Verizon Trademark Services LLC v. Pavel Panchuk
Claim Number: FA1005001326430
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by Patrick
M. Flaherty,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwverizon.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2010.
On May 26, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwverizon.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwverizon.com by e-mail. Also on May 27, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwverizon.com> domain name is confusingly similar to Complainant’s VERIZON mark.
2. Respondent does not have any rights or legitimate interests in the <wwwverizon.com> domain name.
3. Respondent registered and used the <wwwverizon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Verizon Trademark Services LLC, is a publicly traded company with revenues exceeding $107 billion in 2009. Complainant has used its VERIZON mark since 2000 to offer a full array of communications and entertainment products in 2,700 cities and 159 countries worldwide. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its VERIZON mark (e.g., Reg. No. 2,886,813 filed Sept. 10, 1999; issued Sept. 21, 2004).
Respondent, Pavel Panchuk, registered the <wwwverizon.com> domain name on August 1, 2000. Respondent’s disputed domain name does not resolve to an active website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
Complainant argues that it has established rights in its
VERIZON mark that predate Respondent’s registration of the <wwwverizon.com> domain name. Previous panels have found that upon a
trademark registration being issued by the USPTO the valid date of rights
becomes the filing date of the trademark application. In the instant proceedings Complainant filed
its trademark application with the USPTO on September 10, 1999 and Respondent
registered the disputed domain name on August 1, 2000. The Panel therefore concludes that
Complainant has established rights in its VERIZON mark under Policy ¶ 4(a)(i),
that predate Respondent’s registration of the disputed domain name, through its
trademark registrations with the USPTO (e.g.,
Reg. No. 2,886,813 filed Sept. 10, 1999; issued Sept. 21, 2004). See AOL LLC v. Interrante, FA 681239 (Nat.
Arb. Forum May 23, 2006) (finding that where the complainant had submitted
evidence of its registration with the USPTO, “such evidence establishes
complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”);
see also Hershey Co. v. Reaves,
FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights
in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the
trademark application and predate [the] respondent’s registration”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that
the complainant can demonstrate a mark in some jurisdiction).
Complainant argues
that the <wwwverizon.com>
domain name is confusingly similar to its VERIZON mark. Complainant argues that previous panels have
held that the addition of a generic top-level domain (“gTLD”), such as “.com,”
is not relevant to Policy ¶ 4(a)(i). Complainant further argues that Respondent
simply deleted the period after the “www” while using Complainant’s mark in its
entirety within the domain name. The
Panel finds that Respondent’s <wwwverizon.com>
domain name is confusingly similar to Complainant’s VERIZON mark under Policy ¶
4(a)(i) where Respondent deleted the period after “www,” used Complainant’s
entire mark, and added the gTLD “.com.” See Bank of Am. Corp. v.
InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the
respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
the complainant’s registered trademark BANK OF
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <wwwverizon.com> domain name. Complainant is required to produce a prima facie case in support of these allegations. Upon Complainant’s production of a prima facie case the burden of proof then shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has submitted a prima facie case to support its allegations. Due to Respondent’s failure to respond to these proceedings that Panel finds that it may assume that the allegations made by Complainant are true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel will examine the evidence on record to determine if Respondent possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by
the <wwwverizon.com> domain
name, and that Complainant has not granted Respondent permission to use its
mark in a corresponding domain name. The
WHOIS information does not indicate that Respondent is commonly known by the
disputed domain name. Therefore, the
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii). See
Complainant also alleges that Respondent has failed to make
an active use of the disputed domain name, and that such failure is evidence
that Respondent lacks rights or legitimate interests in the <wwwverizon.com> domain name. Complainant has submitted a screen shot taken
from the website that resolves from the disputed domain name that is blank
except for the words “Sorry! This site it not
currently available.” The Panel finds
that Respondents failure to make an active use of the disputed domain name is
not a use in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb.
Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate
interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)
where it failed to make any active use of the domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the
respondent’s failure to use the disputed domain name for several years was not
a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may look to the surrounding circumstances in determining whether the disputed domain name was registered in bad faith, and that the factors put forth in Policy ¶ 4(b) are not an exhaustive list of bad faith evidence. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Previous panels have held that a respondent’s failure to
make an active use of a disputed domain name can be evidence itself of
respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). The Panel
finds that Respondent’s failure to make an active use of the confusingly
similar <wwwverizon.com>
domain name since registering the domain name in the year 2000 is evidence of
bad faith registration and use under Policy ¶ 4(a)(iii). See
Disney Enters. Inc. v. Meyers, FA 697818
(Nat. Arb. Forum June 26, 2006) (holding that the non-use of
a disputed domain name for several years constitutes bad faith registration and
use under Policy ¶ 4(a)(iii); see also
Pirelli
& C. S.p.A. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwverizon.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.) Panelist
Dated: June 30, 2010
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