ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Arjun Yadav, Verizoniptv
Case No. D2018-0087
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“United States”), internally-represented.
The Respondent is Arjun Yadav, Verizoniptv of Hyderabad, Andhra Pradesh, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <verizoniptv.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 16, 2018. On January 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 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 January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. The Response was filed with the Center on February 8, 2018.
On February 12, 2018, the Complainant submitted a reply to the Response, and requested the Panel to consider it on the basis of “inaccuracies included in Respondent’s Response dated February 8, 2018.”
The Center appointed James A. Barker as the sole panelist in this matter on February 14, 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.
The Respondent submitted a further communication to the Center on March 7, 2018.
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.
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, including in India by its local companies, including Verizon Communications India Private Limited, Verizon Data Services India Private Limited, and Verizon India Private Limited.
The Complainant is a publicly traded company on the New York Stock Exchange under the stock ticker symbol VZ. A Fortune 15 company, in 2016, Verizon generated annual consolidated operating revenues of more than USD 125.9 billion and currently employs a diverse workforce of approximately 160,000 employees. The Complainant owns and operates end-to-end global IP networks, serving more than 2,700 cities in 159 countries worldwide.
The Complainant has registered marks for VERIZON around the world, and owns many trademark registrations for its VERIZON Marks in the United States and in other jurisdictions. The Complainant also owns trademark registrations in India, where the Respondent has its address, including:
- Registration No. 1. 1405272 for the mark VERIZON, issued December 7, 2005, covering goods and services in International Classes 9, 14, 16, 28, 35, 38, and 42, including telecommunications products and services;
- Registration No. 1. 1238067 for the mark VERIZON, issued September 18, 2003, covering services in International Class 42, including telecommunication, Internet, and information technology services;
- Registration No. 1. 1238068 for the mark VERIZON, issued September 18, 2003, covering services in International Class 35, including advertising, business management, data processing, retail store, telephone and electronic ordering services; and
- Registration No. 1. 1238071 for the mark VERIZON, issued September 18, 2003, covering services in International Class 38, including telecommunications services.
The Complainant’s main websites feature advertising and information concerning many of the products and services offered by the Complainant. The Complainant operates these websites from a number of domain names including <verizon.com> and <verizon.in>.
Since 2000, the Complainant says it has spent billions of United States Dollars to advertise and promote its VERIZON branded products and services throughout the world, including in India. The Complainant refers to numerous WIPO UDRP decisions 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 2, 2017. There is no active website at the disputed domain name. 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 20,000.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its VERIZON mark. That mark is entirely incorporated in the disputed domain name. The Complainant refers to previous WIPO panel decisions, including decisions relating to its mark, for the proposition that the addition of generic or descriptive terms do not remove the likelihood of confusion.
The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to register the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has made no legitimate commercial or noncommercial use of the disputed domain name. The Complainant notes that, when typed into a URL browser, the disputed domain name resolves to a website entitled “Sorry! This site is not currently available.” The Complainant says that such use of the disputed domain name supports a finding that the Respondent has no rights or legitimate interests in it.
The Complainant, thirdly, says that the disputed domain name has been registered and used in bad faith. The Complainant’s mark became famous well prior to the Respondent’s registration and use of the disputed domain name. It is well settled that the registration and use of a domain name that is confusingly similar to a well-known mark is indicative of opportunistic bad faith. The Complainant says it is plain that the Respondent has registered and used the disputed domain name to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent has incorporated the Complainant’s mark into the disputed domain name without the Complainant’s consent or authorization for the purpose of capitalizing on the reputation of the Complainant’s mark.
The Complainant says that 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.” In this connection the Complainant refers to AT&T v. Rice, WIPO Case No. D2000 1276; and also Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd, WIPO Case No. D2014-1994. The Complainant also refers to a previous panel finding that the “VERIZON mark is inherently distinctive and fanciful and entitled to broad protection due to its commercial strength. Given the well-known status of the mark, and Respondent’s use of the mark to create initial interest confusion in order to drive Internet traffic to its site for commercial benefit, this Panel finds it inconceivable that Respondent was not aware of Verizon and its international business”: Verizon Trademark Services LLC v. The Helard Group, WIPO Case No. D2012-0277.
In response to a communication from the Complainant to the Respondent, demanding that the Respondent transfer the disputed domain name to the Complainant and agree to permanently cease and refrain from all future registration or use of the Complainant’s trademarks, the Respondent offered to transfer the disputed domain name to the Complainant for USD 20,000, which amount was “negotiable.” The Complaint attaches copies of that correspondence. From this, the Complainant says that the “Respondent’s offer to transfer the domain name at an exorbitant price comprises an act which by itself may be considered evidence of bad faith under paragraphs 4(a)(iii) and 4(b)(i) of the Policy.”
The Respondent did not submit a formal Response. However, the Respondent sent an email to the Center on February 8, 2018 which stated as follows:
I have purchase the domain verizoniptv.com for intend to do business in India and also registered this domain in India for my business purpose.
I got several emails from Verizon to transfer this domain. I said to them I have purchased for business purpose but they were continuously sending emails and asked us to transfer the domain for a monetary reward.
As I have done a huge investment to launch my business in India and Verizon is US based company and our nature of business in entirely different from verizon.
I clearly don’t have any intention to sell this domain to Verizon nor any third party at any cost. This domain is purely for my business. I have my own rights of the purchased domain to do business in India.”
The Center acknowledged that email and stated that it would treat that communication as the Response unless otherwise advised by the Respondent. No contrary advice was provided to the Center by the Respondent at that time.
The Respondent’s email of March 7, 2018 largely repeated the Respondent’s earlier communications. As the communication was received well after the due date for submission of a Response, it has not been admitted by the Panel.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately following a procedural issue relating to the filing of a supplemental submission by the Complainant.
A. Supplemental submission
As noted above, on February 12, 2018, the Complainant filed a supplemental submission, in the form of a reply to the Response.
Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by a party. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. The Panel considers that such filings should not be admitted as a general rule. In general, previous UDRP panels have considered that such submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself. See Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.
The Complainant’s supplemental filing in this case merely seeks to respond to a number of claims made by the Respondent. The Panel does not think that there are any exceptional circumstances that would support the admission of that filing. Neither has the Complainant advanced any such exceptional circumstances. Accordingly, the Panel has declined to consider that further filing.
B. Identical or Confusingly Similar
The first substantive issue under paragraph 4(a)(i) of the Policy is whether the Complainant has rights in a mark and, if so, whether the disputed domain name is identical or confusingly similar to that mark.
The Complainant provided evidence of its registered rights and, as such, the Panel finds that the Complainant has established those rights. Those rights have been recognized in multiple previous decisions under the Policy.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s mark.
The Complainant’s registered mark is entirely and prominently incorporated in the disputed domain name. Prior UDRP panels have found that the incorporation of a complainant’s trademark in a disputed domain name can be sufficient for a finding of confusing similarity. See, e.g., Nokia Group v. Mr. G. Giannattasio Mario, WIPO Case No. D2002-0782. Added to this, the Complainant’s mark is the first-appearing element in the disputed domain name. On balance, the Panel considers that the addition of the letters “iptv” does little to distinguish the Complainant’s mark. The Complaint appears to suggest that those letters relate to some descriptive term, but does not provide any further explanation. That said, the Panel thinks there is a reasonable inference that those letters could easily be taken to be a reference to “internet protocol television” – which broadly appears to be associated with the Complainant’s business. As such, the Panel considers that Internet users may be confused by the association between the disputed domain name and the Complainant’s mark.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests. Once a complainant establishes a prima facie case against the respondent under this ground, the burden of production shifts to the Respondent to rebut it. The overall burden of proof remains with the complainant. See, e.g., Document Technologies, Inc. v. v. I. International Electronic Communications, Inc., WIPO Case No. D2000-0270. The Complainant has established a prima facie case against the Respondent through its evidence and argument, outlined above.
The Respondent’s reply does little to rebut this prima facie case. The Respondent says only that he purchased the disputed domain name for a “business purpose”. The Respondent provides no detail at all about what the business purpose might be. Neither does the Respondent provide any concrete evidence to support his claim of acquiring the disputed domain name for such a purpose. In the absence of any such evidence or explanation, and given the evidence outlined below in relation to bad faith, the Panel does not consider that the Respondent has established any rights or legitimate interests in the disputed domain name. The other evidence in the case file is not suggestive of the Respondent having any such rights or legitimate interests.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy next requires the Complainant to prove that the Respondent has registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which may be evidence of bad faith for the purpose of paragraph 4(a)(iii). These include:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly to the Domain Name.”
The Complainant provides evidence of email exchanges between the Parties, before these proceedings were filed, in which the Respondent offers to sell the disputed domain name to the Complainant for USD 20,000. This is clearly a sum well in excess of any out-of-pocket costs the Panel infers were incurred by the Respondent in registering it.
There was some further correspondence from the Respondent, in which the Respondent himself suggested that the offer for sale was invited by the Complainant. The Complainant’s subsequent correspondence makes it clear that the Complainant made no such invitation Neither can the Panel see any such invitation from the Complainant in the evidence which was filed.
As far as the Panel can tell, this offer to sell the disputed domain name was made by the Respondent in response to the earliest correspondence he received from the Complainant. There is no direct evidence of the Respondent’s “primary” intention in registering and then holding the disputed domain name. However the alacrity of the Respondent’s offer to sell the disputed domain name to the Complainant suggests that the Respondent may have been motivated to “try his luck” for such an opportunity when he registered and maintained his registration of the disputed domain name. Despite the Respondent’s bare claim to the contrary, there is no evidence that suggests a different intention. In these circumstances, the Panel thinks there is a reasonable inference that the Respondent’s primary intention was in bad faith, as described in paragraph 4(b)(i) of the Policy.
Although not necessary to go further, the Panel also notes that there have also been a series of WIPO UDRP panel decisions that have involved the Complainant’s mark. As far as this Panel can tell, all of them resulted in a transfer of the then disputed domain names to the Complainant. Various of those cases found that the Complainant’s mark is well-known. For example, in Verizon Trademark Services LLC v. Richard Miyashita, WIPO Case No. D2017-1335, the panel found that “the Complainant’s VERIZON mark has a strong reputation and is widely known worldwide, the Respondent has failed to respond and, as the panel held in the Telstra case (noted above) ‘...it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as being a passing off....or an infringement of the Complainant’s rights under trademark law.’” Similar findings were made by other panels. See, e.g., Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd, WIPO Case No. D2014-1994; Verizon Trademark Services LLC v. The Helard Group, WIPO Case No. D2012-0277. Following those findings, the Panel considers that the reputation of the Complainant’s mark only reinforces a finding of 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, <verizoniptv.com> be transferred to the Complainant.
James A. Barker
Date: March 8, 2018