World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services, LLC v. paulo c/o paulo kann

Case No. D2010-0989

1. The Parties

The Complainant is Verizon Trademark Services, LLC of Arlington, Virginia, United States of America, represented internally.

The Respondent is paulo c/o paulo kann of Dijon, France.

2. The Domain Names and Registrars

The disputed domain name <myverison.com> is registered with Domainreign.ca Inc. The disputed domain names <myverzion.com> and <vwrizon.com> are registered with Go France Domains, Inc. The disputed domain name <verixzon.com> is registered with Go China Domains, Inc. The disputed domain name <virazon.com> is registered with Go Montenegro Domains, Inc. The disputed domain name <vznwireless.com> is registered with Wild West Domains, Inc. The disputed domain name <zerizonwireless.com> is registered with GoDaddy.com, Inc. The disputed domain names <myverixon.com>, <myverizo.com>, <myverzon.com>, <varison.com>, <veirzon.net>, <veriznon.net>, <verizoniwireless.com>, <verizonwirelee.com>, <verizonwirelesas.com>, <verizonwirerles.com>, <verizonwires.com>, <verizonwirteless.com>, <verizopn.net>, <versizon.net>, <vewrizon.net>, and <wwwverizion.net> are registered with Dynadot, LLC. (Hereinafter, the “Domain Names”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2010. On June 17, 2010, the Center transmitted by email to Domainreign.ca Inc., Dynadot, LLC, Go France Domains, Inc., Go China Domains, Inc., Go Montenegro Domains, Inc., Wild West Domains, Inc., and GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On June 17, 2010, Domainreign.ca Inc., Go France Domains, Inc., Go China Domains, Inc., Go Montenegro Domains, Inc., Wild West Domains, Inc., and GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 18, 2010, Dynadot, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2010.

The Center appointed Jon Lang as the sole panelist in this matter on July 26, 2010. 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 in these proceedings (Verizon Trademark Services, LLC) is an intellectual property holding company and the owner of numerous trademark and service mark registrations consisting of or incorporating “Verizon” (the “VERIZON Marks”), including European Community trademark registrations for VERIZON, (Registration No. 001543362, filed March 7, 2000 with a priority claim of September 10, 1999, issued July 9, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42), and VERIZON WIRELESS, (Registration No. 003826096, filed May 10, 2004 and issued July 14, 2005, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42).

The Complainant also owns many United States (“U.S.”) trademark registrations, including Registration No. 2,886,813 for the mark VERIZON in block letters, (filed September 10, 1999, first used April 4, 2000, issued September 21, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42) and Registration No. 2,884,027 for the mark VERIZON WIRELESS and Design, (filed May 11, 2000, first used May 7, 2000, issued September 14, 2004, covering telecommunications services in International Class 38).

The Complainant owns other VERIZON-formative marks, which its affiliates use, including, for example, VERIZON AVENUE, VERIZON BUSINESS, VERIZON FIOS and VERIZON FREEDOM.

The Complainant also enjoys common law rights through the substantial and continuous use and promotion of the VERIZON marks since at least as early as April 2000.

The Complainant has granted its affiliate, Verizon Licensing Company an exclusive licence to sublicence the use of the VERIZON Marks in connection with various products and services, including communications and entertainment products and services, to the Complainant’s affiliates and to third parties and licences have been granted to various Verizon companies including Verizon Communications Inc. (“Veri! zon Communications”), its parent company and to Cellco Partnership d/b/a Verizon Wireless (“Verizon Wireless”).

The Verizon Communications group of companies (the Verizon Companies), which includes Verizon Wireless, include companies which are among the world’s leading providers of communications and entertainment products and services to residential, business, wholesale, and government wireline and wireless customers.

Verizon Communications is a publicly traded company on the New York Stock Exchange under the stock ticker symbol VZ. A Dow 30 company, Verizon Communications in 2009 generated annual consolidated operating revenues of more than USD107 billion. The Verizon Companies employ a workforce of more than 217,000.

Verizon Wireless owns and operates the largest wireless carrier in the U.S., serving nearly 93 million voice and data customers.

The Verizon Companies have provided a full array of communications and entertainment products and services under the trademark and trade name VERIZON since 2000, in the United States and throughout the world.

The Verizon Companies’ main websites featuring information on many of the products and services of the Verizon Companies can be accessed via the domain name <verizon.com>, which has been used since at least as early as June 2000, <verizonwireless.com>, which has been used since at least as early as April 2000, and <verizonbusiness.com>, which has been used since at least as early as January 2006. Verizon has also defensively registered and uses the domain name <verison.com> which is pointed to Verizon’s main website.

The Verizon Companies also offer customers an all-in-one account management portal entitled “My Verizon” which can be accessed via the domain name <myverizon.com>.

The Verizon Companies also offer Internet customers a portal website entitled “Verizon Central” which can be accessed via the domain name <verizon.net>.

The Complainant’s affiliates have spent many billions of dollars since 2000 to advertise and promote VERIZON-branded products and services in the United States and throughout the world.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the VERIZON Marks.

Verizon’s proprietary rights in the VERIZON Marks predate the Respondent’s registration of the Domain Names all of which were registered in 2009 and 2010 as follows:

<myverison.com> registered on November 19, 2009

<myverixon.com> registered on August 29, 2009

<myverizo.com> registered on August 26, 2009

<myverzion.com> registered on August 27, 2009

<myverzon.com> registered on August 25, 2009

<varison.com> registered on April 21, 2009

<veirzon.net> registered on June 12, 2009

<verixzon.com> registered on October 18, 2009

<veriznon.net> registered on June 12, 2009

<verizoniwireless.com> registered on November 3, 2009

<verizonwirelee.com> registered on February 11, 2010

<verizonwirelesas.com> registered on November 1, 2009

<verizonwirerles.com> registered on November 6, 2009

<verizonwires.com> registered on January 27, 2010

<verizonwirteless.com> registered on November 1, 2009

<verizopn.net> registered on June 12, 2009

<versizon.net> registered on July 17, 2009

<vewrizon.net> registered on June 29, 2009

<virazon.com> registered on July 5, 2009

<vwrizon.com> registered on December 13, 2009

<vznwireless.com> registered on May 14, 2009

<wwwverizion.net> registered on October 31, 2009

<zerizonwireless.com> registered on October 26, 2009

The Respondent registered the Domain Names after: (a) the Complainant’s affiliates began using the VERIZON Marks; (b) the effective date of the Complainant’s registrations for the VERIZON Marks; and (c) the VERIZON Marks became famous.

Through widespread and extensive use, the VERIZON Marks have become uniquely associated with the Verizon Companies and their products and services, and are extremely well-known and famous in the United States and throughout the world.

The Domain Names are confusingly similar to the VERIZON Marks.

a. In the case of <myverison.com>, the Respondent has simply replaced the letter “z” with the letter “s” in “Verizon”.

b. In the case of <myverixon.com>, the Respondent has simply replaced the letter “z” with the letter “x” in “Verizon.”. The letter “x” is next to the letter “z” on a computer keyboard.

c. In the case of <myverizo.com>, the Respondent has omitted the letter “n” in “Verizon”.

d. In the case of <myverzion.com>, the Respondent has rearranged the letters “z” and “i” in “Verizon”.

e. In the case of <varison.com>, the Respondent has simply replaced the letter “e” with the letter “a” and the letter “z” with the letter “s” in “Verizon”.

f. In the case of <veirzon.net>, the Respondent has rearranged the letters “i” and “r” in “Verizon”.

g. In the case of <verixzon.com>, the Respondent has included the letter “x” before the “z” in “Verizon”. The letter “x” is next to the letter “z” on a computer keyboard.

h. In the case of <veriznon.net>, the Respondent has included the letter “n” before the “o” in “Verizon”.

i. In the case of <verizoniwireless.com>, the Respondent has included the letter “i” before the word “wireless” in “Verizon Wireless”.

j. In the case of <verizonwirelee.com>, the Respondent has misspelled the word “wireless” in “Verizon Wireless”.

k. In the case of <verizonwirelesas.com>, the Respondent has misspelled the word “wireless” in “Verizon Wireless”.

l. In the case of <verizonwirerles.com>, the Respondent has misspelled the word “wireless” in “Verizon Wireless”.

m. In the case of <verizonwires.com>, the Respondent has included the word “wires” after “Verizon”.

n. In the case of <verizonwirteless.com>, the Respondent has misspelled the word “wireless” in “Verizon Wireless”.

o. In the case of <verizopn.net>, the Respondent has inserted the letter “p” before the letter “n” in “Verizon”.

p. In the case of <versizon.net>, the Respondent has included the letter “s” before the letter “i” in “Verizon”.

q. In the case of vewrizon.net>, the Respondent has included the letter “w” after the letter “e” in “Verizon”. The letter “w” is next to the letter “e” on a computer keyboard.

r. In the case of <virazon.com>, the Respondent has replaced the letter “e” with the letter “i” and the letter “i” with the letter “a” in “Verizon”.

s. In the case of <vwrizon.com>, the Respondent has replaced the letter “e” with the letter “w” in “Verizon”. The letter “e” is next to the letter “w” on a computer keyboard.

t. In the case of <vznwireless.com>, the Respondent abbreviates the Verizon name by omitting the letters “e”, “r”, “i” and “o” in “Verizon Wireless”.

u. In the case of <wwwverizion.net>, the Respondent has included “www” and an extra letter “i” in “Verizon” in the hope that Internet users will forget to use a period after the “www” when typing a domain name in the URL browser and misspell “Verizon”.

v. In the case of <zerizonwireless.com>, the Respondent has replaced the letter “v” with the letter “z” in “Verizon”.

The Respondent has no rights or legitimate interests in respect of the Domain Names

The Respondent has no connection or affiliation with the Complainant, the Verizon Companies, or any of the many products and services provided by the Verizon Companies in association with the VERIZON Marks. The Respondent has never sought or obtained any trademark registrations for “Verizon” or any variation thereof, and indeed could never do so given the Complainant’s prior and exclusive rights throughout the world. Nor has the Respondent received any licence, authorisation, or consent, express or implied, to use the VERIZON Marks in a domain name or in any other manner at any time.

The Respondent’s misappropriation of the VERIZON Marks for use in the Domain Names is no accident. Clearly, the Respondent chose to register multiple variations of the VERIZON Marks to capitalise on the consumer recognition of the famous VERIZON Marks and to draw Internet users to its own websites.

The Respondent’s activities do not constitute a fair use of the Domain Names.

The Domain names were registered and are being used in bad faith.

The Respondent has intentionally attempted to divert, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the VERIZON Marks as to the source, sponsorship, affiliation and endorsement of its websites.

Each of the Domain Names is active and when typed into a URL browser the user is redirected to a website which displays a landing page designed to intentionally monetize the VERIZON Marks by offering sponsored links both to goods and services offered for sale by the Verizon Companies and/or to divert customers to websites of third parties, including competitors. Courts and administrative panels have recognised that consumers expect to find a trademark owner on the Internet at a domain name address composed of the organisation’s name or mark.

The Respondent must have expected that any use of the Domain Names would cause harm. The Domain Names are so obviously indicative of the VERIZON Marks that the Respondent’s use of the Domain Names would inevitably lead to confusion of some sort.

The Respondent’s registration and use of the Domain Names also creates initial interest confusion, which attracts Internet users to the websites located at the Domain Names.

It is inconceivable that the Respondent was unaware of Verizon’s rights in the VERIZON Marks, which have achieved fame and wide recognition throughout the world. By registering the Domain Names with knowledge of the Complainant’s rights in the VERIZON Marks, the Respondent acted in bad faith.

The Respondent is a known cybersquatter with a reported UDRP decision confirming the Respondent’s cybersquatting activities (National Westminster Bank plc v. paulo, NAF Claim No. 1306518 in which a transfer of the domain name <natywest.com> was ordered to National Westminster Bank plc and it was confirmed that the Respondent “engaged in typosquatting through its use of the [] domain name, which is a common misspelling of [c]omplainant’s NATWEST mark.”).

The Respondent’s registration of multiple domain names consisting of misspellings (typosquatting) of the VERIZON Marks further demonstrates the Respondent’s bad faith registration and use of the Domain Names.

Research conducted by Verizon has revealed that the Respondent has registered other domain names that infringe upon the rights of famous brands.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is

(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

Most of the Domain Names are very similar to the trademarks of the Complainant, phonetically and/or visually. For the most part, the Respondent appears to have registered common misspellings of the Complainant’s marks, a practice known as “typosquatting”. Some misspellings are more obvious derivations of the Complainant’s marks than others. For instance, in the case of <myverison.com>, the Respondent has simply replaced the letter “z” in “Verizon” with the letter “s” (the letters “z” and “s” being next to one another on a QWERTY keyboard. In the case of <vznwireless.com> however, the Respondent has abbreviated the Verizon name by omitting the letters “e,” “r”, “i” and “o”. That an internet user would mistype <vznwireless.com>, when looking for Verizon Wireless is less likely than mistyping, for instance, an “s” instead of a “z”, but it is possible. It is also possible, particularly given the Verizon stock ticker symbol of VZ, that an Internet user may simply type “vzn” before wireless when looking for Verizon Wireless. It seems clear to this Panel that the Respondent has used a range of derivations of the Complainant’s marks to “capture” Internet users looking for the Complainant’s sites. Some may well be more effective than others, given how widely the Respondent appears to have cast his net across the 23 domain name registrations. But all (to varying degrees) are similar to the Complainant’s marks and may well give rise to the possibility, if not likelihood in many cases, that Internet users will think that the owner of the Domain Names, or any of them, is in fact the owner of the Complainant’s marks to which they are similar, or that there is some form of association between the Respondent and the Complainant.

Accordingly, the Domain Names, all similar to varying degrees with the marks in which the Complainant clearly has rights, are confusingly similar for the purposes of the Policy. Thus, this element of paragraph 4 of the Policy has been established.

B. Rights or Legitimate Interests

A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, there is no evidence to suggest that the Respondent is known by the Domain Names, nor of any legitimate noncommercial or fair use. In the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the websites to which the Domain Names resolve, given the links to commercial third-party sites that one finds there.

A respondent can also show, so as to establish rights or legitimate interests, that it was using a domain name in connection with a bona fide offering of goods or services. But promoting competing goods or services using a domain name confusingly similar to a complainant’s mark, is not a bona fide offering of goods or services. There is ample support for this proposition. For instance, in Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, it was said:

“To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001).”

The Respondent in this case is not licensed in any way by the Complainant. There is no affiliation at all, and the Complainant has satisfied a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent therefore carries the burden of demonstrating such rights or legitimate interests, but has taken no part in these proceedings and has failed to do so. The Complainant has therefore also satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, that might be evidence of the registration and use of the domain name in bad faith. So too might there be such evidence where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

In the decision in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 it was said:

“Using a domain name ‘to redirect Internet users to websites that host links to external websites, including websites of [c]omplainant’s competitors,’ is evidence of bad faith. Royal Bank of Canada v. Chan, WIPO Case No. D2003-0031 (March 5, 2003).”

This appears to be the position in this Complaint.

In the decision in Credit Suisse Group v. Freddy Iseli, WIPO Case No. D2002-0794, it was said:

“It has been held that actual or constructive knowledge of the [c]omplainant’s rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). It is obvious from the facts in issue that the Respondent had actual knowledge of such rights.

Previous cases have also established that the deliberate choice and registration of a famous mark as [the] domain names suggests, in the absence of an explanation from the [r]espondent, that the registrations were made in bad faith.”

It seems clear that the Respondent knew of the Complainant’s marks prior to his relatively recent registrations. They are famous marks and it is difficult, if not impossible, to conceive of any legitimate explanation for the choice of the Domain Names (23 derivations of the Complainant’s marks). It is difficult to arrive at a conclusion other than that they have been registered to take unfair advantage of the Complainant’s rights.

In all the circumstances, this Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, which contain links to sites of competitors, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of goods or services available via his websites. Accordingly this Panel finds, for the purposes of the Policy, that the Domain Names were registered and are being used in 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 Domain Names be transferred to the Complainant.

Jon Lang
Sole Panelist
Dated: August 9, 2010

 

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