Viber Media S.à r.l. v. Hrvoje Klapic
Claim Number: FA1508001631970
Complainant is Viber Media S.à r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Hrvoje Klapic (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viberpromo.xyz>, registered with Enom, Inc.
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 Forum electronically on August 5, 2015; the Forum received payment on August 5, 2015.
On August 6, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <viberpromo.xyz> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 August 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@viberpromo.xyz. Also on August 7, 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 August 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, Viber Media S.à r.l., is a well-known provider of Voice over Internet Protocol, messaging, and other telecommunications-related services. Complainant uses the VIBER mark in connection with its highly popular mobile application that enables users to make phone calls and send text messages for free to other users located around the globe. Complainant has obtained U.S. federal trademark registrations for the VIBER mark from the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,126,614, registered April 10, 2012). The <viberpromo.xyz> domain name is confusingly similar to Complainant’s registered VIBER trademark. The disputed domain name contains Complainant’s mark in full, adds the descriptive term “promo” and the generic top-level domain (“gTLD”) “.xyz.”
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <viberpromo.xyz>, as reflected by Respondent’s WHOIS information. Further, Respondent’s use of the disputed domain name does not qualify as a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use. Respondent attempts to pass itself off as Complainant in order to attract Internet users seeking Complainant and Complainant’s goods and services.
Respondent has registered and is using the disputed domain name in bad faith in violation of Policy ¶ 4(a)(iii). Respondent uses the disputed domain name to divert Internet users from Complainant’s website to Respondent’s. Further, Respondent attracts Internet users to its confusingly similar domain name for its own commercial gain, in violation of Policy ¶ 4(b)(iv). Additionally, Respondent is attempting to pass itself off as Complainant, which demonstrates Respondent’s actual knowledge of Complainant and its VIBER trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Viber Media S.à r.l., is a well-known provider of Voice over Internet Protocol, messaging, and other telecommunications-related services. Complainant uses the VIBER mark in connection with its mobile application that enables users to make phone calls and send text messages for free to other users located around the globe. Complainant has rights in the VIBER mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,126,614, registered April 10, 2012).
Respondent, Hrvoje Klapic, registered the <viberpromo.xyz> domain name on July 11, 2015. Respondent attempts to pass itself off as Complainant in order to attract Internet users seeking Complainant and Complainant’s goods and services.
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 the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <viberpromo.xyz> domain name is confusingly similar to Complainant’s VIBER mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark in full, adds the descriptive term “promo” and the gTLD “.xyz.”
Respondent does not have legitimate rights or interests in the <viberpromo.xyz> domain name. Respondent is not commonly known by <viberpromo.xyz> under Policy ¶ 4(c)(ii). The WHOIS information lists “Hrvoje Klapic” is the registrant of record. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is not using the <viberpromo.xyz> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i). Respondent attempts to pass itself off as Complainant in order to attract Internet users seeking Complainant and Complainant’s goods and services. Respondent uses Complainant’s trademarks and color scheme. 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 uses the <viberpromo.xyz> domain name to divert Internet users from Complainant’s website to Respondent’s. Respondent features prize-related declarations on its resolving website, including, “Generating Your Giveaway Ticket” and “Congratulation [sic], Samsung Galaxy S6 Can Be Your [sic] In Minutes!” The consumer is advised that he or she must collect 500 points by “sharing” Respondent’s website in order to obtain the alleged prize. Respondent’s use of the disputed domain name disrupts Complainant’s business. Respondent has engaged in bad faith under Policy ¶ 4(b)(iii). 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).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent attracts Internet users to its confusingly similar domain name for its own commercial gain, in violation of Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Further, Respondent is attempting to pass itself off as Complainant, which shows Respondent’s actual knowledge of Complainant and its VIBER trademark. Therefore, Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <viberpromo.xyz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 14, 2015
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