Viber Media S. r.l. v. KRISHAN GAHLOT
Claim Number: FA1509001639967
Complainant is Viber Media S. r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is KRISHAN GAHLOT (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bulkvibersender.com> ('the Domain Name'), registered with Enom, Inc..
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2015; the Forum received payment on September 29, 2015.
On September 30, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <bulkvibersender.com> 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 October 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@bulkvibersender.com. Also on October 1, 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 26, October 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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's contentions can be summarised as follows:
Complainant is a provider of Voice Over Internet Protocol and wireless communication services and applications and software related to such services. It has registered trade marks for VIBER for its goods and services in the US and around the world. It has developed substantial goodwill in relation to its mark.
The Domain Name is confusingly similar to the Complainant's VIBER mark combining it with the descriptive and/or generic terms 'bulk’ and ‘sender'. which refer to an entity that sends unsolicited commercial e mails or messages to consumers in bulk. These are generic terms as the Complainant is simply seeking to imply that bulk sender activities can be undertaken on the VIBER app.
Respondent is not commonly known by the Domain Name and has no rights or legitimate interests in it. The Domain Name was registered in 2015 several years after the Complainant began using its VIBER mark in 2010. There is no bona fide use where a Domain Name is used solely to divert Internet users.
Respondent is attempting to mislead consumers about the source of the Respondent’s web site and thereby drive traffic to the Domain Name. It is diverting Internet users desirous of using the Complainant’s goods and services and instead diverts them to Respondent's site.
The Domain Name is a blocking registration. No substantive use is being made of it other than Word Press blog template. There is no active use of the Domain Name. Complainant has no control over damaging use made of the Domain Name.
Respondent registered the Domain Name using a privacy service. This raises a presumption of bad faith in a commercial context.
B. Respondent
Respondent failed to submit a Response in this proceeding, It has indicated in e-mail correspondence with the Forum that it may be willing to agree to transfer to the Complainant by saying 'Let us know how we can give the domain name back to your company.' but does not appear to have actually agreed to transfer.
Complainant is a provider of Voice Over Internet Protocol and wireless communication services and applications and software related to such services. It has registered trade marks for VIBER for its goods and services in the US and around the world. It has developed substantial goodwill in relation to its mark which it began using in 2010.
The Domain Name registered in 2015 has not been used except for a WordPress blog template
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.”).
Preliminary Issue - Consent to Transfer
While the Respondent asks how the domain name can be given back to the Complainant, it does not actually appear to consent to transfer in so many words.
The Respondent does not explain why they have registered a domain name consisting of the Complainant's trade mark and additional words which appear to be alluding to use that can be made of the Complainant’s services. The Respondent does not appear to have any trade marks associated with the name VIBER. There is no evidence that they are commonly known by this name and they do not have any consent from the Complainant to use this name. They do not appear to have used the Domain Name for any bona fide offering of services or for any use. See Hewlett Packard CO. v Shemesh, FA 434145 (Nat Arb Forum Apr 20, 2005) ('The Panel finds that the [failure to make an active use] of a domain name is not a bona fide offering of goods or services pursuant to Policy 4 (c) (i) or a legitimate non-commercial or fair use pursuant to Policy 4 (c)(iii). Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
The Respondent has given no satisfactory reason why it has a legitimate interest in a domain name comprising the Complainant's trade mark VIBER and the words 'bulk' and 'sender' which could be seen as a possible use of the Complainant’s application. Further, Panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a well known trade mark in a domain name where there is no response and no explanation as to why the use could be good faith. See the case of Telstra Corporation Limited v Nuclear Marshmallows, WIPO case no D2000-0003. See also DCI SA v Link Commercial Corp, D2000-1232 (WIPO Dec 7, 2000) (Concluding that the respondent's [failure to make an active use] of a domain name satisfies the requirements of 4(a)(iii) of the Policy). As such the Panel finds on the balance of probability that the Respondent registered and used the Domain Name in bad faith.
In view of this finding there is no need to consider the additional contention that use of a privacy service also constitutes bad faith in a commercial context.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bulkvibersender.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<November 5, 2015>>
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