WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Jimmy Seavey / Robert Tanguay
Case No. D2015-1832
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“United States”), internally represented.
The Respondents are Jimmy Seavey of Concord, New Hampshire, United States, and Robert Tanguay of Manchester, New Hampshire, United States.
2. The Domain Name and Registrar
The disputed domain name <fiosfinder.com> 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 October 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Jimmy Seavey is listed as the registrant and providing the Respondent’s 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 the listed Respondent of the Complaint, and the proceedings commenced on October 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2015. The Response was filed with the Center on November 14, 2015. The Response was resubmitted on November 16, 2015, followed by an email communication on November 18, 2015, claiming that the original Response was timely submitted.
The Complainant filed a Supplemental Filing with the Center on November 19, 2015. The Respondents filed a Supplemental Filing with the Center on November 19, 2015. The Complainant filed a second Supplemental Filing with the Center on November 21, 2015. The Respondents filed a second Supplemental Filing on November 24, 2015 and sent several email communications after this date.
The Center appointed Angela Fox as the sole panelist in this matter on November 25, 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.
4. Factual Background
The Complainant is a well-known provider of telecommunications services, based in the United States. Among the services it provides is a suite of high-speed Internet, television and digital voice service marketed under the trademark FIOS. The Complainant has been offering its FIOS-branded services in the United States since 2004.
The Complainant owns registered trademark rights in FIOS. Annexed to the Complaint were details of United States federal trademark registration no. 3,001,081 for the mark FIOS, first used August 30, 2004,
filed February 6, 2004 and issued September 27, 2005, and registration no. 3,147,510 for the mark VERIZON FIOS, first used August 30, 2004, filed June 3, 2004 and issued September 26, 2006, both covering telecommunications and related services in International Classes 37 and 38.
Since 2004 the Complainant has offered and promoted its FIOS-branded services inter alia through a website at “www.verizonfios.com”, screenshots from which were annexed to the Complaint. The website at “www.verizonfios.com” allows users to check the availability of the Complainant’s FIOS services in different geographical areas of the United States.
The disputed domain name was originally registered on February 13, 2009 in the name of JSRT, Inc. of Reseda, California, with an email contact address of “rtanguay@[ ]”. The disputed domain name was in use to host a website offering users the ability to search for the availability of the Complainant’s FIOS services in different geographical areas of the United States. The website did not offer the Complainant’s services for purchase, but did allow purchase of similar services from competing entities.
On January 20, 2012 the Complainant wrote to JSRT, Inc. demanding transfer of the disputed domain name. Correspondence between the Complainant and Robert Tanguay ensued, in which the latter refused to transfer the disputed domain name, and the Complainant reserved its right to bring legal action to retrieve it.
Although this does not appear to have been disclosed in the 2012 correspondence, the Response states that the disputed domain name was transferred in 2010 to the current proprietor, James Seavey, due to financial problems that Robert Tanguay was experiencing. Annexed to the Response filed by Robert Tanguay was a copy of an Initial Authorization for Registrar Transfer dated February 14, 2010 with a covering email to James Seavey stating that, “By accepting this transfer, you are agreeing that FiosFinder.com is still part of the JSRTinc network of websites, and that Robert Tanguay may keep exclusive rights to use/own domain for $10.00 USD.”
There were no documents confirming the actual transfer of ownership of the disputed domain name to James Seavey at that time. In any event, however, the disputed domain name was transferred to James Seavey at some point and the WhoIs details annexed to the Complaint show that on its update on February 14, 2015 the disputed domain name stood in the name of Jimmy Seavey and the Registrar confirmed that the disputed domain name was registered to Jimmy Seavey since at least May 13, 2015.
Annexed to the Complaint were screenshots showing that the disputed domain name remains in use for a website (the “Website”) allowing users to check the geographic availability of the Complainant’s FIOS services and promoting or providing similar competing services for purchase from third parties. There is a disclaimer in small type at the bottom of the home page reading, “All trademarked content property of respective owners. FiosFinder.com is an information source on Fios TV, Internet, Phone availability and pricing. We are not a Verizon Retailer.”
If the “order service” option under the “Request” tab on the Website is clicked, the message displayed on the linked page states, “Order Verizon Fios TV, Internet and Phone service from Verizon or from one of our other sponsors below” and then displays sponsored ads and logos for the Complainant’s competitors offering phone, TV and Internet services.
5. Preliminary Issues
Admissibility of Response and Respondent Identity
The listed registrant of the disputed domain name on the WhoIs record, James (“Jimmy”) Seavey, wrote to the Center on November 7, 2015 asking for a short extension to file a response under paragraph 5(b) of the Rules.
On the same day James Seavey separately wrote to the Center stating, “Please forward Re: Case No. D2015-1832 <fiosfinder.com> to roberttanguay84@[ ], an interested party of Respondent.”
The Response dated November 14, 2015 but received on November 15, 2015 was filed by Robert Tanguay, rather than by the proprietor named in the WhoIs details. The Response identified both Seavey and Tanguay as Respondents. No authorized representative was named. The Response was re-submitted under cover of an email from James Seavey on Monday, November 16, 2015. On Wednesday, November 18, 2015 Robert Tanguay wrote to the Center stating, “We appologize [sic] for delay - please note response was sent Nov 14, 2015, 9:38 PM EST, the same time zone as Complaintant [sic]. With my Grandmother passing and never responding to WIPO case prior, Response took longer than expected. If I need to file any extensions, please let me know.” The Center confirmed that the Response had been timely filed.
In an unsolicited supplemental submission filed on November 19, 2015, the Complainant contended that no response had been filed by the Respondents or on their behalf by an authorized representative, and that consequently the Response should not be taken into account.
In an unsolicited supplemental submission by James Seavey on November 19, 2015, the latter stated, “I, James Seavey have added Robert Tanguay as respondent on 11/7/15 as shown in the forwarded email which also has this response. Additionally, response was submitted by Robert Tanguay, and James Seavey on 11/15/15 and 11/16/15 separately to be sure the Complaintant [sic] could have no argument as to whether this was done properly. Response was accepted by WIPO on and such acceptance was provided to all parties, including Robert Tanguay. Additionally, in the Model WIPO Response: https://www.wipo.int/export/sites/www/amc/en/docs/response-lock-eudrp.doc has a section to enter additional Respondents, which Robert Tanguay's contact info was put in. This satisfies the need for respondent to file Response on it’s [sic] own.”
In yet a further unsolicited submission from the Complainant dated November 21, 2015, the Complainant maintained its view that the Response filed by Robert Tanguay was not a response from the Respondent and contended that Seavey’s email of November 7, 2015 asking the Center to forward the case to Robert Tanguay as “an interested party of Respondent” was not a sufficient step to add Robert Tanguay as a co-respondent.
The Panel’s Conclusion on Admissibility of the Response
As noted by the Complainant, paragraph 1 of the Rules defines a “Respondent” as “the holder of a domain name registration against which a complaint is initiated.”
Formally, the holder of the disputed domain name registration is Jimmy Seavey. However, there is some evidence that Robert Tanguay had an interest in the disputed domain name, and the conduct of the Parties in each corresponding with the Center, and in Seavey’s support for Tanguay’s submission, strongly suggests that the primary economic interest in the disputed domain name was and remains with Tanguay.
The Complainant referred to the decision of the panel in Cath Kidston Limited v. Value-Domain Com, WIPO Case No. D2010-0203 to support its proposition that a response filed in the name of an entity other than the named holder of the disputed domain name should not be admitted. However, in that case, the entity filing the response confirmed that it was not related to the domain name owner and had no business affiliation or other economic relation with the holder. In contrast, in this case, there appears to be a relationship between Seavey and Tanguay (albeit one whose details were not fully disclosed), and an interest in the disputed domain name and linked website on the part of Tanguay. The correspondence with the Center also shows that Seavey consented to the filing of a response by Tanguay and to the latter’s participation as a respondent, and indeed that Seavey was relying on Tanguay for a response to the Complaint.
While paragraph 1 of the Rules provides that a “Respondent” is the holder of a domain name registration against which a complaint is initiated, there is no requirement in the Rules to interpret “holder” as encompassing only the domain name owner on the WhoIs record. Indeed, domain names are frequently held by one entity on behalf of another, such as where privacy services are used, and in such cases panels have typically recognized responses filed by the actual owners. In the present case, the evidence suggests that the recorded owner of the disputed domain name registration, Jimmy Seavey, is in fact holding it on behalf of another person, namely Robert Tanguay. The conduct of both Seavey and Tanguay in this administrative proceeding supports this.
In the circumstances, therefore, the Panel accepts the Response as having been properly filed on behalf of both Seavey as the listed registrant of the disputed domain name, and by Tanguay, on whose behalf the evidence suggests the disputed domain name is held.
As noted above, the Parties in this case filed several rounds of unsolicited submissions.
In addition to the ones noted above, on November 24, 2015 Robert Tanguay filed a further unsolicited submission contending that the Respondent has been or is commonly known by the disputed domain name, relying on the website use since 2009.
The Panel has the power to accept unsolicited submissions, subject to the duty to ensure that the parties are treated equally. In this case the Panel found the submissions of November 19 and 21, 2015 helpful in addressing the issue of Robert Tanguay’s standing, which arose out of the Response and therefore could not have been addressed in the Complaint. Similarly, these supplemental submissions were helpful on the question of whether there was a prior business relationship between the Complainant and the Respondents, which arose from the Response and could not therefore have been addressed in the Complaint. Each party had an opportunity to comment on these issues, and the Panel will take these supplemental submissions into account (as indeed it has in relation to the admissibility of the Response, above).
However, that is not the position with regard to Robert Tanguay’s unsolicited submission of November 24, 2015. That submission raised an additional defence under paragraph 4(a)(ii) of the Policy, i.e., that that the Respondents had a right or legitimate interest because they had become commonly known by the disputed domain name. However, that point could and should have been raised in the Response, and there is no explanation as to why it was only raised much later. The Panel declines to take this further unsolicited submission into account.
For the record, however, had the Panel been prepared to admit this further submission, it would have made no difference to the overall finding in the case. Mere evidence that the disputed domain name was in use for a website is not sufficient on its own to demonstrate that the Respondents, or either of them, had become commonly known by the disputed domain name.
6. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to its FIOS trademark.
It contends moreover that the Respondents have no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondents to use the disputed domain name, and although the Complainant is not in a position to verify whether or not it ever had an agency relationship with the Respondents, it contends that even if it had, it would not have permitted the Respondents to register the disputed domain name. The Complainant notes the disclaimer on the Respondents’ website page, but considers that most Internet users are unlikely to notice it due to its small size and marginal position at the bottom of the page. The Complainant adds that the fact that its FIOS services cannot be purchased on the Respondents’ site, and that third party competing services are offered, together contribute to a likelihood that Internet users will be misled and deceived, and that sales will be diverted away from the Complainant.
The Complainant further submits that the Respondents registered and have used the disputed domain name in bad faith, because the disputed domain name is inherently confusingly similar to the FIOS trademark and is in use to offer services of the Complainant’s competitors.
The Respondents deny that the disputed domain name is confusingly similar to the FIOS trademark, arguing that the word “finder” is sufficient to distinguish the disputed domain name and the FIOS trademark.
The Respondents acknowledge that the disputed domain name has been used for a website offering open advertising, but states that the website’s advertising facilities have always been available to the Complainant as well “at fair market value”, and that the Complainant was therefore free to offer its own services via the Respondents’ website, although it chose not to do so. The Respondents state that the disputed domain name was registered by Robert Tanguay and has been developed and used entirely in good faith, in order to “build a fiber optic availability informational site that fit within his suite of TV, Internet, Phone service businesses and gain recognition and opportunity from Verizon and contact from management to work on future projects.”
The Respondents add that in the period 2008-2009, it (which of the Respondents is meant by this is not clear, but contextually it seems that Tanguay is intended) was “an agent for Verizon Fios, before they started cancelling the affiliate programs, there was no official termination. Respondent may be able to dig up signed contract, however, is not legally required to keep business documents longer than 7 years.” The Respondents deny that the disputed domain name was registered and has been used in bad faith.
The Respondents also argue that the Complainant first raised an objection to the use of the disputed domain name in 2012, and that its delay in taking action has allowed the Respondents to invest further in the development of the linked website, such that allowing the Complaint would unfairly deprive the Respondents of what they regard as their property and the benefit of their investment.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it has registered trademark rights in FIOS. The only distinctive element of the disputed domain name is identical to FIOS. The word “finder” is purely descriptive of an aspect of website functionality, merely denoting that the linked website can be used to help “find” where FIOS services are offered.
Consequently, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has been using the disputed domain name to link to a website offering the ability to find out where the Complainant’s FIOS services are available. However, it does not offer the Complainant’s services for sale; indeed, it promotes or provides the opportunity to buy competing services from competitors of the Complainant.
Under paragraph 4(c)(i) of the Policy, a respondent may have a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services.
In this case, however, the Respondents’ activities do not amount to a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy. The ability of the disputed domain name to attract Internet users is based on the trademark significance of the element “fios”, which is identical to the Complainant’s FIOS trademark. The Respondents’ use of the Complainant’s trademark to attract Internet users to a website offering competing third-party services for purchase is a form of bait-and-switch selling, which is calculated to mislead Internet users. Such activities do not amount to a bona fide offering of goods or services capable of conferring a right or legitimate interest (see similarly Robert Bosch GmbH v Asia Ventures, Inc., WIPO Case No. D2005-0946 and LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156).
The Panel agrees with the Complainant that the presence of a disclaimer at the bottom of the home page of the Respondents’ website is not sufficient to avoid the confusion of Internet users, who are unlikely to notice it due to its small size and marginal positioning. Moreover, even where visitors do notice the disclaimer, they have already been lured into a website promoting or providing competing services (and indeed only competing services), which is inherently damaging to the Complainant.
While the Panel notes the Respondents’ submission on the Complainant’s delay in bringing this Complaint, the Panel does not agree that any such delay has deprived the Complainant of its right to bring this Complaint. The correspondence annexed to the Complaint and the Response shows that the Respondents should have been in no doubt that the Complainant did not intend to allow the matter to rest. If the Respondents incurred additional costs in developing and promoting the website linked to the disputed domain name after that date, then they will have done so knowing of the risk that the Complainant would bring a complaint.
The Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The existence of a relationship between the Complainant and the Respondents, or one of them, in the period leading up to the registration of the disputed domain name may have been relevant to whether the disputed domain name was registered in bad faith. However, the Respondents were not able to prove the existence of such a relationship, and the Complainant contends that even if there had been a relationship, it would not have extended to permit the Respondents to register a domain name incorporating the Complainant’s trademark.
It is clear from the Response that Robert Tanguay had the Complainant’s FIOS trademark in mind when he arranged for the registration of the disputed domain name in 2009. In the Response, indeed, he states that he registered it in order to “build a fiber optic availability informational site that fit within his suite of TV, Internet, Phone service businesses and gain recognition and opportunity from Verizon and contact from management to work on future projects.” It is evident from this that Tanguay hoped that his registration would attract Verizon’s attention and result in commercial gain to Tanguay. In the Panel’s view, registration of a domain name that is confusingly similar to a complainant’s trademark, with a view to leveraging commercial gain from the complainant arising from that confusing similarity, amounts to registration in bad faith.
The fact that the website to which the disputed domain name resolves promotes or provides competing services of third parties, and therefore creates a risk of diversion of sales from the Complainant to its competitors, is in the Panel’s view evidence of use in bad faith.
The Respondents’ assertion that their website was always available to the Complainant to advertise its services “at fair market value” does not avoid the conclusion that there has been registration and use in bad faith. While the Respondents may have considered this to be a legitimate business model, in practice their activities amount to forcing the Complainant to choose between tolerating the risk of diverted sales arising from the use of a domain name that is confusingly similar to the Complainant’s trademark in order to promote competitors of the Complainant, or doing business with the Respondents in order to minimize that risk.
The Panel finds that the Respondents registered and have used the disputed domain name in bad faith.
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 <fiosfinder.com> be transferred to the Complainant.
Date: January 6, 2016