WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MARLINK SAS v. Stephen Okonkwo
Case No. D2017-1356
1. The Parties
Complainant is MARLINK SAS of Paris, France, represented by Inlex IP Expertise, France.
Respondent is Stephen Okonkwo of Ketu, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <sky-file.com> (the “Domain Name”) is registered with Upperlink Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2017. On July 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 July 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 15, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 24, 2017. 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 French company specializing in satellite communications, with its official website at “www.marlink.com”.
Complainant owns a number of trademarks and domain names corresponding to its mark, SKYFILE, all registered prior to the date of registration of the Domain Name. Complainant uses its SKYFILE marks in connection with satellite communication services. Complainant’s marks include the following:
- French trademark SKYFILE, No. 3147842, filed on February 14, 2002.
- Canadian trademark SKYFILE, No. 1131757, filed on February 20, 2002.
- Indian trademarks SKYFILE, Nos. 1083849 and 1083850, filed on February 28, 2002, and No.1837750, filed on August 7, 2009.
- United States of America trademark SKYFILE, No. 2930461, filed on May 3, 2002.
- Philippines trademark SKYFILE, No. 4/2002/00002155, filed on December 3, 2002.
- International trademark SKYFILE, No. 796142, filed on June 18, 2002.
- Hong Kong (China) trademark SKYFILE, No. 301496205, filed on October 12, 2009.
- Taiwan (Province of China) trademark SKYFILE, No. 1445354, filed on December 14, 2009.
- Republic of Korea trademark SKYFILE, No. 45-45809, filed on January 1, 2012.
Complainant also registered the following domain names:
- <skyfile.com> registered on July 20, 1998 and redirecting to Complainant’s official website.
- <skyfile.fr> registered on June 3, 2004 and redirecting to Complainant’s official website.
- <skyfilecrew.com> registered on March 7, 2014 and redirecting to Complainant’s official website.
- <skyfile-acess.com> registered on June 22, 2004.
The Domain Name was registered on January 20, 2017. The Domain Name previously redirected to the Complainant’s website, and is now inactive.
5. Parties’ Contentions
(i) Identical or Confusingly Similar:
Complainant states that the services offered under its SKYFILE trademarks are well-known worldwide. While monitoring its intellectual property rights among domain names, Complainant became aware of the Domain Name, which was registered on January 20, 2017. This Domain Name reproduces Complainant’s SKYFILE trademarks, with the only difference being the hyphen between the words “sky” and “file”.
(ii) Rights or Legitimate Interests:
Complainant states that according information available on the trademark database TMview (“www.tmdn.org”), it appears that Respondent has no trademark rights for the sign SKYFILE. Complainant also confirms that there is no business or legal relationship between Complainant and Respondent. Respondent has not been authorized by Complainant to use the SKYFILE name or mark. In addition, the Domain Name has been used as a redirection link to Complainant’s official website at “www.marlink.com”.
After having sent emails to Respondent, the hosts and the registrar, Complainant succeeded in obtaining the suspension on the Domain Name on April 12, 2017. In his reply, Respondent claimed that
“Honesty, I am not aware of any redirecting. The site was hosted so website based on cloud storage will be designed. The contract is [s]till in the works.”
Complainant doubts, however, that Respondent’s statement is true, since Respondent is the single person appearing on the WhoIs record for the Domain Name and he should be aware of everything that concerns the Domain Name. The Domain Name remains inactive today. Nevertheless, Complainant’s requests sent to Respondent to obtain the free transfer of the Domain Name in favor of Complainant have remained unsuccessful until now.
Complainant refers to the UDRP case, Natixis v. Sylvia Postler, WIPO Case No. D2015-0960, where the panel found that, with no challenge from the respondent, the following allegations made by the complainant not only constituted “a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name”, but were accepted by the panel to establish that “the Respondent has no rights or legitimate interests in the disputed domain name <natixiis.com>, pursuant to the Policy, paragraph 4(a)(ii)”:
“[t]he Complainant asserts that it has given no authorization to the Respondent to use its well-known trademark; that the Respondent is not commonly known by the disputed domain name; that the Respondent’s name does not seem to include the word ‘natixiis’; and that since its registration the disputed domain name does not resolve to an active website.”
For all of the above-mentioned reasons, Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) Registered and Used in Bad Faith:
Complainant contends the Domain Name was registered with the aim of taking advantage of the reputation of Complainant’s well-known SKYFILE trademark. Given the past fraudulent redirection of the Domain Name to Complainant’s official website and the fact that today the Domain Name remains inactive, it appears that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Domain Name, by creating a likelihood of confusion with Complainant’s trademarks as to the origin of the Domain Name.
Even if the Domain Name is no longer active, Complainant states that the passive holding of a disputed domain name in order to take advantage of the reputation of Complainant does not prevent a finding of bad faith.
Complainant states that the following factors should be noted, in particular:
Complainant’s SKYFILE trademarks enjoy worldwide reputation. The known character of Complainant’s SKYFILE mark can be established by a simple search on the Google search engine using the words SKYFILE or MARLINK. With more than 800 employees in 27 countries, Complainant is a pioneer of business critical communication solutions for customers operating in remote environments. The company is the largest technology-independent satellite communication and digital solutions provider serving the maritime and enterprise markets. In view of the above, Complainant and its SKYFILE marks enjoy a well-established reputation not only in France but also worldwide. It thus seems unlikely that Respondent was unaware of Complainant’s activities and the existence of Complainant’s marks and domain names at the time when the Domain Name was registered. Therefore, registration of the Domain Name cannot be a coincidence and the redirection link from the Domain Name to Complainant’s official website supports a finding of Respondent’s bad faith.
In addition, Complainant emphasizes that the Domain Name was used in bad faith, as it was redirected to Complainant’s official website. The fact that the Domain Name was redirected to the official website clearly shows the bad faith of this individual. A cease-and-desist letter was sent to Respondent and the redirection ceased.
Complainant states that at the time when it first learned of the existence of the Domain Name, while checking the zone file and the WhoIs for the Domain Name, Complainant observed that there were MX and TXT records, which indicates that it is likely that Respondent had used email addresses in the name of Marlink Group for phishing purposes.
Currently, the Domain Name is inactive so that there is no offer of goods and/or services on the website associated with the Domain Name. As has been already decided in several similar UDRP cases, the registration of domain names comprised of well-known trademarks clearly shows the bad faith of the respondents, even if these domain names are not used.
In light of the above, Complainant contends that it is obvious that Respondent registered the Domain Name in bad faith in order to take advantage of the reputation and credibility of Complainant. Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Domain Name, by creating a likelihood of confusion with Complainant’s SKYFILE mark as to the origin of the Domain Name. It is therefore in the public interest to transfer the Domain Name to Complainant to avoid that the Domain Name be used for misleading consumers.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel determines that Complainant has strong and well-established rights in its SKYFILE trademarks, holding registrations in numerous countries and conducting operations on a global scale. Further, the Domain Name is virtually identical to Complainant’s SKYFILE marks, with the Domain Name encompassing Complainant’s trademark in its entirety and the only difference being the placement of a hyphen (“-”) between the words “sky” and “file”.
This Panel therefore finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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.”
Here, the Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use its SKYFILE trademark; that Respondent is not commonly known by the Domain Name; and that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel thus finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines, on the balance of the probabilities, that the Domain Name was registered in bad faith. The Panel observes that Respondent registered the Domain Name approximately 15 years after Complainant began using its distinctive SKYFILE trademarks, and well after Complainant had established a worldwide reputation in its marks. Moreover, the Domain Name was redirected to Complainant’s official website, at least until Complainant sent Respondent a cease-and-desist letter. In view of these circumstances, Complainant alleged that Respondent targeted Complainant’s SKYFILE marks when it registered the Domain Name. Respondent failed to submit any Response to challenge this allegation.
The Panel also concludes that the Domain Name was and is being used in bad faith. As noted above, the Domain Name redirected to Complainant’s official website, without Complainant’s authorization, at least until Complainant sent its cease-and-desist letter to Respondent. Moreover, Complainant alleged that when investigating the registration of the Domain Name, it observed that there were MX and TXT records, indicating that Respondent had possibly used email addresses in the name of Complainant for phishing purposes. Again, Respondent submitted no Response to refute any of these allegations.
Finally, in accordance with WIPO Overview 3.0, section 3.3, “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 cases of passive holding, UDRP panelists look at the totality of the circumstances, including factors such as: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. Following receipt of Complainant’s cease-and-desist letter, the Domain Name has not resolved to any active website. However, the degree of distinctiveness and reputation of Complainant’s SKYFILE mark; the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; and the implausibility of any good faith use to which the Domain Name may be put all weigh in favor of a finding of bad faith for the passive holding of the Domain Name by Respondent, after Respondent received Complainant’s cease-and-desist letter.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sky-file.com>, be transferred to Complainant.
Christopher S. Gibson
Date: September 8, 2017