Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY"
Claim Number: FA1506001626671
Complainant is Viber Media S.à r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Kristaps Sirmais / SIA "FUN FACTORY" (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viberbulksender.com>, registered with NetEarth One Inc. d/b/a NetEarth.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2015; the Forum received payment on June 30, 2015.
On June 30, 2015, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the Forum that the <viberbulksender.com> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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@viberbulksender.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 Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant owns the VIBER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,126,614, registered April 10, 2012). Complainant uses the VIBER mark in connection with its wireless communications services, namely, the wireless transmission of voice and data. Complainant also offers electronic messaging services, which includes sending, receiving, and forwarding messages in the form of text, audio, images, or video. The <viberbulksender.com> domain name is confusingly similar to the VIBER mark. The domain name includes the generic terms “bulk” and “sender,” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name reflects that Respondent is commonly known by “Kristaps Sirmais / SIA "FUN FACTORY”.” Respondent’s lack of rights or legitimate interests in the <viberbulksender.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <viberbulksender.com> domain name to pass itself off as Complainant, in order to peddle its own web-based operations. See Compl., at Attached Ex. C.
Respondent has engaged in bad faith registration and use of the <viberbulksender.com> domain name. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by diverting Complainant’s consumers. Additionally, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Finally, Respondent had knowledge of Complainant’s rights in the VIBER mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it owns the VIBER mark through its registration with the USPTO (e.g., Reg. No. 4,126,614, registered April 10, 2012). Complainant claims that it uses the VIBER mark in connection with its wireless communications services, namely, the wireless transmission of voice and data. Complainant states that it also offers electronic messaging services, which includes sending, receiving, and forwarding messages in the form of text, audio, images, or video. Past panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VIBER mark. Complainant argues that the <viberbulksender.com> domain name is confusingly similar to the VIBER mark. The domain name includes the generic terms “bulk” and “sender,” and adds the gTLD “.com” to the domain name. Prior panels have found that adding generic terms to a mark does little to remove confusing similarity between the disputed domain name and the mark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). In the present case, this is because an objective bystander would assume that the domain name referred to the sending of bulk communications by Complainant as part of its business. Further, previous panels have routinely held that the addition of a gTLD does not serve to distinguish adequately the disputed domain name from the registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel therefore determines that the disputed domain name is confusingly similar to the VIBER trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VIBER mark and to use it in its domain name which is confusingly similar to the mark;
(b) Respondent registered the disputed domain name on January 19, 2015 and uses it to pass itself off as Complainant, in order to peddle its own web-based operations;
(c) Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. In so arguing, Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name reflects that Respondent is commonly known by “Kristaps Sirmais / SIA "FUN FACTORY”.” See Compl., at Attached Ex. E. Previous panels have found a lack of rights and legitimate interests where the WHOIS information for a disputed domain name does not indicate that Respondent is commonly known by the disputed domain name. 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). As Respondent has not provided any evidence to demonstrate that it is commonly known by the disputed domain name, the Panel finds that Complainant’s contentions are sufficient to establish that Respondent lacks rights or legitimate interests in the <viberbulksender.com> domain name;
(d) Complainant claims that Respondent’s lack of rights or legitimate interests in the <viberbulksender.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <viberbulksender.com> domain name to pass itself off as Complainant, in order to peddle its own web-based operations. See Compl., at Attached Ex. C. Complainant notes that Respondent uses the VIBER mark in excess of twenty separate times on its website, which is evidence that Respondent is attempting to pass itself off as Complainant. Id. Previous panels have found that such use is not a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policies ¶ 4(c)(i) or ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel concludes that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further agrees that as Respondent presumably attempts to profit through consumer confusion, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by diverting Complainant’s consumers. Complainant alleges that the software available at Respondent’s resolving website provides third parties with the ability to send unlimited bulk messages to Complainant’s customers, which is not only disruptive, but an infringement of Complainant’s terms of use. Further, Complainant demonstrates in its Attached Exhibit F that Respondent features similar software for one of Complainant’s main competitors, “Whatsapp.” Previous panels have found that such actions amount to disruption of a Complainant’s business, in violation of Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). The Panel therefore finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent uses the domain name to attract intentionally, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant asserts that Respondent attracts consumers who are seeking Complainant’s goods, for its own commercial benefit. Prior panels have found that diverting Internet users to a respondent’s website for a profit is evidence of bad faith under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). As Respondent likely seeks financial gain through the use of Complainant’s registered mark, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that Respondent had knowledge of Complainant’s rights in the VIBER mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). Complainant reiterates that Respondent is attempting to pass itself off as Complainant, which signifies Respondent’s actual knowledge of the VIBER trademark. The Panel notes that Respondent uses the VIBER mark in excess of twenty separate times on its website, which Complainant claims is evidence that Respondent had knowledge of Complainant and its rights in the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <viberbulksender.com> domain name using the VIBER mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viberbulksender.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 4, 2015
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