WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Sam Ruedinger
Case No. D2017-1913
1. The Parties
Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America ("United States"), represented internally.
Respondent is Sam Ruedinger of Little Canada, Minnesota, United States.
2. The Domain Name and Registrar
The disputed domain name <paytheverizonbill.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 September 29, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2017, 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 October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017. The Center received email communications from Respondent on October 6, 2017, and November 1, 2017.
At the request of Complainant, the administrative proceeding was suspended on October 25, 2017, and reinstituted on November 10, 2017, on which date the Center informed the Parties that the new due date for Response was November 12, 2017. On November 17, 2017, the Center informed the Parties that it would proceed to commence the panel appointment process.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 21, 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
Complainant is the intellectual property holding company and a subsidiary of the Verizon group of companies, a group of companies that provide communications, entertainment, IT and security solutions to residential, business, wholesale, and government wireline and wireless customers. For ease of reference, "Complainant" shall refer to the group of companies which provide such services, and not solely to the intellectual property holding company which holds the trademark VERIZON.
Complainant has operated in the United States and globally since 2000, and its trademark is well known in the United States. In 2016, Complainant had consolidated operating revenue of USD 126 billion and employed more than 160,000 employees around the world. Complainant's global IP network provides services to approximately 2,770 cities in 150 countries. Complainant has spent billions of dollars in the promotion of its services and marks.
Complainant's VERIZON mark is registered in jurisdictions around the world, and was first used in the United States in September 2000 and whose trademark registrations with United States Patent and Trademark Office ("USPTO") date from August 2004, e.g., Reg. No. 2879802. Complaint, Annex 3. Complainant's mark is an inherently distinctive mark in that it consists of a fanciful term, and not a word with an established meaning in any language.
Complainant has registered the domain names <verizon.com> and <verizonwireless.com> which resolve to websites providing information regarding its services and billing practices, including online billing and payment services. Complaint, Annex 4.
Respondent is an individual resident in the United States who registered the disputed domain name on June 23, 2017. Complaint, Annex 1. The disputed domain name previously resolved to a website captioned "Pay the Verizon Bill", and the website included a link which read "Pay Verizon Bill". When the link was clicked, it took users to a web page on the website to which the domain name <payzard.com> resolved. Complaint, Annex 6.
On June 26, 2017, Complainant sent Respondent a letter demanding that the disputed domain name be transferred to Complainant. Complaint, Annex 7. Following receipt of the letter, Respondent ceased using the disputed domain name to resolve to the website described in the previous paragraph.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant's distinctive VERIZON mark in that it includes the distinctive mark within the disputed domain name and further in that the disputed domain name purports by its very name to suggest that it provides users of Complainant's services the opportunity to pay Complainant for the use of such services online by clicking on a link previously included on the website to which the disputed domain name resolved. Complainant further asserts that Complainant has never authorized or sanctioned in any way the use of its distinctive trademark by Respondent. Complainant contends that the disputed domain name was registered and is being used in bad faith.
Respondent has stated, "I will comply with the request for remedy and transfer the domain name to the complainant. Please provide instructions on how to proceed." Respondent has also indicated in an email to Complainant, copying the Center, "I would happily transfer the domain to you."
Respondent has otherwise failed to deny or to answer any of the allegations put forward by Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant's distinctive trademark inserted within instructions which appear to direct Internet users to a website at which a bill for services rendered by Complainant may be paid. The Panel finds that the disputed domain name is confusingly similar to the trademarks and service marks in which Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Prior to receipt of Complainant's cease-and-desist letter, Respondent was using the disputed domain name to resolve to a website wholly unrelated to Complainant at which Internet users were instructed to pay a bill issued in the name of Complainant by clicking on a link which took users to another website also unrelated to Complainant. After receiving Complainant's cease-and-desist letter, Respondent ceased using the disputed domain name to resolve to a website, but refused to return the disputed domain name to Complainant.
Accordingly, the Panel finds that Respondent has registered and is using 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, <paytheverizonbill.com>, be transferred to Complainant.
M. Scott Donahey
Date: December 5, 2017