that this does not create a strong difference since the letters “l” and “i” are very close visually. Therefore, the Complainant contends, the change has no other purpose than misleading the consumer. Furthermore, the Complainant states, the generic Top-Level Domain (“gTLD”) extension “.com” must not to be taken into consideration when examining the identity or similarity between the Trade Marks and the Domain Name.

Considering the above-mentioned elements, the Complainant concludes, the Domain Name is confusingly similar with the Trade Marks.

The Complainant sates that there is no business or legal relationship between the Complainant and the Respondent, and the Complainant has neither authorized nor licensed the Respondent to use the Trade Marks in any way. The Complainant points out that a quick search among the freely available trade mark databases reveals that there is no trade mark SKYFLLE, which would correspond to the second-level portion of the Domain Name. Moreover, the Complainant contends, the Domain Name resolves to an error page and this kind of website reflects that the Respondent’s only interest in the Domain Name is to take unfair advantage of the reputation of the Trade Marks. According to the Complainant, it is therefore obvious that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant puts forward that from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of “passive holding”. In this context, the Complainant points out that when registering the Domain Name, the Respondent employed a privacy service in order to hide its identity and to avoid being notified of a UDRP proceeding. Furthermore, the Complainant submits, the Respondent “knew or should have known” the Trade Marks, since a quick Internet search on “Skyfile” shows more than 132,000 results and also shows that the top search results are the Complainant’s website and websites owned by Skyfile solutions retailers.

Therefore, the Complainant contends, the Trade Marks should be considered to have a reputation in the satellite communication field of activity.

According to the Complainant, the choice of the Domain Name cannot have happened by chance as the term “skyflle” has no meaning and as it is hard to pronounce. Therefore, the Complainant submits, the only reason for having registered the Domain Name was to create confusion in the public’s mind.

Finally, the Complainant points out that email servers have been activated so that emails with addresses “[...]@skyflle.com” can be sent and received. The Complainant states that it is very sensitive to phishing and scam risks as it has been the target of several phishing and scam attacks recently with a similar mode of operation, i.e. the registration of an almost identical domain name with a proxy service, that resolves to a parking page or an inactive page and for which emails servers have been activated.

In light of the above, the Complainant states, it is obvious that the Respondent has registered the Domain Name in bad faith for the sole purpose of taking advantage of the Complainant and of its Trade Marks by misleading consumers.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the Trade Marks in their entirety, be it with a typo, replacing the “i” in SKYFILE with an “l”. As the Domain Name consists of a common, obvious, or intentional misspelling of the Trade Marks, this does not affect the confusing similarity of the Domain Name to the Trade Marks for purposes of the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9 and, inter alia, Allianz SE v. WhoisGuard Protected, WhoisGuard, Inc. / Azir Malik, WIPO Case No. D2019-2511). The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the complainant has to make out a prima facie case that the respondent does not have rights or legitimate interests in the domain name. If the complainant succeeds in doing so, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name, and has not acquired trade mark rights in the Domain Name. As the Domain Name does not resolve to an active website, there is no evidence that the Domain Name is used for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Accordingly, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent.

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:

- the Respondent’s registration of the Domain Name occurred 18 years after the registration of the earliest of the Trade Marks;
- the non-dictionary nature of the term “skyfile” incorporated, with a typo, in the Domain Name implies that the Respondent cannot claim to have accidentally registered a domain name that happens to correspond to the Trade Marks;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.

With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in WIPO Overview 3.0, section 3.3, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this view, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith.

In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:

- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the hiding by the Respondent of its identity through the use of a proxy domain registrar;
- the lack of a Response from the Respondent;
- the activation of email servers so that emails with addresses “[...]@skyflle.com” can be sent and received, which may be used for phishing or scam operations suggesting that such emails come from the Complainant; and
- the implausibility of any good faith use to which the Domain Name, comprising a typosquatting variant of the Trade Marks, may be put in this case.

Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.

7. 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 <skyflle.com> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist
Date: January 29, 2021

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