WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Mohammad Noman, Verizon Communication

Case No. D2020-3384

1. The Parties

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

The Respondent is Mohammad Noman, Verizon Communication, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <verizoncomunication.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2020, 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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. On December 28, 2020, the Center received an email communication from a party claiming to represent the Respondent. The Center notified the commencement of Panel appointment process to the Parties on January 18, 2021. The Center received a further email from the party claiming to represent the Respondent on that date.

The Center appointed Steven A. Maier as the sole panelist in this matter on February 1, 2021. 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 named Complainant is an intellectual property holding company incorporated in Delaware, United States. It licenses trademarks and other intellectual property rights to companies within the Verizon group of companies, including Verizon Communications Inc. For convenience, the Verizon group of companies is referred to as “the Complainant” in the remainder of this Decision.
The Complainant is a worldwide provider of communications, information and entertainment products and services. It is the owner of numerous trademarks comprising or including the term “Verizon” including, for example:

- United States trademark number 2,886,813 for the standard character mark VERIZON, registered on September 21, 2004 for goods and services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42 including those relating to telecommunications.

- Pakistan trademark number 193897 for the word mark VERIZON, registered on April 19, 2004 for goods and services in International Class 38 including those relating to telecommunications.

The Complainant is also the registrant of the domain name <verizoncommunication.com>. This domain name resolves to its principal website at “www.verizon.com”.

The disputed domain name was registered on January 20, 2018.

According to evidence submitted by the Complainant, the disputed domain name has resolved to a website at “www.verizoncomunication.com”. The website was headed “Verizon Communication – Leading IT Company in Pakistan” and purported to offer a range of tailored IT services. The website included contact postal addresses in Pakistan and the United States.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has conducted business under the VERIZON trademark since 2000 and that it is one of the world’s leading providers of communication, information and entertainment services. It generated annual revenues in excess of USD 131 billion in 2019 and employs over 135,000 people. The Complainant provides evidence of a substantial portfolio of registrations for the trademark VERIZON in numerous territories throughout the world and states that it has spent many billions of dollars in promoting and advertising its VERIZON-branded products and services. The Complainant submits that the VERIZON trademark, which comprises an invented term, has gained unquestionable fame as a result of these matters.

The Complainant contends that the disputed domain name is confusingly similar to its VERIZON trademark. It states that its mark VERIZON is clearly recognizable within the disputed domain name and that the addition of the deliberately misspelled word “comunication” does not prevent a finding of confusing similarity to its trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its VERIZON trademark, that the Respondent has no independent rights in that name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the disputed domain name is obviously intended to capitalize on the Complainant’s trademark and that the website to which it resolves is not genuine in any event. The Complainant denies that the Respondent is actually offering the services referred to on the website and submits that the United States contact address provided on the website is “invalid”.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that it is well-settled that the registration of a domain name that is confusingly similar to a well-known trademark is of itself indicative of opportunistic bad faith. It also refers to the Respondent’s deliberate misspelling of the word “comunication” and submits that “typosquatting” of this nature is also an indication of bad faith. The Complainant contends that it is clear in the circumstances that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not file a Response to the Complainant’s contentions. The Panel also finds that neither of the email communications sent to the Center supposedly on behalf of the Respondent contained any material in answer to the Complaint.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Complainant has established that it has extensive registered trademark rights in the name and mark VERIZON. The disputed domain name wholly incorporates that mark together with the misspelled word “comunication”, the addition of which does not prevent a finding of confusing similarity with the Complainant’s trademark. The Panel finds in the circumstances that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response to the Complainant’s contentions in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.

While the Respondent has purported to use the disputed domain name for the purpose of a website, the Panel finds that the disputed domain name is inherently misleading and constitutes an impersonation of the Complainant. Not only does it wholly incorporate the Complainant’s invented and widely-known trademark VERIZON, but it also includes a misspelling by way of the additional term “comunication”, but for which the disputed domain name would be identical to the Complainant’s own domain name <verizoncommunication.com>. In these circumstances, the Panel finds the Respondent’s registration and use of the disputed domain name for the purpose of its website to be fraudulent in nature and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

For the reasons indicated above, the Panel finds that the Respondent was aware of the Complainant’s VERIZON trademark at the date of registration of the disputed domain name and registered the disputed domain name with the intention of targeting the VERIZON trademark and the Complainant’s domain name <verizoncommunication.com>. The Panel finds further that the Respondent has used the disputed domain name for the purpose of a purported website which, on the basis of the Complainant’s unchallenged evidence, the Panel finds not to be genuine. While the Respondent’s true purpose of that website is unclear, the Panel infers in all the circumstances that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

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

Steven A. Maier
Sole Panelist
Date: February 15, 2021