WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skype Limited v. Hanna Jeong
Case No. DPH2011-0001
1. The Parties
The Complainant is Skype Limited of Dublin, Ireland, represented by Hogan Lovells (Paris) LLP, Paris, France.
The Respondent is Hanna Jeong of Shin-Chun Dong, Si-Heung City, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <skype.ph> 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 (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, via an email of April 20, 2011, sought an extension of time within which to file her Response. The Center, through its email on the same date, declined such request and reiterated that the due date for the filing of a Response was on April 20, 2011. The Respondent did not file a Response.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 11, 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.
4. Factual Background
The Complainant is an Internet communications company which, since its creation in 2003, has developed and operated a voice-over-Internet-protocol (VOIP) software under the trademark SKYPE (herein the “Trademark SKYPE”). Once the SKYPE software is freely downloaded onto connected devices such as computers and mobile phones, it enables registered users to communicate freely with each other by voice, video and instant message or make low cost calls anywhere in the world.
By the end of December 2009, the registered users of the SKYPE software had made 11.3 billion minutes of such communications in the year, using the 32 languages available. There were approximately 560 million registered users by June 30, 2010.
By November 2010, there were over 6 million registered users of the SKYPE software in the Philippines and nearly 5 million registered users in the Republic of Korea.
The Trademark SKYPE has been registered by the Complainant as a national and international trademark worldwide such as in the United States of America, European Union, Thailand, Australia, New Zealand, Russian Federation, Switzerland, Hong Kong, SAR of China, Canada and Japan, more particularly as a national trademark in the Republic of Korea, in September 29, 2006, in association with wares in classes 9, 38 and 42 and class 25 in January 2008.
The Complainant has registered and is using numerous domain names consisting of the Trademark SKYPE and gTLD suffix or country identifications such as “.com, .net, .org, .info, .biz, .mobi, .de, .eu, .it” to name only a few of this family of domain names, namely the 26 the Complainant owns as put in evidence (Annex 4 of the Complaint).
The Complainant has been involved in 13 UDRP domain name proceedings before dispute panels of the Center, the National Arbitration Forum and other providers where the disputed domain names which incorporated the Trademark SKYPE were transferred to it as a complainant.
The disputed domain name was registered by the Respondent Hanna Jeong of the Republic of Korea on September 26, 2007. The website corresponding to the disputed domain name address contains links to third party websites which amongst others are for telephone, Internet telephone, network monitoring, mobile video, online phone card, cellphone, VOIP phone and mobile phone (Annex 6 of the Complaint).
On August 31, 2010, the Complainant attempted to contact the Respondent by email to the DotPH registry followed by a telephone call in order to obtain the Respondent’s email contact, which request was refused along with a refusal to forward the Complainant’s cease and desist letter to the Respondent. On September 16, 2010, the Complainant’s lawyer, in an email to the Chief Executive Officer of DotPH registry, brought to the latter’s attention the infringement of the Complainant’s intellectual property rights and requested his assistance.
On October 4, 2010, a cease and desist letter was sent by registered post to the Respondent informing the latter of the violation of the Complainant’s exclusive intellectual property rights by the Respondent’s registration and use of the disputed domain name and requesting the Respondent to cease and desist of any activities in relation to the disputed domain name and requesting its transfer. The Respondent never replied to the said letter prior to the notification of the Complaint.
The Respondent is not an authorized dealer or licensee of the Complainant and the latter has never allowed the Respondent to use its Trademark SKYPE nor to register and use the disputed domain name.
5. Parties’ Contentions
The Complainant represents to be a reputable global Internet communications company and that by reason of its extensive use of its Trademark SKYPE in association with its VOIP communications software available worldwide in 32 languages, used by over 560 million of registered users as of June 30, 2010, its Trademark SKYPE has acquired notoriety and accumulated considerable reputation and goodwill around the world including in the Philippines which country corresponds to the geographical suffix added to the Trademark SKYPE in the disputed domain name and in the Republic of Korea where the Respondent resides.
The Complainant further represents that the fame of its Trademark SKYPE is shown by the overwhelming majority of search results under the Trademark SKYPE in a Google search for Philippines specific or the Republic of Korea specific Google searches where, in the “www.google.com” search, the first two hundred related to the Complainant.
According to the Complainant, the fast growing popularity and consumer reputation of the Trademark SKYPE made it one of the most famous companies and brands in the world enjoying global reach by the 26 domain names comprising its Trademark SKYPE.
The 13 UDRP domain name proceedings before dispute panels are indicative of its reputation and distinctiveness which many cyber squatters have tried to unfairly exploit its consumer recognition and goodwill associated to its Trademark SKYPE and numerous Trademark SKYPE registrations generally referred to herein. The following domain names <hiskype.com>, <hiskype.net>, <skypebrasil.com>, <skype-turkiye.net>, <skype.co.uk>, <skype.be> and <skype.co.tw> illustrate some of the domain names registered by cyber squatters which transfer has been ordered.
The Complainant submits that the disputed domain name is identical or confusingly similar to its Trademark SKYPE in that it incorporates and reproduces its highly distinctive Trademark SKYPE and that the addition of the suffix “.ph” in the disputed domain name should be disregarded in considering confusing similarity between the disputed domain name and its well-known Trademark SKYPE. See e.g., Microsoft Corporation v. Maganda Industries and/or Douglas Morris a.k.a. Douglas Morrison, WIPO Case No. DPH2004-0001.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name and relies on its view that the Respondent is neither commonly known by the term “skype” nor has it secured or attempted to secure trademark rights in said term “skype” and furthermore, the Respondent is not an authorized dealer, distributor or agent of the Complainant nor allowed by the Complainant to make use of its renowned Trademark SKYPE.
According to the Complainant, the website screen captures on August 4 and November 17, 2010, show that the content of the website at the disputed domain name address consisted of targeted commercial links to third parties, identified as VOIP phone, Internet telephone and many others listed herein which indicate that the Respondent clearly targets the field of activities of the Complainant and its competitors and that such targeted commercial links cannot conceivably suggest a bone fide offering of goods or services. See e.g., Sony Ericsson Mobile Communications AB v. PD Hosting Inc., WIPO Case No. DPH2006-0001.
Finally, according to the Complainant, there is nothing to suggest that the Respondent has made any legitimate noncommercial or fair use of the disputed domain name which points to a website consisting of a parking page on which the Internet visitors will find many targeted links to third party commercial websites including the activities of the Complainant and its competitors and from which the Respondent is undoubtedly earning revenue via click-through links resulting from the confusion between the disputed domain name and the Trademark SKYPE of the Complainant.
Based on the facts that the term “skype” is neither generic nor a dictionary term but is an invented term which has become a highly distinctive trademark globally renowned pursuant to continuous use since 2003, the Complainant submits its belief that it is inconceivable that the Respondent would not have the Trademark SKYPE in mind when the latter chose to register the disputed domain name, even more so upon considering that the Complainant had already established its global reputation and considerable goodwill including in the Republic of Korea, the country where the Respondent resides.
According to the Complainant, the content of the website to which the disputed domain name resolves which website consists of several categories of targeted hyperlinks under several “phone” headings as mentioned herein, all referring to the same field of activities of the Complainant, confirm in the Complainant’s view the fact that the Respondent was well aware of its Trademark SKYPE.
The Complainant further contends that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its highly distinctive Trademark SKYPE in a domain name corresponding to the Philippines, a country where it already had a significant number of registered users, and be added to the numerous domain names registered by the Complainant under country or geographical extensions such as “.it, .de, .es” and many others. In anticipating the Complainant’s interests, the Respondent prevented the Complainant from reflecting its Trademark SKYPE in a corresponding “.ph” domain name. According to the Complainant, the Respondent’s intention to misappropriate for itself and deny to the Complainant the benefit of its reputation is apparent.
The Complainant claims that the Respondent’s intention in registering and using the disputed domain name was to capitalize on the fame of the Trademark SKYPE and the reputation and goodwill associated therewith to attract or divert for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s Trademark SKYPE as to the source, sponsorship, affiliation or endorsement of its website.
Finally, the Complainant contends that upon considering the exact Trademark SKYPE, highly distinctive and globally renowned, in the disputed domain name, it is not plausible to conceive a circumstance in which the Respondent could legitimately use the disputed domain name in good faith. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant concludes its contention of registration and use of the disputed domain name in bad faith with the fact that the Respondent completely ignored its ceased and desist letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(1) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(1) The disputed 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) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, in providing detailed evidence, has clearly shown that its use of the Trademark SKYPE since 2003 in association with its software, freely available to consumers registered with it and VOIP communications, makes it easy for said registered users to communicate freely with each other as explained herein. The registration of the Trademark SKYPE in several countries, including the Republic of Korea, on the one hand, and the use of 26 domain names which incorporate the complete Trademark SKYPE which consists of a coined term, which is now used by over 560 million of registered users in 32 languages worldwide, on the other hand, demonstrate that the said trademark enjoys extensive reputation and goodwill associated therewith.
This notoriety is further supported by and is the result of the 26 domain names incorporating the Trademark SKYPE and registered by the Complainant including, in particular, several of said domain names that have a country suffix added thereto. Consequently, the Panel finds that the Complainant has significant rights in the Trademark SKYPE in association with its activities and said trademark rights are also present and incorporated in the family of the 26 domain names it owns and uses for its activities.
The disputed domain name incorporates the Trademark SKYPE with the suffix “ph” added thereto as submitted by the Complainant, relying on the UDRP decision Microsoft Corporation, supra, the presence of the suffix “.ph” does not in any way diminish the confusing similarity of the disputed domain name with the most distinctive trademark of the Complainant.
The Panel finds that the disputed domain name is confusingly similar with the Trademark SKYPE.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its Trademark SKYPE. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark SKYPE.
This prima facie evidence has not been challenged by the Respondent nor has the Respondent challenged the representations of its use made of the website at the disputed domain name address where there are several commercial links to third parties which carry activities in the same field as those of the Complainant and its competitors.
The Panel agrees with the views stated by the panel in the UDRP decision Sony Ericsson Mobile Communications AB, supra, which held that the presence and use of such commercial links cannot conceivably suggest a bona fide offer of goods and services which finding this Panel agrees with and adopts.
The Panel finds that there are no facts to even suggest that the Respondent has made any legitimate or noncommercial use of the disputed domain name and therefore the Respondent does not have any rights or legitimate interests in the disputed domain name.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(2) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed 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 the 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 website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Upon considering the invented character of the term “skype” and the highly distinctive status and global renown of the Trademark SKYPE, the Panel considers that the Respondent was most likely aware of and had the Trademark SKYPE in mind when the Respondent registered the disputed domain name. The unique inventive character of the Trademark SKYPE and the global reputation and substantial goodwill associated therewith, particularly in the Republic of Korea, the country of residence of the Respondent and the Philippines, the country targeted by the disputed domain name, does not, in the Panel’s mind, allow any other conclusion or presence of good faith in the registration of the disputed domain name.
The Panel finds that the disputed domain name was registered in bad faith.
The presence of the different categories of targeted hyper links within a “phone” group and thereby the reference to the same field of activities of the Complainant not only confirm the awareness of the Trademark SKYPE by the Respondent, but of the latter’s goal of capitalizing on the fame, reputation and goodwill associated with the Trademark SKYPE in order to attract or divert for commercial gain Internet users to the Respondent’s website and generate revenues therefrom.
Considering the family of geographical domain names registered and used by the Complainant under the different extensions, the Panel agrees with the Complainant that in registering the disputed domain name, the Respondent closed the door and access to the Complainant’s possible or likely avenue of registering a domain name incorporating the Trademark SKYPE and the suffix “.ph”, thereby denying the Complainant the benefit of its goodwill and reputation to this eventual enlargement of its family of domain names.
Based on the foregoing, the Panel finds that the disputed domain name was used in bad faith.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <skype.ph> is confusingly similar to the Complainant’s Trademark SKYPE;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(9) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <skype.ph> be transferred to the Complainant.
J. Nelson Landry
Dated: May 19, 2011