WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Domains by Proxy, LLC / Adam Rothman
Case No. D2015-1382
1. The Parties
Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America, represented by Patrick M. Flaherty, United States.
Respondents are Domains by Proxy, LLC and Adam Rothman of Roslyn, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <verizon.porn> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2015. On August 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent Adam Rothman 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 August 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2015. On August 17, 2015, Respondent Adam Rothman sent an email to the Center stating his willingness to transfer the disputed domain name to Complainant. Taking into account Respondent's email on August 17, 2015 the Center sent an email to the Parties inviting Complainant to suspend the proceeding to implement a settlement agreement between the Parties. Respondent sent further emails regarding the transfer of the disputed domain name to Complainant on September 4, 2015, September 8, 2015, September 11, 2015, September 14, 2015 and September 16, 2015.
As no suspension request was submitted by Complainant the Center notified the Parties that the proceeding will continue.
The Center appointed John C. McElwaine as the sole panelist in this matter on September 30, 2015. 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.
As an initial matter, as set forth herein, there have been multiple email communications by Respondent Rothman. Under the Policy and the Rules, parties have no right to unilaterally submit additional arguments or evidence beyond the Complaint and Response. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 12 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion (see The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447). Given the fact that Respondent is an individual, and is unrepresented in this matter, the Panel finds exceptional circumstances and will consider his emails which are summarized below in Section 5.
4. Factual Background
Complainant in this administrative proceeding is Verizon Trademark Services LLC, a limited liability company organized and existing under the laws of Delaware. Complainant is an intellectual property holding company and the owner of the mark VERIZON, including United States Registration No. 2,886,813 for the mark VERIZON in standard characters covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41 and 42, United States Registration No. 3,085,712 for the mark VERIZON in standard characters covering goods and services in International Classes 9, 38, and 41, and United States Registration No. 2,879,802 for the mark VERIZON and design covering goods and services in International Classes 9,16,35,36,37,38,41, and 42 (the "VERIZON Marks"). Complainant has granted its affiliate, Verizon Licensing Company, an exclusive license to sublicense the use of the VERIZON Marks to Complainant's affiliates and to third parties. Verizon Licensing Company has granted such licenses to Verizon Communications Inc. and its subsidiaries. Collectively, Complainant, Verizon Licensing Company and Verizon Communications Inc. and its subsidiaries are referred to herein as Verizon.
Respondents reside in the United States. On June 4, 2015, Respondent Rothman registered the Domain Name using Respondent Domains by Proxy, LLC's proxy registration services. The Domain Name displays a website announcing "website coming soon! Please check back soon to see if the site is available."
5. Parties' Contentions
Complainant asserts that Verizon is one of the world's leading providers of communications, entertainment, information technology and security products and services. In 2014, Verizon generated annual consolidated operating revenues of more than USD 127 billion. Verizon claims to own and operate one of the largest global IP networks serving more than 2,700 cities in 159 countries providing Internet access, data, voice and security solutions to its customers.
Complainant states that it owns multiple United States trademark registrations for marks containing the word VERIZON, including the VERIZON Marks. Verizon markets many of its products and services via the domain names <verizon.com>, <verizonwireless.com> and <verizonenterprise.com>.
Since 2000, Complainant claims that Verizon has spent billions of dollars to advertise and promote VERIZON-branded products and services in the United States and throughout the world. The word "Verizon" is a fanciful or coined mark, and thus, Complainant claims that the VERIZON trademark is inherently distinct and a strong mark. Further, Complainant asserts that the VERIZON trademark is famous.
With respect to the first element of the Policy, Complainant asserts that the Domain Name is confusingly similar to the VERIZON Marks because it incorporates the term "Verizon" in its entirety. Complainant further argues that the addition of the new generic top-level domain ".porn" does not serve to sufficiently differentiate the Domain Name from Complainant's VERIZON Marks.
With respect to the second element of the Policy, Complainant asserts that Respondents have no rights or legitimate interests in the Domain Name because Respondents are not operating a functioning website and instead the Domain Name displays only a message that a website is coming soon. In addition, Complainant states that Respondents have no connection or affiliation with Verizon or any of the services or products provided by Verizon in connection with the VERIZON Marks. It is claimed that Respondents are not authorized or licensed to use the VERIZON Marks. Moreover, Complainant avers that Respondents have not sought a trademark registration for the term Verizon and that further Respondents would not be permitted to do so due to Complainant's prior and exclusive rights to this mark throughout the world. Complainant alleges that Respondents' activities do no constitute fair use of the Domain Name. Instead, Complainant asserts that Respondents selected and registered the Domain Name to capitalize on consumer recognition of the famous VERIZON Marks.
With respect to the third element of the Policy, Complainant alleges that Respondent Rothman demanded USD 200 to cover his purported domain name registration costs or Respondent Rothman would have his attorneys handle the matter. Complainant contends that this violates paragraph 4(b)(i) of the Policy.
In addition, Complainant asserts that Respondents have intentionally created a likelihood of confusion as to Verizon's affiliation with the Domain Name and that registration and use of the Domain Name also creates initial interest confusion. Complainant asserts that it is inconceivable that Respondents did not know of Complainant's rights in the VERIZON Marks. Such registration and use of the Domain Name, which includes the famous VERIZON Marks without providing rights or a legitimate interest in the Domain Name is asserted to represent bad faith registration and use in violation of the Policy. Complainant also points out that the Domain Name includes the entire VERIZON mark, which is alleged to also support a finding of bad faith.
Complainant asserts that other UDRP panels have found "pornosquatting", where registrants register and use a domain name in connection with pornography, supports a finding that the domain name registrants have registered the domain name in bad faith.
Lastly, Complainant contends that the Domain Name is disruptive to Verizon's business because Internet users searching for Verizon may be diverted away from Verizon's main websites. It is alleged that such actions support a finding of bad faith.
Respondent did not submit a formal response to the Complaint, but did provide several emails to the Center indicating a willingness to transfer the Domain Name to Complainant. The following present the substance of the Respondent's communications.
On August 17, 2015, in response to being provided a service copy of the Complaint in this matter, Respondent Rothman sent a reply email to the Center stating:
Sorry about the delay but this was in my email spam folder as it came from an unknown address in another country. Please tell me what needs to be done in order to transfer the name back to Verizon and it will be done asap
On September 8, 2015, in response to a follow up email from the Center concerning possible settlement, Respondent Rothman sent a reply email to the Center stating:
I don't want the verizon.porn webname and release it back to verizon. I have been writing this in emails to all of you for over 2 months now and have no idea why it is so difficult for this to be transferred. Please transfer the name back to Verizon.
On September 14, 2015, in response to an email from the Center stating that this Proceeding would continue unless a request for suspension were filed, Respondent Rothman sent a reply email to the Center stating:
That makes no sense at all as I have tried to give up the site they claim is theres from day 1. I have bot heard back from them therefore, I will put this folder to the side until I get further instructions from you
On September 16, 2015, in response to an email from the Center stating that answer to the Complaint was due on September 8, 2015, Respondent Rothman sent a reply email stating:
I wrote an email back in August 14th in regard to this as well as September 11th stating BOTH times to give the domain to verizon as well as asking to know how to do that. You can keep stating it going to panel appointment which I have no idea what that means, but to me seems like a complete and utter waste of time considering for months now, all I have written back to all was to give Verizon this domain.
6. Discussion and Findings
In accordance with paragraph 4 of the UDRP, Complainant must prove its assertions with actual evidence demonstrating:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
However, in this matter, Respondent Rothman has clearly indicated his willingness to transfer the Domain Name to Verizon. Respondent Domains by Proxy, LLC is a proxy domain name registration service and the agent of Respondent Rothman. Since Respondent Domains by Proxy is the agent of Respondent Rothman and because Respondent Rothman is the current listed Registrant of the Domain Name, the Panel finds that the statement of Respondent Rothman is controlling.
As discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.13, "when parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone." Here, Respondent has unambiguously indicated his desire and consent to transfer the Domain Name.
In addition, the Panel finds that there are no extenuating facts here that would require a substantive determination of this matter on its merits. There is no doubt that Complainant owns valid and existing trademark rights in the well-known VERIZON Marks and that the Domain Name entirely consists of the term "Verizon" with the addition of the generic Top-Level Domain, ".porn". Similarly, in his emails, Respondent Rothman never claims to be authorized to use the term Verizon or that he has any legitimate interest in such name.
Accordingly, on the basis of Respondents' unambiguous consent to transfer the Domain Name, the Panel will order such a transfer to Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
John C. McElwaine
Date: October 14, 2015