WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. John Smith
Case No. D2017-0110
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America ("United States"), internally represented.
The Respondent is John Smith of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Names and the Registrar
The disputed domain names <fiosplus.com> and <verazon.com> are 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 January 20, 2017. On January 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2017, 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 15, 2017.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on February 28, 2017. 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 an intellectual property holding company, part of the Verizon Communications group. Since 2000, Verizon Communications has operated as a broadband telecommunications and wireless communications service provider.
The Complainant is the registered owner of a number of FIOS trade marks in the United States: Registration No. 3,001,081 for the mark FIOS in standard character form, first used August 30, 2004, filed February 6, 2004, and registered on September 27, 2005, covering services in International Classes 37 and 38, including telecommunications and Internet access services; and Registration No. 3,147,510 for the mark VERIZON FIOS in standard character form, first used August 30, 2004, filed June 3, 2004, and registered on September 26, 2006, covering services in International Classes 37 and 38, including telecommunications and Internet access services.
The Complainant has also registered VERIZON trademarks in the United States, including: Registration No. 2,886,813 for the mark VERIZON in standard character form, filed September 10, 1999, first used April 4, 2000, and registered on September 21, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42, including telecommunications products and services; and Registration No. 2,879,802 for the mark VERIZON and design, filed March 3, 2000, first used April 4, 2000, and registered on August 31, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42, including telecommunications products and services.
The Complainant also owns trademark registrations for its VERIZON Marks in the United Kingdom, including: Registration No. 2363110 for the mark VERIZON in standard character form, filed May 12, 2004, and registered on October 7, 2005, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42, including telecommunications products and services; and Registration No. 2435887 for the mark VERIZON in standard character form, filed October 18, 2006, and registered on December 19, 2008, covering goods and services in International Classes 9, 16, 35, 36, 38, 42, and 45, including telecommunications products and services.
The Complainant operates websites located at "www.verizonfios.com" and at "www.verizon.com/home/fios".
The disputed domain name <fiosplus.com> was registered on February 17, 2008. The disputed domain name <verazon.com> was registered on August 4, 2011. The disputed domain names redirect Internet users to the website "www.unlimited-cell-plans.com", a parking page displaying sponsored links to goods and services in competition with those of the Complainant
5. Parties' Contentions
Verizon Trademark Services LLC is the Complainant in this matter. The Complainant is the registered owner of both the VERIZON and FIOS trademarks referred to above (see section 4). The Complainant has granted its affiliate, Verizon Licensing Company ("VLC") an exclusive license to sublicense the use of the FIOS and VERIZON Marks to affiliates and to third parties. VLC has granted such licenses to Verizon Communications Inc and its subsidiaries. In the Complaint, Verizon Trademark Services LLC, Verizon Licensing Company and the Verizon Companies are collectively referred to as "Verizon".
The Complainant further asserts that Verizon is one of the world's leading providers of communications, entertainment, IT and security products, and services to residential, business, and government, wireline and wireless customers. Verizon has offered these products and services under the trademark and trade name VERIZON since 2000 in the United States and throughout the world, including the United Kingdom by its local companies, including "Verizon Limited" and "Verizon International Limited".
The Complainant asserts that it has spent many billions of United State Dollars since 2000 to advertise and promote VERIZON-branded products and services throughout the world, including the United Kingdom, where the Respondent is apparently based.
The Complainant asserts that it has common law rights in the VERIZON and FIOS marks because of substantial and continuous use and promotion. Verizon's proprietary rights in its relevant marks are said to predate the Respondent's registration of the disputed domain names.
The VERIZON trademark is said to be an inherently distinctive and commercially strong mark entitled to an extremely broad scope of protection. Further according to the Complainant, the VERIZON trademark enjoys unquestionable fame as a result of public acceptance and recognition.
According to the Complainant, previous UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to complainant's mark. The addition of the term "plus" to the disputed domain name <fiosplus.com> fails to eliminate confusion, the Complainant asserts, and in fact gives the impression that new and enhanced versions of the Complainant's FIOS-branded services are available through the attached website.
The Complainant contends that the Respondent's adoption of the <verazon.com> disputed domain name amounts to deliberate typosquatting. Similarities between the disputed domain name and the Complainant's mark are deliberate. Further the Complainant asserts that the fame of Complainant's VERIZON mark renders confusion particularly likely in this case.
The Complainant asserts that it has not authorized the Respondent to register or use the disputed domain names. There is no connection between the Complainant and the Respondent and therefore it can be inferred that the Respondent is not commonly known by either or both of the disputed domain names.
The Complainant asserts that the redirection of the disputed domain names to "www.unlimited−cell−plans.com", a landing page that lists sponsored links to goods and services offered for sale by Verizon, but also to websites of third parties, including competitors of the Complainant, constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.
According to the Complainant, Respondent seeks to profit from Internet traffic generated by the fact that some computer users will misspell the VERIZON mark. Those users will be diverted to the Respondent's website at "www.unlimited-cell-plans.com" which features pay-per-click links to advertisements. Typosquatting has often been recognized as evidence of bad faith registration per se, according to the Complainant.
The Complainant adds that in its contention it is well settled that the registration and use by an unrelated party, of a domain name that is confusingly similar to a well-known mark is indicative of opportunistic bad faith.
That the Respondent chose to register these particular disputed domain names at issue, indicates, according to the Complainant, that Respondent knew that the Complainant was using the VERIZON and FIOS marks at the time of registration. It also shows that the Respondent both registered and used the disputed domain names with the opportunistic intent to profit unfairly from the traffic generated by confused Internet users seeking out the Complainant's websites.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Neither of the disputed domain names is identical to the Complainant's registered trademarks. However, the disputed domain name <verazon.com> is a typical example of typosquatting. The Complainant's VERIZON trademark has been altered by one letter and otherwise incorporated in its entirety in the disputed domain name. The change makes very little visual difference and aurally the two versions are practically indistinguishable. The VERIZON trademark is clearly recognizable within the disputed domain name.
The disputed domain name <fiosplus.com> is also not identical to the Complainant's FIOS trademark. However, it incorporates that mark in its entirety and as the first and most prominent part of the disputed domain name. The addition of the dictionary term "plus" does nothing to distinguish the disputed domain name from the Complainant's FIOS trademark. In fact it has a tendency to reinforce the impression that a genuine connection exists between any website to which the disputed domain name might resolve, and the Complainant. The inherent suggestion is that an additional or new service of the Complainant is made available through that website, and that it is therefore a genuine secondary site operated by the Complainant itself.
Therefore the Panel holds that the two disputed domain names are confusingly similar to the Complainant's relevant trademarks.
B. Rights or Legitimate Interests
Both disputed domain names link to the website "www.unlimited-cell-plans.com", where sponsored links are made available, including to websites that offer goods or services that compete with those of the Complainant. Registering domain names that incorporate another party's distinctive marks in their entirety with a view to steering Internet users to websites via sponsored links, is not an activity likely to result in the acquisition of rights or recognition of legitimate interests. This is all the more the case where the marks concerned are well established and widely recognized, and are distinctive in the eyes of consumers, as is the case here. The Respondent is seeking to obtain financial gain from relying on consumer deception (in relation to the disputed domain name <fiosplus.com>) or confusion (in the form of misspelling in the disputed domain name <verazon.com>). This is not a bona fide offering of goods and services and does not give rise to rights or legitimate interests.
Noting that none of the other circumstances set out in paragraph 4(c) of the Policy appear to apply, and in the absence of any response to the Complaint, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
It is clear from all the circumstances, that the Respondent has adopted a deliberate strategy of including indistinguishable versions of the Complainant's distinctive marks in the disputed domain names. By these tactics, the Respondent generates the false impression that there is a genuine connection between the disputed domain names and the Complainant. Such connection does not exist. Taking into account the Complainant's use of the VERIZON trademark and trade name since 2000, it is clear from the manner in which the disputed domain names have been constructed, and the Respondent's actions subsequent to registration, that the Respondent was fully aware of the Complainant's business, and of the fact that the VERIZON and FIOS trademarks belonging to the Complainant are distinctive, and benefit from a high level of consumer recognition and goodwill.
The disputed domain names are not of a kind that the Respondent would coincidentally arrive at. The Respondent's use of the disputed domain names to generate traffic to a website with sponsored links is a typical attempt to benefit from consumers' deception or confusion for financial gain. Typosquatting or concocting domain names that clearly incorporate another's trademark are activities that can be described as being in bad faith, certainly where those marks are distinctive and widely recognized by Internet users.
Therefore the Panel holds that the disputed domain names were registered and used 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 names <fiosplus.com> and <verazon.com> be transferred to the Complainant.
William A. Van Caenegem
Date: March 14, 2017