Verizon Trademark Services LLC v. Verizon Capital
Claim Number: FA0905001265511
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.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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.
Complainant requests that the domain name be transferred from Respondent to 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.”)
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.
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.
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
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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