WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Kevin Hurley, Polaris Mediaworks
Case No. D2018-1786
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“USA” or “U.S.”), internally represented.
The Respondent is Kevin Hurley, Polaris Mediaworks of Burlington, Vermont, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <unlimitedverizon.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2018. On August 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2018, 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 August 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2018. The Response was filed with the Center on August 30, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on September 5, 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.
On September 11, 2018, the Complainant filed with the Center a reply to the Response, raising a number of points concerning the second element under the Policy. The Respondent sent an informal email on September 11, 2018, and submitted an additional filing on September 26, 2018 to address the issues raised in the Complainant’s filing on September 11, 2018, namely, to seek to reinforce its arguments that it had rights and legitimate interests in the disputed domain name.
4. Factual Background
The Complainant is an intellectual property holding company that owns numerous trademark and service mark registrations consisting of or incorporating the word “Verizon”, including U.S. Registration No. 2,886,813, issued on September 21, 2004, alleging April 4, 2000 as the date of first use in commerce of the word mark VERIZON in connection with telecommunications and information technology services (the “VERIZON Marks”). The Complainant has granted its affiliate, Verizon Licensing Company (“VLC”), an exclusive license to sublicense the use of the VERIZON Marks to various affiliates and third parties. VLC has granted such licenses to Verizon Communications Inc. and its subsidiaries (“Verizon Companies”). To simplify the terminology used herein, all conduct and rights discussed concerning the Complainant, VLC or the Verizon Companies will be attributed to the Complainant.
The Complainant asserts that it has spent many billions of dollars since 2000 to advertise and promote Verizon-branded products and services throughout the world and that as a result, the VERIZON Mark has long enjoyed unquestionable fame as a result of favorable public acceptance and recognition.
The Respondent registered the disputed domain name on May 13, 2017. As of the time of the filing of the Complaint, the disputed domain name resolved to a website entitled “Vegas Fake Wedding” which purported to offer a service whereby customers can “[g]et fake married live on Facebook”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the VERIZON Marks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent’s principal arguments are that the disputed domain name is not confusingly similar to the VERIZON Marks, that it has rights or legitimate interests in the disputed domain name because it planned to develop a forum where users could post information critical of the Complainant, and that it never intended to use the disputed domain name for commercial gain.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
The Panel exercises its discretion to consider all of the Parties’ filings.
A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the VERIZON Marks. Verizon is among the most recognizable telecommunications brands in the world, and the VERIZON Marks have been in widespread use for a number of years. The disputed domain name is confusingly similar to the mark VERIZON. It contains the Complainant’s mark VERIZON in its entirety, accompanied by the word “unlimited”. This additional material (along with the generic Top-Level Domain “.com”) is irrelevant when comparing the disputed domain name with the Complainant’s mark for purposes of the confusing similarity test. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy.
B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts, among other things, that (1) there is no authorization for the Respondent to register or use the disputed domain name, (2) the Respondent is not commonly known by the disputed domain name or any name reflected thereby, and (3) the Respondent has made no legitimate commercial or noncommercial use of the disputed domain name. These assertions establish the Complainant’s prima facie case and the Respondent has not successfully rebutted that finding. Accordingly, the Panel finds in favor of the Complainant on this second Policy element.
Specifically, the Panel does not find persuasive the Respondent’s assertions that it had made preparations prior to this dispute to use the disputed domain name for a forum website critical of the Complainant. Though it submitted screenshots purporting to show a website under development, the evidence submitted, taken as a whole, is not convincing. The materials appear cobbled together, as if compiled in response to this dispute. And the evidence does not include other information that would be easy to come by (if it exists) but more persuasive of demonstrable preparations. For example, though the Respondent claims to have worked with a web designer in connection with the purportedly planned site, it submits no invoices, receipts, or other indicators that such efforts were undertaken. On balance, there is no evidence regarding demonstrable plans to use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial use. Moreover, the Panel also finds that the composition of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
C. Registered and Used in Bad Faith
There is no dispute that the Respondent was aware of the VERIZON Marks when it registered the disputed domain name. In the circumstances of this case, where the Respondent has not demonstrated rights or legitimate interests, such a showing is sufficient to establish bad faith registration of the disputed domain name. See, e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (holding that the disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Bad faith use is clear from the Respondent’s activities. The disputed domain name is so “obviously indicative” of the Complainant’s VERIZON Marks that the Respondent’s use of the disputed domain name would “inevitably lead to confusion of some sort”. AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276; see also Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd, WIPO Case No. D2014-1994 (finding that “given the very extensive reputation of the Complainant’s mark and that the mark is an invented one, it seems that any use that could be made of the disputed domain name would inevitably lead to confusion between the Respondent and the Complainant.”).
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 <unlimitedverizon.com> be transferred to the Complainant.
Evan D. Brown
Date: September 26, 2018