WIPO Domain Name Decision D2006-0299 for freeverisign.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VeriSign, Inc. v. Martin Franze, Inc.

Case No. D2006-0299

1. The Parties

The Complainant is VeriSign, Inc., Mountain View, California, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.

The Respondent is Martin Franze, Inc., Aspen, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name is registered with Innerwise, Inc. d/b/a ItsYourD.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2006. On March 9, 2006, the Center transmitted by email to Innerwise a request for registrar verification in connection with the Domain Name. On March 11, 2006, Innerwise transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Innerwise also confirmed that the Domain Name was placed under a registrar lock, that the Domain Name expires on February 11, 2007, that English is the language used in the Registration Agreement, and that the registrant has submitted to the jurisdiction of the principal office of the Registrar. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�4,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on April 5, 2006.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April�12,�2006. The Sole Panelist finds that the Administrative Panel (hereinafter referred to as the “Panel”) 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.

On April 20, 2006, the Panel issued Procedural Order No. 1 in this matter, requesting a supplemental filing containing further evidence and information with respect to the allegations contained in paragraph 24 of the Complaint. On April 25, 2006, the Complainant filed the requested supplemental filing, and on April 26, 2006, the Center transmitted an email to the Parties confirming its receipt of the supplemental filing.

4. Factual Background

The Complainant VeriSign, Inc., a company incorporated under the laws of Delaware with a principal place of business in Mountain View, California, is a directory provider of .com, .net, .cc and .tv domain names and also provides naming and directory products and services to globalize access to the Internet. The Complainant offers various Internet- and computer-related products and services, including web security, payment and authentication, registry and database, and telecommunications products and services. The Complainant has been continuously engaged in such business since�1995.

The Complainant is the owner of United States federal registrations for three “VERISIGN” trademarks and service marks (U.S. Reg. Nos. 2,302,350, 2,559,289 and�2,758,215) (the “VERISIGN marks”), which it uses and promotes globally. These registrations were obtained on December 21, 1999, April 9, 2002, and September�2,�2003, respectively. The domain name was registered by the Complainant on June 2, 1995 and has been continuously associated with the Complainant’s business since that time. The Complainant also has a number of worldwide registrations and pending applications for the VERISIGN mark.

The Respondent is a corporation with a principal place of business in Aspen, Colorado. The Respondent registered the disputed Domain Name on February�11, 2002. The Respondent uses the Domain Name to offer payment products and services for retail businesses, including for wireless merchants and Internet order businesses. The Respondent offers its business services through the Domain Name under the name Total Merchant Services, Inc.

On April 11, 2005, counsel for the Complainant wrote to the Respondent, notifying the Respondent that the Complainant is the owner of the VERISIGN marks and that the Respondent’s use of the Domain Name violates the Complainant’s rights in the VERISIGN marks. Counsel for the Complainant demanded that the Respondent cease all use of the Domain Name, and that the Respondent transfer the Domain Name to the Complainant. The Respondent acknowledged receipt of the Complainant’s April 11, 2005 correspondence on April 12, 2005, and indicated that it would be willing to discuss the issues raised in the Complainant’s April 11, 2005 correspondence.

The Respondent did not comply with the Complainant’s demands to cease and desist use of the disputed Domain Name and transfer the disputed Domain Name to the Complainant. The Complainant again contacted the Respondent on January 26, 2006. The Respondent returned the Complainant’s telephone call on January 26, 2006, during which conversation the Respondent stated that the business associated with the disputed Domain Name offered the resale of VeriSign products, namely terminal licenses and virtual terminal gateways, and that the Respondent possessed an agreement with the Complainant allowing the Respondent to conduct such resale as well as to register and use the Domain Name. The Complainant advised the Respondent that the Complainant had no copy of any such agreement and that the Respondent did not have permission to register or use the disputed Domain Name. The Respondent stated that it would send the Complainant a copy of the alleged agreement. On January 27, 2006, the Complainant telephoned the Respondent to inform the Respondent that the Complainant had not yet received a copy of the alleged agreement, and that the Complainant would be proceeding with a Complaint under the Policy if the Complainant did not receive a response by January 30, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it has promoted the VERISIGN marks and the domain name globally, and that the Complainant’s VERISIGN marks have widespread recognition both in the United States and worldwide. The Complainant further claims that it has continuously used the VERISIGN marks to advertise and promote the products and services it offers under the domain name. The Complainant alleges that it spends in excess of 250 million dollars per year to advertise and promote the VERISIGN marks and the domain name. The Complainant asserts that, as a result of its ownership, use and promotion of the VERISIGN marks and the domain name, it has developed extremely valuable goodwill and an outstanding reputation in the VERISIGN marks and the domain name. The Complainant alleges that the VERISIGN marks and the domain name are indications of high quality and origin associated exclusively with the Complainant.

The Complainant claims that it is the authoritative directory provider of all .com, .net, .cc, and .tv domain names, and that it is an industry leader in naming and directory products and services to globalize access to the Internet. The Complainant further alleges that it offers a broad range of Internet- and computer-related products and services, including web security, payment and authentication, registry and database, telecommunications, and other Internet-related products and services.

The Complainant contends that the disputed Domain Name provides links for products and services that are identical to the Complainant’s products and services, including worldwide third-party payment processing products and services and management for retail businesses, including wireless merchants and Internet order businesses.

The Complainant asserts that the Respondent is not a licensee of the Complainant nor is it authorized to use the Complainant’s VERISIGN marks or domain name.

The Complainant claims that the Respondent’s Domain Name is nearly identical to the Complainant’s domain name in that the disputed Domain Name fully incorporates the Complainant’s mark VERISIGN and is confusingly similar to the Complainant’s registered mark. The Complainant alleges that the only difference between its VERISIGN mark and the disputed Domain Name is the addition of the term “free” to the disputed Domain Name, which term the Complainant claims is, in the context of commerce, most commonly understood to refer to something that does not require payment in order to procure it. The Complainant claims that “there is no apparent relationship between the generic and commonly-used term ‘free’ beyond its generic meaning and the business, operations, or products and services offered by the Respondent.” The Complainant asserts that the Respondent’s incorporation of the entirety of the Complainant’s VERISIGN mark in the disputed Domain Name creates and establishes confusing similarity between the disputed Domain Name and the Complainant’s VERISIGN mark and domain name. The Complainant contends that the addition of the generic term “free” to the disputed Domain Name does not allow the Respondent to escape a finding of confusing similarity.

The Complainant also asserts that, in addition to the similarity between the disputed Domain Name and the Complainant’s VERISIGN mark and domain name, the Respondent’s Domain Name references identical products and services as those provided under the Complainant’s mark and domain name. Specifically, the Complainant claims that the Respondent’s “www.” website offers products and services related to worldwide third-party payment processing services and management for retail businesses, causing an undetermined and continuing number of instances of customer confusion.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, for a number of reasons. The Complainant claims that the Respondent has never been authorized by the Complainant to use the Complainant’s VERISIGN marks in any way, shape or form, including as a part of the disputed Domain Name. The Complainant further contends that the Respondent has no legitimate interests in the disputed Domain Name because the Domain Name was registered after the Complainant had registered its VERISIGN marks and had established extensive goodwill in such marks. Finally, the Complainant asserts that the disputed Domain Name does not reflect, incorporate or reference the Respondent’s common name, Total Merchant Services, Inc.

The Complainant also argues that the Respondent has registered and used the disputed Domain Name in bad faith. The Complainant reiterates that the Respondent’s use of the disputed Domain Name is “confusingly similar to the Complainant’s VERISIGN marks,” and that the Respondent offers products and services under the disputed Domain Name that are identical to the Complainant’s products and services. Further, the Complainant alleges that the “Respondent’s use of the generic term ‘free,’ which connotes something that comes at no cost, in connection with [the] Complainant’s VERISIGN marks indicates an intent to lure consumers to the under pretext of offering products and services affiliated with the VERISIGN marks at no cost to the consumer.” The Complainant claims that the Respondent has thus intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s “www.” website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or the Respondent has registered the disputed Domain Name primarily for the purpose of disrupting the business of the Complainant.

Finally, the Complainant claims that the Respondent never complied with the Complainant’s April 11, 2005, demands to the Respondent to cease and desist use of the disputed Domain Name and transfer the disputed Domain Name to the Complainant. The Complainant further alleges that it contacted the Respondent on January 26, 2006, to provide the Respondent a final chance to comply with the April�11,�2005, cease and desist letter before the Complainant filed a Complaint. The Complainant claims that, during a conversation between the Parties on January�26,�2006, the Respondent represented that it possessed an agreement with the Complainant authorizing the Respondent to use the disputed Domain Name. Upon the Complainant’s request, the Respondent promised to send to the Complainant a copy of this agreement. The Complainant claims that such an agreement would be in direct violation of the Complainant’s policy regarding registration and use of the VERISIGN mark within a domain name by a third party. The Complainant asserts that, on January�27, 2006, after the Complainant had not received the agreement the Respondent claimed to possess, the Complainant advised the Respondent by telephone that if it did not receive a copy of the agreement by January 30, 2006, it would proceed with the filing of a Complaint. The Complainant claims that it has never received any further communication, or a copy of the alleged agreement, from the Respondent.

B. Respondent

The Respondent has failed to respond to the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

First, the Complainant must prove that the disputed Domain Name is identical or confusingly similar to a mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).

The Complaint shows that the Complainant has valid and well established exclusive rights in its VERISIGN marks, for which the Complainant possesses valid federal trademark and service mark registrations (the first of which was obtained in 1999), which the Complainant uses to offer its business-related products and services, and which the Complainant has expended significant resources to promote. See MSNBC Cable LLC v. T, WIPO Case No. D2000-1204. The Complainant has also registered the domain name , which has been continuously associated with the Complainant’s business since 1995.

The Panel finds that the Respondent’s Domain Name is confusingly similar to the Complainant’s VERISIGN marks. The disputed Domain Name incorporates the entirety of the Complainant’s VERISIGN mark. The only difference between the disputed Domain Name and the Complainant’s mark lies in the addition of the word “free” before the Complainant’s mark VERISIGN within the disputed Domain Name. The addition of generic words to a complainant’s mark is not sufficient to escape a finding of similarity when a disputed domain name otherwise wholly incorporates a complainant’s mark. See Telstra Corporation Limited v. Peter Lombardo, Marino Sussich & Ray Landers, WIPO Case No.�D2000-1511 (finding confusing similarity where the generic term “freeonline” was added to the complainant’s trademark). Particularly where, as here, the products and services offered by the Respondent under the disputed Domain Name are substantially similar to those offered by the Complainant under the VERISIGN marks and domain name, the addition of the generic term “free” (which can be understood to refer to the offering of products or services at no charge) to the distinctive VERISIGN mark does not decrease the likelihood of confusion but actually increases it. The Panel finds that consumers are likely to believe that the Respondent’s products and services are sponsored by the Complainant and that they would be receiving, through the disputed Domain Name, the Complainant’s products and services free of charge. See, e.g., PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks, and in fact, increase the likelihood of confusion when the complainant and the respondent offer identical or similar services).

The Panel therefore concludes that the disputed Domain Name is identical or confusingly similar to the Complainant’s VERISIGN marks, in which the Complainant has valid and exclusive rights.

B. Rights or Legitimate Interests

The Complainant is also required to prove that the Respondent has no rights or legitimate interest in respect of the disputed Domain Name (Policy, paragraph 4(a)(ii)).

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to the complainant’s mark, and that the complainant has established that the respondent has no right to use the mark, the burden shifts to the respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. , WIPO Case No. D2000-1074. In light of the Respondent’s default, the Panel presumes that the Respondent has no such rights or legitimate interest.

The Respondent’s default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent (commonly known as Total Merchant Services, Inc., although the name Total Merchant Services, Inc. appears nowhere on the “www.” website) is now or was ever known by , that the Respondent possesses any trademark or service mark rights in the Domain Name, or that the Respondent has other authority or permission to use the Complainant’s VERISIGN marks. Although the Complaint states that the Respondent at one time represented that it possessed an agreement with the Complainant permitting the Respondent to use the Domain Name, such agreement has not been produced with respect to this matter, and the Respondent has not made any response to the Complaint (or to the Complainant’s cease and desist letter) that would support the existence of the purported agreement. Furthermore, by not submitting a response to the Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the disputed Domain Name. Ahead Software AG v. Leduc Jean, WIPO Case No.�D2004-0323; see also Nintendo of America, Inc. v Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563.

Moreover, the Respondent has not shown that it has made any bona fide commercial use or any legitimate non-commercial or fair use of the disputed Domain Name without any intent either for commercial gain or to mislead or divert consumers or tarnish the trademark at issue. There is no evidence in the record that the Respondent is making anything but a commercial use of the disputed Domain Name, which is identical or confusingly similar to the Complainant’s well-known VERISIGN marks and domain name, and through which the Respondent offers and charges consumers for products and services that are identical or substantially similar to the Complainant’s products and services, thereby financially benefiting from the Complainant’s goodwill. Such use of the disputed Domain Name does not constitute a bona fide use. See Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 (“Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to the Policy.”)

As such, the Panel finds that the Respondent has no rights or legitimate interest in the disputed Domain Name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must additionally establish that the disputed Domain Name has been registered and is being used by the Respondent in bad faith (Policy, paragraph 4(a)(iii)). Based on the record presented, the Panel concludes that the Complainant has proffered sufficient evidence of bad faith.

First, the Respondent’s knowledge of the Complainant’s VERISIGN marks when the Respondent registered the Domain Name, as the record evidence demonstrates, supports a finding of registration in bad faith. The undisputed evidence set forth in the Complaint shows that the Complainant registered the first of its three U.S. trademarks and service marks for the VERISIGN mark in 1999, has maintained the domain name since 1995, and has filed for numerous worldwide registrations and pending applications. The Panel infers that the Respondent had notice of the Complainant’s VERISIGN marks but chose, in spite of that knowledge, to register the Domain Name with the intent of causing consumer confusion and financially benefiting from the goodwill inherent in the Complainant’s well known mark. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

The Panel further infers the Respondent’s bad faith intent from the Respondent’s lack of Response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

The Panel also infers that the Respondent registered the disputed Domain Name, which is identical or confusingly similar to the Complainant’s VERISIGN marks and under which the Respondent offers identical or substantially similar products and services to those of the Complainant, to disrupt the business of the Complainant, thus constituting bad faith under Paragraph 4(b)(iii) of the Policy. The Panel finds that the Respondent’s registration and use of the disputed Domain Name, which wholly incorporates the Complainant’s VERISIGN mark and adds the generic term ‘free’, was intended to lure consumers to the Respondent’s “www.” website under the erroneous assumption that they could obtain the Complainant’s products and services at no cost, thus disrupting the Complainant’s business. The Panel concludes that this, too, constitutes bad faith. See U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No.�D2003-0511 (attempt by a competitor respondent to siphon off the complainant’s potential customers by registration and use of a confusingly similar domain name held to constitute bad faith).

The Panel further infers that, by and through the Respondent’s registration and use of the disputed Domain Name, the Respondent intended to attract, for commercial gain, users to the Respondent’s “www.” website by creating a likelihood of confusion with the Complainant’s VERISIGN marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site. The Respondent’s behavior in this respect constitutes bad faith under Paragraph 4(b)(iv) of the Policy. See The Neiman Marcus Group, Inc. v. F, FA 155176 (Nat.�Arb. Forum) (“Respondent’s use of a domain name confusingly similar to a famous mark to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv)”); see also Drs. Foster & Smith, Inc. v. Jaspreet Lalli, FA 95284 (Nat. Arb. Forum).

Given the above facts and circumstances, the Panel finds that the Respondent has registered and is using the disputed Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant VeriSign, Inc.

Lynda M. Braun
Sole Panelist

Dated: May 10, 2006

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