Forbes LLC v Mohsen رﺎﮐزﯾﺣرﭘ

WIPO Case No. D2023-1404

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Forbes LLC v. Mohsen رﺎﮐزﯾﺣرﭘ

Case No. D2023-1404

1. The Parties

The Complainant is Forbes LLC, United States of America, represented by Riker Danzig LLP, United States of America (“United States”).

The Respondent is Mohsen رﺎﮐزﯾﺣرﭘ, Hungary.

2. The Domain Name and Registrar

The disputed domain name <forbes.zone> is registered with CSL Computer Service Langenbach GmbH dba

Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2023.
On April 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 4, 2023, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on April 11, 2023, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on April 20, 2023.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2023. On April 25, 27, and 29, and May 5, 2023, the Center received email communications from the Respondent.

The Center appointed Andrea Mondini as the sole panelist in this matter on May 16, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is active in the publishing, investment, and financial fields. Since 1917, the Complainant has published the FORBES magazine, a bi-monthly business magazine that has an extensive worldwide circulation.

The Complainant owns numerous registrations for its trademark FORBES, inter alia, the United States
trademark registrations no. 1141299 registered on November 11, 1980, in international class 16 and no.
1919483 registered on September 19, 1995, in international class 35.

The Complainant also holds the domain name <forbes.com>, which the Complainant uses to provide online publications, webcasts, market updates, newsletters, virtual events, an e-commerce platform, etc.

The disputed domain name was registered on August 4, 2021.

The disputed domain name resolves to a website offering news and articles relating to billionaires, innovation, leadership, money, lifestyle, and general news. Some links on the disputed domain name automatically redirect to webpages owned or controlled by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain name is confusingly similar to the famous FORBES trademark in which the
Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the word
“zone” is not sufficient to avoid confusing similarity, also considering that the applicable Top-Level Domain
(“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under
the confusing similarity test.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The mark FORBES is associated with the Complainant, since this trademark has been extensively used to identify the Complainant and its services for decades. The Respondent has not been authorized by the Complainant to use this trademark and is not commonly known by the disputed domain name. The Respondent is not making a bona fide offering of goods or services, nor a legitimate, noncommercial fair use of the disputed domain name. The Respondent is merely using the disputed domain name to create a false association with Forbes, so as to benefit from its goodwill. The Respondent is using the disputed domain name to attract users to its competing website where it offers online news articles that compete with the Complainant’s services.

The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its famous trademark FORBES at the time it registered the disputed domain name, also in view of the fact that the Respondent is redirecting traffic from its website to the social media pages of the Complainant.

The disputed domain name is being used in bad faith because based on the use of the famous FORBES trademark it creates a form of “initial interest confusion” which attracts Internet users for commercial gain to the disputed domain name and the competing news articles posted thereunder.

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B. Respondent

On April 25, 27, and 29, and May 5, 2023, the Center received informal email communications from the not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i)        the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns trademark registrations for its FORBES trademark.

The Panel notes that the disputed domain name incorporates the FORBES trademark in its entirety. The
addition of the term “zone” does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i).
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview

3.0”), section 1.8.

The addition of the generic Top-Level Domain “.zone” in the disputed domain name is a standard registration
requirement and as such is disregarded under the confusing similarity test under Policy, paragraph 4(a)(i).

See WIPO Overview 3.0, section 1.11.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the

Complainant’s mark FORBES.

The first element of paragraph 4(a) of the Policy has been met.

B. Rights or Legitimate Interests

The Complainant states it has not authorized the Respondent to use the trademark FORBES and that before notice of the dispute, there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in good faith. The Panel does not see any contrary evidence from the record.

In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. For its part, the Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Furthermore, the nature of the disputed domain name, comprising the Complainant’s trademark and the term

“zone”, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The second element of paragraph 4(a) of the Policy has been met.

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C. Registered and Used in Bad Faith

The Complainant has shown to the satisfaction of the Panel that its FORBES trademark has been used for decades and is internationally well-known.

In the view of the Panel, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well-known trademark FORBES. Given that the disputed domain name contained links that redirected Internet users to websites operated by the Complainant, it is clear that the Respondent was aware of and intentionally targeted the Complainant when registering the disputed domain name. In the circumstances of this case, this is evidence of registration in bad faith.

The Complainant has shown that the disputed domain name resolves to a website offering news and articles relating to billionaires, innovation, leadership, money lifestyle, and general news that compete with the Complainant’s services. The Panel thus finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion as to the source, sponsorship or affiliation of its website in the sense of paragraph 4(b) (iv) of the Policy.

The Panel thus finds that the disputed domain name was registered and is being used in bad faith.

The third element of paragraph 4(a) of the Policy has been met.

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, <forbes.zone>, be transferred to the Complainant.

/Andrea Mondini/
Andrea Mondini
Sole Panelist
Date: May 19, 2023