Skype affiliate can keep Skyp.com, says WIPO

Out-Law News | 20 Jan 2006 | 11:52 am | 2 min. read

An amateur photographer, painter and sculptor who uses the domain name Skyp.com to redirect visitors to Skype.com has won a battle to keep his name. He pointed out that the internet telephony company had accepted him as an affiliate.

Crucially, Benjamin Decraene of Belgium registered the name before Skype had launched and long before eBay paid $2.6 billion for the company. Skype.com was registered in April 2003 and its net telephony service began four months later; but Decraene registered Skyp.com in May 2002.

Skype asked the World Intellectual Property Organisation (WIPO) to remove the name from Decraene, who accepted that the names were confusingly similar. But Skype struggled to show that Decraene had no right to keep the name.

The website at Skyp.com consists of one page that promotes and links to Skype.com. In many domain name disputes, this would suggest bad faith, perhaps an attempt to profit from another's brand through typosquatting.

But WIPO panellist Anders Janson found that, by accepting Decraene as an affiliate, Skype "could perhaps be regarded as having recognized [his] rights and/or legitimate interests."

The company's affiliate programme provides graphics that affiliates can use on their sites and send traffic to Skype.com in exchange for a commission of 5–10% on visitors' purchases of Skype's premium services. Decraene signed up online.

The strongest arm of Decraene's argument was his early registration of the name. "This fact", wrote Janson, "together with the fact that the Domain Name was and is used by [Decraene] without objection from [Skype], may … be enough to conclude that [Skype] has not proved that [Decraene] has no rights and/or legitimate interests in the Domain Name."

Skype was similarly unable to prove bad faith registration and use.

Skype may yet turn to the courts to argue its rights in Decraene's domain name. It might ask a court to rule on trade mark infringement, passing off and, if applicable, claim a breach of contract.

The WIPO case report does not say whether Skype alleged breach of contract. The affiliate contract at Skype.com today 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. The contract may or may not have been different when Decraene signed up.

Decraene was unavailable for comment at the time of writing, but his original registration appears to have been in good faith. His subsequent use of the name has also been interpreted by WIPO as being in good faith – albeit a practice that others might consider to be typosquatting.

It is not known how much traffic Skyp.com receives, but Skype.com is among the most popular destinations on the internet. That makes any misspelling a likely source of significant traffic. Fifteen percent of internet traffic is said to be type-in traffic – i.e. people don't search for what they want; they simply type in the name and add '.com' (see the Business 2.0 article below for more).

David Woods, a technology lawyer with Pinsent Masons, the law firm behind OUT-LAW.COM, said: "If someone was running a site at Skyp.com that hosted Google AdSense adverts to make money from those who wanted to know about internet telephony, Skype would recover the name from that person in court or before WIPO with relative ease."

He continued: "But Decraene's use of the domain name to profit from Skype's own affiliate programme is cunning, perhaps unwittingly. It makes it difficult for Skype to eject him, unless it can show a breach of conditions to which Decraene agreed – which goes to show how vital it is to have watertight conditions for affiliate deals."