Verizon Trademark Services
LLC v. Verizon Capital
Claim Number: FA0905001265511
PARTIES
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by Brent
LaBarge, of Arnold & Porter LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <verizoncapital.com>, registered with
Domainpeople,
Inc.
PANEL
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.
Dawn Osborne, Palmer Biggs Legal as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received on
On June 26 2009 pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant’s submissions are as follows:
Verizon and its VERIZON Trademark
The Verizon Communications group of companies
(the “Verizon Companies”), which include Verizon Wireless, are among the
world’s leading providers of communications and entertainment products and
services to residential, business, wholesale, and government wireline and
wireless customers.
A publicly traded company
on the New York Stock Exchange and a Dow 30 company, Verizon Communications in
2008 generated annual consolidated operating revenues of more than $97 billion. The Verizon Companies employ a workforce of
more than 237,000 employees.
The Verizon Companies have offered and
provided a full array of communications and entertainment products and services
under the trademark and trade name VERIZON since 2000 throughout the
The Verizon Companies own and operate one of
the most expansive end-to-end global IP networks serving more than 2,700 cities
in 150 countries worldwide and provide advanced IP, data, voice and wireless
solutions to large business and government customers. The Verizon Companies provide numerous
communications and entertainment products and services, including voice,
broadband video and data, voice and data transport, enhanced and custom calling
features, network access, directory assistance, private lines, public telephones,
nationwide long distance services, customer premises equipment distribution,
data solutions and systems integration, billing and collections, Internet
access services and inventory management services, digital television, video on
demand, online games, and other products and services.
Verizon UK Limited, a
The Verizon Companies’ main websites
featuring information on many of the products and services of the Verizon
Companies can be accessed via the domain name <verizon.com>, which has
been used since at least as early as June 2000, <verizonwireless.com>, which
has been used since at least as early as April 2000, and <verizonbusiness.com>,
which has been used since at least as early as January 2006.
Verizon’s affiliates have spent many millions
of dollars since 2000 to advertise and promote VERIZON-branded products and
services in the
Verizon and the Verizon Companies have
established common law rights acquired through the substantial and continuous
use and promotion of the VERIZON Trademark by the Verizon Companies since at
least as early as April 2000
Verizon’s Trademark Holdings
Verizon’s VERIZON Trademark is an inherently
distinctive and commercially strong mark entitled to an extremely broad scope
of protection. Furthermore, the VERIZON Trademark has long enjoyed
unquestionable fame as a result of favorable public acceptance and recognition.
Verizon owns many European Community
trademark (“CTM”) registrations (which cover the
a. VERIZON, Registration No. 001543362, filed
March 7, 2000 with a priority claim of September 10, 1999, issued July 9, 2004,
covering goods and services in International Classes 9, 16, 35, 36, 37, 38, 41,
and 42.
b. VERIZON & Design, Registration No.
001923671, filed on October 13, 2000 with a priority claim of April 26, 2000,
issued July 25, 2003, covering goods and services in International Classes 9,
16, 35, 36, 37, 38, 41, and 42.
c. VERIZON & Design, Registration No.
002440626, filed on October 31, 2001, issued June 3, 2004, covering goods and
services in International Classes 9, 16, 35, 36, 37, 38, 41, and 42.
All of these CTM registrations predate and
cover services identical to those previously provided by Respondent, namely
“financial affairs [and] real estate services.” Verizon has also applied for
and received a number of
Verizon owns the following
a. U.S. Registration No. 2,886,813 for the
mark VERIZON in block letters, filed September 10, 1999, first used April 4,
2000, issued September 21, 2004, covering goods and services in International
Classes 9, 16, 35, 36, 37, 38, 41, and42.
b. U.S. Registration No. 3,085,712 for the
mark VERIZON in block letters, filed September 10, 1999, first used May 23, 2005,
issued April 25, 2006, covering goods and services in International Classes 9,
38, and 41.
c. U.S. Registration No. 2,879,802 for the
mark VERIZON and design, filed March 3, 2000, first used April 4, 2000, issued
August 31, 2004, covering goods and services in International Classes 9, 16,
35, 36, 37, 38, 41, and 42.
Verizon owns a family of VERIZON Trademarks.
In addition to the registrations for the VERIZON Trademark listed above,
Verizon’s affiliates use and have registrations for other VERIZON-formative
marks including, for example, VERIZON AVENUE, VERIZON BUSINESS, VERIZON FIOS,
VERIZON FREEDOM, and VERIZON WIRELESS.
Verizon’s proprietary rights in the VERIZON
Trademark clearly predate Respondent’s registration of the Infringing Domain
Name on February 23, 2005.
Respondent’s Infringing
Activities and Bad Faith Acts.
Respondent registered the domain name <verizoncapital.com> on February
23, 2005, well after: (a) Verizon’s affiliates began using the VERIZON
Trademark in the
In response to this letter, Respondent’s
counsel indicated that Respondent would transfer the Infringing Domain Name and
rebrand its company for a sum of £50,000, £41,000 of which Respondent alleged
would compensate it for the costs of rebranding and £9,000 of which Respondent
maintained would compensate it for the resultant loss of “goodwill” that it had
established in the Verizon Capital Limited name. Placed in perspective, this
excessive figure of £50,000 exceeds Respondent’s total reported 2007 assets of
£46,000 (the most recent year for which these data are available). Moreover,
Respondent reported the value of its intangible assets in 2007, which
presumably would include the value of the goodwill Respondent had developed in
its corporate name, at £0.
Verizon rebuffed these disproportionate and
extortive demands by letter dated October 3, 2008, in response to which
Respondent offered to re-brand and transfer the Infringing Domain Name for
£15,000, which Verizon again refused.
After lengthy correspondence and discussions
with Respondent’s former counsel, Respondent eventually signed an agreement
dated January 9, 2009 which prohibits it from using any “mark(s), word(s), domain
name(s), company name(s) or designations which is or
are the same as or confusingly similar to ‘Verizon.’” Respondent made this
agreement in exchange for Verizon’s promise not to commence proceedings against
Respondent for passing off and service mark infringement. Although Respondent
crossed out the paragraph in this agreement indicating that it would “transfer
to [Verizon] the domain name <www.verizoncapital.com>,”
the next paragraph prohibits it from selling, offering, or exposing for sale or
dealing in goods or offering or supplying services “via any domain name
incorporating the [VERIZON Trademark] or variations thereof.” In any event,
Respondent made numerous representations that it would transfer the Infringing
Domain Name e.g. In a letter from SLP Solicitors dated November 5, 2008 “We . .
. confirm that our client will undertake in the terms of your proposed
paragraph 8 that Verizon Capital Limited
does not and will not own any other domain names that incorporate the
[VERIZON Trademark] after 31 January 2009.” and an email from SLP Solicitors
dated November 21, 2008 “My client will
agree that the [<verizoncapital.com>]
domain name be transferred to [Verizon] in accordance with clause 8 of the
draft undertaking.”.
Pursuant to this agreement, Respondent has
subsequently re-branded its company as “St. James’s Square Finance Ltd.” and
even transferred the verizoncapital.co.uk domain name to Verizon.
Despite numerous promises to do so, however,
Respondent has refused to transfer the Infringing Domain Name, which led to
Verizon’s filing of a lawsuit against both Respondent’s successor-in-interest
and its sole director. Respondent has chosen to leverage the domain name as a
bargaining chip to force Verizon to accede to terms more favorable to
Respondent’s sole director. Specifically, given the virtual identity of Respondent
and its only director, Adrian Alves, Verizon has insisted that Mr. Alves
personally represent that he will not make any additional uses of the
VERIZON Trademark, and not simply represent that the now defunct Verizon
Capital Limited will not use the VERIZON Trademark. Mr. Alves, however, refuses to sign an
agreement in his personal capacity, and refuses to transfer the Infringing
Domain Name until Verizon drops this request. Moreover, Mr. Alves now refuses
to transfer the Infringing Domain Name until Verizon dismisses its lawsuit.
The Infringing Domain Name is Identical or Confusingly Similar to the VERIZON Trademark
Through widespread, extensive use in
connection with its products and services, the VERIZON Trademark has become
uniquely associated with the Verizon Companies and their products and services,
and is extremely well-known and famous throughout the
The Infringing Domain Name is confusingly
similar to the VERIZON Trademark. Courts
and administrative panels have recognized that consumers expect to find a
trademark owner on the Internet at a domain name address composed of the
organization’s name or mark. See also Dr. Michael Crichton v.
Numerous panels have held that a domain name
is confusingly similar to a trademark, where, as here, the domain name
incorporates the mark in its entirety. See, e.g., Am. Online, Inc. v.
aolgirlsgonewild.com, NAF Claim No. FA0207000117319
(Sept. 19, 2002) (noting that “aolgirlsgonewild” incorporated complainant’s
“entire mark” and implied “an affiliation that simply does not exist”).
It is equally well recognized that “the adaptation of a recognized trademark in
a Domain Name by the . . . addition or insertion of . . . words or acronyms
does not escape a finding of confusing similarity.” Am. Online, Inc. v.
Yeteck Commc’n, Inc., WIPO Case No. D2001-0055 (Apr. 23, 2001) (finding the
domain names “aolcasino.com,” “aolsportsbet.com” and “aolsportsbet.net”
confusingly similar to the AOL mark).
Indeed, previous NAF panels have explicitly
held that the mere inclusion of the generic word “capital” in a domain name
that is otherwise identical to the complainant’s mark is insufficient to
distinguish the domain name from that mark for the purposes of the Policy. See,
e.g., State Farm Mutual Automobile Insurance Company v. Ivan Hoo, NAF Claim
No. FA0609000804985, (Nov. 9, 2006) (in transferring statefarmcapital.com,
explaining that the “mere addition of the common term ‘capital’ to the end of
Complainant’s mark without any asserted justification for such action . . .
fail[s] to sufficiently distinguish the <statefarmcapital.com> domain
name from Complainant’s STATE FARM mark.”); Morgan Stanley v. n.a., NAF
Claim No. FA0804001176572 (May 22, 2008) (“The Panelist finds that the Domain
Name is confusingly similar to Complainant’s MORGAN STANLEY mark, merely adding
the generic word ‘capital’ to Complainant’s mark.”); see also Adecco
As previous panels have found, the addition
of a generic top-level domain name, such as “.com” or “.net,” is irrelevant
when determining whether a disputed domain name is confusingly similar to a
protected mark. See, e.g., Aous Uweyda v. Abdallah
Sheet, NAF Claim No. FA0306000165119 (Aug. 1,
2003); Universal City Studios, Inc. v. G.A.B. Enter., WIPO Case No.
D2000-0416 (June 29, 2000).
Respondent Has No Legitimate Rights or
Interests in the Infringing Domain Name.
Respondent has no legitimate rights or
interests in the Infringing Domain Name. Respondent has no connection or
affiliation with Verizon, the Verizon Companies, or any of the many products
and services provided by the Verizon Companies in association with the VERIZON
Trademark. On information and belief, Respondent has never sought or obtained
anytrademark registrations for “Verizon” or any variation thereof,
and indeed could never do so given Verizon’s prior and exclusive rights to this
mark throughout the
Nor does Respondent’s decision to adopt and
use an infringing business name -- “Verizon Capital Limited” -- give rise to a
legitimate right or interest in the domain name. As a preliminary matter, for a
respondent to demonstrate legitimate rights or interests under Paragraph 4(c)(ii) of the Policy, NAF panels have consistently held that
the respondent “must show that he has been commonly known by the [name] prior
to registration of the domain name.” NATSAC, Inc. v.
Kistner, NAF Claim No. FA0805001190108 (June 28, 2008) (emphasis
added) (citing RMO, Inc. v. Burbridge, NAF Claim No. 96949 (May 16,
2001). Here, as evidenced by Respondent’s correspondence with Verizon’s
counsel, Respondent’s first use of the “Verizon Capital Limited” name allegedly
occurred sometime in “February 2005,” which is clearly not prior to
Respondent’s February 23, 2005 registration of the Infringing Domain Name.
Nor could Respondent demonstrate a legitimate
right or interest in the domainname. It is axiomatic that “use which
intentionally trades on the fame of another cannot constitute a bona fide offering
of goods or services. . . . to conclude otherwise
would mean that a Respondent could rely on intentional infringement to
demonstrate a legitimate interest, an interpretation which is obviously
contrary to the intent of the Policy.” NATSAC, NAF
Claim No. FA0805001190108 (quoting Ciccone v. Parisi, WIPO Case
No. D2000-0847 (Oct. 16, 2000)). Consistent with its transparent attempt to
capitalize on the fame of the VERIZON Trademark, at no point has Respondent
come forth with any colorable reason as to why it is entitled to trade under
the “Verizon” name. Finally, Respondent
has agreed, in writing, to “permanently cease to sell, offer or expose for sale
or deal in goods or offer or supply services under or by reference to the company
name Verizon Capital Limited . . . or colourable variations thereof (including
without limitation any name consisting of or incorporating “Verizon”).
Respondent similarly has also agreed not “to sell, offer or expose for sale or
deal in goods or offer or supply services via any domain name incorporating
the [VERIZON Trademark] or variations thereof.” Simply put, there is no
permissible use that Respondent could make of this domain name.
Respondent Has Registered and Is Using the
Infringing Domain Name in Bad Faith
Respondent initially registered and is
continuing to use the Infringing Domain Name in bad faith by doing so knowing
of Verizon’s preexisting rights in the VERIZON Trademark. See Societe AIR
FRANCE v. Geiser Enterprises, WIPO Case No. D2008-0024
(Feb. 29, 2008) (“Registration of a domain name with knowledge of the trademark
owner’s rights has been consistently found to constitute bad faith under the
Policy.”). It is simply inconceivable that Respondent was unaware of
Verizon’s rights in the VERIZON Trademark, which, as noted above, has achieved
fame throughout the
Similarly, Respondent’s initial registration
and subsequent use of the domain name in connection with a company that
provides services related to those provided by Verizon demonstrates
Respondent’s bad faith under the Policy. See, e.g.,
Reed Elsevier Properties Inc. v. David Allen, NAF Claim No.
FA0102000096667) (finding bad faith when respondent registered the disputed
domain names with knowledge of complainant’s rights in its mark and used the domain
name to offer related services).
Respondent must have expected that any use of
the Infringing Domain Name would cause harm to Verizon. The Infringing Domain
Name is so “obviously indicative” of Verizon’s services that Respondent’s use
of this domain name would “inevitably lead to confusion of some sort.” AT&T v. Rice, WIPO Case No. D2000-1276, at ¶ 6
(Nov. 25, 2000).
Respondent’s offers to sell the Infringing
Domain Name (ostensibly to cover its “costs” and the loss of goodwill) to
Verizon for £50,000 and even £15,000, prices that far exceed any registration
and maintenance costs and indeed are out of all proportion to the value of the
Respondent’s company, overwhelmingly demonstrate Respondent’s initial
bad faith registration and subsequent use of the Infringing Domain Name. See
Metro. Life Ins.
Moreover, the physical address supplied by
Respondent -- 8-10;
Respondent’s current use of the Infringing
Domain Name, namely, as a bargaining chip to force Verizon to settle its lawsuit
against its principal, Mr. Alves, and to avoid any personal undertakings by Mr.
Alves whatsoever, is paradigmatic bad faith. See, e.g., FMR Corp. v. Native
American Warrior Society, WIPO Case No. D2004-0978 (January 20, 2005) (“[A]
registrant cannot use a domain name to ‘leverage’ a settlement of a dispute he
has with the owner of marks to which the domain name is confusingly similar.”);
Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300 (May 2, 2006) (the use of a domain name to leverage
settlement of litigation “is bad faith, for it is an abuse of the proper and
responsible use that all registrants should make of the internet and of domain
names they have been permitted to register.”).
Although the Infringing Domain Name now
redirects to a website associated with a different domain name
(sjsfinance.co.uk), this diversionary use still evidences Respondent’s bad
faith, regardless of whether the Verizon Trademark appears in the domain name
of the website to which the Infringing Domain Name now redirects. See, e.g.,
Ritchie Bros. Auctioneers (
Respondent’s registration of multiple domain
names consisting in part of the VERIZON Trademark (both the Infringing Domain
Name and verizoncapital.co.uk) further demonstrates Respondent’s bad faith
registration and use of the Infringing Domain Name. “Multiple registrations of domain names
incorporating the same mark create a presumption of a pattern of conduct
preventing Complainant from reflecting its mark in the corresponding domain name.”
SIGARMS, Inc. v. Sigsauer Dot Com, NAF Claim No.
FA0706001024240 (Aug. 9, 2007) (finding such conduct “to be evidence of bad
faith registration and use pursuant to Policy
4(b)(ii)”); see also Richard Starkey v LOVEARTH.net,
NAF Claim No. 97089 (June 4, 2001) (finding bad faith in respondent’s
registration of multiple domain name similar to the complainant’s trademark,
presuming a pattern of conduct to prevent the true owner of the trademark or
service mark from reflecting the mark in a corresponding domain name).
Similarly, Respondent’s retaliatory registration of verizoncapital.co.uk on
January 23, 2009 (see Annex I, letter dated March 4, 2009) well after it
was first approached by Verizon and informed of Verizon’s rights, further
evidences Respondent’s bad faith. See Companhia Brasileira
de Bebidas - CBB v. Pedro Cuesta Unkhoff, WIPO Case No. D2005-0634 (Aug. 23, 2005) (“Respondent’s vindictive registration
of a different domain name from the one in dispute here can only be regarded as
conclusive evidence of bad faith.”).
In addition to the traditional likelihood of
confusion noted above, Respondent’s registration and use of the Infringing
Domain Name also creates initial interest confusion, which attracts Internet
users to Respondent’s websites based on Respondent’s use of the VERIZON Trademark.
This is further evidence of Respondent’s bad faith registration and use of the Infringing
Domain Name. See, e.g., Osuuspankkikeskus
OSK v. Registerfly.com, WIPO Case No. D2006-0461 (June 13, 2006)
(referencing initial interest confusion in the panel’s finding of bad faith
registration and use); see also Jafra Cosmetics,
Verizon requests that the
Administrative Panel appointed in this administrative proceeding issue a
decision that the Infringing Domain Name be transferred to Verizon. As set forth herein: (1) the Infringing
Domain Name is identical or confusingly similar to the VERIZON Trademark; (2) the
current registrant of the Infringing Domain Name has no right or legitimate
interest in or with respect to the domain name; and (3) the current registrant
has registered and used the Infringing Domain Name in bad faith. Accordingly,
Verizon requests an order transferring the registration for the Infringing
Domain Name from Respondent to Verizon. Verizon states that it has initiated
proceedings against both Registrant’s successor-in-interest, St. James’s Square
Finance Limited, and its sole director, Mr. Adrian Joseph Alves, in the English
High Court, Chancery Division. Notwithstanding this pending legal proceeding,
Verizon respectfully requests that the Panel exercise its discretion pursuant
to Paragraph 18(a) of the Rules of Procedure and proceed to a decision in this
matter, as a resolution in Verizon’s favor may obviate the need to maintain these
pending legal proceedings. See, e.g., Sonido Inc. v. MUZIC. Com Inc., WIPO Claim No. D2006-0685 (in
exercising discretion to hear dispute explaining that “other panels confronted
with the question of proceedings in the face of a related court proceeding have
frequently exercised the discretion provided under Para 18 to issue a decision
recognizing that doing so does not prevent either party if dissatisfied with
the result from continuing to seek relief in Court.”)
B. Respondent
The Respondent did
not submit a formal response but sent an e-mail within the deadline for a
Response as follows:
“As per my email last week, we are awaiting confirmation of the process to transfer the Verizoncapital.com domain.
We do not accept, or agree, with the complaint case however, as we have re-branded and as a gesture of goodwill, we are happy to transfer the VERIZONCAPITAL.COM domain to Verizon Communications.
Pls can you communicate this to all parties so we can settle the matter.”
When informed that the communication did not constitute a formal Response the Respondent replied again by e mail to say that this Communication should be regarded as its complete response.
FINDINGS
The Complainant has
since 2000 been a leading provider of communications and entertainment products
and has registered trade marks in the UK, Europe and the US the specifications
of which cover financially related and real estates services as well as its
core business.
The Respondent, now
known as St James Square Finance Limited, operated as a commercial property
finance broker under the name Verizon Capital registering the Domain Name in
February 2005. Under pressure from the Complainant the Respondent re-branded
and ceased using the Verizon Capital name and agreed to transfer the Domain
Name to the Complainant, but has so far failed to do so.
The Complainant has
issued proceedings against the Respondent for, inter alia, breach of contract. The
Complainant nevertheless requests the Panel exercise its discretion pursuant to
Paragraph 18 (a) of the Rules of Procedure and proceed to a decision in this
matter as a resolution in the Complainant’s favour may obviate the need to
maintain the legal proceedings.
The Respondent has
indicated that it wishes the legal proceedings to be withdrawn and, although it
did not submit a formal Response, sent an informal communication by the
deadline set for a Response indicating that whilst it did not agree with the
Complainant’s case, it had re-branded and was happy for the Domain Name to be
transferred to the Complainant.
DISCUSSION
Despite the fact that the Respondent did not submit a formal response,
it would be wrong to ignore its indication that, although it does not accept
the Complainant’s case, it is happy for the Domain Name to be transferred to
the Complainant, especially as the communication was received by the date set
for a Response and was only technically deficient as it was submitted
electronically and not in hard copy. See
Strum v. Nordic Net
The Complainant has issued UK
legal proceedings against the Respondent for breach of contract, but asks that
the Panel proceed to a decision as to do so may obviate the need for the legal
proceedings to continue. Since the Complainant has alleged bad faith use and
registration of the Domain Name the Panel has jurisdiction to hear the dispute
under the Policy and will exercise its discretion under Paragraph 18 (a) of the
Rules of Procedure and proceed to a decision in this matter, not least to save
the parties further time and costs.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
The Panel’s view is that the Complainant has shown it has rights in the
name Verizon and, as the Respondent has agreed to transfer the Domain Name to
the Complainant and has not done so, the Respondent has no legitimate interest
in the Domain Name and is currently holding the Domain Name in bad faith. The
Respondent has given no reasons why the “Verizon” name was adopted and the
inference could be drawn that the name was adopted in bad faith.
However, it has been held that in circumstances such as this where the
Respondent has not contested the transfer of the Domain Name and agrees to
transfer the Domain Name to the Complainant, the Panel may decide to forego the lengthy traditional UDRP analysis and
order an immediate transfer of the <verizoncapital.com>
domain name. See Boehringer Ingelheim Int’l GmbH
v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum
DECISION
Having established all three elements required under the ICANN Policy
and having reviewed the Complainant’s request for relief and the Respondent’s
consent to that relief with legal advice the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <verizoncapital.com> domain name be TRANSFERRED from
Respondent to Complainant.
Dawn Osborne, Palmer Biggs Legal, Panelist
Dated: 13 July 2009
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