WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Registration Private, Domains By Proxy, LLC / Anthony Frangiosa, Installernet, Inc.
Case No. D2016-0412
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America ("United States"), represented internally.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Anthony Frangiosa, Installernet, Inc. of North Andover, Massachusetts, United States.
2. The Domain Name and Registrar
The disputed domain name <verizonshare.com> (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 February 29, 2016. On March 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 sent an email communication to the Complainant on March 3, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended Complaint (together "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 Respondent of the Complaint, and the proceedings commenced on March 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2016.
The Center appointed Dana Haviland as the sole panelist in this matter on April 6, 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
The Complainant, an intellectual property holding company, is the owner of the mark VERIZON, including United States Registration No. 2,886,813, registered on September 21, 2004, United States Registration No. 3,085,712, registered on April 25, 2006, and United States Registration No. 2,879,802, registered on August 31, 2004, covering various classes of goods and services (the "VERIZON Mark"). The Complainant, through an affiliated licensing company, has licensed the VERIZON Mark to Verizon Communications, Inc. and its subsidiaries for use in their business of providing communications, entertainment, IT, and security products and services to residential, business, wholesale, and government wireline and wireless customers. The Complainant's rights to the VERIZON Mark predate the registration of the Domain Name.
The Respondent registered the Domain Name on May 26, 2015, using Domains by Proxy, LLC's proxy registration services.
5. Parties' Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
However, the Panel notes that consent by the Respondent to transfer the Domain Name to the Complainant can provide a basis for an order for transfer without a need for consideration of the UDRP grounds set forth in paragraph 4(a) of the Policy.
A. The Respondent's Consent to Transfer
The Complainant has submitted unchallenged evidence of written communications between the Complainant and the Respondent exchanged before the commencement of this administrative proceeding in which the Complainant demanded that the Respondent cease and desist from any use of its VERIZON Mark and immediately transfer the unauthorized Domain Name to the Complainant.
In an email response to the Complainant's cease and desist letter, the Respondent agreed to the transfer of the Domain Name to the Complainant, subject to the Complainant's agreement to provide the Respondent with a release of liability. In that reply, the Respondent stated: "As previously indicated, the domain name was registered to protect the Verizon business model and points to vzw.com. If Verizon is not interested in this domain we can abandon it with no harm done. If you would like us to take actions to transfer the domain then please forward the release of liability as you mentioned below for our review." The Complainant then sent the Respondent a written release of liability conditioned on the Respondent's agreement to transfer the Domain Name and cease use of the Complainant's VERIZON Mark, but the Respondent did not transfer the Domain Name to the Complainant. The Respondent did not respond to the Complaint in this administrative proceeding.
B. Ordering Transfer without Consideration of Elements of Paragraph 4(a) of the Policy
The Panel finds that the Respondent, by its prior communication to the Complainant and its failure to respond in this proceeding, has consented to the transfer of the Domain Name to the Complainant. For this reason, the Panel need not determine the three elements of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.13, which states, in pertinent part: "When parties to a 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."
As the Complainant has argued in its Complaint, "the Respondent has unambiguously indicated his desire and consent to transfer the Domain Name", citing Verizon Trademark Services LLC v. Domains by Proxy, LLC / Adam Rothman, WIPO Case No. D2015-1382 as authority for an order of transfer in this case. The Panel notes that numerous UDRP cases authorize an order of transfer based upon the Respondent's consent without determination of the three elements of paragraph 4(a) of the Policy. See, e.g., Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Pierre Balmain S.A. v. Domains by Proxy, LLC / Daniel Phillips, WIPO Case No. D2015-0189; OLX B.V. v. Iqbal / Milano Enterprises, WIPO Case No. DQA2015-0002; Lloyds Bank Plc v. A.A., WIPO Case No. D2014-2124.
In the Williams-Sonoma case, supra, in ordering immediate transfer of the domain name based on the consent of the respondent, the panelist relied on paragraph 10 of the Rules, noting that "[paragraph] 10(a) gives the panel the discretion to conduct the proceeding as it deems appropriate under the Policy and the Rules," and that "[paragraph] 10(c) requires the panel to 'ensure that the proceeding takes place with due expedition.'"
Having found that the Respondent has consented to the transfer of the Domain Name, the Panel, in its discretion under paragraph 10 of the Rules, and in accordance with the authorities cited above, finds that an order of transfer without reaching consideration of the paragraph 4(a) elements is appropriate in this case.
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 <verizonshare.com> be transferred to the Complainant.
Date: April 20, 2016