WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marlink SAS v. Marianne Gerritsen, Vimexx
Case No. D2021-0320
1. The Parties
Complainant is Marlink SAS, France, represented by Inlex IP Expertise, France.
Respondent is Marianne Gerritsen, Vimexx, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <skyfille.com> is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 5, 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 Respondent of the Complaint, and the proceedings commenced on February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 9, 2021.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on March 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
Complainant is a company organized under the laws of France that is specialized in providing telecommunication services and particularly involved in cyber security in the maritime industry.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its brand “SKYFILE”, in particular the following, which enjoys, inter alia, protection for the territory of the Netherlands:
- International trademark registration for SKYFILE (word mark), No. 796142, registered on June 18, 2002.
Moreover, Complainant has demonstrated to own since 1998 the domain name <skyfile.com>, which resolves to Complainant’s main website at “www.marlink.com” and is dedicated to promote Complainant’s SKYFILE products and related services.
Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the Netherlands who registered the disputed domain name on January 4, 2021. The disputed domain name does not resolve to an active website.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant submits that the disputed domain name is confusingly similar to Complainant’s SKYFILE trademark as it only differs therefrom by the addition of a second letter “l”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) there is no business or legal relationship between the Parties and Complainant has never authorized or licensed Respondent to use its SKYFILE trademark in any way, and (2) Respondent does not make any use of the disputed domain name, which merely points to an error page. Finally, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith since (1) given the reputation of Complainant’s SKYFILE trademark and in the light of the fact that the disputed domain name <skyfille.com> has no particular meaning, the only reason for having registered the disputed domain name was to create confusion with Complainant’s SKYFILE trademark in the public’s mind, and (2) email servers have been activated under the disputed domain name why it is likely that Complainant might be the target of phishing and other scam attacks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the SKYFILE trademark in which Complainant has rights.
The disputed domain name <skyfille.com> incorporates the SKYFILE trademark in its entirety with a simple misspelling caused by adding/doubling the letter “l”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). The fact that the disputed domain name also includes an additional letter “l” which leads to a misspelling of Complainant’s SKYFILE trademark does not prevent a finding of confusing similarity. Misspelled or typo-squatted domain names are, on the contrary, intended to be confusing so that Internet users, who unwittingly make common type errors, will enter the typo-squatted domain name instead of the correct spelled trademark (see e.g., WIPO Overview on WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9; National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its SKYFILE trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not seem to have any trademark rights associated with the terms “skyfile” and/or “skyfille” on its own. Finally, it appears that at the time of this decision, the disputed domain name does not resolve to an active website - and that it never has done so in the past.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As a general rule, panels 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 (see WIPO Overview 3.0, section 3.3). While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
Complainant contends, and Respondent has not challenged this contention, that its SKYFILE trademark enjoys a relevant reputation. Also, given the fact that the disputed domain name includes an obvious typo-squatted version of Complainant’s SKYFILE trademark by adding/doubling the letter “l”, it is more likely than not that Respondent registered the disputed domain name in full knowledge of said trademark. Furthermore, the disputed domain name is also a typo-squatted version of the domain name <skyfile.com> which Complaint owns since 1998, which further indicates that Respondent targeted Complainant. Moreover, Respondent has failed to submit any explanation as to why it selected the term “skyfille” as a domain name. Accordingly, there is little, if no room for any plausible use of the disputed domain name, which would not take unfair advantage by profiting from the undisputed reputation, which Complainant’s SKYFILE trademark enjoys. Against this background, the mere passive holding of the disputed domain name by Respondent is not in contrast to hold that Respondent has still registered and is using the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy.
In this context, the Panel has also noted that Respondent provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated February 8, 2021, could not be delivered. This fact at least throws a light on Respondent’s behavior, which supports the Panel’s bad faith finding.
Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <skyfille.com> be transferred to Complainant.
Stephanie G. Hartung
Date: March 23, 2021