WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Gene Wilder

Case No. D2018-2745

1. The Parties

The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“United States”), internally represented.

The Respondent is Gene Wilder of Los Angeles, California, United States.

2. The Domain Name and Registrar

The disputed domain name <verizon.love> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 30, 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 December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 9, 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 limited liability company organized under the laws of the United States state of Delaware, with a principal place of business in the state of Virginia. The Complainant acts as an intellectual property holding company for the Verizon Companies (“Verizon”), a corporate group created in June 2000 and including Verizon Wireless, the largest wireless communications operator in the United States. Verizon is a publicly traded company on the NASDAQ and New York Stock Exchange, with more than 150,000 employees and 2017 revenues exceeding USD 126 billion. Verizon operates an end-to-end Internet network serving 159 countries.

The Complainant holds VERIZON trademark registrations in many jurisdictions, including United States Trademark Registration Number 2886813 for VERIZON as a standard character mark, registered September 21, 2004. According to the Complaint, the Complainant has granted its affiliate Verizon Licensing Company (“VLC”) an exclusive license to sublicense the use of the VERIZON marks to their affiliates and third parties.

The Complainant operates a principal website at “www.verizon.com” and has expended billions of dollars since 2000 advertising and promoting the VERIZON brand in the United States and internationally. Numerous WIPO panels have recognized the Complainant’s claims to VERIZON-formative domain names in disputes decided under the UDRP. See, e.g., Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd, WIPO Case No. D2014-1994 (“Complainant’s trade mark consists of an invented word which is well known”).

The “.love” generic Top-Level Domain name (“gTLD”) is a new gTLD that reached General Availability, according to ICANN, in July 2015. Domain name disputes in this gTLD are subject to the UDRP. The Registrar reports that the Domain Name was created on October 29, 2018, and is registered in the name of the Respondent, who appears to be an individual residing in Los Angeles, California, United States. The Complainant discovered a website associated with the Domain Name in 2018 and attempted to communicate with the Respondent. The Respondent has not replied to communications from the Complainant or from the Center.

The Domain Name resolves to a website (the “Respondent’s website”) that the Complainant characterizes as “pornographic”, although it is neither obviously commercial nor fully developed. The Respondent’s website is headed “Verizon Love” with the tag line, “A place to find love”. It displays an eclectic array of moving images, some of them animated, including rolling dice, cartoon ponies, women posing in lingerie, male genitalia, and dancing characters from well-known film comedies. Much of it is against the black-and-white background video of a close-up of a woman’s face. The website is not interactive, and nothing is offered for sale. There is no advertising. Occasional pop-ups offer random comments, including the phrase “people of the color unite”, as well as references to writing and “my next novel”. There is no text identifying the author, however. There is a section set aside for an “original article”, but the only text displayed under that heading is a garbled passage of Cicero in Latin (without attribution), which is often used as a placeholder for future text (see the Wikipedia article on “Lorem ipsum”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its VERIZON trademark, which the Respondent is using without permission and without any evident rights or legitimate interests. The Complainant asserts that the registration and use of the Domain Name is in bad faith, targeting a well-known mark in an effort to misdirect Internet users. The Complainant cites this as an instance of “opportunistic bad faith” and one that may particularly offend customers and potential customers of the Complainant because of the association with pornography.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails a “straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant indisputably holds registered VERIZON trademarks. The Domain Name incorporates this mark in its entirety. As in most UDRP cases, the gTLD “.love” is not a distinguishing feature. Id. That gTLD is open to registrants of any kind, and may refer to any community of interest, commercial or noncommercial, as described by the registry operator at “www.get.love”.

Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s VERIZON trademark for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use, a corresponding business or brand name, or other evident legitimate interests. This shifts the burden to the Respondent. “Verizon” is an invented term, not a dictionary word. The Respondent has not made generic use of the Domain Name or come forward to assert any claims to fair use or other legitimate interests. It appears from the content that the site may be meant ultimately to promote the Respondent’s literary endeavors, for example, but there is no evidence of criticism or commentary relevant to the Complainant.

The Panel accordingly concludes that the Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Respondent has offered no explanation for its appropriation of the Complainant’s well-known and distinctive mark. The Respondent’s website is not obviously commercial in nature, although the Respondent’s literary ambitions might ultimately become commercial. In any event, paragraph 4(b) is not an exhaustive list of illustrations of bad faith. The effect of using the Complainant’s well-known mark in the Domain Name is to attract users familiar with the mark to the Respondent’s website, creating confusion as to the source or affiliation and potentially tarnishing the mark by offending some visitors. The Panel concludes that this must be considered bad faith within the meaning of the Policy. Even assuming predominantly artistic motives, the Respondent does not have the right to use another party’s well-known brand name simply to attract a larger audience for its art.

The Panel concludes that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <verizon.love> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: January 16, 2019