Viber Media S.à r.l. v. Hong Phin
Claim Number: FA1506001626647
Complainant is Viber Media S.à r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Hong Phin (“Respondent”), Paraguay.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viberads.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2015; the Forum received payment on June 30, 2015.
On July 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <viberads.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@viberads.com. Also on July 2, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the VIBER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,126,614, registered Apr. 10, 2012). The mark is used on or in connection with Internet and peer-to-peer computer services, namely electronic transmission of audio, video, and other data and documents. The <viberads.com> domain name is confusingly similar to its VIBER mark because the domain name contains the entire mark and differs only by the addition of the generic term “ads” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain name to pass itself off as Complainant, and also to sell competing services.
Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business by offering competing services. Respondent has created a likelihood of confusion for commercial gain. Lastly, Respondent is attempting to pass itself off as Complainant.
B. Respondent
Respondent did not submit a formal response. Respondent did send an email to the Forum in which it is claimed that the disputed domain name is not being used for commercial purposes. Respondent also contends that it has ceased use of the domain name, but that it wishes to retain it moving forward.
Complainant is Viber Media S.à r.l. of Grand Duchy of Luxemborg. Complainant is the owner of numerous domestic and international registrations for the mark VIBER, and its related marks. Complainant has continuously used the mark VIBER since at least 2010 in connection with its provision of goods and services in regards to VoIP messaging, mobile device applications, and related communication services, as well as computer software related thereto.
Respondent is Hong Phin of Vietnam. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain name on or about June 25, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts it has registered the VIBER mark with the USPTO (e.g., Reg. No. 4,126,614, registered Apr. 10, 2012). The mark is used in connection with Internet and peer-to-peer computer services, namely electronic transmission of audio, video, and other data and documents. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <viberads.com> domain name is confusingly similar to its VIBER mark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the generic term “ads,” which is short for “advertisements,” as well as the gTLD “.com.” As a general rule, the gTLD “.com” can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Prior panels have found that the addition of a generic term to a domain name that is otherwise identical to the mark at issue results in a confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel here finds that Respondent has merely added a generic word and gTLD to Complainant’s mark, thus the <viberads.com> domain name is confusingly similar to the VIBER mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the <viberads.com> domain name, nor is Respondent in possession of licensing rights that would allow it to use the VIBER mark in domain names. The Panel notes that “Hong Phin” is listed in the WHOIS information as the registrant of record for the disputed domain name. The Panel further notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. As the Respondent has failed to provide any supporting evidence, the Panel finds that Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <viberads.com> domain name fails to amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is using the domain name to pass itself off as Complainant and advertise competing services. Complainant provided a copy of the resolving webpage, which evidences messaging services similar to those offered under the VIBER trademark. Complainant has also provided a screenshot of its own website, which shows that Respondent is using Complainant’s images and color scheme. Previous panels have found that neither attempts to pass oneself off as the complainant, nor attempts to sell competing services, can vest rights or legitimate interests in a respondent. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel here finds that Respondent’s behavior supports a conclusion that Respondent is trying to pass itself off as Complainant or sell competing services in violation of Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Complainant again notes that the disputed domain name is being used to sell competing services. The Panel again recalls that Complainant has provided a copy of the resolving webpage, which evidences messaging services similar to those offered under the VIBER trademark. Past panels have found bad faith under Policy ¶ 4(b)(iii) where the respondent is using a confusingly similar domain name to sell competing services. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent is selling competing services, and that the disputed domain name is confusingly similar, therefore Respondent’s actions constitute bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support its claim for a likelihood of confusion, Complainant again notes that Respondent is using the same images and color scheme as its own website. Complainant further adds that Respondent is profiting from the sale of competing services. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the respondent has created a likelihood of confusion for commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Previous panels have also found that a likelihood of confusion exists when the domain name at issue is being used to sell competing goods or services. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel here finds that a likelihood of confusion exists, and that Respondent is likely commercially profiting from the confusion which supports a finding of bad faith under Policy ¶ 4(b)(iv).
Complainant finally contends that Respondent has displayed bad faith under Policy ¶ 4(a)(iii) by attempting to pass itself off as Complainant. In support of this argument, Complainant again notes that Respondent is using the same images and color scheme as its own website, and also offering competing services. Prior panels have established bad faith under Policy ¶ 4(a)(iii) where the respondent is attempting to pass itself off as the complainant. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). The Panel here finds that Respondent’s actions of trying to pass itself off as Complainant is bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <viberads.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 12, 2015
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