Viber Media S.à r.l. v. Stipe Ljubicic
Claim Number: FA1512001652114
Complainant is Viber Media S.à r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Stipe Ljubicic (“Respondent”), Croatia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hackspyvbr.com>, registered with NameSilo, 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.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2015; the Forum received payment on December 14, 2015.
On December 14, 2015, NameSilo, LLC confirmed by e-mail to the Forum that the <hackspyvbr.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2016 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@hackspyvbr.com. Also on December 15, 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.
A timely Response was received and determined to be complete on December 21, 2015.
On December 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko 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 has rights in the VIBER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,126,614, registered April 10, 2012, amended September 1, 2015). See Compl., at Attached Ex. A. Respondent’s <hackspyvbr.com> domain name is confusingly similar to the VIBER mark because it contains an abbreviation of the mark along with the descriptive words “hack” and “spy” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <hackspyvbr.com> domain name because there is no evidence to indicate being so commonly known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used in an attempt to pass off as Complainant. See Compl., at Attached Ex. D.
Respondent uses the <hackspyvbr.com> domain name in bad faith because the resolving website is used in an attempt to pass off as Complainant. Respondent registered the <hackspyvbr.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the VIBER mark, as evidenced by the use of the domain. Further bad faith can be inferred through the service purported to be offered through the website, hacking and spying into private accounts of customers of Complainant.
B. Respondent
The <hackspyvbr.com> domain name is not confusingly similar to the VIBER mark because it does not contain the mark.
Respondent’s use of the <hackspyvbr.com> domain name is legitimate because Respondent has the right to mention Complainant and its VIBER mark on its website and because the resolving website contains a disclaimer disavowing any affiliation with Complainant.
Respondent neither registered nor uses the <hackspyvbr.com> domain name in bad faith because Respondent has the right to mention Complainant and its VIBER mark on its website and because the resolving website contains a disclaimer disavowing any affiliation with Complainant.
Complainant owns trademark rights in the VIBER mark based on the registration of the respective word mark with the USPTO (Reg. No. 4,126,614, registered April 10, 2012, amended September 1, 2015). Exhibit A also shows other registration of combined marks VIBER & device with the USPTO (Reg. nos. 4,345,885 and 4,324,133 also pre-dating the date on which the disputed domain was registered).
Respondent registered its domain on August 18, 2015.
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.
The disputed domain name < hackspyvbr.com > consists of the general terms “hack”, “spy” and the abbreviation “vbr”, appending the top-level domain “.com”. According to Complainant, VBR stands for the “immediately recognizable VIBER word mark”, and thus by incorporating this allegedly confusingly similar abbreviation “Respondent is blatantly attempting to trade on the fame and goodwill of the VIBER Trademarks, and create a false association with Complainant and its lauded mobile application”.
Complainant draws parallels with the three cases in which Panels found domain names incorporating respective abbreviations to be confusingly similar with the relevant complainant’s marks, namely Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the abbreviation MN in the <mnlottery.com> domain name was commonly used for the state of Minnesota and therefore the domain name was confusingly similar to complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); Chevron Intellectual Property LLC v. Linda Hearn, FA 1109001409285 (Nat. Arb. Forum Nov. 15, 2011) (holding that respondent’s abbreviation of complainant’s CHEVRON mark to CHEV in the domain name <chevoil.com> domain name did not distinguish the disputed domain name from complainant’s mark); Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar to complainant’s MICROSOFT mark even though MICROSOFT is abbreviated).
The Panel notes that the mentioned cases are not relevant to the present circumstances, since, for example, in the mentioned case Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001), the Panel based its conclusion on confusing similarity, taking into account that Microsoft also owns trademark rights in the abbreviation or nickname "MS," which the general public commonly uses to refer to Microsoft.
At the same time, Complainant does not claim any trademark rights in the VBR sign, relying instead only upon a claim of confusing similarity to the VIBER trademark. According to Complainant, confusing similarity exists because the “VBR” abbreviation would be “immediately recognized” by users as associated with the VIBER mark and software applications.
However, the complaint is deficient of arguments or evidences showing that the mentioned abbreviation has become associated in consumers with the Viber company and the VIBER mark.
Instead, it is well-known that “VBR” is a common abbreviation standing for “variable bit rate”. Furthermore, it is also used as an acronym in correspondence, and is a part of a number of company names. The Panel does not rule out that the VBR abbreviation might fit to stand for “VIBER”, but there are no evidences on the case records supporting this assumption, particularly that the consumer would “immediately recognize” it as associated with Viber.
Having said that, the Panel can hardly overlook the fact that the present case refers to several circumstances which cast doubt on the legality of Respondent’s operation, particularly the fact of use of designs confusingly similar to the Complainant’s registered marks on the Respondent’s website, as well as there is still an issue of the legality of software products aimed at enabling users to hack into private accounts.
However, previous Panels have found that the confusing similarity test has to be based only on the disputed domain name and the mark or marks in which Complainant claims rights. At the same time, the manner in which the domain name has been used, including the content of the corresponding website, is not relevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., PNC Financial Services Group, Inc. v. James Anderson / PTCBank.net, FA 1504563 (Nat. Arb. Forum July 19, 2013); Transamerica Corp. v. One Trans-America Corp., FA 1250996 (Nat. Arb. Forum Apr. 29, 2009) (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.2 (2d ed. 2011), http://www.wipo.int/amc/en/domains/search/overview/).
If it had been shown that consumers would recognize the mentioned abbreviated form of the mark as a source of goods, then other principles might come into play. However, under the present circumstances, the Panel concludes that Complainant failed to satisfy the requirements under Policy ¶ 4(a)(i).
Although as mentioned earlier, the Panel might find Respondent’s actions questionable, taking into account that Complainant has not satisfied the requirements of Policy ¶ 4(a)(i), the Panel declines the analysis of the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hackspyvbr.com> domain REMAIN WITH Respondent.
Natalia Stetsenko, Panelist
Dated: January 13, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page