WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Jeff Tencza
Case No. D2019-0214
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virgina, United States of America (“United States”), represented by internally represented, United States.
The Respondent is Jeff Tencza of Metamora, Michigan, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <verizon5g.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 January 28, 2019. On January 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2019, 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 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2019. On February 18, 2019, the Respondent requested a 4 day extension to respond to the Complaint pursuant to paragraph 5(b) of the Rules. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The due date for Response was extended to February 24, 2019. The Response was filed with the Center on February 24, 2019.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 7, 2019. 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 a United States company that operates in the field of communications in the United States and, on a wireless basis, throughout the world. It conducts business under its well-known trademark, VERIZON, which has been registered with many authorities, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 2,886,813; registered on September 21, 2004).
The disputed domain name, <verizon5g.com>, was registered by the Respondent. The date of creation is September 9, 2015. The disputed domain name was connected to a website offering it for sale, and is now attached to a website that suggests it will be used in the future for blogs about 5G technology.
5. Parties’ Contentions
- The Complainant is a world leader in communications, offering customers both landline and wireless services. In 2017, the Complainant had revenues exceeding USD126 billion and employed approximately 152,300 people worldwide.
- The Complainant has operated under its VERIZON trademark since 2000. It owns many registrations for its marks throughout the world, including with the USPTO. The Complainant also conducts business through its domain name <verizon.com>.
- The disputed domain name, <verizon5g.com>, is confusingly similar to the Complainants VERIZON mark. The disputed domain name incorporates the Complainant’s mark completely, and adds merely the industry term, “5g”, and the generic Top-Level Domain (“gTLD”), “.com”. “5G” is a communications industry abbreviation for “fifth generation wireless technology”, which bears a direct relationship to the Complainant’s offerings and thus would lead to confusion among Internet users as to ownership of the disputed domain name.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has granted no authorization for Respondent to use the VERIZON mark for a domain name or otherwise. The Respondent is not commonly known by the disputed domain name. The Respondent is not using the disputed domain name for a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use purpose. Instead, the disputed domain name, first resolving to a “for sale” webpage, now resolves to a third-party blogging website that features restricted access.
- The disputed domain name was registered and is being used in bad faith. The Respondent is using the disputed domain name to take advantage of the Complainant’s famous mark. The Respondent’s intent is to benefit commercially based upon the likelihood of confusion between the Complainant’s mark and the disputed domain name.
- “Verizon5g” is an alphanumeric term, while the Complainant’s mark, VERIZON, is not, so there is no confusing similarity between that mark and the disputed domain name. Moreover, it not clear whether that the Complainant has effective “5G” offerings, so again there is little chance of such confusion. Finally, 5G technology did not exist when the disputed domain name was registered.
- The Complainant’s failure to gain a trademark registration for “VERIZON5G”, for which the Complainant might have anticipated a need, suggests a statute of limitations bar against this present filing by the Complainant.
- Respondent is not commonly known as the disputed domain name, but the disputed domain was purchased with the intent to establish a non-profit forum for 5G technology discussions. As 5G technology has yet to be fully realized, a corresponding blog website has yet to be developed by the Respondent.
- The Respondent has registered numerous domain names with the intent to develop blog-style websites. Some of those domain names have been put up for sale in the past, but there was never the specific intent to sell the disputed domain name. The initial contact from the Complainant caused the Respondent to correct the inadvertent “for sale” webpage connected to the disputed domain name so as to prepare it for future non-profit blogging use.
6. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and order a transfer of the disputed domain name, <verizon5g.com>, if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
By virtue of long continuous use in commerce and submission of USPTO registration evidence regarding its VERIZON trademark, the Complainant has convinced the Panel that the Complainant has the rights in that mark required under Policy paragraph 4(a)(i). See, The Schneider Group, Inc. v. Jack Mann, WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); and The SANS Institute v. WhoisGuard, WIPO Case No. D2007-0426 (“Complainant has established rights in the SANS mark through registration with the USPTO.”).
The Complainant contends that the disputed domain name, <verizon5g.com>, is confusingly similar to its VERIZON trademark. Certainly, the disputed domain name contains the mark in full. Moreover, the Panel agrees that the addition of the “5g” term does little to distinguish the two, particularly because that term alludes to technology that is very pertinent to the Complainant’s offerings under its mark. Also, the included gTLD, “.com”, is irrelevant in this kind of comparison under the Policy. Consequently, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. See, Accor v. WhoisGuard, Inc. / Bill Bro, WIPO Case No. D2018-2329 (finding the disputed domain names, <accor5g.online> and <accorhotels5g.com>, to be confusingly similar to the ACCOR and ACCORHOTELS marks); and Motorola Trademark Holdings, LLC v. shaoxiaogen, xiaogen shao, gaohaolvshishiwusuo, shenzhongchao, zhongchao shen, WIPO Case No. D2012-1780 (ruling that, among other disputed domain names, <motorola5g.com> is confusingly similar to the MOTOROLA trademark).
Accordingly, the Complainant has satisfied the first element required under Policy paragraph 4(a).
B. Rights or Legitimate Interests
The Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and asserts that it has not authorized the Respondent to use that mark for any purpose. Given this prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, it becomes incumbent upon the Respondent to come forward with concrete evidence to rebut this prima facie case. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 (“...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.”).
In rebuttal to the Complainant’s prima facie case, the Respondent contends that the disputed domain name is attached to a website that is not currently in use, but is intended to offer blogging opportunities for Internet users on a non-profit basis in the future. In the Panel’s view, this activity, or lack thereof, does not support the Respondent’s claim of rights or legitimate interests within the criteria listed in Policy, paragraph 4(c)(i). Not only is there no current “bona fide offering of goods or services” connected with the disputed domain name, there are no “demonstrable preparations” to do so, since a vague intent in that direction is not satisfactory in this regard. See, Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585 (“The Respondent has asserted an intention to use the [disputed] Domain Names for a noncommercial blog website. The Respondent has admittedly never developed such a website, however, and offers no supporting evidence of ‘demonstrable preparations’ for such use.”); and Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217 (“The mere reference[...] to a vague intention to develop the name is not evidence of ‘demonstrable preparations to use’.”).
The Respondent admits that he is not commonly known by the disputed domain name, so Policy paragraph 4(c)(ii) is inapplicable to this case as well. Moreover, as Respondent provides no evidence of current or projected legitimate noncommercial or fair use of the disputed domain name, the Panel determines that Policy paragraph 4(c)(iii) cannot help the Respondent in the present circumstances. Therefore, since the Respondent puts forth no other contentions to sustain his rights or legitimate interests in the disputed domain name, the Panel must find that the Complainant’s prima facie case stands.
Accordingly, the Complainant has satisfied the second element required under Policy paragraph 4(a).
C. Registered and Used in Bad Faith
The Complainant contends that, when it contacted the Respondent recently and examined the webpage attached to the disputed domain name, that webpage indicated that the disputed domain name was for sale. Given that circumstance, the Complainant argues that the disputed domain name has been registered and used in bad faith per Policy paragraph 4(b)(i) in an attempt by the Respondent to extract a price far in excess of the Respondent's out-of-pocket costs for domain name registration and minimum maintenance.
The Respondent counters that said contact with the Complainant jolted him into correcting the mistake made in his having assigned the “for sale” webpage to the disputed domain name, when in reality he had always intended that the disputed domain name resolve to a website offering blogging opportunities to Internet users interested in 5G technology. Of course, avers the Respondent, such a website could be set up only when 5G technology came into vogue, which it has not for the three-and-a-half years since the Respondent registered the disputed domain name. The Respondent admits that he has registered many domain names over the years and put some of them up for sale. However, in his filing, the Respondent assures the Panel that he never had any intent to sell the disputed domain name, and certainly not for commercial gain, as his ambitions were focused strictly on non-profit blogging usage.
The Panel does not find the Respondent’s claims credible.
At this point, the Panel notes that the Complainant’s VERIZON mark is extremely well-known in the United States, the Respondent’s domicile, and throughout the world. As a result, the Panel could conclude on that basis alone that the disputed domain name was registered and is being used in bad faith. See, Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833 (“Substantial authority exists to the effect that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.”); and DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003 (“[...]the Respondent knew about the fame of the CHRYSLER trademark in the world and in Romania when it registered it as a Romanian domain name, and as it did not have any rights and legitimate interests in this trademark, one can infer from this only that the disputed domain name was registered and further used in bad faith.”). In light of the foregoing, the Panel concludes that the Respondent intended to target and capitalize off of the Complainant’s trademark. In short, the Panel believes that the Respondent is just the sort of cyber-squatter that the Policy was designed to foil.
Accordingly, the Complainant has satisfied the third element required under Policy paragraph 4(a).
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, <verizon5g.com>, be transferred to the Complainant.
Dennis A. Foster
Date: March 21, 2019