WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Tunde Opaleye / MakarioWorks
Case No. D2014-0262
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (the “USA”), represented internally.
The Respondent is Tunde Opaleye / MakarioWorks of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <verizontab.com> 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 February 19, 2014. On February 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2014, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 20, 2014. On March 1, 2014, the Respondent sent an informal communication to the Center. The Complainant filed a reply thereto with the Center on March 20, 2014 and the Respondent a subsequent reply on even date.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 28, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is part of the VERIZON group of companies, which is one of the world’s leading providers of communications, entertainment, IT and security products and services to residential, business, wholesale, and government wireline and wireless customers. It is a publicly traded company on the New York Stock Exchange, a Dow 30 company, and generated annual consolidated operating revenues of approximately USD 116 billion in 2013. It has offered and provided a number of products and services under the trademark and trade name VERIZON since 2000 in the USA and throughout the world, including Verizon‑branded cell phones and tablet computers. The Complainant owns and operates an end-to-end global IP network serving more than 2,700 cities in 159 countries worldwide, including Nigeria. The Complainant’s main websites featuring information on many of its products and services are available at “www.verizon.com”, “www.verizonwireless.com”, and “www.verizonenterprise.com”.
The Complainant is the registered owner of numerous trademark registrations for VERIZON, including in Nigeria, where the Respondent is located, inter alia Nigerian trademark registration No. 73011 VERIZON, filed on November 11, 2005; Nigerian trademark registration No. 78962 VERIZON, filed October 31, 2007; Nigerian trademark registration No. 94741 VERIZON, filed on October 31, 2007; USA trademark registration No. 2,886,813 VERIZON, filed on September 10, 1999; and USA trademark registration No. 3,085,712 VERIZON, filed on September 10, 1999 (hereinafter referred to as the “VERIZON Marks”).
The VERIZON Marks cover a broad range of goods and services, inter alia computers, and have already been found to be “well-known” and “famous” by previous UDRP panels (cf. Verizon Trademark Services LLC v. Ali Aziz, WIPO Case No. D2010-0833; Verizon Trademark Services LLC v. n/a and Ruslan Biletsky, NAF Claim No. 1383599; Verizon Trademark Services LLC v. The Helard Group, WIPO Case No. D2012-0277).
The disputed domain name was registered on April 30, 2013 and is used in connection with a website entitled “Verizon Tab” offering tablet computers.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The Complainant states that the trademark VERIZON is an inherently distinctive and commercially strong mark enjoying an extremely broad scope of protection, that the VERIZON Marks have long enjoyed unquestionable fame as a result of favorable public acceptance and recognition, that, through widespread and extensive use in connection with its products and services, the VERIZON Marks have become uniquely associated with the Complainant and its products and services, are extremely well‑known and famous in the USA and throughout the world, and that numerous administrative panels have already recognized the Complainant’s rights in the VERIZON Marks. The Complainant contends that the disputed domain name is confusingly similar to the VERIZON Marks because the Respondent has simply added the generic word “tab” after the trademark VERIZON, which does nothing to prevent the confusing similarity of the disputed domain name with the VERIZON Marks.
(2) The Respondent lacks rights and legitimate interests in the disputed domain name, as the Respondent has no connection to or affiliation with the Complainant or any of the products and services provided by the Complainant in association with the VERIZON Marks, as the Respondent has never sought or obtained any trademark registrations for “Verizon” or any variation thereof and could never do so given the Complainant’s prior and exclusive rights to this mark throughout the world, and as the Respondent has not received any license, authorization, or consent - express or implied - to use the VERIZON Marks in a domain name or in any other manner either at the time the Respondent registered and began using the disputed domain name, or at any other time.
(3) The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent’s misappropriation of the VERIZON Marks for use in the disputed domain name is no accident but rather an attempt to capitalize on the consumer recognition of the famous VERIZON Marks. Furthermore, the Complainant argues that, by selling counterfeit goods using the VERIZON Marks on a website connected to the disputed domain name, the Respondent has knowingly attempted to attract Internet users to its website for financial gain by intentionally creating a likelihood of confusion with the VERIZON Marks as to the source, sponsorship, affiliation or endorsement of its website or the counterfeit goods offered for sale on the website. The Complainant also contends that the Respondent has undoubtedly engaged in bad faith registration and use since the Respondent is passing itself off as the Complainant to promote its imposter tablet computers branded with the VERIZON Marks, and that the Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant and that the disputed domain name is so “obviously indicative” of the VERIZON Marks that Respondent’s use of the disputed domain name would inevitably lead to confusion of some sort. The Complainant finally argues that it is simply inconceivable that the Respondent was unaware of the Complainant’s rights in the VERIZON Marks, which enjoy fame and wide recognition throughout the world.
In reply to the Response, the Complainant inter alia states
- that the evidence provided with regard to its Nigerian trademark registrations are not forged and offers to provide certified copies of its Nigerian trademark registration certificates;
- that the VERIZON Marks are well known; and
- that the fact that the Respondent provides documents that a company called “Verizon Networks Limited” was formed on February 28, 2013 and applied for a Nigerian trademark registration in class 38 on February 15, 2013 does not lead to rights or legitimate interests on which the Respondent can rely as such company is not the Respondent in these proceedings.
In its Response, the Respondent states that it registered the disputed domain name on behalf of one of its clients, “Verizon Networks Limited”, blaming the Complainant to have forged the provided evidence, as all of the attached trademark certificates are “obvious but poorly done forgeries” and as it is allegedly impossible for a single company to have multiple trademark certificates for the same name with different dates and different numbers. Furthermore, the Respondent argues that domain name issues are clearly based on nationally registered trademarks and that its client has a duly registered trademark for VERIZON in Nigeria. It further states that the Complainant is doing business in the USA only and that it therefore cannot claim global trademark rights in VERIZON, that the Complainant does not, in contrast to the Respondent’s client, manufacture any tablet or any phone but only resells phones and tablets from other manufacturers, and that therefore, the Respondent’s client does not attempt to mimic the Complainant’s products.
In reply to the Complainant’s supplemental submission, the Respondent further states:
- that the Respondent is engaged into web design services and working for “Verizon Networks Limited”;
- that it registered the disputed domain name on behalf of “Verizon Networks Limited”, which is the owner of the disputed domain name, and offers to provide further evidence in this regard;
- that “Verizon Networks Limited” has and continue to do legitimate business, and that the website has been used as a tool to promote and facilitate various aspects of their business, and offers to provide evidence with regard to mail exchanges showing legitimate commercial use upon request;
- that neither “Verizon Networks Limited” nor the Respondent have registered the disputed domain name to imitate the Complainant which is evidenced by the facts that the Respondent’s website is not similar to or consistent with the Complainant’s website, and that the Complainant’s logo has not been used.
6. Discussion and Findings
The first point to be dealt with is the admissibility of the Complainant’s supplemental submission. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. The Complainant refers to the fact that the Respondent, on behalf of one of its clients, claims own rights in “VERIZON” based on a Nigerian company registration for “Verizon Networks Limited” as well as a trademark application for “VERIZON” owned by such company. The Panel assumes that such information was not available for the Complainant at the time of the filing of the Complaint. Furthermore, the Complainant was hardly able to get this information on its own as the Respondent and the company allegedly entitled “Verizon Networks Limited” are not identical. Under these circumstances, the Panel elects to accept the Complainant's supplemental submission as well as the Respondent’s reply thereto, and has relied on them in reaching this decision.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the VERIZON Marks.
In the view of the Panel, the mere addition of the word “tab” does not eliminate the similarity between the VERIZON Marks and the disputed domain name, as the word “Verizon” is the predominant part of the disputed domain name and as the additional generic word “tab”, which refers to one of the Complainant’s products, namely tablet computers, is insufficient to hinder a finding of confusing similarity (cf. Argos Limited v. CSC, WIPO Case No. D2011-0676 (<argos-computers.com> et al.); Microsoft Corporation v. Yaoxin Liu, NAF Claim No. 1312061 (<computerbing.com> et al.); Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Hyde Park Computers.net c/o Micah Wissman, NAF Claim No. 1290315 (<hpcomputer.com>)).
Furthermore, it is well established that the generic Top-Level Domain (“gTLD”) may be disregarded when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires a complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent asserts that it registered the disputed domain name on behalf of one of its clients which owns rights or legitimate interests in the disputed domain name based on its company name “Verizon Networks Limited”, the application for a Nigerian trademark VERIZON before any notice of the dispute, and a bona fide offering of goods or services by manufacturing and selling tablet computers under the trademark VERIZON.
With regard to the rights claimed by the Respondent in the company name and trademark application of “Verizon Networks Limited”, i.e. a third party, the Panel finds that the Respondent failed to supply any evidence whatsoever regarding the relationship between the owner of “Verizon Networks Limited” and itself, and thus cannot rely on any rights “Verizon Networks Limited” may have. Before submitting its Response, the Respondent could have asked for an extension of time to provide the Panel with substantiating documents but it did not do so. The Panel notes that the Respondent has offered in its reply to the Complainant’s supplemental submission to provide evidence regarding its commercial relationship with the company “Verizon Networks Limited”. However, the Panel cannot understand why such evidence was not already submitted by the Respondent. Therefore, in the circumstances, the Panel is of the opinion that the Respondent cannot rely on any rights derived from the company name or trademark of “Verizon Networks Limited” in this case as the relationship between the two entities has not been duly evidenced.
Furthermore, based on the evidence before the Panel, there is no indication that the Respondent can rely on rights or legitimate interests based on any other facts. The Complainant owns registered trademark rights in VERIZON also in Nigeria covering inter alia computers and predating the Respondent’s registration of the disputed domain name as well as the alleged rights of the Respondent’s client. Therefore, on the basis of the facts contained in the case file, the use of the disputed domain name most likely constitutes an infringement of the Complainant’s rights in its VERIZON Marks and can therefore not be considered as bona fide under the Policy.
As a result, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark 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 disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the 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 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 its website or location.
The Panel is satisfied that the Respondent must have registered the disputed domain name with full knowledge of the Complainant and in bad faith under paragraph 4(a)(iii) of the Policy. The VERIZON Marks are highly distinctive and well established. Given that the Respondent, like the Complainant, appears to be doing business in the field of tablet computers, it is almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.
With regard to bad faith use, the Complainant has merely alleged but did not provide any evidence that the products offered at the disputed domain name are in fact counterfeit goods. Therefore, the Panel cannot base its decision on these allegations (cf Spy Optic, Inc. v. James Lee, WIPO Case No. D2013-1411; Hytorc Division UNEX Corporation v. li jinglei, WIPO Case No. D2012-0645; Karen Millen Fashions Limited v. Danny Cullen, WIPO Case No. D2011-1134). However, given that the Respondent’s use is no bona fide use under the Policy, the Panel is satisfied that the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) 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 <verizontab.com> be transferred to the Complainant.
Date: April 9, 2014