The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America (“United States” or “US”), internally represented.
The Respondent is Richard Miyashita of Montreal, Quebec, Canada.
The disputed domain names <verizon-canada.com>, <verizon-canada.info>, <verizon-canada.net>, <verizon-canada.org>, <verizonwireless-canada.com>, <verizonwireless-canada.info>, <verizonwireless-canada.net>, and <verizonwireless-canada.org> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2017. On July 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2017, 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 July 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2017.
The Center appointed David Perkins as the sole panelist in this matter on August 8, 2017. 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.A.1 The Complainant is an intellectual property holding company and the owner of numerous trade mark and service mark registrations consisting of or incorporating the mark VERIZON. Examples of those registrations are set out in the paragraph 4.A.3 below. The Complainant has granted its affiliate, Verizon Licensing Company (VLC), an exclusive license to sub-license use of the VERIZON marks to the Complainant’s affiliates and to third parties. VLC has granted such licenses to, inter alia, its parent company, Verizon Communications Inc., and to Cellco Partnership d/b/a Verizon Wireless. The Complainant, VLC, Verizon Communications Inc., and Verizon Wireless are collectively referred to as “Verizon” in this Decision.
4.A.2 Verizon is one of the world’s leading providers of communications, entertainment, IT and security products and services to residential, business, wholesale, and government wireline and wireless customers. Verizon has offered these products and services under the VERIZON trade mark and trade name since 2000 in the United States and throughout the world, including Canada. It is a publicly traded company on the NASDAQ and the New York Stock Exchange. In 2016 Verizon generated annual consolidated operating revenues of USD 126 billion and employed a diverse workforce of approximately 161,900 employees. The global IP networks owned and operated by Verizon serve more than 2,770 cities in 150 countries, including Canada. It provides advanced IP, data, voice and security solutions to large business and government customers. Verizon is the largest wireless carrier in the United States, serving more than 113.9 million voice and data customers.
4.A.3 Verizon is the proprietor of the following VERIZON trade marks and service marks.
|
Country |
Registration Number |
Mark |
Classes of goods and services |
Dates of application and registration |
|
United States |
2,886,813 |
VERIZON |
9; 16; 35-38; 41 and 42 |
App.: September 10, 1999 Regd.: September 21, 2004 |
|
United States |
3,085,712 |
VERIZON |
9; 38; and 41 |
App.: September 10, 1999 Regd.: April 25, 2006 |
|
United States |
2,879,802 |
VERIZON and design |
9; 16; 35-38 and 41-42 |
App.: March 3, 2000 Regd.: August 31, 2004 |
|
United States |
3,077,271 |
VERIZON WIRELESS |
16; 35; and 36 |
App.: March 14, 2000 Regd.: April 4, 2006 |
|
Canada |
TMA 711,115 |
VERIZON |
16; 35-36; 38; and 41 |
App.: March 3, 2000 Regd.: April 4, 2008 |
|
Canada |
TMA 729,594 |
VERIZON |
1; 5; 9; 16; 35-38; and 41-42 |
App.: November 23, 2005 Regd.: November 27, 2008 |
|
Canada |
TMA 769,539 |
VERIZON |
38-39; 42; and 45 |
App.: November 22, 2005 Regd.: June 14, 2010 |
|
Canada |
TMA 698,772 |
VERIZON and design |
16; 35-36; 38; and 41 |
App.: October 12, 2000 Regd.: October 17, 2007 |
|
Canada |
TMA 769,230 |
VERIZON |
38-39; 42; and 45 |
App.: November 23, 2005 Regd.: June 9, 2010 |
|
Canada |
TMA 729,602 |
VERIZON and design |
9; 16; 35-38; 41; and 42 |
App.: November 23, 2005 Regd.: November 27, 2008 |
|
Canada |
TMA 729,599 |
VERIZON WIRELESS and design |
38 |
App.: November 23, 2005 Regd.: November 27, 2008 |
4.A.4 Verizon’s main websites can be accessed through the domain names <verizon.com>; <verizonwireless.com>; <verizon.ca>; and <verizonentreprise.com>.
4.A.5 The Complainant says that it has spent many billions of US dollars since 2000 to advertise and promote its VERIZON branded products and services in the United States and throughout the world, including Canada.
4.A.6 Exhibited to the Complaint are links to 26 WIPO UDRP decisions ordering the transfer of disputed domain names incorporating the VERIZON mark.
4.A.7 The Complainant says that, because it is a coined mark like KODAK, its VERIZON mark qualifies as an inherently distinctive and commercially strong mark which, consequently, enjoys the highest degree of trade mark protection. It is, the Complainant says, a famous mark, which also enjoys common law rights by reason of its substantial use and promotion since 2000.
4.B.1 In the absence of a Response, what is known of the Respondent is derived from the Complaint and its exhibits.
4.B.2 First, the eight disputed domain names were all created on August 28, 2013.
4.B.3 Second, exhibited to the Complaint are screenshots of the websites to which all eight of the disputed domain names resolve. Those screenshots all state “website coming soon! Please check back soon to see if the site is available.”
5.A.1 Four of the disputed domain names incorporate the VERIZON mark followed by a hyphen and the geographical designation “Canada” and the generic Top-Level Domains (“TLDs”) “.com.”, “.info.”, “.net.”, and “.org.”. The other four disputed domain names incorporate the VERIZON WIRELESS mark, again followed by a hyphen and the same geographical designation and TLDs.
5.A.2 The Complaint cites France Telecom SA v. France Telecom Users Group, WIPO Case No. D2002-0144 as supporting its assertion that the addition of a hyphen in a disputed domain name between the Complainant’s trade mark and a geographical designation is insufficient to render such domain name dissimilar from the Complainant’s mark. In that case, the disputed domain name was <france-telecom.com>.
5.A.3 The Complainant cites paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which reads:
“The addition of merely geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.”
5.A.4 The Complainant’s case is that the Respondent cannot bring himself within any of the circumstances set out in paragraph 4(c)(i) to (iii) of the Policy which demonstrate rights or legitimate interests in the disputed domain names. Specifically, the Complainant has not licensed or otherwise authorised the Respondent to use either of its VERIZON or VERIZON WIRELESS trade marks. Second, there is nothing to suggest that the Respondent has been commonly known by any of the disputed domain names. Third, the Complainant says the fact that all the disputed domain names resolve to placeholder websites supports a finding of lack of rights or legitimate interests in those names. Further, that passive use of the disputed domain names is not consistent with the Respondent having rights or legitimate interests in them. The Respondent is, the Complainant says, “targeting” its VERIZON and VERIZON WIRELESS marks because there is no plausible reason for creating the disputed domain names except to appropriate their trade mark value.
5.A.5 The Complainant’s case is threefold. First, since VERIZON was so clearly established as a famous and well-known invented mark before the disputed domain names were created in August 2013, the Respondent’s conduct is suggestive of opportunistic bad faith. This is, the Complainant says, further evidenced by the disputed domain names being confusingly similar to its VERIZON and VERIZON WIRELESS marks and being registered by an individual who has no connection with Verizon.
5.A.6 Second, the Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in support of the proposition that passive holding of disputed domain names can amount to bad faith under the third UDRP element.
5.A.7 Third, the Complainant accuses the Respondent of cybersquatting based on the fact that, in addition to the eight disputed domain names in issue in this administrative proceeding, the Respondent has also registered <verizon-canada.ca> and <verizonwireless-canada.ca>. Such conduct, the Complainant says, constitutes bad faith.
As noted, no Response has been filed.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain names.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The Complainant has demonstrated that it has rights in the VERIZON and VERIZON WIRELESS trade marks: see, paragraph 4.A.3 above.
6.6 As noted in paragraph 5.A.3 above, the Complainant cites paragraph 1.9 of the WIPO Overview 2.0. Comparable commentary is contained in paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which reads in material part:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical…or otherwise) would not prevent a finding of confusing similarity under the first element.”
6.7 The Panel agrees that, because the disputed domain names comprise the well-known VERIZON mark, they are confusingly similar to that mark and, where they incorporate the VERIZON WIRELESS mark, are confusingly similar to that mark also. The use of a hyphen followed by the “Canada” geographical designation does nothing to remove that confusing similarity.
6.8 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.9 First, there has been no actual use of the disputed domain names. Further, in the absence of a Response, there is no evidence of demonstrable preparations to use those domain names prior to the Respondent having notice of this dispute. Further, given the finding of confusing similarity, the well-known status of the VERIZON mark, the absence of any authorisation from the Complainant to use its VERIZON marks, and the number of domain names (8) registered by the Respondent, it is not possible to conceive, in the Panel’s view, of any bona fide, legitimate or fair use the Respondent could possibly make of the disputed domain names.
6.10 For those reasons and accepting the Complainant’s case summarised in paragraph 5.A.4 above, the Panels finds that the Complaint satisfies the requirements of paragraph 4(a)(ii) of the Policy.
6.11 The Complainant’s case summarised in paragraphs 5.A.5 to 5.A.7 above is, in the Panel’s view, well made out. Here, 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.”
6.12 Accordingly, the Complaint satisfies paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <verizon-canada.com>, <verizon-canada.info>, <verizon-canada.net>, <verizon-canada.org>, <verizonwireless-canada.com>, <verizonwireless-canada.info>, <verizonwireless-canada.net>, and <verizonwireless-canada.org> be transferred to the Complainant.
David Perkins
Sole Panelist
Date: August 11, 2017