World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon

Case No. D2011-0247

1. The Parties

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

The Respondent is Jinsoo, Yoon of Seoul, Republic of Korea, Nic Yoon, Jinsu Yoon of Inchon, Republic of Korea, and Jinsoo Yoon of Seoul, Republic of Korea.

2. The Domain Names and Registrars

The disputed domain names <dslverizon.com> and <wwverizon.com> are registered with eNom, the disputed domain name <verixon.net> is registered with Answerable.com (I) Pvt Ltd, the disputed domain names <verizo.com>, <verizonwirelsss.com>, and <verzon.net> are registered with INames corp. (Korea), and the disputed domain name <verizonwirelsess.com> is registered with NotableNames.ca Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 7, 2011, the Center transmitted by email to eNom, Answerable.com (I) Pvt Ltd, INames corp. (Korea), and NotableNames.ca Inc. a request for registrar verification in connection with the disputed domain names. On February 7, 2011, eNom, on February 8, 2011, NotableNames.ca Inc. and INames corp. (Korea), and on February 12, 2011, Answerable.com (I) Pvt Ltd respectively transmitted by email to the Center their verification response, confirming that the Respondent is listed as the registrant and providing the contact details.

On February 18, 2011, the Center noticed that the disputed domain name <verizonwirelsess.com> was transferred from the registrar NotableNames.ca Inc. to the registrar INames corp. (Korea), and transmitted an email, requesting an explanation of the circumstances of the transfer. Upon the Center’s request, the registrar NotableNames.ca Inc. and the registrar INames corp. (Korea) confirmed that the disputed domain name <verizonwirelsess.com> was transferred back to the original registrar NotableNames.ca Inc. on March 21 and March 23, 2011 respectively.

On February 10, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceedings and the Respondent submitted a request that Korean be the language of the proceeding both on February 11, 2011. On March 23, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the administrative panel (when appointed) would have the authority to determine 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2011.

The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on May 5, 2011. 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 limited liability company organized and existing under the laws of Delaware, United States of America. It is an intellectual property holding company and the owner of numerous trademark and service mark registrations consisting of or incorporating “Verizon.” The Complainant has granted its affiliate, Verizon Licensing Company (“VLC”), a Delaware corporation, an exclusive license to sublicense 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. VLC has granted such licenses to various Verizon companies, including Verizon Communications Inc.

The Verizon Communications group of companies, which include Verizon Wireless, are among the providers of communications, entertainment, IT and security solutions to residential, business, wholesale, and government wireline and wireless customers.

The Complainant owns registered trademark rights in European countries, Republic of Korea, and the United States for its VERIZON marks, including the following examples:

- European Community Trademark Registrations

a. VERIZON, Registration No. 001543362, filed on March 7, 2000 with a priority claim of September 10, 1999, issued on July 9, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

b. VERIZON WIRELESS, Registration No. 003826096, filed on May 10, 2004 and issued on July 14, 2005, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

- Korean trademark registrations

a. VERIZON, Registration No. 4500036720000, filed on March 9, 2000 with a priority claim of September 10, 1999, issued on September 7, 2001, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

b. VERIZON & Design, Registration No. 4500063700000, filed on October 13, 2000 with a priority claim of April 26, 2000, issued on October 4, 2002, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

- United States trademark registrations:

a. Registration No. 2,886,813 for the mark VERIZON in block letters, filed on September 10, 1999, first used April 4, 2000, issued on September 21, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

b. Registration No. 3,085,712 for the mark VERIZON in block letters, filed on September 10, 1999, first used May 23, 2005, issued on April 25, 2006, covering goods and services in International Classes 9, 38, and 41.

c. Registration No. 2,884,027 for the mark VERIZON WIRELESS and Design, filed on May 11, 2000, first used May 7, 2000, issued on September 14, 2004, covering telecommunications services in International Class 38.

The disputed domain names were respectively registered as follows:

<dslverizon.com>: registered on May 14, 2010

<verixon.net>: registered on November 26, 2009

<verizo.com>: registered on September 30, 2006

<verizonwirelsess.com>: registered on April 25, 2010

<verizonwirelsss.com>: registered on August 23, 2006

<verzon.net>: registered on May 22, 2007

<wwverizon.com>: registered on January 23, 2010

5. Parties’ Contentions

A. Complainant

i) The disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has registered trademark rights and common law trademark rights;

ii) The Respondent has 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 because the Respondent registered the disputed domain names well after the registration of the Complainant’s trademarks and the Complainant’s trademarks’ having becoming famous. The Respondent’s use of the disputed domain names creates initial interest confusion, and therefore attracts Internet users to his websites at the disputed domain names in addition to the traditional likelihood of confusion.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceedings

The Complaint was filed in the English language. The Respondent requested for Korean to be the language of the proceeding. The Complainant has submitted a request that English be the language of proceeding in which it has advanced a number of arguments including that, according to the Complainant, the Respondent has sufficient ability understanding the English language.

It is noted that the language of the registration agreements for the disputed domain names <verizo.com>, <verizonwirelsss.com>, and <verzon.net> out of seven disputed domain names is Korean while the language for the registration agreements for the remaining four disputed domain names is English.

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English nevertheless communicated with the parties in both English and Korean, indicated that it would accept a Response in either English or Korean and also indicated it would (and has) appointed a panel familiar with both English and Korean.

The Panel recognizes that the Respondent can read and understand the English language in light of the circumstances that the Respondent must have read and agreed to various registration agreements in the English language for the four domain names out of seven disputed domain names. In a previous UDRP decision, the Respondent was found to have “a reasonable proficiency in the English language.” Groupe Canal+ Company v. Jinsoo Yoon, WIPO Case No. D2006-1240.

In any event, the Respondent failed to submit a Response in either language. On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.

B. The Respondent’s default

The Respondent requested that the language of the proceeding be Korean and that it could not prepare a Response because it did not understand the Complaint that was submitted in English. In fact, the Respondent did not submit any response by the due date or thereafter. However, the Respondent appears to have the ability to communicate in English as discussed above, and the Center gave it the opportunity to file the Response in Korean as well by notifying it of the Center’s preliminary decision to accept a Response in either Korean or English and appoint a panel familiar with both languages. As such, the Panel finds that the Respondent’s request does not account for its default.

Paragraph 15(a) of the Rules instructs this Panel to “decide [the 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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain names be transferred:

(1) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(3) the disputed domain names have been registered and are being used in bad faith.

C. Identical or Confusingly Similar

a. In the case of the disputed domain name <dslverizon.com>, the Respondent has simply added the generic term “dsl” before the Complainant’s trademark VERIZON, and thus the Panel finds that it is confusingly similar to the Complainant’s trademark VERIZON.

b. In the case of the disputed domain name <verixon.net>, the Respondent has simply replaced the letter “z” with the letter “x” in the Complainant’s trademark VERIZON, and thus the Panel finds that it is confusingly similar to the Complainant’s trademark VERIZON.

c. In the case of the disputed domain name <verizo.com>, the Respondent has simply omitted the letter “n” in the Complainant’s trademark VERIZON, and thus the Panel finds that it is confusingly similar to the Complainant’s trademark VERIZON.

d. In the case of the disputed domain name <verizonwirelsess.com>, the Respondent has simply added an “s” between the letters “l” and “e” in “wireless” which is a generic term, and thus the Panel finds that it is confusingly similar to the Complainant’s trademarks VERIZON and VERIZON WIRELESS.

e. In the case of the disputed domain name <verizonwirelsss.com>, the Respondent has simply replaced the letter “e” with the letter “s” in “wireless” which is a generic term, and thus it is confusingly similar to the Complainant’s trademark VERIZON and VERIZON WIRELESS.

f. In the case of the disputed domain name <verzon.net>, the Respondent has simply omitted the letter “i” in the Complainant’s trademark VERIZON, and thus the Panel finds it is confusingly similar to the Complainant’s trademark VERIZON.

g. In the case of the disputed domain name <wwverizon.com>, the Respondent has simply omitted the letter “w” in “www” and omitted the “.” separating “www” from “Verizon.” As such, the Panel finds that it is confusingly similar to the Complainant’s trademark VERIZON.

D. Rights or Legitimate Interests

The Panel also finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names in that i) the Respondent has not been in any way or anywhere ever commonly known by the disputed domain names and ii) the Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks. The Panel finds on the current record that, the Complainant has made out a prima facie case that has not been rebutted by the Respondent.

E. Registered and Used in Bad Faith

The Panel recognizes the well-known status and fame of the Complainant’s trademarks from the fact below: The Complainant’s licensees and/or affiliated Verizon companies, including Verizon Communications Inc. in 2010 generated annual consolidated operating revenues of more than USD 106 billion. The Verizon Communications group of companies employs more than 194,000 employees. Verizon Wireless is serving nearly 101.1 million voice and data customers. The Verizon Companies own and operate end-to-end global IP networks serving more than 2,700 cities in 159 countries worldwide and provide advanced IP, data, voice and wireless solutions.

The Panel takes presumption from the fact above that the Respondent registered the disputed domain names with knowledge of the worldwide fame of the Complainant’s VERIZON marks, and thus the Respondent registered the disputed domain names in bad faith.

It is also recognized that the Respondent has attempted by using each of the disputed domain names to divert, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation and endorsement of its websites.

The Respondent’s registration of multiple domain names consisting of misspellings of the Complainant’s trademarks also demonstrate the Respondent’s bad faith registration and use of each of the disputed domain names. See SIGARMS, Inc. v. Sigsauer Dot Com, NAF Claim No. FA0706001024240; see also Richard Starkey v LOVEARTH.net, NAF Claim No. 97089. Typosquatting has been recognized as evidencing bad faith registration and use. See Bank of America Corporation v. Tak Ume domains for sale, NAF Claim No. FA 154528.

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 <dslverizon.com>, <verixon.net>, <verizo.com>, <verizonwirelsess.com>, <verizonwirelsss.com>, <verzon.net>, and <wwverizon.com> be transferred to the Complainant.

Ho-Hyun Nahm
Sole Panelist
Dated: May 14, 2011

 

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