The Complainant is Verizon Trademark Services LLC of Virginia, United States of America, represented by Clayton Utz Solicitors, Australia.
The Respondent is Jillian Pearce of Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with TPP Domains Pty Ltd. dba TPP Internet (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 3, 2014. On April 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 2014 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 .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 proceedings commenced on April 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2014.
The Center appointed David Stone as the sole panelist in this matter on May 14, 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 member of the Verizon group of companies. The Verizon corporate group delivers communications, entertainment, IT and security products and services worldwide, including in Australia.
The Complainant is the owner of the following registered trademarks in Australia incorporating the term VERIZON:
1. No. 826306, for VERIZON, registered since March 6, 2000 in classes 9, 16, 35, 36, 37, 38, 39, 41 and 42;
2. No. 854187, for V VERIZON (and device), registered since October 20, 2000 in classes 9, 16, 35, 36, 37, 38, 39, 41 and 42;
3. No. 1087556, for V VERIZON (and device), registered since November 24, 2005 in classes 9, 35, 38 and 42;
4. No. 1087572, for VERIZON, registered since November 24, 2005 in classes 9, 35, 38 and 42;
(together referred to as the "Complainant's Marks").
The Complainant is also the registrant of a number of domain names incorporating the word VERIZON, including ; ; ; ; and .
The Disputed Domain Name was registered on January 19, 2014 to the Respondent, a sole trader. 5. Parties' Contentions A. Complainant
The Complainant submits that (i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered or subsequently used in bad faith.
The Complainant submits that the use of the term VERIZON within the Disputed Domain Name incorporates the essential feature of the Complainant's Marks and the entirety of the registered trade mark VERIZON, which makes it identical with or confusingly similar to the Complainant's Marks.
The term VERIZON is an invented term. The Complainant therefore says that there is no reason for any other trader to use this term and, further, it serves to imply a connection with the Complainant, which is false.
The Complainant submits that, to the best of its knowledge and belief, the Respondent does not own any trade mark rights in the term VERIZON.
The Complainant submits that the Respondent is not commonly known by the term VERIZON nor has she built up a reputation by using the term. The Complainant further submits that the Respondent does not have its permission to use any of the Complainant's marks as the principal component of a domain name or otherwise.
The Disputed Domain Name did not, when accessed on March 7, 2014, host any data which, it is submitted, indicates that the Respondent has not used the Disputed Domain Name in a bona fide offering of goods or services, nor has there been legitimate noncommercial or fair use of the Disputed Domain Name.
The first of the Complainant's Marks was registered in 2000 and the Disputed Domain Name was not registered until over 13 years later. During the intervening period, the Complainant submits that the Complainant's Marks became well-known as a badge of the source of its products and services. The confusing similarity between the Disputed Domain Name and the Complainant's Marks, it is contended, is evidence of bad faith registration and use.
On behalf of the Complainant, Clayton Utz attempted to contact the administrative contact for the registration of the Disputed Domain Name and requesting that the Disputed Domain Name be transferred to the Complainant as it infringed the Complainant's Marks, but received no acknowledgement or response.
On February 27, 2014, the Respondent contacted Clayton Utz, by telephone. The Respondent stated that she was not aware that the domain name existed or that it was registered in her name. The Respondent said that she had no interest in the Disputed Domain Name and did not know the administrative contact for the Disputed Domain Name.
It therefore appears that the Respondent's details have been used to register the Disputed Domain Name without her knowledge or permission. The Complainant submits that such fraudulent use of the Respondent's details is evidence that the Disputed Domain Name has been used or registered in bad faith.
For the reasons outlined above, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not respond to the Complaint. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has to prove that (i) the Disputed Domain Name is identical or confusing similar to a name, trade mark 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 or subsequently used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant's Marks constitute trade marks in which the Complainant has rights. Further, the Panel finds that the principal component of the Disputed Domain Name (the term VERIZON) is identical with or confusingly similar to the Complainant's Marks. As the Disputed Domain Name incorporates the entirety of one of the Complainant's Marks (the term VERIZON), this is sufficient to find that the Disputed Domain Name is identical with or to a trade mark in which the Complainant has rights (Revlon Consumer Products Corporation v. IONE Inc.WIPO Case No. D2010-1000); Revlon Consumer Products Corporation v. Brandy FarrisWIPO Case No. D2003-0291). B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights to or legitimate interests in the Disputed Domain Name and that the Complainant has made out its prima facie case for this contention. The Respondent herself has expressly stated that she has no interest in the Disputed Domain Name. The Respondent is not known by the term VERIZON and has no reason to use the term. The Respondent does not appear to have been aware that the Disputed Domain Name was registered in her name until she was alerted by the Complainant's representative. C. Registered or Subsequently Used in Bad Faith
The Panel finds that the Disputed Domain Name was registered in bad faith. The Disputed Domain Name was not registered until 13 years after the first of the Complainant's Marks was registered in Australia and the Complainant is a well-known company with considerable brand recognition and reputation in Australia. There is no relationship between the invented term VERIZON, the dominant element in the Complainant's Marks, and the Respondent. Registration of a domain name that is confusingly similar to a famous trade mark by an entity that has no relationship to that mark in certain circumstances may be sufficient evidence that the domain name has been used and registered in bad faith (Costco Wholesale Membership Inc. v Almantas Kakereka,WIPO Case No. D2007-1833).
Moreover, the Respondent denies involvement with the registration of the Disputed Domain Name. The Panel finds that this is further evidence of bad faith. 7. Decision
For all 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.
David Stone
Sole Panelist
Date: May 20, 2014
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