WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marlink SAS v. WhoisGuard Protected, WhoisGuard Inc / Arvid Moen

Case No. D2020-1468

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard Inc, Panama / Arvid Moen, Denmark.

2. The Domain Name and Registrar

The disputed domain name <skyfiles.online> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2020, 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 the Complainant on June 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 June 11, 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 June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020.

The Center appointed José Ignacio San Martín Santamaría as the sole panelist in this matter on July 13, 2020. 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 Marlink SAS is a French company specialized in providing telecommunications services and particularly involved in cybersecurity in the maritime industry.

The Complainant is the proprietor of several trademark registrations consisting of SKYFILE, inter alia:

- French trademark SKYFILE no 3147842 filed on February 14, 2002 in classes 9, 16, 35, 38, and 42.

- Canadian trademark SKYFILE no 1131757 filed on February 20, 2002 in classes 9, 16, 35, 38, and 42.

- Indian trademarks SKYFILE no 1083850 filed on February 28, 2002 in class 9 and no 1837750 filed on July 8, 2009 in class 38.

- United States of America trademark SKYFILE no 2930461 filed on March 5, 2002 in classes 9, 16, 35, 38, and 42.

- Philippine trademark SKYFILE no 4-2002-002155 filed on March 12, 2002 in classes 9, 16, 35, 38, and 42.

- International trademark SKYFILE no 796142 filed on June 18, 2002 in classes 9, 16, 35, 38, and 42 and covering Austria, Australia, Benelux, China, Germany, Denmark, Spain, Finland, United Kingdom, Greece, Ireland, Italy, Japan, Norway, Portugal, Sweden, Singapore, and Turkey.

- Hong Kong, China trademark SKYFILE no 301496205 filed on December 10, 2009 in classes 9 and 38.

Marlink SAS is also the owner of the domain name <skyfile.com> registered since July 19, 1998 and which is redirecting to the webpage dedicated to SKYFILE products and services on the official website of the Complainant.

The disputed domain name was registered on April 15, 2020, and at the time of filing the Complaint, the disputed domain name resolved to a parking page displaying sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments can be summarised as follows:

- The Complainant owns the abovementioned trademark registrations for its SKYFILE mark in different countries.

- The disputed domain name <skyfiles.online> includes the prior trademark SKYFILE in its entirety. The only difference is the letter “s” placed at the end of the term SKYFILE.

- The Respondent has no legitimate interest in or legitimate, bona fide business purpose for using the disputed domain name <skyfiles.online>.

- A quick search among the free available trademark database reveals that there is no trademark in respect of the name SKYFILES. It is also worth pointing out that there is no business or legal relationship between the Complainant and the Respondent.

- The disputed domain name <skyfiles.online> pointed to a parking page displaying sponsored links.

- The disputed domain name was registered and is being used in bad faith. The disputed domain name has been chosen purposely to take advantage of an existing trademark, which should be considered as a reprehensible behavior which leads to be bad faith of the holder of the disputed domain name.

- SKYFILE trademark has a reputation in the satellite communication field of activity. In the present case, the disputed domain name <skyfiles.online> is almost identical to the Complainant’s prior trademark SKYFILE. The disputed domain name has been registered with the aim of taking advantage of the reputation of the trademark of the Complainant and the reputation of the group Marlink SAS.

- Following the disclosure of the Respondent’s identity by the Registrar, it seems clear that the Respondent has provided false information when registering the disputed domain name and clearly breached its registration agreement. The provision of false contact information amounts to bad faith.

The Complainant has recently been subject to several scams bearing the hallmarks of this case, namely the registration of an almost identical domain name with a proxy service to a name that resolves to a parking page and for which email servers have been activated so that emails with addresses [ ]@skyfiles.online can be sent.

As a consequence, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, the Panel shall grant the remedies requested if the Complainant proves that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, for this purpose the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s (earlier) SKYFILE trademark, with the addition of a letter “s”.

In view of this, it can only be concluded that the disputed domain name is clearly confusingly similar to the Complainant’s trademark.

Precisely in relation to the domain names consisting of a misspelling of a complainant’s trademark (i.e., typosquatting), section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

“Examples of such typos include (i) adjacent keyboard letters[…]”.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark as provided under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established based on the facts set out above a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that the Respondent has defaulted, it has not met that burden.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a 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’s website cannot be considered as a bona fide offering of services or fair use, since the Complainant has provided evidence that the disputed domain name <skyfiles.online> pointed to a parking page displaying sponsored links (currently the domain name does not resolve).

It is also noted that applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising pay-per-click (“PPC”) links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).

In summary, the Panel finds that paragraph 4(a)(ii) set forth in the Policy is present.

C. Registered and Used in Bad Faith

According to paragraph 4(b)(iv) of the Policy, registration or use of a domain name will be considered in bad faith when:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

As mentioned above, the Complainant has recently been subject to several scams bearing the hallmarks of this case, namely the registration of an almost identical domain name with a proxy service to a name that resolves to a parking page and for which email servers have been activated so that emails with confusingly similar addresses (i.e., “[ ]@skyfiles.online”) can be sent.

The Complainant’s SKYFILE trademark is moreover according to the Complainant well known in its sector. In view of the fact that we are dealing with a typosquatting case and that the letter “s” added to the disputed domain name is next to the letter “e” on the keyboard and in any case the mark appears in plural, it seems clear that when registering the disputed domain name the Respondent deliberately sought to create an association with the Complainant’s trademark.

UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see WIPO Overview 3.0, section 3.1.4).

The use of a privacy service also seems to confirm the bad faith of the Respondent. While there may be circumstances that make the use of a privacy service legitimate, several decisions have considered it a circumstance that contributes to consider bad faith proven when it is combined with other types of circumstances. In GVC Holdings plc / ElectraWorks Limited v. Registration Private, Domains By Proxy, LLC / Adnan Atakan Alta, WIPO Case No. D2016-2563, the UDRP panel found that:

“Although privacy services might be legitimate in certain circumstances, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark), the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.”

The UDRP panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith (see WIPO Overview 3.0, section 3.6).

Thus, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent in accordance with paragraph 4(b) of the Policy. In the light of the above, the Panel finds that the Complainant has established registration and use of the disputed domain name in bad faith and concludes that paragraph 4(a)(iii) of the Policy is satisfied.

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 <skyfiles.online> be transferred to the Complainant.

José Ignacio San Martín Santamaría
Sole Panelist
Date: July 23, 2020