WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-0784
1. The Parties
1.1 The Complainant is Verizon Trademark Services LLC, United States of America (“United States”), internally represented.
1.2 The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and Registrar
2.1 The disputed domain names <fioslivetv.com>, <verisonwirelesas.com>, <verizonfions.com>, <verizonfiose.com>, and <verizonwireless1.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 2, 2020, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2020.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 6, 2020. 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
4.1 The Complainant is the intellectual property holding company of the Verizon Communications group (“Verizon”). Verizon is one of the world’s leading providers of communications, entertainment, IT, and security products. It has offered products and services under the name “Verizon” since 2000 in the United States and elsewhere throughout the world, including in Panama. In 2018 Verizon generated annual consolidated operating revenues of more than USD 130 billion and had a workforce of approximately 144,500 employees.
4.2 The Complainant is the owner of various registered trade marks around the world that incorporate or comprise the term “Verizon”. They include:
(i) United States registered trade mark No. 2,886,813 for the mark VERIZON in standard character form, filed September 10, 1999 and issued September 21, 2004, covering goods and services in classes 9, 16, 35, 36, 37, 38, 41, and 42, including telecommunications products and services;
(ii) United States registered trade mark No. 3,077,271 for the mark VERIZON WIRELESS in typed drawing form, filed March 14, 2000 and issued April 4, 2006, covering goods and services in classes 16, 35 and 36, including retail store services featuring telecommunication and information technology products;
(iii) Panamanian registered trade mark No. 105911 for the mark VERIZON, registered March 10, 2000, covering goods and services in class 9; and
(iv) Panamanian registered trade mark No. 105907 for the mark VERIZON, registered March 10, 2000, covering goods and services in Class 38.
4.3 Verizon operates websites featuring advertising and information concerning many of its products and services from the domain names <verizon.com> and <verizonwireless.com>.
4.4 Verizon has also offered Internet, television, and digital voice services under the “Fios” name since 2004 in the United States. Verizon’s FIOS Internet service has been the highest rated Internet Service Provider for the past four consecutive years according to the American Customer Satisfaction Index.
4.5 The Complainant is the owner of various registered trade marks that incorporate or comprise the term “Fios”. They include:
(i) United States registered trade mark No. 3,001,081 for the standard character mark FIOS, filed February 6, 2004 and issued September 27, 2005, covering services in classes 37 and 38.
(ii) United States registered trade mark No. 3,147,510 for the standard character mark VERIZON FIOS, filed June 3, 2004 and issued September 26, 2006, covering services in classes 37 and 38.
4.6 As the online record for the United States registered trade mark No. 3,001,081 records, the English translation of the word “fios” is “knowledge”. It would appear that “fios” is a word in Portuguese.
4.7 Verizon operates a website in respect of products and services offered under the FIOS mark from the domain name <verizonfios.com>.
4.8 The WhoIs details for the Domain Names suggest that the Respondent is a business or individual located in Panama.
4.9 The Domain Names were first registered on the following dates:
September 23, 2019
November 25, 2019
November 22, 2019
November 22, 2019
May 13, 2019
4.10 Since registration the Domain Names have been used as follows:
(i) The <fioslivetv.com> Domain Name resolved to a variety of third-party websites that purport to offer virus scanning software, Internet browser security, and offers for surveys and gift cards.
(ii) The <verisonwirelesas.com> Domain Name resolved to placeholder website displaying pay-per-click links related to goods and services offered by the Complainant.
(iii) The <verizonfions.com>, <verizonfiose.com>, and <verizonwireless1.com> Domain Names redirected Internet users to a series of third-party websites through which it was ultimately possible to access the Complainant’s website operating from the domain name <verizonwireless.com>.
4.11 The Respondent has previously been involved in at least eighty-two WIPO UDRP proceedings, all of which resulted in the transfer of the disputed domain names from the Respondent to the complainant. The trade marks involved in these proceedings have included Calvin Klein, Facebook, IBM, LEGO, Philip Morris, Starbucks, and Volkswagen.
5. Parties’ Contentions
5.1 The Complainant refers to its business and marks and describes how each of the Domain Names has been used. It contends that each of the Domain Names is confusingly similar to at least one of its registered trade marks, either incorporating the relevant mark in its entirety and/or involving misspelling of the same.
5.2 The Complainant further contends that the Respondent has no rights or legitimate interests in any of the Domain Names, in that it is not commonly known by any of the Domain Names and, has made no legitimate commercial or noncommercial use of any of the Domain Names.
5.3 The Complainant maintains that the Respondent registered and is using the Domain Names to take advantage of the goodwill and reputation of the Complainant’s marks and has intentionally created a likelihood of confusion with the Complainant’s marks. Further it states that the previous UDRP proceedings in which the Respondent has been involved demonstrates that the Respondent is a known cybersquatter and has engaged in a pattern of bad faith registrations and uses of domain names that consist of third party marks. All of this is said to demonstrate that the Domain Names were registered and have been used in bad faith.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 In order to satisfy this first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.5 The Panel is satisfied that:
(a) The Complainant’s VERIZON registered trade mark is recognisable in the Domain Names <verizonfions.com>, <verizonfiose.com>, and <verizonwireless1.com>.
(b) The Complainant’s FIOS registered trade mark is recognisable in the Domain Names <fioslivetv.com> and <verizonfiose.com>.
(c) The Complainant’s VERIZON WIRELESS registered trade mark is recognisable in the Domain Names <verizonwireless1.com> and <verisonwirelesas.com>, albeit in the latter case in the form of a misspelling of that mark.
6.6 Arguably there are other similarities, but the similarities that the Panel has listed above are more than sufficient for a finding of “confusing similarity” (as that term is understood under the Policy) with a mark owned by the Complainant in the case of each of the Domain Names. The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 The Panel accepts the Complainant’s contention that the Respondent is unconnected to it and that the Respondent registered the Domain Names without the Complainant’s consent.
6.8 As is described in greater detail when considering the issue of bad faith in this Decision, the Panel has reached the conclusion that the Respondent has registered and held the Domain Names in order to take unfair advantage of the similarity between the Domain Names and the Complainant’s marks to divert Internet users to web pages of others. The Panel accepts that none of the uses made of the Domain Names involve a bona fide offering of goods or services.
6.9 Further, the Panel accepts that these registrations are merely part of a broader pattern of conduct on the part of the Respondent of registering and holding domain names that incorporate the well-known marks of others. Such activity does not create a legitimate interest in any of the domain names registered and indeed, provides positive evidence that the Respondent has no relevant right or legitimate interest in the Domain Names.
6.10 The Complainant has therefore made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 The Complainant has demonstrated to the Panel that its marks were well known in the United States and elsewhere in the world by the time of the registration of each of the Domain Names and that many, if not all of them, have no obvious meaning other than one that is associated with those marks. They were all registered in mid to late 2019 and when considered in the round the only sensible interpretation of these registrations is that they were obtained systematically to take unfair advantage of the reputation of the Complainant’s marks in some fashion or other. This is sufficient to find a finding of bad faith registration and use (see for example Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
6.12 Further, the Panel accepts from the pages displayed from some of the Domain Names and the fact that a number of the Domain Names involve misspellings of the Complainant’s marks, that the Domain Names are likely to have been registered to attempt to divert Internet users, by creating a likelihood of confusion with the Complainant’s marks, to web pages promoting the products of others (and in some cases ultimately the Complainant’s own products) either directly or via pay-per-click links. Such activity falls within the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy.
6.13 Last but not least there is the large number of UDRP proceedings in which the Respondent has been involved that show that the Respondent is a serial cybersquatter, who has cynically and systematically engaged in the business of registering domain names that incorporate the well-known trade marks of others for commercial advantage.
6.14 The Panel, therefore, has no hesitation in concluding that each of the Domain Names was registered and is being used in bad faith. The Complainant has therefore made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <fioslivetv.com>, <verisonwirelesas.com>, <verizonfions.com>, <verizonfiose.com>, and <verizonwireless1.com>, be transferred to the Complainant.
Matthew S. Harris
Date: May 20, 2020