WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Jesse Cryderman, Megadot Productions
Case No. D2017-1207
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“United States”), internally represented.
The Respondent is Jesse Cryderman, Megadot Productions, of Chicago, Illinois, United States.
2. The Domain Name and Registrar
The disputed domain name <bestverizonplan.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 June 21, 2017. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 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 June 29, 2017. In accordance with the Rules, paragraph 5, the due date for the Response was July 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2017.
The Center appointed D. Brian King as the sole panelist in this matter on August 2, 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
(a) The Parties
The Complainant is a limited liability company organized under the laws of Delaware, United States with its principal place of business in Virginia, United States. It operates as an intellectual property holding company with ownership of the numerous marks licensed for use by Verizon Communications, Inc. (“Verizon”) and other affiliated companies. Verizon is a publicly listed company founded in 2000 that provides telecommunications services in over 150 countries worldwide.
Little information about the Respondent is available to the Panel. The Domain Name, <bestverizonplan.com>, is registered with the registrar GoDaddy.com, LLC. According to the WhoIs record associated with the Domain Name, the Domain Name was registered by Jesse Cryderman, through an organization named Megadot Productions, located in Chicago, Illinois, United States.
(b) The Trademarks
The Complainant offered proof of three United States marks owned by the Complainant and licensed for use by Verizon: Registration Nos. 2886813 and 3085712 for the mark VERIZON in standard characters, and Registration No. 2879802 covering the design of the Verizon logo. These registrations were filed between the years 1999 and 2000 and were issued between the years 2004 and 2006.
Verizon operates the domain names <verizon.com> and <verizonwireless.com>, through which it advertises and sells its wireless products and services. Screenshots of <verizonwireless.com> show that a viewer can navigate through the website to purchase phones or accessories and find information about or sign up for wireless service plans.
(c) The Domain Name
The Domain Name was registered on November 10, 2016. The Complainant provided screenshots showing that—as of the date of the Complaint—the website associated with the Domain Name displayed multiple images of the Verizon logo and listed a series of hyperlinks. The hyperlinks resolved to legitimate Verizon websites, as well as a third-party domain name <wirelessbutler.com>. As of the date of the Decision, the website associated with the Domain Name had changed simply to display a banner noting that the Domain Name is for sale.
5. Parties’ Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met, such that the Domain Name should be transferred from the Respondent to the Complainant.
The Complainant first argues that the Domain Name is confusingly similar to its VERIZON Marks. The Complainant asserts that the use of the word “plan” constitutes a reference to Verizon’s wireless service plans, and that the word “best” is a generic addition that does not clarify an otherwise confusing use of the word “Verizon.”. The Complainant additionally contends that the use of the full word “Verizon” a well-known mark, is alone sufficient to meet the standard for confusing similarity.
The Complainant next argues that the Respondent has no rights or legitimate interest in the Domain Name. The individual and organization that registered the Domain Name are Jesse Cryderman and Megadot Productions; the Complainant suggests that neither is commonly known by the Domain Name. The Complainant asserts that the Respondent has not made any legitimate noncommercial use of the Domain Name, as the underlying website was used to redirect to either Verizon’s own legitimate websites or to a third-party website.
Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith. The Complainant asserts that the purpose of registering and using the Domain Name was and is to take advantage of the reputation of Verizon and redirect viewers to a third-party website. The Complainant also argues that the Respondent has shown a pattern of conduct sufficient to indicate bad faith through the registration and maintenance of other domain names that use the marks of other well known wireless service providers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(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 respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating that it possesses rights in several marks for VERIZON. The Domain Name uses that mark, but bookended by two words: “best” and “plan”. When a domain name wholly incorporates a mark in a recognizable manner, the addition of non-distinctive text does not remedy the confusing similarity to the mark (See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000).
Moreover, the placement of the word “plan” next to “Verizon” compounds the confusing similarity in this case. Verizon frequently uses the word “plan” in association with its services, as the company offers wireless service plans. The use of the two words in conjunction thus increases the likelihood of confusion by Internet users (See Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203).
On these grounds, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s marks. Accordingly, the first element of the test under paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
Many prior UDRP panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4 of the Policy (See, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting, Inc., Roy Smith, WIPO Case No. D2010-1576). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name. To overcome a complainant’s prima facie showing, a respondent can, for example, provide evidence of a bona fide offering of goods or services, the common use of the domain name, or a legitimate noncommercial or fair use.
The Panel concludes that the Complainant has presented a prima facie case. The Domain Name was registered by the Respondent many years after the VERIZON mark obtained widespread notoriety. There is no apparent connection between the word “Verizon” and the Respondent. The fact that the website associated with the Domain Name previously contained links that redirected to legitimate Verizon websites and to a third party website with no apparent connection to Verizon, suggests that the Respondent has no independent association with the company Verizon or its registered trademarks.
The Complainant and its affiliated Verizon Licensing Company control authorization for the use of the VERIZON marks. As the Respondent did not respond to the Complaint, the Panel accepts the Complainant’s representations that the Respondent is not sponsored by or affiliated with the Complainant, and that the Complainant has not given the Respondent permission to use its VERIZON marks in any manner.
For these reasons, the Panel finds that the Complainant has satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The final element of the test under paragraph 4(a) of the Policy requires the Complainant to establish that the Domain Name was registered and is being used in bad faith.
Previous UDRP panels have found that the mere registration of a domain name that is confusingly similar to a well-known mark establishes bad faith (See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Georgia-Pacific Corporation v. Charlie Kalopungi, WIPO Case No. D2011-0634).The Panel has already concluded above that the Domain Name is confusingly similar to the VERIZON marks. It is, moreover, inconceivable that the Respondent registered the Domain Name without prior knowledge of the VERIZON marks. Verizon was founded in 2000, sixteen years before the Domain Name was registered, during which time it became the largest wireless service provider in the United States. The individual who registered the Domain Name is located in Illinois, United States—the country in which Verizon is based and well known—rather than a country in which ignorance of the marks could be plausible (See, e.g., Maori Television Service c. Damien Sampat, WIPO Case No. D2005-0524).It is unlikely that the Respondent therefore would have simply stumbled upon the word “Verizon” by accident, and chosen it for the Domain Name. Indeed, the word “Verizon” is a proper noun rather than a dictionary term.
Beyond that, the evidence shows that the Respondent has exhibited a pattern of conduct supporting a finding of registration in bad faith. The Registrant of the Domain Name has registered several other domain names that wholly incorporate the names of other well known United States-based wireless service providers, including Sprint and T-Mobile. A pattern of registering domain names that resemble famous marks provides further evidence of bad faith on the part of the Respondent (See, e.g., Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798).
The Panel thus concludes that the Respondent knew or should have known of the Complainant’s marks and registered the Domain Name, in bad faith, for the purpose of attracting Internet users, based on the confusing similarity of the Domain Name, to the Complainant’s marks (See, e.g., SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; First ScotRail Limited v. Mark Thomson, WIPO Case No. D2013-1623).
As for the use of the Domain Name, at the time of the Complaint, the website associated with the Domain Name displayed the “Verizon” logo—itself a registered mark—in two locations, at the top and center of the page. The website used words associated with Verizon’s products and offerings, such as “service”, “plans”, “switch now” and “find a store”. This demonstrates knowledge of the Complainant’s branding, familiarity with Verizon’s products and services, and a use of the Domain Name to attract viewers under the pretense that the website is affiliated with Verizon (See, e.g., Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2011-0315). The website associated with the Domain Name also linked to a third party website, unaffiliated to the Complainant, bearing the name “Wireless Butler”. The Panel therefore concludes that the Respondent used the Domain Name for commercial gain by diverting Internet users—attracted by the use of the Complainant’s marks—to a different online location. That is indicative of bad faith use under Paragraph 4(b)(iv) of the Policy.
Moreover, at the time of this Decision, the website associated with the Domain Name contained a banner indicating that it was for sale. The Respondent is therefore actively seeking to monetize the Domain Name, again by trading off the Complainant’s rights in its marks. That is likewise indicative of bad faith use under Paragraph 4(b)(i) of the Policy.
The Panel therefore determines that the Respondent registered and is using the Domain Name in bad faith, and accordingly that the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 Domain Name, <bestverizonplan.com>, be transferred to the Complainant.
D. Brian King
Date: August 16, 2017