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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marlink SAS v. WhoisGuard Protected, WhoisGuard Inc / Linda Bonds

Case No. D2021-0068

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard Inc, Panama / Linda Bonds, United States of America.

2. The Domain Name and Registrar

The disputed domain name <skyfiledrive.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 January 11, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 11, 2021, 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 January 13, 2021 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 January 13, 2021.

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 January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2021.

The Center appointed Nicholas Smith as the sole panelist in this matter on March 2, 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 specializing in the provision of telecommunications services and cybersecurity. Since 1998 the Complainant has used a mark consisting of the term SKYFILE (the “SKYFILE Mark”) for its telecommunications and data transmission services.

The Complainant (or its predecessors in title) has held trademark registrations for the SKYFILE Mark in various jurisdictions since 2002, including a French trademark for the SKYFILE Mark, with a filing and registration date of February 14, 2002 (registration No. 3147842).

The Domain Name was registered on December 13, 2020. As of the date of the decision, the Domain Name does not resolve to an active website, however when visiting the website using a browser such as Google Chrome, the visitor is warned that the site accessed is misleading or malicious.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s SKYFILE Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

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

The Complainant is the owner of the SKYFILE Mark, having registered the SKYFILE Mark in France and other jurisdictions. The Domain Name is confusingly similar to the SKYFILE Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the SKYFILE Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a webpage marked as misleading.

The Respondent has registered and uses the Domain Name in bad faith. The Complainant’s SKYFILE Mark is well known and hence the Domain Name has been registered with the aim of taking advantage of the Complaint’s reputation in the SKYFILE Mark. The Respondent has activated email servers from the Domain Name so it may use the Domain Name for phishing. In such circumstances, the Respondent’s use of the Domain Name for a misleading site amounts to use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the SKYFILE Mark, having a registration for the SKYFILE Mark as a trademark in France and various other jurisdictions.

The Domain Name incorporates the SKYFILE Mark in its entirety with the addition of the dictionary term “drive”. The addition of a dictionary term to a complainant’s mark does not prevent a finding of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s SKYFILE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SKYFILE Mark or a mark similar to the SKYFILE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact, there is no evidence of any demonstrable preparations to use the Domain Name at all.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 the Respondent has 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 its website or other online 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.

The Panel finds on the balance of probabilities that the Respondent was aware of the Complainant and its reputation in the SKYFILE Mark at the time the Respondent registered the Domain Name. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the SKYFILE Mark and the word “drive” (a descriptive term that can be used to refer to the Complainant’s email, telecommunications, and data transfer services provided by the Complainant under the SKYFILE Mark) unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the SKYFILE Mark.

The Panel notes that there is a notice on a browser that suggests that at some point the Domain Name may have been connected with a misleading site, however in the absence of any evidence as to the nature of the site (which is not included in the Complaint), the Panel does not wish to speculate as to what, if any, use the Domain Name has been put to in the past. Nevertheless, the Panel need not make a determination regarding this matter in order to find bad faith in the circumstance of this case.

The Panel is prepared to infer, based on the evidence of the case and the conduct of the Respondent, including the lack of any active use of the Domain Name and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that combines the SKYFILE Mark and the word “drive”, that the Domain Name is most likely being held pending use as website (or email address, noting the evidence that the Respondent has activated email servers at the Domain Name) that, without the license of the Complainant, will offer or make reference to the Complainant, the Complainant’s services, or services that purport to compete with the Complainant’s telecommunications and data transfer services. As such, the Panel finds that the lack of active use of the Domain Name does not prevent a finding of use in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 <skyfiledrive.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: March 8, 2021

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