WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Van Groenendael Adviesgroep
Case No. DNL2008-0029
1. The Parties
The Complainant is Verizon Trademark Services LLC, United States of America, represented by Arnold & Porter LLP, United States of America.
The Respondent is Van Groenendael Adviesgroep, The Netherlands.
2. The Domain Name
The disputed domain name (hereinafter the “Domain Name”) is registered with SIDN.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2008. On July 22, 2008, the Center transmitted by email to SIDN a request for registration verification in connection with the domain name at issue. On July 23, 2008, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with article 16 of the Regulations, the Center provisionally decided that the Complaint would be accepted in the English language and that a Response would be accepted in either English or Dutch.
In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2008. In accordance with the Regulations, article 7.1, the due date for Response was August 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2008.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on September 4, 2008. The Panelist finds that the he was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
4. Factual Background
The Complainant, Verizon Trademark Services LLC, is a limited liability company. It provides advanced IP, data, voice and wireless solutions to business and government customers in 150 countries worldwide. It holds several trademark registrations for the word en device mark VERIZON in the European Community, the Benelux and the United States of America.
Furthermore, the Complainant holds amongst others the domain names and /nl.
The Domain Name was registered on September 18, 2003. At first, the Domain Name was linked to a website offering products and services for the company Ice telecom. After the Complainant had sent the Respondent several cease and desist letters, the Domain Name was linked to a website stating “This website is currently not available. Please try again later”. The Respondent replied to the cease and desist letter on June 25, 2008, stating that: “I’m prepared to enter negotiation abouth the domain”.
5. Parties’ Contentions
A. Complainant
The Complainant has claimed to hold rights, insofar as relevant here, in the following trademarks:
- CTM registration No. 1543362 for the word mark VERIZON, filed March 7, 2000 with a priority claim of September 10, 1999, for goods and services in classes 9, 16, 35, 36, 37, 38, 41 and 42 (amongst others telecommunication equipment and services);
- CTM registration No. 1923671 for the design mark VERIZON, filed October 13, 2000 with a priority claim of April 26, 2000, for goods and services in classes 9, 16, 35, 36, 37, 38, 41 and 42 (amongst others telecommunication equipment and services);
- CTM registration No. 2440626 for the design mark VERIZON, filed October 31, 2001, for goods and services in classes 9, 16, 35, 36, 37, 38, 41 and 42 (amongst others telecommunication equipment and services);
The Complainant has asserted that the Domain Name is identical to the rights claimed.
Furthermore, the Complainant has asserted that the Respondent has no rights or legitimate interests in the Domain Name, since it has no connection or affiliation with any Verizon company, Respondent was never known as Verizon and has never sought or obtained any trademark registration for Verizon.
Lastly, the Complainant has put forward that the Domain Name has been registered and is being used in bad faith. The Domain Name was used for a website that offered Respondent’s own competing goods and services, thereby taking unfair advantage of or be detrimental to the distinctive character or the repute of the Complainants trademarks. Moreover, the Respondent tried to sell the Domain Name after having received the Complainant’s cease and desist letters.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of proceedings
The Complainant filed the Complaint in the English language, followed by a request based on the Regulations, article 16 to conduct the proceedings in the English language. Complainant claims that Verizon is unfamiliar with the Dutch language and that the Respondent clearly is familiar with the English language in view of the correspondence sent by Respondent. As the Respondent indeed did correspond in the English language, it is expected to understand English, so that Respondent’s right of defense was not prejudiced by the choice of English as the language of the procedure. Subsequently to the Center’s provisional decision mentioned in section 3 above, the Panelist determines that the language of the procedure shall be English.
Article 7.4 of the Regulations provides that, in the event that a respondent fails to submit a response, the complaint shall be granted, unless the Panel considers it to be without basis in law or in fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if the Complainant asserts and establishes each of the following:
a. that the Domain Name is identical or confusingly similar to
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights;
II. a personal name registered in a Dutch municipal register of persons (“gemeentelijke basisadministratie”), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. that the Respondent has no rights to or legitimate interests in the Domain Name; and
c. that the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds the CTM registrations No. 1543362 for the word mark VERIZON, No. 1923671 for the design mark VERIZON and No. 2440626 for the other design mark VERIZON. Therefore, the Panelist finds that the Complainant has rights in the VERIZON marks protected under Dutch law.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the VERIZON word and device marks in which the Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name. The VERIZON device marks consist of the word Verizon and a tilted half rectangle, the word Verizon being the most distinctive part of the device mark. Therefore, the Panelist finds the Domain Name to be identical to the Complainant’s VERIZON word mark and confusingly similar to the Complainants VERIZON design marks.
B. Rights or Legitimate Interests
According to article 2.1 sub b of the Regulations the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut that showing by providing evidence of for example any of the three circumstances mentioned in article 3.1 of the Regulations.
The Complainant has put forward that the Respondent by using the Domain Name for commercial gain, takes unfair advantage of the repute of his trademark and the Respondent did not dispute the Complainant’s claim to that effect. Nor could the Panelist establish any indications that the Respondent is commonly known by the Domain Name or, before having any notice of the dispute, made demonstrable preparations to use the Domain Name in connections with a bona fide offering of goods or services. For these reasons, the Panelist finds that the Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
Article 2.1 sub c of the Regulations provides that the Domain Name has been registered or is being used in bad faith.
Article 3.2 sub d of the Regulations mentions that the following circumstances may constitute evidence that the Domain Name is being used in bad faith. The Domain Name is being used for commercial gain, by attracting internet users to the Respondent’s website through the likelihood of confusion which may arise with the trademark as to, for example, the source, sponsorship, affiliation or endorsement of the website or of products and services on the website.
Given the fact that the Respondent has not submitted a Response and thus has not refuted the Complainant’s contentions, the Panelist, on the basis of the evidence submitted by the Complainant, is satisfied that the Complainant’s trademark VERIZON is known in the telecommunications sector in the Netherlands. Furthermore, the Domain Name has a “.nl” suffix, the website that was linked to the domain name was in Dutch and is therefore directed at a Dutch audience. The website offered telecommunication products and services, which constitutes commercial use. As concluded under A. above the Panelist has determined that the Domain Name is identical and confusingly similar to the Complainant’s trademarks. Taking into account all circumstances of this case, the Panelist finds that the requirements of article 3.2 sub d of the Regulations have been met. Consequently, the Panelist is of the opinion that the Domain Name is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panelist orders that the domain name, be transferred to the Complainant.
Remco M.R. van Leeuwen
Sole Panelist
Dated: September 18, 2008
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