WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Eddy Marmolejo

Case No. D2016-1170

1. The Parties

Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“United States” or “U.S.”), internally-represented.

Respondent is Eddy Marmolejo, of Oakland, California, United States.

2. The Domain Name and Registrar

The disputed domain name <verizonheightltd.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 13, 2016, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2016.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 22, 2016. 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 states that it is “an intellectual property holding company and the owner of numerous trademark and service mark registrations consisting of or incorporating ‘Verizon’” (the “VERIZON Trademark”), as further described below. Complainant further states that it “has granted its affiliate, Verizon Licensing Company (‘VLC’), a Delaware corporation, an exclusive license to sublicense the use of the [VERIZON Trademark] to Complainant’s affiliates and to third parties. VLC has granted such licenses to Verizon Communications Inc. and its subsidiaries (‘Verizon Companies’).”

Given that all of the entities described above are “related corporate entities” – and that the rights and roles of each are relevant to this proceeding – references herein to “Complainant” shall refer interchangeably to each of these entities, as appropriate or necessary. See, e.g., Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson, WIPO Case No. D2004-0097 (allowing multiple complainants that are “related companies” where one is “the current operating company” of the relevant brand and the other is “the registered owner of a number of the trademark registrations on which this Complaint is based”).

Complainant states that it is “one of the world’s leading providers of communications, entertainment, IT and security products and services to residential, business, and government wireline and wireless customers”; that it “is a publicly traded company on the New York Stock Exchange under the stock ticker symbol VZ” that it “generated annual consolidated operating revenues [in 2015] of more than USD 131 billion and employs a diverse workforce of approximately 177,700 employees”; and that it “owns and operates one of the most expansive end-to-end global IP networks serving more than 2,700 cities in 159 countries worldwide, including the [United Kingdom of Great Britain and Northern Ireland (“U.K.”)].”

Complainant states, and provides evidence to support, that it is the owner of multiple registrations for the VERIZON Trademark, including the following:

U.S. Reg. No. 4,016,510 for the mark VERIZON in standard character form, filed December 18, 2009, first used April, 2000, registered August 23, 2011, covering arena services, namely, providing facilities for sports, concerts, conventions and exhibitions, in International Class 43.

U.S. Reg. No. 2,886,813 for the mark VERIZON in standard character form, filed September 10, 1999, first used April 4, 2000, registered September 21, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

U.S. Reg. No. 2,879,802 for the mark VERIZON and design, filed March 3, 2000, first used April 4, 2000, registered August 31, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

U.K. Reg. No. 2363110 for the mark VERIZON in standard character form, filed May 12, 2004, registered October 7, 2005, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.

U.K. Reg. No. 2435887 for the mark VERIZON in standard character form, filed October 18, 2006, registered December 19, 2008, covering goods and services in International Classes 9, 16, 35, 36, 38, 42, and 45.

U.K. Reg. No. 2435880 for the mark VERIZON and Design, filed October 18, 2006, registered December 19, 2008, covering goods and services in International Classes 9, 16, 35, 36, 38, 42, and 45.

Complainant states, and provides evidence to support, that the Disputed Domain Name is used in connection with a website that “resolves to the website of a business identified as ‘Verizon Heights Ltd.’ which purports to be located in England and offers ‘long term loans in the U.K.’”; that “a search of the Companies House records indicates that there is no company called ‘Verizon Heights Ltd.’ in the U.K.”; and that visitors to “the website located at <verizonheightltd.com> are asked to provide Personally Identifiable Information (PII) (name, date of birth, phone number, e-mail address and postal code) in order to ‘apply’ for loans.”

The Disputed Domain Name was created July 11, 2015.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

The Disputed Domain Name is confusingly similar to the VERIZON Trademark because it “has been formed by misappropriating Complainant’s famous VERIZON mark in its entirety and adding the generic word ‘height,’ the business entity designation ‘ltd’ (meaning ‘limited company’), and the generic top-level domain ‘.com’ thereto.”

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not authorized the Respondent to register or use the <verizonheightltd.com> domain name and there is no connection between Complainant and Respondent”; “[a]ccording to the Registrar, the Respondent is named ‘Eddy Marmolejo’ [which]… is sufficient to permit the inference that Respondent is not commonly known by the <verizonheightltd.com> domain name or any name reflected thereby”; although the Disputed Domain Name “resolves to the website of a business identified as ‘Verizon Heights Ltd.’… [t]here is no company called ‘Verizon Heights Ltd.’ in the U.K.”; and “visitors to the website located at <verizonheightltd.com> are asked to provide Personally Identifiable Information (PII) (name, date of birth, phone number, e-mail address and postal code) in order to ‘apply’ for loans”, which “suggest[s] that the <verizonheightltd.com> domain name is being used fraudulently in an attempt to collect PII from unsophisticated Internet users to engage in identify theft.”

The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[i]t is well settled that the registration and use of a domain name that is confusingly similar to a well-known mark is indicative of opportunistic bad faith”; the Disputed Domain Name “is so ‘obviously indicative’ of the [VERIZON Trademark] that Respondent’s use of the <verizonheight.com> domain name would “inevitably lead to confusion of some sort”; and “the facts and circumstances of this case also suggest that the Respondent has registered and used the <verizonheightltd.com> domain name to ‘phish’ for PII to engage in identify theft.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is 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 Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the VERIZON Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the VERIZON Trademark, the relevant comparison to be made is with the second-level portion of this domain name only (i.e., “verizonheightltd”), as it is well established that the Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)

The Panel finds that “the dominant portion” of the Disputed Domain Name contains the VERIZON Trademark and that the addition of the elements “height” and “ltd” are insufficient “to create a distinct domain name capable of overcoming a proper claim of confusingly similarity.” F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger, WIPO Case No. D2007-0189. While not expressly required under the first element, as a panel held in a previous decision under the Policy also involving the VERIZON Trademark, “[t]he establishment of confusion is particularly true where, as here, the trademark is famous.” Verizon Trademark Services LLC v. The Helard Group, WIPO Case No. D2012-0277 (transfer of <verizoniphone4s.com>).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not authorized the Respondent to register or use the <verizonheightltd.com> domain name and there is no connection between Complainant and Respondent”; “[a]ccording to the Registrar, the Respondent is named ‘Eddy Marmolejo’ [which]… is sufficient to permit the inference that Respondent is not commonly known by the <verizonheightltd.com> domain name or any name reflected thereby”; although the Disputed Domain Name “resolves to the website of a business identified as ‘Verizon Heights Ltd.’… [t]here is no company called ‘Verizon Heights Ltd.’ in the U.K.”; and “visitors to the website located at <verizonheightltd.com> are asked to provide Personally Identifiable Information (PII) (name, date of birth, phone number, e-mail address and postal code) in order to ‘apply’ for loans”, which “suggest[s] that the <verizonheightltd.com> domain name is being used fraudulently in an attempt to collect PII from unsophisticated internet users to engage in identify theft.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

The Panel finds that Complainant has established its prima facie case. In light of the circumstances set out above, and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:

(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location.

Policy, paragraph 4(b).

In this case, Complainant argues that bad faith exists, among other reasons, because “registration and use of a domain name that is confusingly similar to a well-known mark is indicative of opportunistic bad faith.” While this does not neatly fit within any of the subparagraphs of 4(b) set forth above, 4(b) itself makes clear that the listed circumstances are “without limitation.” Accordingly, as numerous UDRP panels have said, “[o]ther factors can indicate bad faith.” Warehouse Goods, Inc. v. David Shummer, GRD Corp, WIPO Case No. D2014-1236.

Here, the Panel agrees with Complainant’s arguments with respect to opportunistic bad faith, including, for example, Complainant’s citations to previous decisions regarding the VERIZON Trademark, including Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd, WIPO Case No. D2014-1994 (“given the very extensive reputation of the Complainant’s mark and that the mark is an invented one, it seems that any use that could be made of the disputed domain name would inevitably lead to confusion between the Respondent and the Complainant”); and Verizon Trademark Services LLC v. The Helard Group, WIPO Case No. D2012-0277 (the “VERIZON mark is inherently distinctive and fanciful and entitled to broad protection due to its commercial strength. Given the well-known status of the mark, and Respondent’s use of the mark to create initial interest confusion in order to drive Internet traffic to its site for commercial benefit, this Panel finds it inconceivable that Respondent was not aware of Verizon and its international business”).

Accordingly, the Panel accepts Complainant’s contentions and supporting evidence regarding Respondent’s use of the Disputed Domain Name, as set out in more detail above, and finds that Complainant has proven that the Disputed Domain Name was registered and is being used in bad faith under the third element of the Policy.

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 Name <verizonheightltd.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: August 4, 2016