WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Perfect Privacy LLC / Merideth Shapiro
Case No. D2019-2577
1. The Parties
The Complainant is Verizon Trademark Services LLC, United States of America (“United States” or “U.S.”), internally represented.
The Respondent is Perfect Privacy LLC, United States / Merideth Shapiro, United States.
2. The Domain Name and Registrar
The disputed domain name <verizonstudios.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 24, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 28, 2019.
The Center verified that the Complaint together with the amendment to 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 November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on November 27, 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, a limited liability company organized and existing under the laws of Delaware, serves as an intellectual property holding company for the Verizon Companies (“Verizon”), including Verizon Wireless, the largest wireless communications operator in the United States. The Complainant holds registrations for the VERIZON mark in multiple jurisdictions, including registrations in the United States as follows:
VERIZON, U.S. Registration No. 2,886,813, applied for September 10, 1999, and registered September 21, 2004;
VERIZON, U.S. Registration No. 3,085,712, applied for September 10, 1999, and registered April 25, 2006;
VERIZON and design, U.S. Registration No. 2,879,802, applied for March 3, 2000, and registered August 31, 2004.
The VERIZON mark was first used in commerce in the United States in September 2000 and has since acquired international recognition. Verizon is a Fortune 16 company, traded on NASDAQ and the New York Stock Exchange, and in 2018 generated annual consolidated operating revenues in excess of USD 130 billion. Verizon operates global IP networks serving more than 2,700 cities in over 150 countries.
The Complainant’s VERIZON mark is also reflected in domain names that resolve to the Complainant’s main websites, where advertising and information regarding VERIZON’s products and services may be found.
The Complainant’s affiliate Verizon Licensing Company (“VLC”) has been granted an exclusive license to sublicense the use of the VERIZON marks to their affiliates and third parties.
A number of UDPR panels have recognized the Complainant’s VERIZON mark as distinctive and well known. 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”). See also Verizon Trademark Services LLC v. Gene Wilder,
WIPO Case No. D2018-2745; Verizon Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630,
WIPO Case No. D2011-1092; 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.
The Respondent registered the disputed domain name <verizonstudios.com> through a privacy protection service. The Registrar’s WhoIs records reflect an initial creation date of July 12, 2006, recently updated on October 22, 2019. Insofar as the record in this proceeding reflects, the disputed domain name has not been used with an active website.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s VERIZON mark. The Complainant observes that the disputed domain name appropriates the Complainant’s mark in its entirety, and further maintains that the inclusion in the disputed domain name of the word “studios” furthers the false and misleading association of disputed domain name with the Complainant’s mark. The Complainant remarks that the incorporation of the VERIZON mark in the disputed domain name without more is sufficient to support a finding of identical or confusingly similar, particularly given that the mark is famous. The Complainant adds that generic Top-Level Domains (“gTLDs”) such as “.com” are largely irrelevant in assessing confusing similarity.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent is neither authorized or licensed to use the Complainant’s VERIZON marks. The Complainant submits that the disputed domain name does not resolve to an active website, and that the Respondent’s passive holding of the disputed domain name cannot create rights or legitimate interests. According to the Complainant, the Respondent is not commonly known by the disputed domain name, has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and has not made any legitimate noncommercial or fair use of the disputed domain name. The Complainant further contends that the Respondent is seeking to capitalize on consumer recognition of the famous VERIZON mark, a tactic commonly referred to by UDRP panels as “targeting” the Complainant’s mark.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant maintains its VERIZON mark acquired famous mark status long before the Respondent’s registration and use of the dispute domain name. According to the Complainant, it is well settled that registration and use of a domain name confusingly similar to a well-known mark is indicative of opportunistic bad faith. The Complainant submits that UDRP panels consistently have held that a respondent’s registration and use of a domain name appropriating the famous trademark of a third party, without proving rights or legitimate interests, supports a finding of bad faith registration and use.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a 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.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <verizonstudios.com> is confusingly similar to the Complainant’s VERIZON mark, in which the Complainant has established rights through registration and extensive use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s VERIZON mark is clearly recognizable in the disputed domain name.2 The addition in the disputed domain name of the word “studios” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. TLDs, in this case “.org”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.3
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s well-known VERIZON mark. The Respondent nonetheless has targeted the Complainant, registering a domain name appropriating the Complainant’s VERIZON mark in its entirety, and concealing the Respondent’s identity through use of a privacy or proxy service.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainant and had the Complainant’s wel- known VERIZONmMark in mind when registering the disputed domain name. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
In sum, nothing in the record before the Panel supports a claim by the Respondent to have rights or legitimate interests in the disputed domain name. Absent any explanation by the Respondent, the Panel concludes that the Respondent in all likelihood registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s well-known VERIZON mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above, the Panel finds that the Respondent was aware of the Complainant and had the Complainant’s well-known VERIZON mark in mind when registering the disputed domain name. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, targeting the Complainant with the ultimate aim to profit illicitly therefrom.
To the extent that the Respondent is passively holding the disputed domain name, a finding of bad faith is not precluded in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Red Bull GmbH v. Kevin Franke,
WIPO Case No. D2012-1531.
The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. As previously noted, the Panel finds that the Complainant’s VERIZON mark is distinctive and well-known. It is clear from the record that the Respondent would have been aware of the Complainant and the Complainant’s well-known VERIZON mark when registering the disputed domain name. In the attendant circumstances of this case, and absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent. See WIPO Overview 3.0, section 3.3.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name <verizonstudios.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 1, 2019
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
2Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
