WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Es Acabado Africa

Case No. D2016-0359

1. The Parties

The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America, internally-represented.

The Respondent is Es Acabado Africa, Alberta, Canada.

2. The Domain Name and Registrar

The disputed domain name <verizonservers.com> is registered with FastDomain, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2016. On February 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2016, 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 March 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2016. The Respondent did not submit any response save for its email communications on February 24 and March 20, 2016. The Center therefore notified the Parties that it would proceed to Panel Appointment process on March 22, 2016.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on March 30, 2016. 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 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 under the trademark and trade name VERIZON.

The Complainant began using the mark VERIZON since 2000 in the United States and throughout the world.

The Complainant is the owner of several trademark registrations for VERIZON, which have been registered in numerous countries all over the world, before the Respondent's registration of the disputed domain name, which was registered on October 5, 2015.

Based on the record, the disputed domain name directed to an active website entitled "Verizonservers. Be exceptional…." where the Respondent used an altered version of the Complainant's VERIZON Logo containing the red-colored "z" in the name "Verizonservers".

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its VERIZON trademark because the disputed domain name appropriates the VERIZON trademark in its entirety.

In fact, the added generic and descriptive word "servers" only enhances the confusing similarity since it is directly related to the web hosting services offered by the Complainant.

The Complainant has established rights in the VERIZON trademark based on its longstanding use and fame. The establishment of confusion is particularly true where, as here, the trademark is famous and that famous mark has been combined with a terms that is indicative of the trademark owner's goods and services.

The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests.

The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.

The Respondent has engaged in bad faith registration and use since it is passing itself off as Verizon to promote its imposter hosting services branded with the VERIZON trademark.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

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.

These elements are discussed in turn below. 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.

A. Identical or Confusingly Similar

In the present case, the disputed domain name incorporates the word "verizon", which is identical to the Complainant's registered trademark VERIZON.

It is established that the addition of a generic term (such as here the word "servers") may not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

It is clear that the disputed domain name incorporates in its entirety the VERIZON trademark to which the generic term "servers" has been added.

The generic term may even add to the confusing similarity in particular when they refer to the services offered by the Complainant (see F. Porsche AG v. Glenn Stefan Karlsson-Springare, WIPO Case No. D2011-1727; Audi AG and Volkswagen AG v. Glenn Karlsson-Springare, WIPO Case No. D2011-2121).

The Panel therefore concludes that the disputed domain name <verizonservers.com> is confusingly similar to the Complainant's trademark VERIZON.

The Panel finds the first element of the Policy has, therefore, been met.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating the VERIZON trademark.

The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant's VERIZON trademark.

In its Complaint, the Complainant has provided evidence that the website associated with the disputed domain name is used to gain unfair benefit of the VERIZON trademark.

The Complainant has showed that the Internet user, when typing the disputed domain name into a URL browser, was directed to an active website entitled "Verizonservers. Be exceptional…." where the Respondent sold allegedly counterfeit VERIZON branded hosting and domain name servers.

The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has established a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.

On the record, the Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel believes that the Respondent must have been aware of the fame of the Complainant's VERIZON trademark at the time of the registration of the disputed domain name, since the Respondent used an altered version of Complainant's VERIZON Logo containing the red-colored "z" in the name "Verizonservers" on the website at the disputed domain name and offers allegedly counterfeit web hosting services which is in direct competition with the Complainant.

The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them trying to attract them to the website at the disputed domain name, making them believe that the website, the disputed domain name and the products/services offered on the website are associated or recommended by the Complainant.

The Panel finds that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant's VERIZON trademark as to the source, sponsorship, affiliation, or endorsement of the website and of the products/services on the website (Policy, paragraph 4(b)(iv)).

Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and has been used in bad faith by the Respondent.

On this basis the Panel finds that the Complainant has satisfied the third and last point of the Policy, paragraph 4(a)(iii).

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, <verizonservers.com>, be transferred to the Complainant.

Eva Fiammenghi
Sole Panelist
Date: April 12, 2016