World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Cyrus de Ocampo

Case No. D2012-0282

1. The Parties

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

Respondent is Cyrus de Ocampo of Morton Grove, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain names <verizoniphone4.com>, <verizonwirelessiphone4.com>, <verizonwirelessiphone4g.com>, <verizonwirelessiphone5.com>, <verizonwireless4giphone.com>, <vzwiphone4.com>, <vzwiphone4g.com>, <vzwiphone5.com>, and <vzw4giphone.com> (“Disputed Domain Names”) are registered with GoDaddy.com, LLC. (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 15, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 9, 2012.

The Center appointed Michael A. Albert as the sole panelist in this matter on March 16, 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 is a member of the Verizon Communications group of companies which includes Verizon Wireless (collectively, “Verizon”). Verizon has become one of the world’s leading provider of communications, entertainment, IT and security solutions. Verizon is publicly traded on the New York Stock Exchange, is a Dow 30 company and generated annual consolidated operating revenues of more than USD 106 billion in 2010. Verizon employs more than 195,000 employees worldwide. Verizon owns and operates the largest wireless carrier in the United States, serving more than 108.7 million voice and data customers. Additionally, Verizon owns and operates one of the most expansive end-to-end global IP networks serving more than 2,700 cities in over 150 countries worldwide.

Verizon is one of the world’s most famous names in wireless communications and owns a family of valid and subsisting trademarks incorporating VERIZON and VZW. See, e.g., United States Patent and Trademark Office Reg. Nos. 2886813 and 3319338 (See Annex 4 and Annex 5 to the Complaint). Several UDRP panels have found that Complainant’s trademark rights in VERIZON are well established and that VERIZON is a famous mark. See, e.g., Verizon Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630, WIPO Case No. D2011-1092 (“VERIZON is a well-known trademark with well-established and widespread international reputation […] Respondent registered the disputed domain name with knowledge of the worldwide fame of [the] VERIZON trademark […]”); Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247; Verizon Trademark Services LLC v. Ali Aziz, WIPO Case No. D2010-0833.

Further, Verizon owns several domain names and websites that offer a full array of communications, entertainment, IT and security products and services including <verizon.com>, used since June 2000, <verizonwireless.com>, used since April 2000, and <verizonbusiness.com>, used since January 2006. See Annex 3 to the Complaint. Additionally, Verizon owns <verizoniphone.com> and <vzw.com> which redirect to <verizonwireless.com> and offer Apple Inc.’s iPhone wireless device for sale. Several UDRP panels in both the European Union and United States have recognized Verizon’s rights in the VERIZON mark and ordered transfers of confusingly similar domain names accordingly. See e.g., Verizon Trademark Services LLC v. Darlington Edu d/b/a Barmax Distribution, NAF Claim No. FA0611000830994 (Transferring <verizonfttp.com>, <verizonfttp.net>, <verizonsolutions.com>, <verizonsolutions.net>, <verizonsolutions.biz>, <verizonsolutions.info> and others to Complainant); Verizon Trademark Services LLC v. Paul Swider d/b/a OnClick, NAF Claim No. FA0603000670992 (Transferring <verizonwireless.biz> to Complainant); Verizon Trademark Services LLC v. Zx Domains c/o Sezar Sak, WIPO Case No. D2011-0419 (Transferring <cerizonwireless.com>, <veriazonwireless.com>, <verizonvisaonline.com>, <verizonwoireless.com>, <verizonworeless.com>, <verizpnwireless.com>, <verizxon.com>, and <veruizonwireless.com> to Complainant).

As Respondent did not file a response to Complainant’s contentions in these proceedings, the Panel finds that the assertions of fact in the Complaint are undisputed.

The Disputed Domain Names were registered between January 4, 2010 and September 23, 2010.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Names are identical or confusingly similar to trademarks or service marks in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that Respondent registered and is using the Disputed Domain Names in bad faith in order to deceive and defraud visitors of the websites.

Complainant contends that the Disputed Domain Names are confusingly similar to Complainant’s VERIZON and VZW marks. Complainant further contends that the Disputed Domain Names create confusion because they incorporate Complainant’s VERIZON and VZW marks, and add the trademark IPHONE and one of the generic terms “4”, “4g”, or “5”. Complainant asserts that the addition of the generic Top-Level Domain (gTLD) “.com” does not avoid confusion. Complainant further contends that Respondent is using the confusion created by the Disputed Domain Names to attract users and intentionally divert them to pay-per-click landing pages displaying links to Verizon’s products and services, as well as those of Verizon’s competitors. Complainant contends that Respondent is also passively holding several of the Disputed Domain Names which are not currently operational (screenshots of the websites associated with the Disputed Domain Names have been attached to Annex 6 to the Complaint.

Complainant further contends that Respondent knowingly agreed to register the Disputed Domain Names with a company that provides parking webpages and that Respondent was aware that the company would generate advertisements for Respondent’s commercial benefit. Complainant alleges that Respondent’s counsel responded to demand letters with the assertion that it planned to set up a store selling Apple Inc.’s iPhones for Verizon. Complainant contends that Respondent never sought Complainant’s permission or a license to use the VERIZON or VZW marks in pursuit of this venture. Complainant contends that Respondent knew of the worldwide recognition of the VERIZON and VZW marks at the time it registered the Disputed Domain Names and further knew that registration would disrupt Complainant’s business.

Complainant contends that Respondent’s counsel offered to transfer the Disputed Domain Names in exchange for USD 1,200. See Annex 7 to the Complaint. Complainant further contends that Respondent never sought or obtained any trademark registrations for VERIZON or VZW or any variation of the marks. Complainant contends that Respondent was under constructive notice due to Complainant’s registration of the VERIZON and VZW marks.

Due to the presence of the trademark IPHONE in the Disputed Domain Names, Complainant has obtained a letter of authorization from Apple Inc. (the owner of the IPHONE trademark) to obtain transfer of the Disputed Domain Names if ordered in this proceeding. See Annex 8 to the Complaint.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a 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 Complainant to prove each of the following three elements to obtain an order that Disputed Domain Names be cancelled or transferred:

(i) the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

Respondent provided no response, and the deadline for doing so expired on March 8, 2012. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s reasonable allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

A. Identical or Confusingly Similar

Complainant provides sufficient evidence that it is the owner of valid and subsisting registrations and common law rights for the VERIZON and VZW marks. Complainant’s valid United States registrations for the marks (examples are offered into evidence in Annexes 5 and 6 to the Complaint), taken together with its longstanding, extensive worldwide use of the VERIZON and VZW marks, make such ownership of enforceable trademark rights indisputable. Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 ([R]egistration of a mark is prima facie evidence of validity […] Respondent has the burden of refuting this assumption.”); accord EAuto, L.L.C. v. Triple S, Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent provides no evidence to refute the conclusion that Complainant possesses valid and enforceable trademark rights.

Complainant contends that the Disputed Domain Names are confusingly similar to the VERIZON and VZW marks. The Disputed Domain Names, however, are not identical to the VERIZON and VZW marks. Therefore, the first issue is whether the Disputed Domain Names, and the VERIZON and VZW marks are confusingly similar.

While the nine Disputed Domain Names are different they all combine the same four elements: (1) either the mark VERIZON or VZW; (2) the mark IPHONE; (3) the term “4”, “4g”, or “5”; and (4) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (e.g., “verizoniphone4”, “vzwiphone4”), as it is well established that the Top-Level Domain may not be included in the analysis. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.

This Panel agrees that the Disputed Domain Names are confusingly similar to the VERIZON and VZW marks. Several previous UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to a complainant’s mark. See, e.g., Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The establishment of confusion is particularly true where, as here, the trademark is famous. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

Further, the addition of the mark IPHONE with other generic terms such as “4” to the VERIZON or VZW trademark in the Disputed Domain Names does not avoid confusion. Several UDRP panels have found that the respondent’s inclusion of a third-party’s trademark in a domain name does not eliminate confusing similarity. See, e.g., Verizon Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630, supra (Transferring <iphoneonverizon.com> and stating “addition of the terms ‘iphone’ and ‘on’ does not prevent confusion […] the term ‘iphone’ is a well-known trademark of Apple Inc. related to communications, and hence the disputed domain name misleads Internet users into thinking that the disputed domain name is related to […] the [c]omplainant.”); F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751 (Finding <viagra-xenical-pharmacy.com> confusingly similar to the complainant’s XENICAL mark); Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 (Finding <viagra-nascar.com> confusingly similar to Complainant’s VIAGRA mark); Hoffman-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793) (Finding <viagra-propecia-xenical.com> confusingly similar to the complainant’s XENICAL mark). This is especially true in the instant case because Verizon owns the domain names <verizoniphone.com> and <vzw.com> which offer Apple Inc.’s iPhone for sale. See Annex 3 to the Complaint.

Furthermore, UDRP panels have consistently found that the inclusion of a third-party trademark may increase the confusing similarity and “does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark.” See Pfizer, Inc. v. Martin Marketing, supra (Regarding <viagra-nascar.com> “the combination of the two marks would convey to Internet users familiar with Complainant’s advertising an expected association.”); Albertis Infraestructuras, S.A. v. Syed Hussain (PDAPB), WIPO Case No. D2006-1007. As noted above, the likelihood of confusing association is especially true in the instant case because Complainant is known to carry Apple Inc.’s iPhone in its stores and through its websites.

Therefore, this Panel finds that the Disputed Domain Names are confusingly similar to the VERIZON or VZW marks.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in the Disputed Domain Names may be demonstrated by showing that:

(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services;

(ii) Respondent has been commonly known by the Disputed Domain Names, even if no trademark or service mark rights have been acquired; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

This Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent has not filed a response, which, in appropriate circumstances after a prima facie showing by Complainant, can suggest that Respondent lacks rights or legitimate interests as to the Disputed Domain Names. See Pavillion Agency, Inc.,Cliff Greenhouse and Keith Greenhouse v.

Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (Finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interests in the domain name).

Next, as a result of not filing a response, Respondent has failed to dispute Complainant’s showing that Respondent has not demonstrated any of the factors under the Policy. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized to use the Disputed Domain Names. There is no evidence that Respondent is commonly known by any of the Disputed Domain Names, nor that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. Conversely, Complainant’s evidence suggests that Respondent is using the Disputed Domain Names to create initial interest confusion in order to attract Internet users to its monetized landing pages which display links to Verizon’s products and services as well as those of Verizon’s competitors. Respondent is also passively holding several of the Disputed Domain Names. Clearly, intentionally confusing Internet visitors for financial gain cannot constitute a bona fide offering of services. See, e.g., Verizon Trademark Services LLC v. NA a/k/a NA DomainDevelopments.com, NAF Claim No. FA0512000616307 (Holding the respondent’s use of the domain name <verizoncenter.com> for a website featuring links to competing products and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); Hoffman-La Roche Inc. v. Igor Richko, WIPO Case No. D2010-0904; Tiffany (NJ) LLC, Tiffany and Company v. Thomas Stanek, WIPO Case No. D2009-0143. Likewise, previous UDRP panels have held that passive holding of domain names does not necessarily constitute a legitimate noncommercial or fair use. See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195 (With regard to the respondent’s passively held domain name “it is fair to infer that the [r]espondent has not made, nor taken any preparatory steps to make,” any legitimate use of the domain name).

Therefore, this Panel finds that Complainant has established prima facie evidence that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Respondent, by not responding to the Complaint, has failed to rebut the prima facie case.

C. Registered and Used in Bad Faith

Under the Policy, paragraph 4(a)(iii), registration and use of the Disputed Domain Names in bad faith may be demonstrated by showing:

(i) circumstances indicating that Respondent has registered or Respondent has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or

(ii) Respondent has registered the Disputed Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on its website or location.

For the following reasons, this Panel finds that Complainant’s evidence shows that Respondent has registered and uses the Disputed Domain Names in bad faith in violation of the Policy.

First, VERIZON and VZW are coined marks. The VERIZON and VZW marks are inherently distinctive and fanciful and entitled to broad protection due to their commercial strength. Given the well-known status of the marks, and Respondent’s use of the marks to create initial interest confusion in bad faith to drive Internet traffic to its websites for commercial benefit, this Panel finds it inconceivable that Respondent was not aware of Verizon and its international business. See Wal-Mart Stores, Inc. v. Jeff Milchen, WIPO Case No. D2005-0130 (Finding that respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith); Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602.

In addition, this Panel finds that Respondent has no rights or legitimate interests with respect to the Disputed Domain Names, as discussed above. UDRP panels have consistently found that registration and use of a domain name including a famous trademark belonging to a third party, without proving rights or legitimate interests in it, represents bad faith registration and use. See, e.g., DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; Veuve Cliquot Ponsardin, Maison Fondeé en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (Holding that the disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)

Furthermore, the Disputed Domain Names include the entire VERIZON and VZW marks. This also supports a finding of bad faith. See Wal-Mart Stores, Inc., supra; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Further, even though Respondent responded to Complainant’s demand letters by alleging an intent to set up a legitimate business the Panel finds this possibility highly suspect, especially since Respondent has passively held and redirected the Disputed Domain Names for profit since 2010. See Barclays Bank PLC v. New City Resources Inc. [Provided in Response: Barclay Investment Co., Ltd.], WIPO Case No. D2011-1584 (“A mere assertion on the part of the [r]espondent is not sufficient to rebut the presumption that as a result of the worldwide fame, reputation and notoriety of the [c]omplainant’s […] mark, the disputed domain name […] was registered by the [r]espondent in bad faith with the intent to create an impression of an association with the [c]omplainant and its products and services, and profit there from [sic].”)

Finally, Respondent is using Complainant’s goodwill and the reputation of the VERIZON and VZW marks to redirect Internet users for financial gain. Many UDRP panels have found that intentionally creating confusion with a famous mark for financial benefit is evidence of bad faith registration and use. See, e.g., Verizon Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630, supra; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. Respondent also offered to transfer the Disputed Domain Names to Complainant in exchange for USD 1,200, an act which by itself may be considered evidence of bad faith under paragraph (i), above. See Compagnie Générale des Etablissements Michelin v. Fatih Gul, WIPO Case No. D2010-2257 (“[r]espondent requested about USD 1200 for the transfer of the disputed domain name […] which is well in excess of the out of pocket costs directly related to the domain name.”).

Therefore, this Panel finds that Complainant has demonstrated that the Disputed Domain Names were registered and are being used in bad faith.

Lastly, the Panel notes that this decision results in the transfer of the Disputed Domain Names that include the IPHONE mark owned by Apple Inc., which is not a party to the instant proceeding. Several WIPO UDRP panels have noted that, although neither the Policy nor the Rules expressly require doing so, it is good practice to obtain authorization from the third-party trademark owner with a potential interest in the transferred domain names. See, e.g., Pfizer, Inc. v. Martin Marketing, supra; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, supra; Yahoo, Inc. v. M & A Enterprise, WIPO Case No. D2000-0748. Here, Complainant has obtained Apple Inc.’s consent (see Annex 8 to the Complaint).

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, <verizoniphone4.com>, <verizonwirelessiphone4.com>, <verizonwirelessiphone4g.com>, <verizonwirelessiphone5.com>, <verizonwireless4giphone.com>, <vzwiphone4.com>, <vzwiphone4g.com>, <vzwiphone5.com>, and <vzw4giphone.com> be transferred to Complainant.

Michael A. Albert
Sole Panelist
Dated: March 30, 2012

 

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