Viber Media S.à r.l. v. Kurton Kurtic / Ja
Claim Number: FA1502001603755
Complainant is Viber Media S.à r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Kurton Kurtic / Ja (“Respondent”), Chad.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <viberpromotion.com> and <viberpromotions.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2015; the Forum received payment on February 6, 2015.
On February 6, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <viberpromotion.com> and <viberpromotions.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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 February 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@viberpromotion.com, postmaster@viberpromotions.com. Also on February 6, 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 March 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <viberpromotion.com> and <viberpromotions.com> domain names are confusingly similar to Complainant’s VIBER mark.
2. Respondent does not have any rights or legitimate interests in the <viberpromotion.com> and <viberpromotions.com> domain names.
3. Respondent registered and uses the <viberpromotion.com> and <viberpromotions.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the VIBER mark through trademark registrations with numerous trademark authorities, notably the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,126,614, registered Apr. 10, 2012). Complainant uses its VIBER mark to provide telecommunications services.
Respondent registered the <viberpromotion.com> and <viberpromotions.com> domain names in October and November of 2014, and uses them to pass itself off as Complainant by using Complainant’s mark, design, and color scheme at the resolving pages.
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.”).
The Panel finds that Complainant’s USPTO registration of its VIBER mark satisfies the initial rights requirement of Policy ¶ 4(a)(i), despite Respondent’s purported residence in Chad. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Respondent’s <viberpromotion.com> and <viberpromotions.com> domain names incorporates the VIBER mark and merely adds the descriptive terms “promotion” and “promotions” and the generic top-level domain (“gTLD”) “.com.” Prior panels have determined that such alterations fail to distinguish a disputed domain name from a complainant’s mark. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that the <viberpromotion.com> and <viberpromotions.com> domain names are confusingly similar to Complainant’s VIBER mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names and shares no affiliation with Complainant. Complainant urges that Respondent is not commonly known by the disputed domain names, but is known as “Kurton Kurtic / Ja.” Prior panels have looked to the record, including the WHOIS information, in considering 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). As the record contains no evidence indicating Respondent is commonly known by the disputed domain names, the Panel finds that Complainant has carried its burden with respect to Policy ¶ 4(c)(ii).
Complainant argues Respondent uses the disputed domain names to operate a website with French and Estonia content. When translated to English, Complainant points out that Respondent is attempting to divert traffic and peddle its own commercial operation. The Panel notes that Respondent is using Complainant’s mark, logo, and color scheme from Complainant’s own website. The Panel agrees that Respondent’s efforts to pass off as Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain names to pass itself off as Complainant by using Complainant’s mark, design, and color scheme at the resolving website. Complainant further claims that Respondent is conducting a phishing scheme whereby Respondent seeks user’s VIBER-related PIN codes. The Panel finds that Respondent’s use of the <viberpromotion.com> and <viberpromotions.com> domain names constitutes bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant argues that the circumstances demonstrate that Respondent registered the disputed domain names with knowledge of Complainant and to target Complainant, clearly in bad faith. The Panel agrees and finds that Respondent was aware of Complainant and its rights at the time of registration since the disputed domain names resolve to content mimicking Complainant. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). Thus, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant and its rights in the VIBER mark, which is indicative of further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viberpromotion.com> and <viberpromotions.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 8, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page