The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America ("United States"), internally-represented.
The Respondents are Daniel Pizlo of Mexico City, Mexico and Go Páginas of Mexico City, Mexico. 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with Neubox Internet S.A. de C.V. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2018. On July 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
The Center sent an email communication to the Parties in English and in Spanish on July 24, 2018, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding in its Complaint. The Respondents did not submit any request in relation to the language of the proceeding.
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 Respondents of the Complaint, and the proceedings commenced on August 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 26, 2018.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on August 29, 2018. 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. 3.1. Language of proceeding
The Complainant has requested that English be adopted as the language of the proceeding although the language of the registration agreements for all the disputed domain names is Spanish. The Complainant has requested English to be to language of the proceeding for the following reasons:
Firstly, the Complainant is a United States entity, and the Complainant and the Complainant's representative are unable to communicate in Spanish.
Secondly, the evident knowledge of English of the Respondents based on:
a. The disputed domain names are rendered in the English alphabet and contain or combine the Complainant's coined English word marks VERIZON, FIOS and VERIZON FIOS with the English language words "email", "login", "speedtest", "wireless" and "wireless plans."
b. Each of the disputed domain names resolves to a website that features written material in English.
c. The Respondents have registered at least 30 domain names. A considerable number of the Respondents' domain names consist of or incorporate well-known American and international brand names combined with descriptive or generic English language terms and phrases (e.g., , , , , , , , , and ).
Thirdly, additional expenses and delay would likely be incurred if the Complaint had to be translated into Spanish.
As noted above, the Respondents did not file any submission in relation to the language of proceeding when the Center invited them to do so. The Panel also notes the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 4.5.2: "In the interest of fairness and to preserve continuity in the case, prior to panel appointment and determination of the language of the proceedings, where possible, the WIPO Center seeks to send "dual language" case-related communications to the parties (i.e., in both the language of the registration agreement, and the language of the complaint)". The Center did so accordingly.
There is evidence in the case file that the Respondents are familiar with the English language. As such the use of English terms added to the trademarks to produce a domain name or the use of the English language in the corresponding websites to which the disputed domain names resolve.
Accordingly, under the circumstances alleged by the Complainant, the Panel accepts to consider English as the language of the proceeding. 3.2. Consolidation of respondents
The Complaint disputes six domain names which the Complainant wishes to have dealt with in a single administrative proceeding. Paragraph 10(e) of the Rules states that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
As noted in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 "The Panel concludes from its review of the relevant UDRP panel decisions discussed above that the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve".
This approach has given rise to section 4.11.2 of the WIPO Overview 3.0: "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario".
Besides, where consolidation of multiple complainants has been requested, UDRP panels have pointed out the importance of the Center's role. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331. "The role of the administrative service provider is to act as a gatekeeper by clearly rejecting complaints which do not fulfil the requisite criteria. Once a complaint is admitted on a prima facie basis the respondent will have its opportunity to make submissions as to validity of the complaint together with its substantive response. The panel will then be in a position to determine the procedural issues based on both parties' submissions and the panel may of course request further statements or materials from either party if found to be necessary. There seems to this Panel to be no compelling reason to impose an additional step into the process which would require a provider to seek comments from the respondent, or to place the onus of review and determination of competing submissions upon the administrative service provider.". The Panel finds that such observations are equally applicable to this case involving a request for consolidation of multiple respondents.
In this instance, the Panel finds that on the evidence put forward before him the owner and/or controller of the disputed domain names are Go Páginas and Daniel Pizlo.
The following disputed domain names: , , , and resolve or have resolved to a website that sells VERIZON services. The similarities and commonalities of the corresponding websites are apparent.
All the disputed domain names have been registered with the same Registrar: Neubox Internet,S.A. de C.V.
Further, , and have enjoyed in the past the same technical contact, i.e. Mr. Pizlo Jezior.
In addition, each of the disputed domain names incorporates the Complainant's well-known VERIZON mark in its entirety. Such registration tantamount targeting the Complainant's rights in the VERIZON mark in an attempt to divert consumer from the Complainant's website. See paragraph 6.C below.
Accordingly, the Panel finds that the Complainant has established more likely than not that the disputed domain names are subject to common ownership or control. The Panel finds such common ownership or control to justify the Complainant's consolidation claims against the registrants of the disputed domain names in this proceeding.
Moreover, the Panel finds that consolidation of the multiple domain name disputes related to multiple respondents would be fair and equitable to all parties, and procedurally efficient pursuant paragraph 10(e) of the Rules.
Accordingly, the Panel accepts the consolidation of the multiple domain name disputes against the Respondents Daniel Pizlo and Go Páginas. 4. Factual Background
The Complainant is an intellectual property holding company for the Verizon group of companies. Verizon is one of the world's leading providers of communications, entertainment, IT and security products and services to residential, business, wholesale, and government wireline and wireless customers.
Verizon is a publicly traded company on the New York Stock Exchange. Verizon in 2017 generated annual consolidated operating revenues of more than USD 126 billion and employs a diverse workforce of approximately 155,400 employees. Verizon owns and operates one of the most expansive end-to-end global IP networks serving more than 2,700 cities in 159 countries worldwide.
The Complainant has registered the VERIZON marks around the world. The Complainant owns many trademark registrations for its VERIZON marks in the United States, including the following examples:
Registration No.
Mark
Registration date
Classes
2,886,813
VERIZON
September 21, 2004
9, 16, 35, 36, 37, 38, 41, and 42
3,001,081
FIOS
September 27, 2005
37 and 38
3,147,510
VERIZON FIOS
September 26, 2004
37 and 38
3,077,271
VERIZON WIRELESS
April 4, 2006
9, 16, 35, 36, and 38
In Mexico, the Complainant is the owner of the following trademarks:
Registration No.
Mark
Registration date
Classes
652995
VERIZON
April 28, 2000
9
652996
VERIZON
April 28, 2000
16
652997
VERIZON
April 28, 2000
35
721182
VERIZON
October 31, 2001
36
652998
VERIZON
April 28, 2000
37
652999
VERIZON
April 28, 2000
38
653000
VERIZON
April 28, 2000
41
653001
VERIZON
April 28, 2000
38 and 42
For the purpose of the Policy VERIZON is considered a well-known trademark. See, Verizon Trademark Services LLC v. Juergen Neeme, TheD,WIPO Case No. D2018-1125; Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd.,WIPO Case No. D2014-1994; Verizon Trademark Services LLC v. Richard Miyashita,WIPO Case No. D2017-1335.
The disputed domain names were registered on the following dates: on February 2, 2013 , on October 21, 2013, July 28, 2013, July 15, 2013 and and , on August 14, 2013.
According to the evidence in the case file , , , and resolve to websites which provide information about the Complainant's services and where the commonalities in design and architecture are obvious. However, currently resolves to a downloadable file which could not be opened by the Panel.
The Complainant contacted the Respondents on December 19, 2013 in relation to . 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to its registered VERIZON, VERIZON WIRELESS, FIOS or VERIZON FIOS trademarks because each contains the Complainant's marks in their entirety.
The Complainant contends that UDRP panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address composed of the organization's name or mark (Dr. Michael Crichton v. Alberta Hot Rods,WIPO Case No. D2002-0872). Further, the Complainant says that the addition of a generic Top-Level Domain, such as ".com" or ".info," is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
In respect to the second element, the Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain names for the following reasons: the Complainant has not authorized the Respondents to register or use the disputed domain names; the Respondents are not commonly known by the disputed domain names or any name reflected thereby and the Respondents have made no legitimate commercial or noncommercial use of the disputed domain names.
The Complainant points out that each disputed domain name resolves to a website supporting content associated with the Complainant and the VERIZON marks, implying an association with the Complainant or its VERIZON marks which does not exist. Further, the Complainant asserts that the Respondents' activities do not constitute a fair use of the disputed domain names since the Respondents' misappropriation of the VERIZON marks is no accident and thus it is not legitimate for the purposes of the Policy.
Finally, the Complainant alleges previous knowledge of the VERIZON trademark by the Respondents. Allegedly, registration was based on its commercial strength worldwide. Thus, the Respondents' use of the marks to create initial interest confusion in order to drive Internet traffic to their sites for commercial benefit and such a use is to be considered not in good faith. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain names to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondents to lodge a response. Under paragraph 14(a) of the Rules in the event of such a "default" the Panel is still required "to proceed with a decision on the complaint", whilst under paragraph 14(b) it "shall draw such inferences there from as it considers appropriate". This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the VERIZON, FIOS, VERIZON FIOS, VERIZON WIRELSS trademarks. The Complainant has made continuous use of its registered and incontestable marks. The addition of a descriptive term such as "email", "plans", "login", "wireless" or "speedtest" (or a combination thereof) does not serve to avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
Previous UDRP panels have decided that "essential" or "virtual" identity is sufficient to meet the first element. In this respect, La Caixa D'Estalvis I Pensions de Barcelona v. Molina Georgesen,WIPO Case No. D2006-1615.
Accordingly, the Panel notes that all disputed domain names are confusingly similar to the Complainant's marks except for which is identical to the Complainant's VERIZON FIOS mark.
The Panel, therefore, concludes that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant argues that the Respondents have no rights or legitimate interests based on the following: the Complainant has not authorized the Respondents to register or use the disputed domain names; the Respondents are not commonly known by the disputed domain names or any name reflected thereby and the Respondents have made no legitimate commercial or noncommercial use of the disputed domain names.
According to the evidence in the case file such a prima facie showing must be accepted. Therefore, pursuant to the WIPO Overview 3.0, section 2.1.: "[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name".
However, the Respondents did not file a response to the Complaint, so no contrast of allegations or evidences has been submitted by the Respondents.
The Complainant has therefore demonstrated that the Respondents lack rights or legitimate interests in the disputed domain names to the satisfaction of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As set out in the factual background section of this Decision, for the purposes of the Policy, VERIZON is to be considered a well-known trademark.
Further, the addition of terms such as "email", "plans", "login", "wireless" or "speedtest" evokes the services offered by the Complainant and associated with its marks and heighten the inference of the Respondents' knowledge of the VERIZON mark. See Bayerische Motoren Werke AG v. Hao Luc,WIPO Case No. D2018-1584. Hence, the Respondents knew or should have known the Complainant's trademarks.
Moreover, while the Parties are not affiliated nor the Respondents have authorization to use and register the disputed domain names, the registration of the disputed domain names was probably based on a previous knowledge of the Complainant's marks and activities. See L'Oréal v. Noorinet,WIPO Case No. D2015-0755.
Therefore, the Panel concludes that it is reasonable to infer that the Respondents were familiar with the mark VERIZON and what it stands for when registering the disputed domain names.
The Panel looked in the case file and evidence at how the disputed domain names are being used. Five of the disputed domain names , , and resolve to sites focused on the Complainant's services. The overall impression to a consumer is that the sites are an official website of the Complaint or sites affiliated with the Complainant when this is not the case.
One of the examples of bad faith registration and use is paragraph 4(b)(iv) of the Policy if the Respondent "intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location".
Finally, the disputed domain name resolves to a downloadable file which could not be opened by the Panel. While it is unclear to the Panel what the downloadable file is for, in the circumstances of this case, the Panel finds this use to be evidence of bad faith.
Moreover, the Panel finds that the composition of the disputed domain names effectively impersonates or suggests sponsorship or endorsement by the Complainant.
Accordingly, the Complainant has succeeded on the third element 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 names , , , , and be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: September 5, 2018
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