Viber Media S.ŕ r.l. v. Bellino Endrizzi
Claim Number: FA1512001651816
Complainant is Viber Media S.ŕ r.l. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Bellino Endrizzi (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viberad.com>, registered with Realtime Register B.V..
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.
David a. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2015; the Forum received payment on December 10, 2015.
On December 11, 2015, Realtime Register B.V. confirmed by e-mail to the Forum that the <viberad.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the names. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@viberad.com. Also on December 11, 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 January 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,126,614, registered April 10, 2012). Respondent’s <viberad.com> domain is confusingly similar to the VIBER mark as the domain merely adds the generic term “ad” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain as shown by WHOIS information and a lack of any trademark registrations similar to Complainant’s VIBER mark. Further, Respondent’s use of the disputed domain, to pass itself off as Complainant using a site that is almost identical to Complainant’s, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of Complainant’s marks and design elements from Complainant’s website indicate that Respondent is presumably profiting from attempting to pass itself off as Complainant. Respondent had knowledge of Complainant’s rights in the VIBER mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel noted that the disputed domain was created on November 12, 2014.
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(f), 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 claims that its rights in the VIBER mark stem from its registration of that mark with the USPTO (e.g., Reg. No. 4,126,614, registered April 10, 2012). Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark. See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”).
Complainant next argues that Respondent’s disputed domain <viberad.com> is confusingly similar to the VIBER mark in which Complainant asserts rights. The disputed domain differs from the VIBER mark through the addition of the generic term “ad.” Panels have found generic terms to not be a distinguishing difference under a Policy ¶ 4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Accordingly, this Panel finds that Respondent’s <viberad.com> domain is confusingly similar to the VIBER mark in which Complainant asserts rights.
Complainant claims that Respondent is not commonly known by the disputed domain name, nor does Respondent appear to have any trademark rights in the VIBER mark. WHOIS information related to the disputed domain name indicates that Respondent registered the domain using the name, “Bellino Endrizzi,” which does not seem to resemble the <viberad.com> domain. Panels have held that a Respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence in the record to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Thus, this Panel concludes that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next claims that Respondent’s use of the disputed domain name should not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent disputed domain name resolves to a website that appears visually similar to Complainant’s <viber.com> domain. Panels have held that a respondent attempting to pass itself off as a complainant, presumably for profit, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Thus, this Panel finds that Respondent’s use of the domain does not fall within the bounds of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant first contends that Respondent’s use of Complainant’s marks and design elements from Complainant’s website indicate that Respondent is attempting to pass itself off as Complainant. As stated previously, the website that resolves from Respondent’s <viberad.com> domain is extremely similar to the <viber.com> domain owned by Complainant. Panels have found that a respondent’s passing off behavior can indicate bad faith. 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.”). This Panel finds bad faith based on Respondent’s near-copy of Complainant’s website.
Complainant argues that Respondent had actual knowledge of Complainant's rights in the VIBER mark. Complainant argues that Respondent’s use of a website that closely mimics Complainant’s website and uses close derivations of Complainant’s marks indicates that Respondent had actual knowledge of Complainant's mark and rights. 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 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viberad.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 19, 2016
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