The Complainant is Verizon Trademark Services LLC of Arlington, Virgina, United States of America, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Mike Duffy, London Central Communications Ltd of London, UK, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on November 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent as the registrant and providing 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 the Respondent of the Complaint, and the proceeding commenced on November 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2014. The Response was filed with the Center on December 8, 2014. Thereafter, the Complainant submitted an unsolicited supplemental filing on December 9, 2014, which the Panel, in its sole discretion, has chosen to accept.
The Center appointed Michael J. Spence as the sole panelist in this matter on December 18, 2014. 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
The Complainant is a leading global communications and technology company, with annual revenues of over USD 120 billion. It is the owner of many trade marks around the world based on, or containing, the invented word “verizon”, registrations dating back to 2003. The Respondent at one time operated under agreement with the Complainant for the resale and billing of their services. This arrangement came to an end in 2012 when the Complainant withdrew from certain segments of the UK market. The Respondent, in the belief that the Complainant would re-enter this market, and in the hope of resuming their previous relationship, registered the disputed domain name in September 2014, but it has not been in use. 5. Parties’ Contentions A. Complainant
The Complainant contends: that the disputed domain name is identical or confusingly similar to its trade marks; that there is no evidence that the Respondent has rights or legitimate interests in the mark and that the agreement which had governed the relationship between the Complainant and the Respondent explicitly required permission for the use of trade marks, which had not been given for the registration of the disputed domain name; and that the mere passive holding of a mark the use of which would inevitably cause confusion constitutes bad faith. The Complainant also contends that in a telephone conversation between a representative of the Complainant and the Respondent the Respondent offered to sell the disputed domain name. B. Respondent
The Respondent contends that it has a right or legitimate interest in the disputed domain name, on the basis of the prior relationship of the Complainant and the Respondent and that its registration was not in bad faith. It argues that the holding of the disputed domain name, without active use, does not constitute bad faith. The Respondent denies that it has offered to sell the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s trade mark in its entirety. Moreover the Complainant’s trade mark consists of an invented word which is well known. There can be no doubt that the disputed domain name is identical, or confusingly similar to, the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
In this case the Respondent has not, by his own admission, made use of the disputed domain name. Moreover, the prior relationship between the Complainant and the Respondent cannot constitute a right or legitimate interest in the disputed domain name because the agreement governing that relationship provided that the VERIZON mark could not be used without permission.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith
In this case no clear evidence has been provided by the Complainant of an attempt to profit from either the sale of the disputed domain name, or from activity constituting “cyber-squatting.” The details of the telephone conversation between a representative of the Complainant and the Respondent in which an offer to sell was allegedly made are too unclear to establish any such offer.
Nevertheless, given the very extensive reputation of the Complainant’s mark and that the mark is an invented one, it seems that any use that could be made of the disputed domain name would inevitably lead to confusion between the Respondent and the Complainant. In the absence of any existing relationship between the two, even given the history of their relationship and the Respondent’s hope that it might subsequently be renewed, the registration and holding of the disputed domain name that would almost inevitably lead to confusion can be said itself to constitute bad faith sufficient to satisfy the third element of paragraph 4(a) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name. 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 the Complainant.
Michael J. Spence
Sole Panelist
Date: December 28, 2014
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