Docstoc

d2012-0277

Document Sample
d2012-0277 Powered By Docstoc
					ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. The Helard Group
Case No. D2012-0277



1. The Parties

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

Respondent is The Helard Group of Little Rock, Arkansas, United States of America (“Respondent”).


2. The Domain Name and Registrar

The disputed domain name <verizoniphone4s.com> (“Disputed Domain Name”) is registered with
GoDaddy.com, LLC (“Registrar”).


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on
February 13, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the Disputed Domain Name. On February 14, 2012, the Registrar
transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the
Complaint, and the proceedings commenced on February 16, 2012. In accordance with the Rules,
paragraph 5(a), the due date for Response was March 7, 2012. Respondent did not submit any response.
Accordingly, the Center notified Respondent’s default on March 8, 2012.

The Center appointed Michael A. Albert as the sole panelist in this matter on March 16, 2012. 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.
                                                   page 2

4. Factual Background

Complainant is a member of the Verizon Communications group of companies which includes Verizon
Wireless (collectively, “Verizon”). Verizon has become one of the world’s leading provider of
communications, entertainment, IT and security solutions. Verizon is publicly traded on the New York Stock
Exchange, is a Dow 30 company and generated annual consolidated operating revenues of more than USD
106 billion in 2010. Verizon employs more than 195,000 employees worldwide. Verizon owns and operates
the largest wireless carrier in the United States, serving more than 108.7 million voice and data customers.
Additionally, Verizon owns and operates one of the most expansive end-to-end global IP networks serving
more than 2,700 cities in over 150 countries worldwide.

Verizon is one of the world’s most famous names in wireless communications and owns a family of valid and
subsisting trademarks incorporating VERIZON. See, e.g., United States Patent and Trademark Office Reg.
Nos. 2886813 and 3319338 (see Annex 5 to the Complaint). Several UDRP panels have found that
Complainant’s trademark rights in VERIZON are well-established and that VERIZON is a famous mark. See,
e.g., Verizon Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID:
CR68165630, WIPO Case No. D2011-1092 (“VERIZON is a well-known trademark with a well-established
and widespread international reputation […] Respondent registered the disputed domain name with
knowledge of the worldwide fame of [Verizon]’s VERIZON trademark […]”); Verizon Trademark Services
LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247; Verizon Trademark
Services LLC v. Ali Aziz, WIPO Case No. D2010-0833.

Further, Verizon owns several domain names and websites that offer a full array of communications,
entertainment, IT and security products and services including <verizon.com>, used since June 2000,
<verizonwireless.com>, used since April 2000, and <verizonbusiness.com>, used since January 2006 (see
Annex 3 to the Complaint). Additionally, Verizon owns <verizoniphone.com> which redirects to
<verizonwireless.com> and offers Apple Inc.’s IPHONE wireless device for sale. Several UDRP panels in
both the European Union and United States have recognized Verizon’s rights in the VERIZON mark and
ordered transfers of confusingly similar domain names accordingly. See, e.g., Verizon Trademark Services
LLC v. Darlington Edu d/b/a Barmax Distribution, NAF Claim No. 0830994 (Transferring <verizonfttp.com>,
<verizonfttp.net>, <verizonsolutions.com>, <verizonsolutions.net>, <verizonsolutions.biz>,
<verizonsolutions.info> and others to Complainant); Verizon Trademark Services LLC v. Paul Swider d/b/a
OnClick, NAF Claim No. 0670992 (Transferring <verizonwireless.biz> to Verizon); Verizon Trademark
Services LLC v. Zx Domains c/o Sezar Sak, WIPO Case No. D2011-0419 (Transferring
<cerizonwireless.com>, <veriazonwireless.com>, <verizonvisaonline.com>, <verizonwoireless.com>,
<verizonworeless.com>, <verizpnwireless.com>, <verizxon.com>, and <veruizonwireless.com> to
Complainant).

As Respondent did not file a response to Complainant’s contentions in these proceedings, the Panel finds
that the assertions of fact in the Complaint are undisputed.

The Disputed Domain Name was registered on June 4, 2011.


5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or
service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the
Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad
faith in order to deceive and defraud visitors of the website.

Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s VERIZON
mark. Complainant further contends that the Disputed Domain Name creates confusion because it
                                                    page 3

incorporates Complainant’s VERIZON mark and adds the trademark IPHONE and the term “4s.”
Complainant asserts that the addition of the generic Top-Level Domain (gTLD) “.com” does not avoid
confusion. Complainant also contends that the Disputed Domain Name creates initial interest confusion by
incorporating the famous VERIZON mark to attract users to the website and intentionally divert them to a
monetized landing page which displays links to Verizon’s products and services, as well as those of
Verizion’s competitors (screenshots of the website associated with the Disputed Domain Name are attached
as Annex 6 to the Complaint).

Complainant contends that it has no relationship with Respondent and has not authorized Respondent to
use the VERIZON trademark. In addition, Complainant contends that Respondent has not received any
license, authorization, or consent to use the VERIZON mark. Complainant argues that Respondent had
constructive knowledge of the VERIZON mark through its fame and worldwide trademark registrations and
that Complainant intended to capitalize on the consumer recognition of the famous VERIZON mark.
Complainant further contends that Respondent has never sought or obtained any trademark registrations for
VERIZON or any variation thereof. Complainant further contends that Respondent expected that use of the
Disputed Domain Name would cause Verizon harm.

Due to the presence of the trademark IPHONE in the Disputed Domain Name, Complainant has obtained a
letter of authorization from Apple Inc. (the owner of the IPHONE trademarks) to obtain transfer of the
Disputed Domain Name if ordered in this proceeding (produced as Annex 7 to the Complaint).

B. Respondent

Respondent did not reply to Complainant’s contentions.


6. Discussion and Findings

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

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an
order that a domain name should be cancelled or transferred:

(i)     the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark
        or service mark in which Complainant has rights;

(ii)    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.

Respondent provided no response, and the deadline for doing so expired on March 7, 2012. Accordingly,
Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s reasonable
allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No.
D2000-0009; Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. Nonetheless,
Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. Do
the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

A. Identical or Confusingly Similar

Complainant provides sufficient evidence that it is the owner of valid and subsisting registrations and rights
at common law for the VERIZON mark. Complainant’s valid United States’ registrations for the mark
(examples are offered into evidence in Annex 5 to the Complaint), taken together with its longstanding,
extensive worldwide use of the VERIZON mark, make such ownership of enforceable trademark rights
                                                   page 4

indisputable. Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 ([R]egistration of a mark is
prima facie evidence of validity […] Respondent has the burden of refuting this assumption.”); EAuto, L.L.C.
v. Triple S, Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent
provides no evidence to refute the conclusion that Complainant possesses valid and enforceable trademark
rights.

Complainant contends that the Disputed Domain Name is confusingly similar to the VERIZON mark. The
Disputed Domain Name, however, is not identical to the VERIZON mark. Therefore, the first issue is
whether the Disputed Domain Name and the VERIZON mark are confusingly similar.

The Disputed Domain Name combines four elements: (1) the trademarked term “verizon”; (2) the
trademarked term “iphone”; (3) the term “4s” and (4) the suffix “.com.” The relevant comparison to be made
is with the second-level portion of the domain name only (i.e., “verizoniphone4s”), as it is well established
that the top-level domain may not be included in the analysis. Playboy Enterprises International, Inc. v. John
Taxiarchos, WIPO Case No. D2006-0561.

This Panel agrees that the Disputed Domain Name is confusingly similar to the VERIZON mark. Several
previous UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to
establish that a domain name is identical or confusingly similar to complainant’s mark. See, e.g., Revlon
Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000; Playboy Enterprises
International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903. The establishment of confusion is particularly true where, as here, the
trademark is famous. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

Further, the addition of the mark IPHONE and the term “4s” to the VERIZON trademark in the Disputed
Domain Name does not avoid confusion. Several UDRP panels have found that the respondent’s inclusion
of a third-party’s trademark in its domain name does not eliminate confusing similarity. See, e.g., Verizon
Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630, supra
(Transferring <iphoneonverizon.info> and stating that the “addition of the terms ‘iphone’ and ‘on’ does not
prevent confusion […] the term ‘iphone’ is a well-known trademark of Apple Inc. related to communications,
and hence the disputed domain name misleads Internet users into thinking that the disputed domain name is
related to […] the [c]omplainant.”); F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751 (finding
<viagra-xenical-pharmacy.com> confusingly similar to the complainant’s XENICAL mark); Pfizer, Inc. v.
Martin Marketing, WIPO Case No. D2002-0793 (Finding <viagra-nascar.com> confusingly similar to
Complainant’s VIAGRA mark); Hoffman-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online
Pharmacy, WIPO Case No. D2003-0793 (Finding <viagra-propecia-xenical.com> confusingly similar to
Complainant’s XENICAL mark). This is especially true in the instant case because Verizon owns the domain
name <verizoniphone.com> which offers Apple Inc.’s iPhone for sale (as per Annex 4 to the Complaint).

Furthermore, UDRP panels have consistently found that the inclusion of a third-party trademark may
increase the confusing similarity and “does not eliminate the visual impression that the disputed domain
name is associated with Complainant’s trademark.” See Pfizer, Inc. v. Martin Marketing, supra (regarding
<viagra-nascar.com> “the combination of the two marks would convey to Internet users familiar with
Complainant’s advertising an expected association.”); Albertis Infraestructuras, S.A. v. Syed Hussain
(PDAPB), WIPO Case No. D2006-1007. As noted above, the likelihood of association is especially true in
the instant case because Complainant is known to carry Apple Inc.’s iPhone mobile device in its stores and
through its <verizoniphone.com> website.

Therefore, this Panel finds that the Disputed Domain Name <verizoniphone4s.com> is confusingly similar to
the VERIZON mark.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by
showing that:
                                                      page 5

(i)     before any notice of the dispute, respondent used, or demonstrably prepared to use, the domain
        names or name corresponding to the domain names in connection with a bona fide offering of goods
        or services;

(ii)    respondent has been commonly known by the domain names, even if no trademark or service mark
        rights have been acquired; or

(iii)   respondent is making a legitimate noncommercial or fair use of the domain names, without intent for
        commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

This Panel finds that Complainant has established that Respondent has no rights or legitimate interests in
the Disputed Domain Name. Respondent has not filed a response, which, in appropriate circumstances after
a prima facie showing by Complainant, can suggest that Respondent lacks rights or legitimate interests as to
the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v.
Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (Finding that respondent’s
failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission
that it has no legitimate interests in the domain name).

Next, as a result of not filing a response, Respondent has failed to dispute Complainant’s showing that
Respondent has not demonstrated any of the factors under paragraph 4(c) of the Policy. Respondent is not
a licensee of Complainant, nor has Respondent ever been authorized to use the Disputed Domain Name.
There is no evidence that Respondent is commonly known by the Disputed Domain Name, nor that
Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent
for commercial gain. Conversely, Complainant’s evidence suggests that Respondent is using the Disputed
Domain Name to create initial interest confusion in order to attract Internet users to its monetized landing
page which displays links to Verizon’s products and services as well as those of its competitors. Clearly,
intentionally confusing Internet visitors for financial gain cannot constitute a bona fide offering of services.
See, e.g., Verizon Trademark Services LLC v. NA a/k/a NA DomainDevelopments.com, NAF Claim No.
0616307 (Holding the respondent’s use of the domain name <verizoncenter.com> for a website featuring
links to competing products and services is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name); Hoffman-La Roche Inc. v. Igor Richko, WIPO Case No.
D2010-0904; Tiffany (NJ) LLC, Tiffany and Company v. Thomas Stanek, WIPO Case No. D2009-0143.

Therefore, this Panel finds that Complainant has established prima facie evidence that Respondent lacks
rights or legitimate interests in the Disputed Domain Name. Respondent, by not responding to the
Complaint, has failed to rebut the prima facie case.

C. Registered and Used in Bad Faith

Under the Policy, paragraph 4(a)(iii), registration and use of a domain name in bad faith may be
demonstrated by showing:

        “(i)   circumstances indicating that you have registered or you have acquired the domain name
        primarily for the purpose 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
        related to the domain name; or
        (ii)   you have registered the domain name in order to prevent the owner of the trademark or service
        mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a
        pattern of such conduct; or
        (iii)  you have registered the domain name primarily for the purpose of disrupting the business of a
        competitor; or
        (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
                                                     page 6

      location or of a product or service on your web site or location.”

For the following reasons, this Panel finds that Complainant’s evidence shows that Respondent has
registered and used the Disputed Domain Name in bad faith in violation of the Policy.

First, VERIZON is a coined mark. 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. See Wal-Mart Stores, Inc. v. Jeff Milchen, WIPO Case No. D2005-0130 (Finding that respondent’s
knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith);
Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Revlon Consumer
Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602.

In addition, this Panel finds that Respondent has no rights or legitimate interests with respect to the Disputed
Domain Name, as discussed above. UDRP panels have consistently found that registration and use of a
domain name including a famous trademark belonging to a third party, without proving rights or legitimate
interests in it, represents bad faith registration and use. See, e.g., DaimlerChrysler Corporation v.
Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; 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.”). Furthermore, the Disputed Domain Name includes the
entire VERIZON mark. This also supports a finding of bad faith. See Wal-Mart Stores, Inc. v. Jeff Milchen,
supra; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.

Finally, Respondent is using Complainant’s goodwill and the reputation of the VERIZON mark to redirect
Internet users for financial gain. Many UDRP panels have found that intentionally creating confusion with a
famous mark for financial benefit is evidence of bad faith registration and use. See, e.g., Verizon Trademark
Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630, supra; Compart
AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; Nintendo of America, Inc. v.
Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556.

Therefore, this Panel finds that Complainant has demonstrated that the Disputed Domain Name was
registered and is being used in bad faith.

Lastly, the Panel notes that the decision results in the transfer of a domain name that includes the IPHONE
mark owned by Apple Inc., which is not a party to the instant proceeding. Several UDRP panels have noted
that, although neither the Policy nor the Rules expressly require doing so, it is good practice to obtain
authorization from the third-party trademark owner with a potential interest in the transferred domain. See,
e.g., Pfizer, Inc. v. Martin Marketing, supra; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More
Online Pharmacy, supra; Yahoo, Inc. v. M & A Enterprises, WIPO Case No. D2000-0748. Here,
Complainant has obtained Apple Inc.’s consent (as shown in Annex 7 to the Complaint).

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 Disputed Domain Name <verizoniphone4s.com> be transferred to Complainant.




Michael A. Albert
Sole Panelist
Dated: March 30, 2012

				
DOCUMENT INFO
Shared By:
Categories:
Tags:
Stats:
views:23
posted:7/20/2012
language:
pages:6