January 2006
Bad Luck and No Bad Faith
An artist, who registered “skyp.com” before the well-known Internet telephony company started using the mark SKYPE, won the battle to keep his domain name.
Belgian artist Benjamin Decraene registered the domain name skyp.com in May 2002, before Skype used or applied to register the mark SKYPE. Decraene also installed a hyperlink on his web site to the Skype site within the scope of Skype’s affiliates programme to send traffic to Skype.com in exchange for a commission on visitors’ purchase of Skype’s services.
Skype complained to the World Intellectual Property Organisation (WIPO) that Decraene’s domain name was confusingly similar to Skype’s trade marks , that Decraene has no legitimate interest in using his domain name and that it had been registered in bad faith.
WIPO’s panel found that the domain name skyp.com was confusingly similar to the trade mark SKYPE. Decraene did not deny that.
However, the panel ruled that Skype failed to establish rights or legitimate interests in the domain name because Decraene registered the domain name before Skype had any evidence of use or filed a registration for the mark SKYPE.
That absence of prior trade mark rights was also coupled with the fact that Skype had expressly accepted Decraene as an affiliate by authorizing him to hyperlink to Skype’s web site.
The panel also ruled that Skype had not provided enough evidence for circumstances indicating that Decraene had registered then subsequently used the domain in bad faith in a “typosquatting” attempt to profit from Skype’s successful brand.
Briffa’s Comment:
Internet brands can become global very quickly and amass huge power and influence. This ruling illustrates that small companies are still offered a degree of protection and cannot be muscled out if they have legitimate prior use.
However, WIPO did not raise the contractual issues between Skype and Decraene.
The misspelling of skyp(e) must have significantly increased traffic through skyp.com. Mis directing or “re-directing” web traffic is an infamous source of income.
Skype’s Affiliates Terms of Use expressly forbids affiliates from registering domain names similar to Skype's or using its promotional materials on a site that uses Skype's trade marks in its domain name. Assuming these terms were already in place when he became an affiliate, Decraene might have breached these conditions.
We might find Skype in court to claim trade mark infringement, passing off and arguably, breach of contract.
Sophie Lachowsky
sophie@briffa.com