The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United states of America, internally represented.
The Respondent is Bryan of Cardiff, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with AlpNames Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2016. On May 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2016. Emails were received from the Respondent on May 30, June 2 and June 14, 2016. However, no formal Response was filed with the Center by the Respondent.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 17, 2016. 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 the intellectual property holding company owner of the following, amongst others, trademark registrations:
- United Kingdom trademark registration No. 2363110, word mark VERIZON registered on October 7, 2005 in international classes 09, 16, 35, 36, 37, 38, 41 and 42;
- United States of America trademark registration No. 2886813, word mark VERIZON registered on September 21, 2004 in international classes 09, 16, 35, 36, 37, 38, 41 and 42.
The disputed domain name was created on February 3, 2016. Currently, no active webpage resolves from the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is the owner of the VERIZON trademark largely used by its affiliates and subsidiaries in the provision of communication, entertainment, IT and security services and products. These products and services have been offered under the trademark and trade name VERIZON since the year 2000 in the United States of America and throughout the world.
In 2015 the Complainant's conglomerate generated revenues of more than USD131 billion, employing approximately 177,700 employees. The Complainant further asserts that it has spent "many billions of dollars" since 2000 to advertise and promote VERIZON-branded products and services throughout the world.
According to the Complainant, VERIZON is a coined mark deserving the highest degree of trademark protection since it has long enjoyed unquestionable fame as a result of favorable public acceptance and recognition. Moreover, past UDRP panels have found VERIZON to be "an invented word which is well known".
As to the disputed domain name, the Complainant asserts that it misappropriates its famous VERIZON trademark under the new generic Top-Level Domain ".top", conveying the false and misleading impression that the disputed domain name would identify a website owned or endorsed by the Complainant.
Also, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
- the Complainant has not authorized the Respondent to register or use the disputed domain name and there is no connection between Complainant and Respondent;
- the Respondent is not commonly known by the disputed domain name or any name reflected thereby; and
- by passively holding the disputed domain name, the Respondent has made no legitimate commercial or noncommercial use thereof.
Bad faith in the registration and use of the disputed domain name arises, according to the Complainant, in view of the fact that the Respondent registered and passively used the disputed domain name to take advantage of the goodwill and reputation of the Complainant's famous trademark. B. Respondent
On May 30, 2016 the Respondent sent an email to the Center requesting additional four days to consider his case given that it was a bank holiday. The Center replied on May 31, 2016 granting the automatic four calendar day extension under paragraph 5(b) of the Rules and setting the due date for Response to June 2, 2016.
On June 2, 2016 the Respondent sent an email message to the Center stating that it was his understanding from the "ICANN rules" that he would be entitled to "reasonable expenses" to transfer the disputed domain name at issue and that total expenses of 25 EURs to do so could not be deemed excessive by any party. The Center replied on the same date inviting the Respondent to contact the Complainant directly.
On June 13, 2016 the Center sent the Parties a message informing that it would proceed to the Panel appointment given that no further comments or information had been sent to it as to a possible settlement. The Respondent replied to this message the following day, stating that he only then had contacted the Complainant directly and was looking forward to receiving a reply shortly. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the VERIZON trademark, duly registered inter alia in the United Kingdom and in the United States of America. VERIZON indeed has acquired a well-known status in view of its large global use.
The Panel finds that the disputed domain name reproduces the Complainant's coined and well known trademark in its entirety. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark or service.
The Respondent, in his informal communications, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and / or legitimate interests in the disputed domain name. Nevertheless, the burden is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to register or use the VERIZON trademark in the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent, corroborate with the Panel's finding of the absence of rights or legitimate interests.
In the present case, the emails sent by the Respondent indicate that he would be willing to transfer the disputed domain name for a small fee. Such offer, however, does not alter, under this Panel's view the finding of an absence of rights or legitimate interest over the disputed domain name considering that the Complainant's trademark is a coined well known trademark.
In similar cases such as this, past UDRP panels have also concluded that the offer to sell domain names for a small fee does not characterize a legitimate interest in a domain name which incorporates a well known and internationally used trademark (see, inter alia, Hang Seng Bank Limited v. Websen Inc.,WIPO Case No. D2000-0651: "The Panel takes the view that the mark 'Hang Sent' because of its wide use and promotion internationally has become so well known and 'famous' that any third party seeking to register and deal in a confusingly similar domain name such as that in dispute must create a presumption of bad faith.").
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
i. circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
ii. the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
iii. the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant; or
iv. by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
Past UDRP panels have already dealt with the question of whether the "passive holding" of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "WIPO Overview 2.0" states that "(…) panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. (…)".
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Complainant's trademark is well-known worldwide;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(iii) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
As already mentioned, the Respondent did not file any formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration and use of the disputed domain name.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: July 1, 2016
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