WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. William Poku
Case No. D2011-1832
1. The Parties
Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America, represented internally.
Respondent is William Poku of Lincroft, New Jersey, United States of America, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <givemefios.com> is registered with DomainPeople, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2011. On October 25, 2011, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the disputed domain name. On October 31, 2011, November 3, 2011, November 10, 2011, November 15, 2011 and November 16, 2011, the Center transmitted by email to DomainPeople, Inc. further requests for registrar verification in connection with the disputed domain name. On November 18, 2011, DomainPeople, Inc. confirmed the lock status of the disputed domain name. No response to the Center’s request for registrar verification, or any subsequent communications, was received from DomainPeople, Inc. 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 Respondent of the Complaint, and the proceedings commenced on November 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2011. The Response was filed with the Center on December 11, 2011. On December 16, 2011, the Center received a supplemental filing in which Complainant submits a reply to Respondent’s Response.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on January 4, 2012. 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
Complainant Verizon Trademark Services LLC owns several registered United States trademarks for FIOS. Complainant’s registrations include United States Registration No. 3,001,081, for the FIOS mark in International Classes 37 and 38 regarding “installation, maintenance, and repair of communication networks” and “telecommunications services, namely, transmission of voice, data, images, audio, video, information and other content via a communications network; providing multiple-user access to a communications network,” filed February 6, 2004 (the “Mark”); and U.S. Registration No. 3,147,510, for the VERIZON FIOS mark in the same classes, filed June 3, 2004.
Complaint states that it provides and has provided a variety of “communications and entertainment products and services” under the Mark since 2004. Complainant states that it has spent millions of dollars advertising FIOS branded products since 2004, and attaches a collection of advertisements for the Internet services branded with the Mark.
The disputed domain name was registered on December 11, 2008. The disputed domain name currently resolves to a website that contains the header “WILLIAM FROM VERIZON FIOS,” and “If you are here, chances are William wrote your order.” The website contains paragraphs of text relating to Verizon’s services and for “William’s” services relating to Verizon’s FIOS products. The website at the disputed domain name also states that “FiOS is a trademark of Verizon.” The current version of the website contains “William’s” phone number and email address. The prior version of the website, provided by Complainant, was substantially similar but contained a web contact submission form.
5. Parties’ Contentions
Complainant requests that the disputed domain name be transferred to Complainant. First, Complainant argues that the disputed domain name is confusingly similar to the Mark because the disputed domain dame, <givemefios.com>, contains the entire Mark preceded by the generic words “give” and “me” prior to the Mark. Complainant argues that this causes confusion in consumers seeking goods and services associated with the Mark. Specifically, Complainant alleges that confusion is likely because the disputed domain name currently displays a solicitation for similar goods or services, and is falsely portraying the website or its owner as affiliated with any Verizon company or as authorized by any Verizon company to offer such goods or services.
Second, Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, because Respondent is merely using the Mark to draw in users to an offering of competing goods or services. Complainant states that Respondent has no connection or affiliation with any Verizon company, or any of the products branded with the Mark that such companies currently offer; Respondent never sought or obtained any trademark registrations on the Mark; and has not received any license to use the Mark. Complainant also alleges that Respondent’s activities do not constitute fair use.
Third, Complainant argues that the disputed domain name was registered and is being used in bad faith. Complainant alleges that the disputed domain name is “obviously indicative” of the Mark, and Respondent’s use would “inevitably lead to confusion of some sort.” See AT&T v. Rice, WIPO Case No. D2000-1276.
Respondent disputes Complainant’s allegations and requests a finding of reverse domain name hijacking.
First, Respondent argues that the disputed domain name would not be confused, because <givemefios.com> “connotes a request for assistance/lifeline and motivated and derived from the initial letters of the phrase F(ree) I(nteractive) O(nline) S(upport) totally unrelated to the FiOS product.”
Second, from what the Panel can piece together from Respondent’s response, Respondent alleges that he was at some point an authorized reseller of Verizon’s services under the Mark, and thus has a legitimate interest. Accordingly, Respondent states that “[g]ivemefios is not tied to the sale of Verizon FiOS anymore than a used car lot is limited to selling one particular brand of vehicle.”
Third, Respondent does not clearly provide a basis under the Policy for disputing bad faith, but claims that he “was never offered the terms during the domain registration to be under the jurisdiction of this panel” and therefore cannot be held to the Panel’s decision.
Finally, Respondent argues that this action constitutes reverse domain name hijacking because Verizon failed to obtain the domain name <fios.com> from “Falcon Interactive Online System” in a separate action. Respondent makes numerous allegations of improper conduct by Complainant, and, among other things, argues that counsel for Complainant has ”tampered with” the disputed domain name, “authorized his agents to hack into and disable” Respondent’s email address, and “spoliated evidence within the givemefios.com database” to hide allegedly relevant documents. Respondent provides no documentary support for these allegations in its response.
Respondent further provides lengthy allegations of the factual history related to his offering of products under the Mark, of Complainant’s alleged deceptive trade practices, of an alleged orchestrated attempt by Complainant to “steal the commissions earned by the hardworking crew” of door-to-door salespeople, and other matters not directly informing the present matter, omitted here for brevity.1
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i that the disputed domain name registered by Respondent is identical or confusingly similar to a trade mark or service in which Complainant has rights;
ii that Respondent has no rights or legitimate interests in respect to the disputed domain name; and
iii that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has successfully shown that the disputed domain name is identical or confusingly similar to the Mark. The disputed domain name is comprised of two generic words, “give” and “me,” preceding the Mark in its entirety. In this case, adding a generic term to a trademark within a domain name does not preclude a finding of confusing similarity in the disputed domain name. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (adding generic terms to the complainant's PEPSI mark did not alter the impression that the domain names were in some way connected to the complainant).
For these reasons, Complainant has shown that the disputed domain name is confusingly similar to its Mark.
B. Rights or Legitimate Interests
Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has submitted significant evidence supporting a finding that the use of the Mark was intended merely to draw people to the site in order to sell competing goods or services. In response, Respondent has not raised any valid defense under the Policy persuasive to the Panel.
First, it has not submitted evidence that it is or has been known by the disputed domain name. Indeed, as outlined in the prior section, the disputed domain name is properly understood as a combination of the Mark and two generic words.
Neither is the disputed domain name being used in connection with a bona fide offering of goods or services. Respondent’s response may be understood to attempt to rebut such evidence by alleging that Respondent was a legitimate reseller of Verizon services associated with the Mark.2 The prevailing view on bona fide offerings by a reseller is articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In Oki Data Americas, Inc., the reseller's incorporated the OKIDATA trademark into <okidataparts.com>. The panel found that bona fide offering of goods or services can only be satisfied if the following elements are met: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent's relationship with the trademark owner; and (4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Here, the Respondent fails to meet the first, second, and third elements of the Oki Data test. Respondent has not sufficiently met its burden of showing a bona fide offering, because it is not clear just what the Respondent is in fact offering at the site. At best, it appears that competing installation services may be offered. However, the Respondent has the burden of showing such a bona fide offering to counter evidence of bad faith, and has not done so here. Second, as far as the Panel can understand what Respondent’s website offers, Respondent also offers not simply the Verizon services, but also its own competing installation services. The services Respondent solicits using the disputed domain name are ambiguous. However, as far as they can be understood by the Panel in light of the circumstances of this case, any such services involving installation or maintenance of services related to the Mark are in direct competition with Complainant’s services. Third, though the website contains the text “FiOS is a trademark of Verizon,” it does not state that Respondent is not affiliated with the Verizon companies. Quite the opposite: “WILLIAM FROM VERIZON FIOS” is the first and top item of text displayed on the webpage, strongly implying a false affiliation.
Respondent’s contention that the disputed domain name is “not tied to the sale of Verizon FiOs anymore than a used car lot is limited to selling one particular brand of vehicle” fails to support a defense to show rights or legitimate interests in the dispute domain name.
Respondent has also failed to properly allege or support out any other defense to show a right or legitimate interest in the disputed domain name.
For these reasons, the Panel concludes that Respondent has shown no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant has shown that the disputed domain name was registered and used in bad faith. Where a domain name is obviously connected with a product or service, and is used to advertise a competing product, a finding of bad faith is appropriate. Oakley Inc. v. Li Susanto, WIPO Case No. D2010-0496. There is sufficient evidence before the Panel that the disputed domain name was used in “opportunistic bad faith.” See id.
For the reasons described in the preceding sections, Respondent appears to be offering a competing service relating to the installation or maintenance of Complainant’s services. Indeed, the Mark and the “Verizon” name are used repeatedly in connection with an offering for apparently competing “William’s” services, while at no time making clear the lack of any affiliation with any Verizon company. In fact, quite the opposite, the largest and top text on the page says “WILLIAM FROM VERIZON FIOS,” implying just such an affiliation.
Accordingly, for the foregoing reasons, the Panel finds that Complainant has met its burden and shown the disputed domain name was registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
Reverse domain name hijacking is "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). For this Panel to find attempted reverse domain name hijacking, Respondent must show that Complainant knew of Respondent’s “unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 (Oct. 31, 2000).
Respondent has failed to adequately support its request for a finding of reverse domain name hijacking. Respondent has failed to show a bad faith attempt to deprive him of the disputed domain name. Although Respondent makes repeated and vague allegations of bad faith on Complainant’s part, they are conclusory and without support, and often unintelligible.3
Respondent contends that Complainant’s alleged failure to obtain the domain name <fios.com> is evidence of a bad faith attempt to hijack the disputed domain name. The record contains no information on any dispute regarding the domain name <fios.com>, save for unsupported allegations by Respondent. Any such allegations are insufficient to support a finding of bad faith on the part of the Complainant.
In short, the Panel could not find support in Respondent’s request for a finding of reverse domain name hijacking.
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 <givemefios.com> be transferred to Complainant.
Maxim H. Waldbaum
Dated: January 13, 2012
1 Respondent also submitted two email supplements after the close of the period allotted for a response under the Policy and after the submission by Complainant of its supplemental filing. Upon review of these emails, the Panel concludes it need not determine whether they were proper, because they had no bearing on the Panel’s ultimate decision.
2 Complainant apparently contests any such assertion and maintains Respondent was not authorized to offer services under the Mark. In any case, Respondent has not provided evidence to support that any alleged affiliation actually exists.
3 For instance, Respondent alleges that Complainant “has a notorious practice of trying to embed itself in private areas belonging to its customers by using activeX code and confusing dialogs to control customer premises equipment without the ability to restore break.” The Panel is at a loss as to how to interpret such allegations.