national
arbitration forum
DECISION
Verizon Trademark Services LLC v.
Claim Number: FA0611000830994
PARTIES
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <verizonfttp.com>, <verizonfttp.net>, <verizonsolutions.com>, <verizonsolutions.net>, <verizonsolutions.biz>, <verizonsolutions.info>, <fiosonlinereviews.com>, <fiosonlinereviews.net>, <fiosonlinereviews.biz> and <fiosonlinereviews.info>, registered with Go Daddy Software, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2006.
On November 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <verizonfttp.com>, <verizonfttp.net>, <verizonsolutions.com>, <verizonsolutions.net>, <verizonsolutions.biz>, <verizonsolutions.info>, <fiosonlinereviews.com>, <fiosonlinereviews.net>, <fiosonlinereviews.biz> and <fiosonlinereviews.info> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 November 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@verizonfttp.com, postmaster@verizonfttp.net, postmaster@verizonsolutions.com, postmaster@verizonsolutions.net, postmaster@verizonsolutions.biz, postmaster@verizonsolutions.info, postmaster@fiosonlinereviews.com, postmaster@fiosonlinereviews.net, postmaster@fiosonlinereviews.biz and postmaster@fiosonlinereviews.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
An Additional Submission was submitted by Complainant on December 6, 2006 and was determined to be deficient. The Panel has chosen not to consider this Additional Submission in its Decision.
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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
A. Verizon and its VERIZON Trademark
1.
The affiliates of Verizon Communications (the “Verizon
Companies”) comprise one of the world’s leading providers of communications and
entertainment products and services to wireline and wireless customers
(residential, business, wholesale and government).
2.
A publicly traded company on the New York Stock
Exchange under the stock ticker symbol VZ, Verizon Communications generates
annual consolidated operating revenues of approximately $90,000,000,000, is a
Dow 30 company and ranks in the top 20 of the Fortune 500 list. Verizon Communications and its affiliates
employ a diverse workforce of approximately 250,000 employees.
3. The Verizon Companies offer and provide a full array of communications products and services and a variety of entertainment products and services under the VERIZON Trademark. The Verizon Companies have used the VERIZON Trademark since April 2000.
4.
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 communications and entertainment products and
services to consumers; small, medium and large businesses; and government
customers. The Verizon Companies operate
three (3) strategic business units, which operate and manage as strategic
business units and organize by products and services. They include the following: Wireline,
Domestic Wireless and Information Services.
5.
The Verizon Wireline telecommunications business
consists of Verizon Telecom and Verizon Business. Verizon Telecom is a provider of telephone
and broadband products and services to consumer and small and medium business
customers in 28 states and the
6.
The Verizon domestic wireless business, operating as
Verizon Wireless, provides wireless voice and data products and services to nearly
57 million customers across the
7.
The Verizon Information Services multi-platform
business provides yellow pages and related shopping information products and
services. The Verizon Information
Services business produces and publishes yellow and white pages print
directories totaling more than 1,400 directory
titles in 35 states, the
8. The Verizon Companies’ main websites featuring information on many of the products and services of the Verizon Companies can be accessed via the domain names VERIZON.COM, which has been used since at least as early as June 2000, and VERIZONWIRELESS.COM, which has been used since at least as early as April 2000.
9. The Verizon Companies have used and use the term “SOLUTIONS” in connection with the VERIZON Trademark. For example, the Verizon Companies use the trademark VERIZON SOLUTIONS PARTNER PROGRAM for its products and services for authorized agents. Through the VERIZON SOLUTIONS PARTNER PROGRAM, authorized agents of the Verizon Companies offer data and voice products and services.
10.
Verizon’s affiliates spend and have spent many millions of dollars each year since 2000
to extensively advertise and promote VERIZON-branded products and services in
the
B. Verizon’s FIOS Trademark
11. The Verizon Companies have offered and provided communications and entertainment products and services under the FIOS Trademarks since at least as early as August 2004.
12. The Verizon Companies’ FIOS services include broadband and television services. The FIOS broadband services are designed to provide the fastest and most powerful Internet access offered by the Verizon Companies, with maximum connection speeds of up to 50 or 30 Mbps downstream and 3 Mbps upstream (depending on the consumer’s location). The FIOS television services include 100% all digital programming, movies and sports channels, premium and international channels, expansive HD programming, an on-demand video library, interactive features, digital video recording, and fiber-quality picture and sound.
13. The Verizon Companies’ FIOS services are available to users connected to the VERIZON network via the Verizon Companies’ “Fiber-To-The-Premises,” or FTTP, program. The FTTP program refers to the Verizon Companies’ network upgrade that utilizes fiber-optic cables and associated optical electronics instead of copper wire to connect customers to the VERIZON network and provide voice service and associated features while offering nearly unlimited bandwidth for an array of data and video applications.
14.
Verizon’s affiliates spend and have spent significant amounts of money each year since
2004 to extensively advertise and promote FIOS-branded products and services in the
C. Verizon’s Trademark Holdings
15. Verizon’s VERIZON Trademark and FIOS Trademarks are inherently distinctive and commercially strong marks 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.
16. Verizon’s rights in the VERIZON Trademark and FIOS Trademarks are based on its common law rights acquired through the substantial and continuous use of the VERIZON Trademark and FIOS Trademarks by Verizon’s affiliates since at least as early as April 2000 and August 2004, respectively, and on Verizon’s trademark registrations.
17.
Verizon owns the following
a. 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, and 42.
b. 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. 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.
18. Verizon owns U.S. Registration No. 3,001,081 for the mark FIOS, first used August 30, 2004, filed February 6, 2004, issued September 27, 2005, covering services in International Classes 37 and 38.
19. Verizon owns U.S. Registration No. 3,147,510 for the mark VERIZON FIOS, first used August 30, 2004, filed June 3, 2004, issued September 26, 2006, covering services in International Classes 37 and 38
20.
Verizon’s registrations for the VERIZON Trademark and FIOS
Trademarks on the Principal Register constitute prima facie evidence of the
validity of the VERIZON Trademark and FIOS Trademarks and Verizon’s exclusive
rights to use its VERIZON Trademark and FIOS Trademarks throughout the
21. Registration of a trademark on the Principal Register statutorily provides nationwide rights as of the filing date of the application. 15 U.S.C. §1057(c). Thus, Verizon’s nationwide priority dates for the registrations listed in Paragraph 31 above are September 10, 1999 and March 3, 2000, respectively, and Verizon’s nationwide priority date for the registration listed in Paragraph 32 is February 6, 2004.
22. Verizon’s proprietary rights in the VERIZON Trademark and FIOS Trademarks predate Respondent’s registration of the Domain Names.
D. Respondent’s Infringing Activities and Bad Faith Acts
23. Respondent registered the Domain Names in February 2006, well after: (a) Verizon’s affiliates began using the VERIZON Trademark and FIOS Trademarks, (b) the effective date of Verizon’s registrations for its VERIZON Trademark and FIOS Trademarks, and (c) the VERIZON Trademark became famous.
24. Respondent offers the Domain Names for sale on GoDaddy.com’s auction website “THEDOMAINNAMEAFTERMARKET.COM.” Specifically, Respondent offers to sell the domain name VERIZONSOLUTIONS.COM for the “Buy Now” price of $50,000; the domain name VERIZONSOLUTIONS.NET for the “Buy Now” price of $7,500; the domain name VERIZONSOLUTIONS.BIZ for the “Buy Now” price of $25,000; the domain name VERIZONSOLUTIONS.INFO for the “Buy Now” price of $25,000; the domain name VERIZONFTTP.COM for the “Buy Now” price of $50,000; the domain name VERIZONFTTP.NET for the “Buy Now” price of $45,000; the domain name FIOSONLINEREVIEWS.COM for the “Buy Now” price of $245; the domain name FIOSONLINEREVIEWS.NET for the “Buy Now” price of $250; the domain name FIOSONLINEREVIEWS.BIZ for the “Buy Now” price of $175, and the domain name FIOSONLINEREVIEWS.INFO for the “Buy Now” price of $120.
25. Respondent uses the domain name VERIZONSOLUTIONS.COM for a website offering the Domain Name for sale. Specifically, Respondent’s website states: “This Domain Name is For Sale! / www.VERIZONSOLUTIONS.COM / A global telecomm giant….This name is definitely capable of generating the type of traffic to your site to make it a well-worth investment. Names like these do not come up very often, so seize this opportunity....”
26. Respondent uses the domain names VERIZONSOLUTIONS.NET, VERIZONSOLUTIONS.BIZ, and VERIZONSOLUTIONS.INFO for commercial, pay-per-click websites providing advertising links to various websites, including websites for the Verizon Companies’ competitors and third-party websites claiming to offer VERIZON-branded products and services. Respondent’s websites also display VERIZON-formative categories that lead to links advertising directly competing websites and other commercial websites. Respondent’s websites additionally display banner advertisements for GoDaddy.com’s domain-name registration and web hosting services.
27. Respondent uses the domain names VERIZONFTTP.COM, VERIZONFTTP.NET, FIOSONLINEREVIEWS.COM, FIOSONLINEREVIEWS.NET, FIOSONLINEREVIEWS.BIZ, and FIOSONLINEREVIEWS.INFO for commercial, pay-per-click websites providing advertising links to various websites, including websites for the Verizon Companies’ competitors and third-party websites claiming to offer VERIZON-branded products and services. Respondent’s websites also display VERIZON-formative and FIOS-formative categories that lead to links advertising directly competing websites and other commercial websites. Respondent’s websites additionally display banner advertisements for GoDaddy.com’s domain- name registration and web hosting services.
THE DOMAIN
NAMES ARE CONFUSINGLY SIMILAR
TO
COMPLAINANT’S MARKS
28.
The
domain names VERIZONFTTP.COM, VERIZONFTTP.NET, VERIZONSOLUTIONS.COM,
VERIZONSOLUTIONS.NET, VERIZONSOLUTIONS.BIZ, VERIZONSOLUTIONS.INFO are
confusingly similar to Complainant’s famous, federally registered VERIZON
Trademark because each Domain Name is comprised of the VERIZON Trademark in its
entirety and a term related to the Verizon Companies’ business (the
abbreviation “FTTP” that stands for “Fiber-To-The-Premises” as described in
Paragraph 27 above, or the term “solutions” that the Verizon Companies use in
connection with the VERIZON Trademark as described in Paragraph 22 above). Combining the VERIZON Trademark with a term
related to the business of the Verizon Companies is not sufficient to
distinguish the Domain Names from the VERIZON Trademark. See, e.g., Broadcom
Corporation v. Cable Management Ireland (NAF FA0207000115077) (finding the
domain name <broadcom-solutions.com> confusingly similar to complainant’s
BROADCOM mark because the term “solutions” relates to complainant’s business
and does not distinguish the domain name from complainant’s coined mark); Nortel
Networks Limited v. Buymebuyme.com, Inc. (NAF FA0604000671847) (finding the
domain names <nortelphones.com> and <norstarphones.com> confusingly
similar to complainant’s NORTEL and NORSTAR marks because the addition of terms
“with a direct connection to [c]omplainant’s business, fails to sufficiently
distinguish [r]espondent’s domain names from [c]omplainant’s marks pursuant to
Policy ¶4(a)(i).”).
29.
The
domain names FIOSONLINEREVIEWS.COM, FIOSONLINEREVIEWS.NET,
FIOSONLINEREVIEWS.BIZ, and FIOSONLINEREVIEWS.INFO are confusingly similar to
Complainant’s federally registered mark FIOS because each Domain Name is
comprised of the mark FIOS and the non-distinguishing generic terms “online”
and “reviews.” See, e.g., Verizon
Trademark Services, LLC v. NA et al. (NAF FA0512000616307) (finding the
domain name <verizoncenter.com>
confusingly similar to Complainant’s VERIZON trademark because
“[r]espondent’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).”); Target Brands, Inc. v. Kentech,
Inc. et al. (NAF FA0605000697861) (finding the domain name
<targetonline.org> confusingly similar to complainant’s TARGET mark because
the addition of generic terms to complainant’s mark “fails to differentiate the
disputed domain names from [c]omplainant’s mark pursuant to Policy ¶4(a)(i).”);
Western Holdings, LLC v. RegisterFly.com et al. (NAF FA0602000651448)
(finding the domain names <hylexin-reviews.com> and
<hylexineyecream.com> confusingly similar to complainant’s HYLEXIN mark
because the addition of descriptive terms does not distinguish the domain names
from complainant’s mark). The domain
names FIOSONLINEREVIEWS.COM, FIOSONLINEREVIEWS.NET, FIOSONLINEREVIEWS.BIZ, and
FIOSONLINEREVIEWS.INFO are also confusingly similar to Complainant’s federally
registered mark VERIZON FIOS.
RESPONDENT HAS NO RIGHTS OR LEGITIMATE
INTEREST
IN THE DOMAIN
NAMES
30.
Respondent’s
registration and use of the Domain Names for commercial pay-per-click websites
providing advertising links to competing websites and other commercial websites
does not constitute a bona fide offering of goods or services under the
UDRP. Nor do Respondent’s activities constitute
a legitimate noncommercial or fair use of the Domain Names under the UDRP. See, e.g., Verizon Trademark
Services, LLC v. NA et al. (NAF FA0512000616307) (holding respondent’s use
of the domain name <verizoncenter.com> for a website featuring links to competing
products and services is not a bona fide offering of goods or services or a
legitimate noncommercial or fair use of the domain name); Indymac Bank
F.S.B. v. Unasi (NAF FA0507000514785) (“[R]espondent is using the
confusingly similar domain names to operate websites that feature links to
various competing and non-competing commercial websites, through which
[r]espondent presumably receives referral fees.
Such diversionary use does not represent a bona fide offering of goods
or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use under
Policy ¶4(c)(iii).”); DoAll Company v. Titan Net et al. (NAF
FA0509000563640) (holding respondent’s use of the disputed domain name for a
website featuring commercial links to various third-party websites, for which
respondent presumably receives referral fees, does not constitute a bona fide offering of goods or
services or a legitimate noncommercial or fair use under the UDRP).
31.
Respondent is not and has not been commonly known by VERIZON, FIOS, or
the Domain Names.
32.
Respondent’s
offers to sell the Domain Names are further evidence that it lacks rights in
the Domain Names. See, e.g.,
The PNC Financial Services Group, Inc. v Thaoms et al. (NAF
FA0506000495474) (holding respondent’s offer to sell the disputed domain name
is evidence that respondent lacks rights and legitimate interests in the domain
name); Federal Home Loan Mortgage Corporation v. Deep (NAF
FA0304000154102) (finding respondent had no legitimate interest in the domain
name <freddiemac.info> because “[r]espondent’s willingness to dispose of
its rights in the domain name suggests it has no legitimate interests in
<freddiemac.info>.”).
RESPONDENT’S BAD FAITH UNDER SECTION 4(B)
OF THE UDRP
33.
Respondent’s
registration and use of the Domain Names meet the bad-faith element set forth
in Section 4(b)(i) of the UDRP because Respondent registered the Domain Names
to sell, rent, or otherwise transfer them for valuable consideration in excess
of Respondent’s documented out-of-pocket expenses. As shown above in Paragraph 35, Respondent
offers to sell the Domain Names for amounts totaling more than $200,000 on
GoDaddy.com’s website THEDOMAINNAMEAFTERMARKET.COM. In addition, as shown above in Paragraph 35,
Respondent uses the domain name VERIZONSOLUTIONS.COM for a website advertising
its offer to sell the Domain Name and promoting the Domain Name for its clear
connection to the Verizon Companies, or in Respondent’s words, a “global
telecomm giant.” Respondent’s activities
therefore constitute textbook bad faith pursuant to Section 4(b)(i) of the
UDRP. See, e.g., H-D
Michigan, Inc. v. Fishkind (NAF FA0212000139691) (holding respondent’s
offer to sell HARLEY-formative domain
names via auction constituted bad faith); Federal Home Loan Mortgage
Corporation v. Deep (NAF FA0304000154102) (finding bad faith in
respondent’s offer to sell the domain name <freddiemac.info> because
“[r]espondent uses the disputed domain name for a website that advertises
[r]espondent’s offer to sell its rights in the domain name. Such registration and use, for the purpose of
exploiting a famous mark in the hopes of commercial gain, is conduct explicitly
proscribed by the Policy.”).
34.
Respondent’s
registration and use of the ten (10) Domain Names subject to this Complaint
constitute a bad-faith pattern of registering trademark-related domain names
pursuant to Section 4(b)(ii) of the UDRP.
See, e.g., H-D Michigan, Inc. v. Morris (NAF
FA0212000137094) (finding a bad faith pattern in respondent’s registration of
six domain names comprised of complainant’s HARLEY and HARLEY-DAVIDSON marks); IndyMac Bank F.S.B. v. Domain Owner et al. (NAF FA0303000150814) (finding bad faith
pursuant to Section 4(b)(ii) in respondent’s registration of three domain names
incorporating complainant’s mark).
35.
Respondent’s
registration and use of the Domain Names meet the bad faith element set forth
in Section 4(b)(iii) of the UDRP because Respondent is disrupting the business
of Complainant and its related companies by using the Domain Names to provide
links to competing telecom products and services. See, e.g., Verizon Trademark
Services, LLC v. NA et al. (NAF FA0512000616307) (holding respondent’s use
of the domain name <verizoncenter.com> for a commercial website featuring
links to competing products and services is evidence of bad faith); Verizon
Trademark Services, LLC v. Swider (NAF FA0603000670992) (holding
respondent's use of the domain name <verizonwireless.biz> for a website
featuring links to competing websites constitutes bad faith).
36.
Respondent’s
registration and use of the Domain Names meet the bad faith element set forth
in Section 4(b)(iv) of the UDRP because Respondent uses the Domain
Names to intentionally
attract, for commercial gain, Internet users to its websites by creating a likelihood
of confusion with Complainant and its VERIZON Trademark and FIOS Trademarks as
to the source, sponsorship, affiliation, and/or endorsement of Respondent’s
website. See, e.g., Verizon
Trademark Services, LLC v. NA et al. (NAF FA0512000616307) (holding
respondent's use of the domain name <verizoncenter.com> for a commercial
website for which respondent receives click-through fees constitutes bad faith
pursuant to Section 4(b)(iv); Capital One
Financial Corporation v. LaPorte Holdings, Inc. (NAF FA0502000417712) (holding respondent’s use of
the disputed CAPITAL ONE-formative domain names for pay-per-click websites
constitutes bad faith and holding “[r]espondent is profiting from the
unauthorized use of [c]omplainant’s registered mark in its domain names. Such
infringement is what the Policy was intended to remedy and is evidence of bad
faith registration and use under Policy ¶4(b)(iv).”).
37.
Given
the fame of the VERIZON Trademark, Verizon’s federal trademark registrations for
its VERIZON Trademark and FIOS Trademarks, and the fact that Respondent uses
the Domain Names for websites displaying competing links and VERIZON-related
and/or FIOS-related categories, Respondent undoubtedly had knowledge of
Complainant’s rights in its VERIZON Trademark and FIOS Trademarks when it
registered the Domain Names. By
registering the Domain Names with knowledge of Complainant’s rights in its
VERIZON Trademark and FIOS Trademarks, Respondent acted in bad faith. See, e.g., Verizon Trademark
Services, LLC v. NA et al. (NAF FA0512000616307) (holding respondent
registered with domain name <verizoncenter.com> in bad faith with “at
least constructive knowledge of Complainant’s rights in the VERIZON Trademark
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).”); IndyMac Bank, F.S.B. v. Jason U
Carpenter d/b/a Jason U Internet Inc (NAF FA0505000474818) (holding
respondent’s registration of the domain names constitutes bad faith because he
had actual knowledge of complainant’s trademarks as shown by the connection
between respondent’s pay-per-click website relating to complainant’s business).
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Verizon Trademark Services LLC, is a provider of communications and entertainment goods and services to wireline and wireless customers. Complainant holds registrations with the Untied States Patent and Trademark Office (“USPTO”) for the VERIZON (Reg. No. 2,886, 813 issued September 21, 2004; Reg. No. 3, 085,712 issued April 25, 2004), FIOS (3,001,081 issued September 27, 2005) and VERIZON FIOS (Reg. No. 3,147,510 issued September 26, 2006) marks. Complainant utilizes these marks in connection with its communications and entertainment goods and services.
Respondent registered the <verizonfttp.com> and <verizonfttp.net> domain names on February 24, 2006, and registered the <fiosonlinereviews.com>, <verizonsolutions.net>, <verizonsolutions.biz>, <verizonsolutions.info>, <fiosonlinereviews.biz>, <verizonsolutions.com>, <fiosonlinereviews.info> and <fiosonlinereviews.net> domain names on February 25, 2006. Respondent has offered all of the disputed domain names for sale on GoDaddy.com’s auction website with “buy it now” prices ranging from $50,000 for the <verizonsolutions.com> domain name to $120 for the <fiosonlinereviews.info> domain name. Respondent is also advertising the <verizonsolutions.com> domain name for sale at the website located at that domain name. Respondent is using the remaining domain names to operate websites featuring links to third-party websites. Many of the linked websites offer communications and entertainment goods and services in direct competition with Compainant while other linked websites are unrelated to Complainant’s business.
DISCUSSION
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Identical and/or Confusingly Similar
Complainant has established rights in the VERIZON, FIOS and
VERIZON FIOS marks pursuant to Policy ¶4(a)(i) through registration of the
marks with the USPTO. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., 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.”).
Respondent’s domain names are confusingly similar to
Complainant’s marks. Respondent’s <verizonfttp.com>, <verizonfttp.net>, <verizonsolutions.com>,
<verizonsolutions.net>, <verizonsolutions.biz> and <verizonsolutions.info>
domain names include Complainant’s VERIZON mark in its entirety without
alteration. Respondent adds the generic
terms “fttp” and “solutions” to Complainant’s mark along with a variety of
generic top-level domains. These generic
terms have also previously been used in connection with Complainant’s business. Respondent’s <fiosonlinereviews.com>, <fiosonlinereviews.net>,
<fiosonlinereviews.biz> and <fiosonlinereviews.info> domain
names include Complainant’s FIOS mark in its entirety with the addition of the
terms “online” and “reviews” as well as different of generic top-level
domains. The addition of generic or
descriptive terms to Complainant’s marks does not distinguish the disputed
domain names from Complainant’s marks, nor does the addition of generic
top-level domains. The Panel finds the
disputed domain names are confusingly similar to Complainant’s marks pursuant
to Policy ¶4(a)(i). See Oki Data
Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”); 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 in each case, namely the trademark
SONY” and thus Policy ¶4(a)(i) is satisfied).
The Panel finds Policy ¶4(a)(i) satisfied.
Rights or Legitimate Interests
Complainant asserts Respondent lacks rights and legitimate interests in the disputed domain name. Under the Policy, Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). Respondent had the opportunity to present the Panel with evidence or arguments in support of its rights or legitimate interests in a Response. The Panel views Respondent’s failure to submit such a Response as evidence Respondent lacks rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will nevertheless examine the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶4(c).
Respondent is using the disputed domain names to operate websites populated with links to third-party websites, many of which are commercial websites in competition with Complainant. Internet users are redirected to Respondent’s website because of the confusing similarity between the disputed domain names and Complainant’s marks. Presumably, when Internet users click on the links posted on Respondent’s website, Respondent receives pay-per-click referral fees. Because Respondent’s websites fail to offer anything other than third-party links, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as contemplated by Policy ¶4(c)(i). Nor is Respondent using the disputed domain name in connection with a legitimate noncommercial or fair use as contemplated by Policy ¶4(c)(iii) because Respondent is presumably profiting when Internet users click on the links posted on Respondent’s website. Respondent has indicated on GoDaddy.com’s auction website and on the website connected to the <verizonsolutions.com> domain name that the disputed domain names are for sale for prices ranging from $120 to $50,000. Respondent’s willingness to sell the domain names is further evidence that Respondent has rights or legitimate interests in the disputed domain names. From all of these facts, the Panel finds Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶¶4(c)(i) and (iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
There is no available evidence indicating Respondent is
commonly known by the disputed domain names.
Respondent’s WHOIS information identifies Respondent as “Barmax
Distribution,” a name with no apparent relationship to the disputed domain
names. Complainant also asserts without
contradiction Respondent is not affiliated with Complainant and does not have
permission from Complainant to reflect Complainant’s mark in a domain
name. The Panel finds Respondent lacks
rights or legitimate interests pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Registration and Use in Bad Faith
Respondent has posted the disputed domain names for sale on GoDaddy.com’s auction website. Many of the disputed domain names are offered for sale for thousands of dollars. The website connected to the <verizonsolutions.com> domain name offers that domain name for sale for $50,000. The Panel finds Respondent’s attempt to sell the disputed domain names for prices in excess of Respondent’s presumed out of pocket expenses is evidence of bad faith registration and use pursuant to Policy ¶4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites filled with links to third-party websites, many of which are commercial websites offering entertainment and communications goods and services in competition with Complainant. Internet users redirected to Respondent’s websites while trying to find Complainant’s genuine website may follow the available third-party links and do business with one of Complainant’s competitors. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Respondent’s domain names are confusingly similar to Complainant’s marks. Internet users seeking Complainant’s genuine website may easily find themselves instead redirected to Respondent’s websites. The confusing similarity between the disputed domain names and Complainant’s marks combined with the content of Respondent’s websites featuring links to third-party websites offering goods and services similar to those offered by Complainant may cause Internet users to mistakenly believe that Respondent’s website is affiliated with Complainant. Respondent is presumably profiting from this confusion by collecting pay-per-click referral fees from the links posted at its website. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds Policy ¶4(a)(iii) satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <verizonfttp.com>, <verizonfttp.net>, <verizonsolutions.com>, <verizonsolutions.net>, <verizonsolutions.biz>, <verizonsolutions.info>, <fiosonlinereviews.com>, <fiosonlinereviews.net>, <fiosonlinereviews.biz> and <fiosonlinereviews.info> domain name be TRANSFERRED from Respondent to Complainant.
Dated: December 15, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum