Complainant is Viber Media S.à.r.l. of Luxembourg, Luxembourg, represented by Meister Seelig & Fein LLP, United States of America.
Respondent is Amir Sadeghi of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2015. On July 15, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 20, 2015, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on July 27, 2015.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on July 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2015. On August 17, 2015, the Center received an email communication from Respondent, described below. Accordingly, the Center notified the parties about the commencement of panel appointment process on August 18, 2015.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on September 3, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is owner of several registrations worldwide for its VIBER family of trademarks, including, for example, VIBER (word mark), United States Trademark Registration No. 4126614 in International Class 38, registered April 10, 2012 with a first use in commerce date of November 9, 2010.
The disputed domain name was registered August 6, 2014 and routes to a website in the Persian language that offers commercial advertising services. When this proceeding commenced, the website displayed several of Complainant’s trademarked and copyright-protected designs, bearing an overall stylistic resemblance to Complainant’s own websites. Some of Respondent’s offered mobile and electronic messaging advertising services are similar to commercial services offered by Complainant under its VIBER marks. 5. Parties’ Contentions A. Complainant
Complainant avers that it has 450 million registered users worldwide in connection with its VoIP (“Voice over Internet Protocol”) telephony and mobile texting service associated with the VIBER marks.
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered or is being used in bad faith, all in violation of the Policy.1
On this basis, Complainant seeks transfer. B. Respondent
As noted above, the Center received a single email from Respondent on August 17, 2015, which the Panel will treat as its Response. The text follows:
“Hi,
This is the answer of the complaint against us from Viber Media S.a.r.l
We didn’t know that registering a domain name similar to your name (it is not exactly your name)
In another country and under .ir LTD is against any law or rules and we didn’t aware that we have
no right to register that name, because it is under Iran country LTd (.ir)
Although we know that Viber is a big trademark and amazing service and a lot of people use this
service all over the world.
But our domain is not exactly your name
And about your trademark: we changed our logo and omit your trademark from our website, and if you
see our website again you will found out that there is no viber trademark.
We also changed the purple color from our website
We also removed all viber stickers from our website too.
Please contact us from this email to know the result.
Best Regards,
[Respondent]” 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s trademarks, the Panel agrees that the disputed domain name is confusingly similar to the VIBER trademarks.
Panels usually disregard the domain name suffix (or Top-Level Domain “TLD”) in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.2
Omitting the “.ir” country code suffix (or country code Top-Level Domain “ccTLD”), the disputed domain name adopts Complainant’s trademark in its entirety, adding only the term “ads”. The Panel finds that Respondent’s addition of this short generic term for “advertisements” does not negate the confusion created by Respondent’s complete inclusion of the VIBER trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods or services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraph 4(c).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
The Panel accepts Complainant’s undisputed allegations that Respondent has no authorization or license to use its trademark in the disputed domain name and that Respondent is not commonly known by the disputed domain name.
The website to which the disputed domain name routes displays commercial promotion for Respondent’s products and services. (In some cases, the services are similar to those of Complainant.) The Panel finds therefore that Respondent has been using Complainant’s marks for its own commercial purposes and not for a noncommercial purpose.
The Panel agrees with Complainant that by offering commercial products on the website, Respondent is seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes. The Panel finds that such use of the disputed domain name cannot constitute a bona fide offering.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
Examining the statements in the email from Respondent quoted above, the Panel finds that Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered or Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration or bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and bad faith use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623.
Examining the circumstances in this case, the Panel finds that Respondent was undoubtedly aware of Complainant’s VIBER marks, which Respondent deliberately added to the “.ir” ccTLD to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith.3
Respondent’s website shows that the disputed domain name is used to promote and commercialize products similar to those sold by Complainant. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan,WIPO Case No. D2003-0031).
The Panel further finds that Respondent’s display of Complainant’s marks and design elements without authorization is cumulative evidence of use in bad faith.
The Panel concludes that the record establishes both the elements of bad faith registration and bad faith use by Respondent. Either of these elements alone is sufficient under the irDRP.
The requirements of the third element of Policy, paragraph 4(a) are fulfilled. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: September 21, 2015
1 While it is alleged both that Respondent registered anduses the disputed domain name in bad faith, the Complaint acknowledges that the irDRP requires only a showing of either bad faith registrationor bad faith use.
2 Due to the similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer where appropriate to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 The Panel finds Respondent’s email statements to the effect that it did not know that registering the disputed domain name was a problem to be self serving and not particularly credible. First, as noted by Complainant, it is not necessary for a Complainant to own a trademark registration in, for example, Islamic Republic of Iran, for Respondent’s registration of a domain containing the trademark to be in violation of the Policy. E.g., Facebook, Inc. v. Majid Karimian Ghannad,WIPO Case No. DIR2009-0001. It also appears that the registration and use of the disputed domain name was a breach of Respondent’s representations under its agreement with IRNIC; Respondent presumably has some duty of diligence in warranting that “to the best of the Registrant’s knowledge, the registration and use, direct or indirect, of the Domain Name does not and will not violate any applicable laws or regulations.” IRNIC, Terms and Conditions for Registration under DOT-.ir (”.ir”) paragraph 4.8.
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