Verizon Trademark Services LLC v. NA a/k/a NA DomainDevelopments.com
Claim Number: FA0512000616307
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Ave NW, Washington, DC 20001. Respondent is NA a/k/a NA DomainDevelopments.com (“Respondent”), 1917 Plyler Mill Rd., Monroe, NC 28173.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <verizoncenter.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 29, 2005.
On December 28, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <verizoncenter.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@verizoncenter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant’s parent company, Verizon Communications Inc., through its affiliates, is one of the world’s leading providers of communications services to wireline and wireless customers.
Complainant has offered and provided to the public a full array of communications products and services under the VERIZON mark since April 2000.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the VERIZON mark, filed September 10, 1999, and issued September 21, 2004.
Respondent registered the <verizoncenter.com> domain name on May 14, 2001.
Respondent is using the disputed domain name to redirect Internet users to a commercial website featuring links to wireless phone products and services that compete with those of Complainant.
Respondent’s <verizoncenter.com> domain name is confusingly similar to Complainant’s VERIZON mark.
Respondent does not have any rights or legitimate interests in the <verizoncenter.com> domain name.
Respondent registered and now uses the <verizoncenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Respondent does not contest that Complainant has rights in
the VERIZON mark by virtue of Complainant’s registration of the mark with the
USPTO. The Panel therefore finds that
Complainant has rights in its mark within the meaning of Policy ¶ 4(a)(i). See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that trademark registration with the USPTO creates a presumption of
rights in a mark under the Policy); see
also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Planetary Soc’y v. Rosillo, D2001-1228
(WIPO Feb. 12, 2002) (holding that the effectiveness of Complainant’s trademark
rights dates from the application’s filing date).
Complainant’s rights in its VERIZON mark thus having been established, the Panel also finds that Respondent’s <verizoncenter.com> domain name is confusingly similar to Complainant’s mark because Respondent’s domain name incorporates Complainant’s mark in its entirety and merely adds to it the generic term “center” and the generic top-level domain “.com.” Such alterations to Complainant’s registered mark do not negate the confusingly similar character of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name …, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <verizoncenter.com> domain name. Once Complainant makes a prima facie case in support of its allegations under this heading, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does conclude that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest exists).
Additionally, Complainant asserts, and Respondent does not
deny, that Respondent uses the <verizoncenter.com> domain name to
direct Internet users to a website featuring links to wireless phone products
and services that compete with those of Complainant. Respondent’s use of the disputed domain name in this way is not a
use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s…] mark to
market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.”).
Furthermore, Respondent has offered no evidence, and there is nothing in the record to suggest, that Respondent is commonly known by the <verizoncenter.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <verizoncenter.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the name and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when it is not known by the competing mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests in a respondent because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges, without contradiction from Respondent, that Respondent is using the <verizoncenter.com> domain name, which is confusingly similar to Complainant’s VERIZON mark, to direct Internet users to Respondent’s commercial website featuring products and services that compete with those of Complainant. The Panel finds that such activity is evidence of bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding a respondent acted in bad faith by attracting Internet users to a website that competes with a complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that for a respondent to divert business from a complainant to a competitor’s website is not in keeping with Policy ¶ 4(b)(iii)).
Moreover, the Panel infers from the uncontested evidence in this proceeding that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is confusingly similar to Complainant’s VERIZON mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s possible affiliation with the offending website. Thus, Respondent’s use of the <verizoncenter.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Moreover, it is evident from the record in this proceeding
that Respondent registered the contested domain name with at least constructive
knowledge of Complainant’s rights in the VERIZON mark by virtue of
Complainant’s prior filing for registration of that mark with the United States
Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge evidences bad faith registration and use of the domain
name pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002).
The Panel is therefore obliged to and does find that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <verizoncenter.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 1, 2006
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