WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. prayogapratama, prayoga pratama
Case No. D2011-0396
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America, represented by an internal representative.
The Respondent is prayogapratama, prayoga pratama of Bandung, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <bestverizon.net> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2011. On March 2, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2011, 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 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 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on April 19, 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 facts relevant to the findings and decision in this case are that:
1. The Complainant is part of a group of companies (“The Verizon Companies”).
2. The Verizon Companies have provided communications, entertainment, IT and security solutions under the trademark VERIZON since 2000.
3. The disputed domain name was registered on June 4, 2010.
4. There has been no commercial or other relationship between the parties.
5. At the time the Complaint was filed, a website corresponding with the disputed domain name carried pornographic material.
6. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
5. Parties’ Contentions
The Complainant asserts trademark rights in VERIZON and states that the disputed domain name is confusingly similar to its trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the lack of a Response, the Panel moves to paragraph 4(a) of the Policy which requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is 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 name; and
(3) the disputed domain name has been registered and is being used in bad faith.
That said, the Panel finds that this is a clear case of domain name abuse as shown herein.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the disputed domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. The Complainant has trademark rights in VERIZON acquired through registration.1 In addition, for the purposes of the Policy, the Panel finds that the Complainant has unregistered rights in the trademark acquired through use and reputation.2
The remaining question is whether the disputed domain name <verizon.net> is confusingly similar to the Complainant’s trademark. For the purposes of testing confusing similarity, the generic top-level domain, “.net,” can be ignored.3 The disputed domain name then only differs from the trademark by the addition of the word “best”, being laudatory and wholly non-distinctive. Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a trademark does nothing to avoid confusion.
The Panel finds the disputed domain name confusingly similar to the Complainant’s trademark and so finds that the Complainant has satisfied the first limb of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests4.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trademark rights in the domain name, registered or not.
The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Counter indications arise from the evidence provided by the Complainant of a website corresponding with the disputed domain name which hosts adult related material.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant submits that the Respondent’s actions fall squarely under paragraph 4(b)(iv). It states that:
“Respondent’s misappropriation of the VERIZON Marks for use in the Infringing Domain Name is no accident. Clearly, Respondent chose to register multiple variations of the VERIZON Marks to capitalize on the consumer recognition of the famous VERIZON Marks and to draw Internet users to its own websites.”
It is unclear from the Complaint what “multiple variations” are at issue however the Panel finds it unnecessary to assess the claim under paragraph 4(b)(iv) since it is clearly of the opinion that the Respondent both registered and used the disputed domain name in bad faith.
Given the Complainant’s evidence of use of the trademark prior to registration of the disputed domain name, it is (in the absence of any evidence to the contrary) more likely than not that Respondent was aware of the Complainant’s rights in the VERIZON trademark at the time it registered the domain name.
Following registration, the disputed domain name was used in connection with a website containing pornographic material. Since inception of the Policy, panels have consistently held that what is now popularly called “pornosquatting” is strongly indicative of abusive domain name registration and use of the name in bad faith. Nothing in the evidence in this case suggests bona fide use of the domain name.
Accordingly, the Complainant has satisfied the third and final limb of the Policy.
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 name <bestverizon.net> be transferred to the Complainant.
Debrett G. Lyons
Dated: May 2, 2011
1 Complainant controls a vast international trademark portfolio, including by way of example only, United States Trademark Registration No. 2,886,813 for VERIZON with a priority date of September 10, 1999 and Indonesian Trademark Registration No. IDM000064945 for VERIZON with a priority date of July 9, 2004. See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 It is alleged (and not contested) that The Verizon Companies include a publicly traded company on the New York Stock Exchange which is referred to in the complaint as Verizon Communications. It is said that Verizon Communications is a Dow 30 company which in 2010 generated an annual revenue exceeding USD 106 billion. It is also said that The Verizon Companies employ a workforce of more than 194,000 employees. The business mass of The Verizon Companies and the common law renown in the trademark VERIZON has been recognised by former panels applying the Policy. Decisions include Verizon Trademark Services LLC v. Darlington Edu d/b/a Barmax Distribution, NAF Claim No. 830994; Verizon Trademark Services LLC v. Paul Swider d/b/a OnClick, NAF Claim No. 670992; Verizon Trademark Services, LLC v. NA a/k/a NA DomainDevelopments.com, NAF Claim No. 616307; and Verizon Trademark Services LLC v. Van Groenendael Adviesgroep, WIPO Case No. DNL2008-0029
3 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
4 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.