Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America, internally represented (“Complainant”).
Respondent is The Helard Group of Little Rock, Arkansas, United States of America (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, LLC (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 8, 2012.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 16, 2012. 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 a member of the Verizon Communications group of companies which includes Verizon Wireless (collectively, “Verizon”). Verizon has become one of the world’s leading provider of communications, entertainment, IT and security solutions. Verizon is publicly traded on the New York Stock Exchange, is a Dow 30 company and generated annual consolidated operating revenues of more than USD 106 billion in 2010. Verizon employs more than 195,000 employees worldwide. Verizon owns and operates the largest wireless carrier in the United States, serving more than 108.7 million voice and data customers. Additionally, Verizon owns and operates one of the most expansive end-to-end global IP networks serving more than 2,700 cities in over 150 countries worldwide.
Verizon is one of the world’s most famous names in wireless communications and owns a family of valid and subsisting trademarks incorporating VERIZON. See, e.g., United States Patent and Trademark Office Reg. Nos. 2886813 and 3319338 (see Annex 5 to the Complaint). Several UDRP panels have found that Complainant’s trademark rights in VERIZON are well-established and that VERIZON is a famous mark. See, e.g., Verizon Trademark Services LLC v. Pawel Tykwinski, Registration Private ID: CR68165630,WIPO Case No. D2011-1092 (“VERIZON is a well-known trademark with a well-established and widespread international reputation […] Respondent registered the disputed domain name with knowledge of the worldwide fame of [Verizon]’s VERIZON trademark […]”); Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon,WIPO Case No. D2011-0247; Verizon Trademark Services LLC v. Ali Aziz,WIPO Case No. D2010-0833.
Further, Verizon owns several domain names and websites that offer a full array of communications, entertainment, IT and security products and services including , used since June 2000, , used since April 2000, and , used since January 2006 (see Annex 3 to the Complaint). Additionally, Verizon owns which redirects to and offers Apple Inc.’s IPHONE wireless device for sale. Several UDRP panels in both the European Union and United States have recognized Verizon’s rights in the VERIZON mark and ordered transfers of confusingly similar domain names accordingly. See, e.g., Verizon Trademark Services LLC v. Darlington Edu d/b/a Barmax Distribution, NAF Claim No. 0830994 (Transferring , , , , , and others to Complainant); Verizon Trademark Services LLC v. Paul Swider d/b/a OnClick, NAF Claim No. 0670992 (Transferring to Verizon); Verizon Trademark Services LLC v. Zx Domains c/o Sezar Sak,WIPO Case No. D2011-0419 (Transferring , , , , , , , and to Complainant).
As Respondent did not file a response to Complainant’s contentions in these proceedings, the Panel finds that the assertions of fact in the Complaint are undisputed.
The Disputed Domain Name was registered on June 4, 2011. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith in order to deceive and defraud visitors of the website.
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s VERIZON mark. Complainant further contends that the Disputed Domain Name creates confusion because it incorporates Complainant’s VERIZON mark and adds the trademark IPHONE and the term “4s.” Complainant asserts that the addition of the generic Top-Level Domain (gTLD) “.com” does not avoid confusion. Complainant also contends that the Disputed Domain Name creates initial interest confusion by incorporating the famous VERIZON mark to attract users to the website and intentionally divert them to a monetized landing page which displays links to Verizon’s products and services, as well as those of Verizion’s competitors (screenshots of the website associated with the Disputed Domain Name are attached as Annex 6 to the Complaint).
Complainant contends that it has no relationship with Respondent and has not authorized Respondent to use the VERIZON trademark. In addition, Complainant contends that Respondent has not received any license, authorization, or consent to use the VERIZON mark. Complainant argues that Respondent had constructive knowledge of the VERIZON mark through its fame and worldwide trademark registrations and that Complainant intended to capitalize on the consumer recognition of the famous VERIZON mark. Complainant further contends that Respondent has never sought or obtained any trademark registrations for VERIZON or any variation thereof. Complainant further contends that Respondent expected that use of the Disputed Domain Name would cause Verizon harm.
Due to the presence of the trademark IPHONE in the Disputed Domain Name, Complainant has obtained a letter of authorization from Apple Inc. (the owner of the IPHONE trademarks) to obtain transfer of the Disputed Domain Name if ordered in this proceeding (produced as Annex 7 to the Complaint). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
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 Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Disputed Domain Name registered by Respondent 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 and is being used in bad faith.
Respondent provided no response, and the deadline for doing so expired on March 7, 2012. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s reasonable allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. A. Identical or Confusingly Similar
Complainant provides sufficient evidence that it is the owner of valid and subsisting registrations and rights at common law for the VERIZON mark. Complainant’s valid United States’ registrations for the mark (examples are offered into evidence in Annex 5 to the Complaint), taken together with its longstanding, extensive worldwide use of the VERIZON mark, make such ownership of enforceable trademark rights indisputable. T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 ([R]egistration of a mark is prima facie evidence of validity […] Respondent has the burden of refuting this assumption.”); EAuto, L.L.C. v. Triple S, Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Respondent provides no evidence to refute the conclusion that Complainant possesses valid and enforceable trademark rights.
Complainant contends that the Disputed Domain Name is confusingly similar to the VERIZON mark. The Disputed Domain Name, however, is not identical to the VERIZON mark. Therefore, the first issue is whether the Disputed Domain Name and the VERIZON mark are confusingly similar.
The Disputed Domain Name combines four elements: (1) the trademarked term “verizon”; (2) the trademarked term “iphone”; (3) the term “4s” and (4) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “verizoniphone4s”), as it is well established that the top-level domain may not be included in the analysis. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
This Panel agrees that the Disputed Domain Name is confusingly similar to the VERIZON mark. Several previous UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to complainant’s mark. See, e.g., Revlon Consumer Products Corporation v. IONE Inc.,WIPO Case No. D2010-1000; Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The establishment of confusion is particularly true where, as here, the trademark is famous. Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
Further, the addition of the mark IPHONE and the term “4s” to the VERIZON trademark in the Disputed Domain Name does not avoid confusion. Several UDRP panels have found that the respondent’s inclusion of a third-party’s trademark in its domain name does not eliminate confusing similarity. See, e.g., Verizon Trademark Services LLC v. Pawel Tykwinski, Registration Private ID: CR68165630, supra (Transferring and stating that the “addition of the terms ‘iphone’ and ‘on’ does not prevent confusion […] the term ‘iphone’ is a well-known trademark of Apple Inc. related to communications, and hence the disputed domain name misleads Internet users into thinking that the disputed domain name is related to […] the [c]omplainant.”); F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751 (finding confusingly similar to the complainant’s XENICAL mark); Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 (Finding confusingly similar to Complainant’s VIAGRA mark); Hoffman-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793 (Finding confusingly similar to Complainant’s XENICAL mark). This is especially true in the instant case because Verizon owns the domain name which offers Apple Inc.’s iPhone for sale (as per Annex 4 to the Complaint).
Furthermore, UDRP panels have consistently found that the inclusion of a third-party trademark may increase the confusing similarity and “does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark.” See Pfizer, Inc. v. Martin Marketing, supra (regarding “the combination of the two marks would convey to Internet users familiar with Complainant’s advertising an expected association.”); Albertis Infraestructuras, S.A. v. Syed Hussain (PDAPB),WIPO Case No. D2006-1007. As noted above, the likelihood of association is especially true in the instant case because Complainant is known to carry Apple Inc.’s iPhone mobile device in its stores and through its website.
Therefore, this Panel finds that the Disputed Domain Name is confusingly similar to the VERIZON mark. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of the dispute, respondent used, or demonstrably prepared to use, the domain names or name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
This Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has not filed a response, which, in appropriate circumstances after a prima facie showing by Complainant, can suggest that Respondent lacks rights or legitimate interests as to the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (Finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interests in the domain name).
Next, as a result of not filing a response, Respondent has failed to dispute Complainant’s showing that Respondent has not demonstrated any of the factors under paragraph 4(c) of the Policy. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized to use the Disputed Domain Name. There is no evidence that Respondent is commonly known by the Disputed Domain Name, nor that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Conversely, Complainant’s evidence suggests that Respondent is using the Disputed Domain Name to create initial interest confusion in order to attract Internet users to its monetized landing page which displays links to Verizon’s products and services as well as those of its competitors. Clearly, intentionally confusing Internet visitors for financial gain cannot constitute a bona fide offering of services. See, e.g., Verizon Trademark Services LLC v. NA a/k/a NA DomainD, NAF Claim No. 0616307 (Holding the respondent’s use of the domain name for a website featuring links to competing products and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); Hoffman-La Roche Inc. v. Igor Richko, WIPO Case No. D2010-0904; Tiffany (NJ) LLC, Tiffany and Company v. Thomas Stanek, WIPO Case No. D2009-0143.
Therefore, this Panel finds that Complainant has established prima facie evidence that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent, by not responding to the Complaint, has failed to rebut the prima facie case. C. Registered and Used in Bad Faith
Under the Policy, paragraph 4(a)(iii), registration and use of a domain name in bad faith may be demonstrated by showing:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
For the following reasons, this Panel finds that Complainant’s evidence shows that Respondent has registered and used the Disputed Domain Name in bad faith in violation of the Policy.
First, VERIZON is a coined mark. The VERIZON mark is inherently distinctive and fanciful and entitled to broad protection due to its commercial strength. Given the well-known status of the mark, and Respondent’s use of the mark to create initial interest confusion in order to drive Internet traffic to its site for commercial benefit, this Panel finds it inconceivable that Respondent was not aware of Verizon and its international business. See Wal-Mart Stores, Inc. v. Jeff Milchen,WIPO Case No. D2005-0130 (Finding that respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith); Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications,WIPO Case No. D2003-0602.
In addition, this Panel finds that Respondent has no rights or legitimate interests with respect to the Disputed Domain Name, as discussed above. UDRP panels have consistently found that registration and use of a domain name including a famous trademark belonging to a third party, without proving rights or legitimate interests in it, represents bad faith registration and use. See, e.g., DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA,WIPO Case No. DRO2006-0003; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (holding that the disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”). Furthermore, the Disputed Domain Name includes the entire VERIZON mark. This also supports a finding of bad faith. See Wal-Mart Stores, Inc. v. Jeff Milchen, supra; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028.
Finally, Respondent is using Complainant’s goodwill and the reputation of the VERIZON mark to redirect Internet users for financial gain. Many UDRP panels have found that intentionally creating confusion with a famous mark for financial benefit is evidence of bad faith registration and use. See, e.g., Verizon Trademark Services LLC v. Pawel Tykwinski, Registration Private ID: CR68165630, supra; Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462; Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
Therefore, this Panel finds that Complainant has demonstrated that the Disputed Domain Name was registered and is being used in bad faith.
Lastly, the Panel notes that the decision results in the transfer of a domain name that includes the IPHONE mark owned by Apple Inc., which is not a party to the instant proceeding. Several UDRP panels have noted that, although neither the Policy nor the Rules expressly require doing so, it is good practice to obtain authorization from the third-party trademark owner with a potential interest in the transferred domain. See, e.g., Pfizer, Inc. v. Martin Marketing, supra; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, supra; Yahoo, Inc. v. M & A Enterprises,WIPO Case No. D2000-0748. Here, Complainant has obtained Apple Inc.’s consent (as shown in Annex 7 to the Complaint). 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.
Michael A. Albert
Sole Panelist
Dated: March 30, 2012
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