ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Verizon Trademark Services LLC v. Humberto Menjivar, Verizon Case No. D2023-3765 1. The Parties Complainant is Verizon Trademark Services LLC, United States of America, represented internally. Respondent is Humberto Menjivar, Verizon, United States of America. 2. The Domain Name and Registrar The Disputed Domain Names and are registered with HOSTINGER operations, UAB (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2023. On September 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent (Privacy Protect LLC (Privacy Protect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 14, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 14, 2023. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 17, 2023. page 2 The Center appointed Richard W. Page as the sole panelist in this matter on October 27, 2023. 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 was formed on June 30, 2000 and is one of the world's leading providers of technology and communications products and services. Complainant is headquartered in New York city, United States of America and generated revenues of USD136,8 billion in 2022 and employs a diverse workforce of approximately 117,100 employees. Complainant offers voice, data and video services, and solutions on its award-winning networks and platforms, delivering on customers' demand for mobility, reliable network connectivity, security, and control. Complainant was the first company in the world to launch commercial 5G for mobility, fixed wireless, and mobile edge computing. Complainant's operation structure focuses on two customer facing areas: Consumer and Business. Complainant operates in over 150 countries around the world, serving 99% of the Fortune 500. Complainant has registered the VERIZON Mark around the world. Complainant owns many registrations in the United States, including without limitation: Registration No. 2886813 for the mark VERIZON in standard character form, filed September 10, 1999, and issued September 21, 2004, covering goods and services in International classes 9, 16, 35, 36, 37, 38, 41 and 42; including telecommunications products and services; and Registration No. 5223839 for the mark VERIZON and Design, filed August 31, 2015 and issued June 13, 2017, covering services in International Class 35, including telecommunications related services. Respondent registered the Disputed Domain Names on August 7 and 21, 2023. The Disputed Domain Names resolve to websites which are mimicking Complaint's official website. 5. Parties' Contentions A. Complainant Complainant contends that the Disputed Domain Names are confusingly similar to the VERIZON Mark, pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that it has spent millions of dollars since 2000 to advertise and promote VERIZON branded products and services throughout the world. As a result, the VERIZON Mark has long enjoyed unquestionable fame as a result of favorable public acceptance and recognition. Complainant's proprietary rights in the VERIZON Mark predate Respondent's registration of the Disputed Domain Names by more than 22 years. Complainant further contends that its main websites featuring advertising and information concerning many of the products and services offered by Complainant can be accessed inter alia via the domain name . Complainant further contends that Respondent has formed each of the Disputed Domain Names by (1) misappropriating Complaint's famous VERIZON Mark, (2) appending the term "careers", and (3) adding the generic top level domain name (gTLD) ".online" thereto. Respondent has placed a hyphen between the VERIZON Mark and the term "careers in one of the Disputed Domain Names. page 3 Complainant further contends that incorporating a trademark in its entirety is generally sufficient to establish that the Disputed Domain Names are identical or confusingly similar to the VERIZON Mark. Complainant further contends that where the VERIZON Mark is recognizable within the Disputed Domain Names, the addition of other terms (whether descriptive, meaningless, or otherwise) does not prevent a finding of confusing similarity. In the present case, the addition of the term "careers" with or without a hyphen, does nothing to abate the confusing similarity of the Disputed Domain Names to the VERIZON Mark. Complainant further contends that the addition of the gTLD ".online" is irrelevant when determining confusing similarity. Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to paragraph 4(a)(ii) of the Policy. Complainant further asserts that it has not authorized Respondent to register or use the Disputed Domain Names and there is no connection between Complainant and Respondent. Respondent has never sought or obtained any trademark registrations for "Verizon" or any variation thereof, and could not do so given Complainant's prior and exclusive rights to the VERIZON Mark throughout the world. Nor has Respondent received any license, authorization, or consent to use the VERIZON Mark in any manner at the time Respondent registered and began using the Disputed Domain Names. Complainant further asserts that, according to the WhoIs Database, the Registrar of the Disputed Domain Names is named "Private Protect, LLC". This information is insufficient to permit the inference that Respondent is commonly known by the Disputed Domain Names. Complainant further asserts that Respondent's websites to which the Disputed Domain Names resolve are designed to intentionally look like Complainant's Careers Website, and feature announcements for purported jobs at Complainant. The job announcements on Respondent's websites are for the types of jobs that job applicants or would-be applicants would expect to find on Complainant's Careers Website, and feature blank fields into which applicants and would-be applicants are instructed to enter personal data. Complainant further asserts that it has not authorized Respondent to post and/or accept applications for jobs with Complainant. There is no plausible bona fide explanation for Respondent's decision to use the Disputed Domain Names except to appropriate the trademark value of the VERIZON Mark in order to divert Complainant's job applicants and would-be applicants to a third-party website in order to collect such job applicants' and would-be applicants' personal information. Inasmuch as there is no apparent legitimate reason for Respondent to collect such personal information, Respondent is presumably collecting the information for malevolent or potentially malevolent purposes. Complainant further asserts that Respondent's actions of directing the Disputed Domain Names to webpages that appear to be used for malevolent or potentially malevolent purposes constitutes neither a bona fide offering of good or services nor a legitimate noncommercial or fair use of the Disputed Domain Names. Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith, pursuant to paragraph 4(a)(iii) of the Policy. Complainant further alleges that Respondent had actual knowledge of Complainant's rights in the VERIZON Mark at the time Respondent registered and began using the Disputed Domain Names. Complainant has submitted evidence to the effect that the VERIZON Mark became famous well prior to Respondent's registration and use of the Disputed Domain Names. Complainant further alleges that Respondent registered and is using the Disputed Domain Names to attempt to attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with the VERIZON Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites. page 4 Respondent has incorporated the VERIZON Mark into the Disputed Domain Names without Complainant's consent or authorization for the purpose of trading on the reputation the VERIZON Mark by diverting consumers seeking jobs with Complainant to websites on which Respondent is attempting to trick such job applicants or would-be applicants into providing personal information. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: i) that the Disputed Domain Names registered by Respondent is identical or confusingly similar to the VERIZON Mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and, iii) that the Disputed Domain Names has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant contends that the Disputed Domain Names are confusingly similar to the VERIZON Mark, pursuant to paragraph 4(a)(i) of the Policy. Section 1.2.1 of the WIPO Overview 3.0 states that registration of the VERIZON Mark is prima facie evidence of Complainant having enforceable rights. Complainant further contends that it has registered the VERIZON Mark around the world. Complainant owns many registrations in the United States, including without limitation: Registration No. 2886813 for the mark VERIZON in standard character form, filed September 10, 1999, and issued September 21, 2004, covering goods and services in International classes 9, 16, 35, 36, 37, 38, 41 and 42; including telecommunications products and services; and Registration No. 5223839 for the mark VERIZON and Design, filed August 31, 2015 and issued June 13, 2017, covering services in International Class 35, including telecommunications related services. Respondent has not countered these contentions. Therefore, the Panel finds that, for purposes of this proceeding, Complainant has enforceable rights in the VERIZON Mark. Complainant further contends that Respondent has formed each of the Disputed Domain Names by (1) misappropriating Complainant's famous VERIZON Mark, (2) appending the term "careers", and (3) adding the gTLD ".online" thereto. Respondent has placed a hyphen between the VERIZON Mark and the term "careers" in one of the Disputed Domain Names. page 5 Complainant further contends that incorporating a trademark in its entirety is generally sufficient to establish that the Disputed Domain Names are identical or confusingly similar to the VERIZON Mark. Complainant further contends that where the VERIZON Mark is recognizable within the Disputed Domain Names, the addition of other terms (whether descriptive, meaningless, or otherwise) does not prevent a finding of confusing similarity. In the present case, the addition of the term "careers" with or without a hyphen, does nothing to abate the confusing similarity of the Disputed Domain Names to the VERIZON Mark. Complainant further contends that the addition of the gTLD ".online" is irrelevant when determining confusing similarity. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as (".online" in this case) may be disregarded for purposes of assessing confusing similarity. The Panels finds that the Disputed Domain Names are confusingly similar to the VERIZON Mark, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant asserts that Respondent has no rights or legitimate interest in the Domain Names pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview of WIPO 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Names. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Names: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the VERIZON Mark. Complainant further asserts that Respondent received no license, authorization, or consent to use the VERIZON Mark in any manner at the time Respondent registered and began using the Disputed Domain Names. Complainant further asserts that, according to the WhoIs Database, the Registrant of the Disputed Domain Names is named "Private Protect, LLC". This information together with the information disclosed by the Registrar (Humberto Menjivar, Verizon) is insufficient to permit the inference that Respondent is commonly known by the Disputed Domain Names. Complainant further asserts that Respondent's websites to which the Disputed Domain Names resolve are designed to intentionally look like Complainant's Careers Website, and feature announcements for purported jobs at Complainant. The job announcements on Respondent's websites are for the types of jobs that job applicants or would-be applicants would expect to find on Complainant's Careers Website, and feature blank fields into which applicants and would-be applicants are instructed to enter personal data. page 6 Complainant further asserts that it has not authorized Respondent to post and/or accept applications for jobs with Complainant. There is no plausible bona fide explanation for Respondent's decision to use the Disputed Domain Names except to appropriate the trademark value of the VERIZON Mark in order to divert Complainant's job applicants and would-be applicants to a third-party website in order to collect such job applicants' and would-be applicants' personal information. Inasmuch as there is no apparent legitimate reason for Respondent to collect such personal information, Respondent is presumably collecting the information for malevolent or potentially malevolent purposes. The Panel finds that these assertions demonstrate a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Respondent has not contested these assertions. Therefore, the Panel finds that Complainant has shown the required elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant alleges that Respondent registered and is using the Disputed Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Names: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to Complainant who is the owner of the VERIZON Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Names; or (ii) you [Respondent] have registered the Disputed Domain Names in order to prevent Complainant from reflecting the VERIZON Mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Names, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the VERIZON Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product on your website or location. Complainant further alleges that Respondent registered and is using the Disputed Domain Names to attempt to attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with the VERIZON Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites. Respondent has incorporated the VERIZON Mark into the Disputed Domain Names without Complainant's consent or authorization for the purpose of trading on the reputation the VERIZON Mark by diverting consumers seeking jobs with Complainant to websites on which Respondent is attempting to trick such job applicants or would-be applicants into providing personal information. The Panel finds that Respondent has violated paragraph 4(b)(iv) of the Policy. The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. page 7 Section 3.2.2 WIPO Overview 3.0 states that whether Respondent knew or should have known (actual or constructive knowledge) of Complainant's rights in the VERIZON Mark is an additional factor of bad faith. Section 3.4 of the WIPO Overview 3.0 instructs that use of a domain name for direction of Internet users to a malicious website constitutes bad faith. Complainant further alleges that Respondent had actual knowledge of Complainant's rights in the VERIZON Mark at the time Respondent registered and began using the Disputed Domain Names. The Panel finds that Respondent had actual knowledge of Complainant's rights in the VERIZON Mark. In addition, Respondent's website was designed to fraudulently acquire personal information from Internet users by phishing and to direct the information to a malicious website. The Panel finds that Respondent registered and used the Disputed Domain Names in bad faith and that Complainant has demonstrated the elements of 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 Names, and , be transferred to the Complainant. /Richard W. Page/ Richard W. Page Sole Panelist Date: November 3,2023
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