WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Juergen Neeme, TheDomain.io
Case No. D2018-1125
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“United States”), represented internally.
The Respondent is Juergen Neeme, TheDomain.io of Tallinn, Estonia.
2. The Domain Name and Registrar
The disputed domain name <my-verizon-5g.com> is registered with DropCatch.com 884 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2018. On May 22, 2018, 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 the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on May 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2018.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on June 29, 2018. 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. The Complainant has granted its affiliate, Verizon Licensing Company (“VLC”), an exclusive license to sublicense the use of the VERIZON Marks to the Complainant’s affiliates and to third parties. The Complainant refers to itself, VLC and “Verizon Companies” collectively as “Verizon”. For convenience, these entities are collectively referred to as “the Complainant” for the purpose of these proceedings hereinafter.
The Complainant is a provider of communications, entertainment, IT, and security products and services to residential, business, wholesale, and government wireline and wireless customers. The Complainant has offered these products and services under the trademark and trade name VERIZON since 2000 in the United States and throughout the world.
The Complainant is a publicly traded company on the New York Stock Exchange under the stock ticker symbol VZ. A Fortune 15 company, in 2017, Verizon generated annual consolidated operating revenues of more than USD 126 billion and currently employs a diverse workforce of approximately 155,000 employees. The Complainant owns and operates end-to-end global IP networks, serving more than 2,700 cities in 150 countries worldwide.
The Complainant has registered VERIZON Marks around the world, and owns numerous trademark registrations for its VERIZON Marks in the United States (attached as annex 3 to the Complaint) and in other jurisdictions. The Complainant also owns trademark registrations in Estonia, where the Respondent has its address, including:
- Estonian trademark registration No. 34,038 for the mark VERIZON, filed on March 8, 2000, registered on May 24, 2001, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, 42, including software, advertisement, telecommunications, Internet, and data transmission services; and
- Estonian trademark registration No. 34,894 for the mark VERIZON and design, filed on October 13, 2000, registered on September 17, 2001, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, 42, including software advertising, telecommunication, Internet, and data transmission services; and
- United States trademark registration No. 2886813 for the mark VERIZON, filed on September 10, 1999, registered on September 21, 2004, covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.
The Complainant’s main websites featuring advertising and information concerning many of the products and services offered by the Complainant can be accessed, inter alia, via the domain names <verizon.com> and <verizonwireless.com>.
Since 2000, the Complainant has spent billions of United States Dollars to advertise and promote its VERIZON-branded products and services throughout the world. The Complainant refers to numerous WIPO UDRP decisions (attached as annex 4 to the Complaint) which recognized the Complainant’s rights in its VERIZON marks and awarded the transfer of disputed VERIZON-formative domain names.
The disputed domain name was registered by the Respondent on November 18, 2017. In correspondence between the Parties, prior to the filing of the Complaint, the Respondent offered to sell the disputed domain name to the Complainant for USD 100 (attached as annex 6 to the Complaint). When typed into URL browser, the disputed domain name redirects to the Uniregistery Market page, where the domain name is listed for sale for USD 100 (a screenshot of the website attached as annex 5 to the Complaint).
As Respondent did not file a response to the Complaint. Thus, the Complainant’s assertions of fact in the Complaint are undisputed.
5. Parties’ Contentions
The Complainant contends that all three requirements stated in paragraph 4(a) of the Policy are met in the present case.
(1) The disputed domain name is identical or confusingly similar to the Complainant’s trademark
The Complainant contends its trademark VERIZON is an inherently distinctive and commercially strong mark. The disputed domain name incorporates the Complainant’s mark in its entirety. Therefore the Complainant argues it establishes a confusing similarity between the disputed domain name and the Complainant’s mark. The Complainant further contends that the disputed domain name creates confusion because the addition “5G” merely identifies the fifth generation of wireless technology. The addition of a generic or descriptive term does not remove the likelihood of confusion between two marks sharing a distinctive term. Consumers expect to find the trademark owner on the Internet under a domain name address composed of the organization’s name or mark.
The generic Top-Level Domain (“gTLD”) “.com” may furthermore not be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant has not authorized the Respondent to register or use the disputed domain name. The Respondent never received any license, authorization, or consent – express or implied – to use the marks of the Complainant in a domain name. The Respondent is not commonly known by the disputed domain name or any name reflected thereby. No organization has been incorporated using the name <my-verizon-5g.com>. The Complainant states the Respondent has made no legitimate noncommercial or fair use of the disputed domain name, since the website at the disputed domain redirects to the Uniregistry Market page, where the disputed domain name is listed for sale. Redirecting Internet traffic to third party websites does not constitute a legitimate noncommercial use of the disputed domain name. The Respondent chose to register the disputed domain name to capitalize on the consumer recognition of the Complainant’s Marks.
(3) The disputed domain name was registered and is being used in bad faith
The Complainant argues that knowledge of the Complainant’s rights at the time registration establishes bad faith registration. As the trademark VERIZON is well known throughout the world, it is indicative of opportunistic bad faith that the Respondent was aware of the Complainant’s rights upon registration of the disputed domain name. Furthermore, the disputed domain name reproduces the Complainant’s trademark in its entirety, which also indicates prior knowledge. The Complainant notes that the Respondent and its agency have registered at least five other domain names including well-known marks of other trademark owners, which leads to the conclusion that the Respondent is in the business of buying and selling domain names composed of well-known brands. This is disruptive to the Complainant’s business because Internet users searching for the Complainant may be diverted away from the Complainant’s main websites. Bad faith also follows from the offer by the Respondent to sell the domain name to the trademark holder – the Complainant – for a value exceeding the cost to register a domain name (attached as annex 6 to the Complaint). Offering to transfer the domain name at a price higher than the actual value compromises an act which by itself may be considered evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the 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 in bad faith.
In the following, the Panel will discuss in consecutive order if each of these requirements are met here.
Before dealing with the requirements of paragraph 4(a) of the Policy the Panel must consider the applicable standard of proof.
Since the Respondent provided no response, and the deadline for doing so expired on June 14, 2018, accordingly the Respondent is in default. Given the Respondent’s default, the Panel can infer that Complainant’s reasonable allegations are true where appropriate to do so (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy (see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). According to paragraph 3(b)(xiv) of the Rules the Complainant shall “annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence”.
While conclusory statements unsupported by evidence will normally be insufficient to prove a party’s case, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847).
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”; some panels have also expressed this as an “on balance” standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true. Applying the “preponderance of the evidence” standard a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847).
The Complainant provided evidence of its United States trademark registration and provided the registration numbers of the Estonian trademark registrations (Registration No. 34,038; Registration No. 34,894). The Complainant met to the Panel satisfaction the burden of proof of the registration of the VERIZON mark for the purpose of the Policy.
Furthermore it has been established in many decisions that the Complainant is well known throughout the world (see Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd., WIPO Case No. D2014-1994; Verizon Trademark Services LLC v. Richard Miyashita, WIPO Case No. D2017-1335). The Panel sees no reason do disagree with this finding.
A. Identical or Confusingly Similar
The Complainant has established that is has rights in the trademark VERIZON, as described above. As referenced by the Complainant, previous UDRP panels have considered VERIZON to be well known or even famous.
Whether a domain name is confusingly similar to a mark is determined through a direct comparison of the mark and the domain name (see Group Kaitu, LLC, Darkside Productions, Inc. v. NetDirect, WIPO Case No. D2011-0220). When a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). Numerous UDRP panels have found that supplementing or modifying a trademark with descriptive words does not make a domain name any less identical or confusingly similar for purposes of satisfying this first prong, paragraph 4(a)(i) of the Policy (see Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500). Moreover, the additions of gTLD suffixes (e.g., “com”) or hyphens are irrelevant for the assessment of confusing similarity under the Policy (see Realm Entertainment Limited v. Enes Usta, WIPO Case No. D2015-1253; Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013- 1572). In this case, the disputed domain name uses the mark VERIZON in addition to the words “my” and “5G”. When a domain name wholly incorporates a mark in a recognizable manner, the addition of non-distinctive text does not prevent a finding of confusing similarity under the first element (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).
It is thus concluded that the disputed domain name is confusingly similar with the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy. The Complainant has met the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name and the Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks.
In the present case, the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, which shifts the burden of production on the Respondent (see Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant (187640) email@example.com, WIPO Case No. D2006-0478).
The Respondent did not submit any evidence of rights or legitimate interests in the disputed domain name. As contended by the Complainant, the Respondent was not authorized, licensed or otherwise allowed to make use of its protected trademark. Also, there is no evidence that the Respondent is commonly known by the disputed domain name. The fact that the Respondent used the disputed domain name to offer it for sale speaks against a fair use of the disputed domain name by the Respondent.
This prima facie case was not rebutted by the Respondent. Accordingly, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The disputed domain name was registered in bad faith.
Prior knowledge of the Complainant’s trademark rights indicates bad faith registration of the disputed domain name (see TRS, Quality, Inc v. Privacy Protect, WIPO Case No. D2010-0400). The Panel agrees with the Complainant that it is unlikely that the Respondent was unaware of the Complainant’s rights at registration of the disputed domain name and that the Respondent came up with the disputed domain name without knowledge of the Complainant’s rights and activities. The VERIZON mark is distinctive and entitled to broad protection due to its commercial strength and also registered as a trademark in Estonia where the Respondent has its address.
In 2017 the Complainant generated annual consolidate operating revenues of more than USD 126 billion and currently employs a diverse workforce of approximately 155,000 employees. Verizon owns and operates one of the most expansive end-to-end global IP networks, serving more than 2,700 cities in 150 countries. Therefore it is hardly a coincidence that the Respondent registered the disputed domain name incorporating the Complainant’s trademark. Furthermore VERIZON is a fictional name, thus it is unlikely for Respondent to have registered the disputed domain name in a fortuity (see BookIt.com, Inc. v. PrivacyProtect.org / ICS INC., WIPO Case No. D2013-0775). The Panel concludes from the above that the Respondent registered the disputed domain name with knowledge of the worldwide known Complainant’s VERIZON mark and thus registered the disputed domain name in bad faith.
Furthermore, the disputed domain name is also usedin bad faith.
Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which, if found applicable by the Panel, are taken to be evidence of bad faith. One of them (paragraph 4(b)(iv) of the Policy) is circumstances showing that the Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
UDRP panels have consistently found that registration and use of a domain name including a famous trademark belonging to a third party, without proving rights or legitimate interests in it, indicates bad faith in registration and use (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). As shown above the burden of production shifted to the Respondent who failed to rebut.
Redirecting Internet traffic to a third party website and offering the disputed domain name for sale and there for financial gain is seen as evidence of bad faith in registration and use (see Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556). This is especially the case if the domain name features another party’s trademark in its entirety (see Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>, WIPO Case No. D2009-0266) and therefore creating a likelihood of confusion with the Complainant’s mark. Moreover the placement of “5g” next to Verizon intensifies the confusing similarity in this case, given that the Complainant is inter alia one of the world leading providers of communication and IT products and services and “5g” is a specific generic industry term for wireless technology as well offered by the Complainant 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).
By offering to sell the domain name for a value exceeding the cost to register a domain name to the Complainant the Respondent has shown bad faith (see Compagnie Générale des Etablissements Michelin v. Fatih Gul, Case No. D2010-2257). As stated by the Complainant USD 100 exceeds the out of pocket costs directly related to the domain name. Also the Respondent has not denied these allegations or provided any evidence to support a finding that it has registered and used the disputed domain name in good faith.
Accordingly, the Panel finds that the Complainant has provided sufficient evidence to prove that the disputed domain name was registered and is being used in bad faith as required under paragraph 4(a)(iii) of the Policy and has therefore met the third requirement of 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 disputed domain name <my-verizon-5g.com> be transferred to the Complainant.
Date: July 9, 2018