WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Mohd Daoud
Case No. D2016-1380
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 Mohd Daoud of Houston, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <verizonauto.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 July 6, 2016. On July 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 3, 2016.
The Center appointed Mark Partridge as the sole panelist in this matter on August 15, 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.
On September 12, 2016, the Panel issued Procedural Order No. 1 seeking, among other things, evidence supporting Respondent's purported operation of its business. On September 21, 2016, Complainant submitted further arguments in response to Procedural Order No. 1. Respondent did not make any submission in relation to the Procedural Order.
4. Factual Background
Complainant is a telecommunications company that provides a wide range of services under the VERIZON trademark. The mark has been used since 2000. VERIZON is a coined and arbitrary mark that has become widely known. The mark is the subject of many trademark registrations and applications including United States trademark VERIZON, registration number 2,886,813, registered on September 21, 2004. Among the services offered by Complainant are communications services related to automobiles, including navigation, security, diagnostic and maintenance information.
The disputed domain name <verizonauto.com> was registered on November 2, 2015. The disputed domain name leads to a website offering automobile maintenance and repair services.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to its VERIZON trademark. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. In this regard, Complainant states that there is no relationship between Complainant and Respondent, and that no authorization has been granted to Respondent to register the disputed domain name. Complainant asserts that Respondent is making commercial use of the disputed domain name in connection with an offering of services. Complainant does not deny that Respondent is offering services. Instead, Complainant argues that Respondent's use of the disputed domain name is not bona fide because it is targeting Complainant's well-known mark. Thus, the use of name is not bona fide even if Respondent is actually providing the goods and services in question, according to Complainant. Complainant states that Respondent registered and is using the disputed domain name in bad faith. Respondent has displayed opportunistic bad faith in registering the disputed domain name in order to take advantage of the goodwill associated with Complainant's trademark. Complainant further states that Respondent is using the disputed domain name in bad faith by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
In response to Procedural Order No. 1, Complainant further contended that Respondent was not actually providing the services in question because (i) Respondent is not located at the advertised business address and does not respond to business inquiries at its provided business phone or email address, and (ii) Respondent's website is a sham, utilizing a template with inoperable hyperlinks and "dummy text" that is replicated on a number of other websites derived from the same template.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant is required to prove each of the following three elements:
(i) The disputed domain name is 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used by Respondent in bad faith.
Further, paragraph 14(b) of the Rules states that:
"If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
This Panel finds that Respondent has been afforded a fair opportunity to present its case, so the Panel will proceed to a decision on the Complaint. Respondent's default does not automatically result in a decision in favor of Complainant. Complainant is still required to prove each of the three elements required under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
Complainant has rights in the VERIZON mark, as demonstrated by numerous trademark registrations, including U.S. registration number 2,886,813, which was issued on September 21, 2004. A trademark registration constitutes prima facie evidence of the validity of the mark. See, e.g., National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Complainant's VERIZON mark is used worldwide and is especially well known in the United States — prior UDRP panels have noted the "extensive reputation" of Complainant's mark. See Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd, WIPO Case No. D2014-1994.
Where a domain name includes an identical match to a complainant's mark, a complainant may be deemed to have satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Further, the addition of the descriptive, non-distinctive term "auto" does not reduce the confusing similarity of the disputed domain name with Complainant's trademark. See, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's VERIZON trademark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights or legitimate interests in the domain name. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:
"(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that it has not authorized Respondent to use the VERIZON mark, and that Respondent is not commonly known the name "Verizon Auto". Complainant asserts that Respondent has not made any legitimate commercial or noncommercial use of the disputed domain name.
Respondent has not presented any evidence to rebut Complainant's assertions.
Based on the record, this Panel finds that Complainant has satisfied its burden of presenting a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Upon superficial review, the disputed domain name appears to offer automobile maintenance and repair services. However, a more careful investigation reveals that Respondent does not provide a bona fide offering of services. As Complainant explains in Complainant's Response to Administrative Panel Procedural Order No. 1, Respondent's website is a sham comprised of placeholder text, inoperable links, and false contact information.
Consequently, the Panel finds the record is sufficient to show that it is more likely than not that Respondent does not have any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant argues that Respondent has created a sham website at the disputed domain name to mask the reality that Respondent registered and is using the disputed domain name in a bad faith attempt to attract Internet users by adopting Complainant's well-known VERIZON mark.
Complainant provides additional support for this claim in Complainant's Response to Administrative Panel Procedural Order No. 1. First, Respondent is not located at the advertised business address and does not respond to business inquiries at its provided business phone or email address. Second, the evidence supports a finding that the website is a sham because it is a template that does not include any evidence of an actual business operation, the hyperlinks provided are inoperable or lead to blank pages, and the text on the website is "dummy text" that is replicated on a number of other websites derived from the same template.
In total, the record is sufficient to support the conclusion that it is more likely than not that Respondent registered and is using the disputed domain name in bad faith. Respondent's website is a facade, provided to create the illusion that Respondent is operating a legitimate automobile maintenance and repair business. In reality, however, the facts support a finding that Respondent intentionally adopted Complainant's famous VERIZON mark to attract Internet users to the website by using Complainant's mark. This likely has the effect of disrupting Complainant's business, and cannot in the Panel's view, be considered a good faith use of the disputed domain name within the meaning of the Policy.
Respondent has failed to defend its conduct. On the whole, this Panel finds that Complainant has sufficiently shown Respondent's bad faith registration and use of the disputed domain name, and has satisfied 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 <verizonauto.com> be transferred to Complainant.
Date: October 18, 2016