Viber Media S.à r.l. v. Zagrox Agency / ZAGROX
Claim Number: FA1501001600316
Complainant is Viber Media S.à r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Zagrox Agency / ZAGROX (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viber-iran.com>, registered with REALTIME REGISTER B.V.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2015; the National Arbitration Forum received payment on January 16, 2015.
On January 19, 2015, REALTIME REGISTER B.V. confirmed by e-mail to the National Arbitration Forum that the <viber-iran.com> domain name is registered with REALTIME REGISTER B.V. and that Respondent is the current registrant of the name. REALTIME REGISTER B.V. has verified that Respondent is bound by the REALTIME REGISTER B.V. 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 January 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 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@viber-iran.com. Also on January 20, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 owns the VIBER mark through registration with numerous trademark authorities worldwide, including the United States Patent and Trademark Office ("USPTO"). See, e.g., Reg. No. 4,126,614, registered Apr. 10, 2012. Complainant uses VIBER for Internet and computer services. The <viber-iran.com> domain name is confusingly similar to the VIBER mark. The disputed domain name incorporates the mark in full, attaching the hyphenated geographic term “-iran,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is known as “Zagrox Agency / ZAGROX” as demonstrated by the WHOIS. There is no indication that Respondent is commonly known by the <viber-iran.com> disputed domain name. The resolving website contains Persian text, but translated into English shows that Respondent is attempting to divert traffic to Respondent’s own web-based services. Further, Respondent has copied images and color scheme from Complainant’s own website to be used on the resolving website. Respondent’s efforts to mimic Complainant for its own benefit does not qualify as a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered and is using the <viber-iran.com> domain name in bad faith. Respondent has intentionally attempted to attract Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant. Underscoring this intent, Respondent is using the same purple and white color scheme from Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent submitted several informal e-mails to the FORUM regarding the disputed domain name, expressing its confusion over the Complaint and willingness to remedy any concerns with Complainant.
Complainant, Viber Media S.à r.l., owns the VIBER mark through registration with numerous trademark authorities worldwide, including the United States Patent and Trademark Office ("USPTO"). See, e.g., Reg. No. 4,126,614, registered Apr. 10, 2012. Complainant uses VIBER for Internet and computer services.
Respondent, Zagrox Agency / ZAGROX, registered the on <viber-iran.com> on September 15, 2014. Respondent is attempting to divert traffic to Respondent’s own web-based services. Respondent has copied images and color scheme from Complainant’s website to be used on the resolving website.
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 has rights in the VIBER mark under Policy ¶ 4(a)(i ) through registration with numerous trademark authorities worldwide, including the USPTO. See, e.g., Reg. No. 4,126,614, registered Apr. 10, 2012. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <viber-iran.com> domain name is confusingly similar to the VIBER mark under Policy ¶ 4(a)(i). The disputed domain name incorporates the mark in full, attaching the hyphenated geographic term “-iran,” and the gTLD “.com.” The inclusion of a hyphen and gTLD are not distinctive alterations. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Additionally, the addition of a geographic term alongside a complainant’s mark does little to dispel the inherent confusing similarity. See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (the domain name <net2phone-europe.com> was confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar.”).
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).
Respondent has no rights or legitimate interests in the disputed domain name. The WHOIS information lists the registrant of the <viber-iran.com> disputed domain name as “Zagrox Agency / ZAGROX”. Respondent is not commonly known by the <viber-iran.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii), respectively. Respondent is attempting to divert traffic to Respondent’s own web-based services. Respondent has copied images and color scheme from Complainant’s website to be used on the resolving website. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Respondent has intentionally attempted to attract Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant. Prior panels have found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent is attempting to generate traffic for its own commercial gain under the guise of the complainant. 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); Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). As Respondent has copied the images and feel of Complainant’s website in furtherance of Respondent’s own web-services, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viber-iran.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 2, 2015
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