Verizon Trademark Services LLC v. Venta c/o Leonard Bogucki
Claim Number: FA1005001326688
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by Patrick
M. Flaherty,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <verzonwireless.com>, registered with eNom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 26, 2010.
On May 26, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <verzonwireless.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On 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@verzonwireless.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 James A. Carmody, Esq., 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 <verzonwireless.com> domain name is confusingly similar to Complainant’s VERIZON mark.
2. Respondent does not have any rights or legitimate interests in the <verzonwireless.com> domain name.
3. Respondent registered and used the <verzonwireless.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Verizon Trademark Services LLC, is the owner and operator of Verizon Communications and Verizon Wireless that offers wireless communication and entertainment products to more than 92.8 million customers. Complainant operates under 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, Venta c/o Leonard Bogucki, registered the <verzonwireless.com> domain name on August 7, 2001. Respondent’s disputed domain name resolves to the third-party website <usseek.com> and displays third-party links to various cellular and wireless communications products and services in competition with Complainant as well as a link to Complainant’s official <verizonwireless.com> website.
Complainant offers evidence that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Expedia, Inc. v. Venta, Bogucki, D2001-1222 (WIPO Dec. 19, 2001); see also AutoNation Holding Corp. v. Venta, D2002-0984 (WIPO Dec. 17, 2002); see also Wells Fargo & Co. v. Venta and Bogucki, FA 147305 (Nat. Arb. Forum April 16, 2003).
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.
The Panel finds that Complainant has established rights in its VERIZON mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO (e.g., Reg. No. 2,886,813 filed Sept. 10, 1999; issued Sept. 21, 2004). The Panel further finds that Complainant’s rights in its mark date back to the filing date of Complainant’s application with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <verzonwireless.com> domain name is
confusingly similar to Complainant’s VERIZON mark. Complainant argues that deleting the letter “i”
from its mark and adding the descriptive term “wireless” does not distinguish
the disputed domain name from Complainant’s mark. Complainant further notes that previous
panels have found that the addition of a generic top-level domain (“gTLD”) such
as “.com” is irrelevant when determining whether a disputed domain name is
confusingly similar to a mark. See Pfizer
Inc. v. BargainName.com, D2005-0299
(WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was
confusingly similar to the complainant’s PFIZER mark, as the respondent simply
omitted the letter “i”); see also Kohler
Co. v. Curley, FA 890812 (Nat.
Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the
disputed domain name,
contained the complainant’s mark in its entirety adding “the descriptive term
‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry
Damson, Inc. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights and legitimate interests in the <verzonwireless.com> domain name. Complainant is required to produce a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). After Complainant has produced a prima facie case the burden of proof shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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 consider Respondent’s failure as an admission of Complainant’s allegations. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also 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 <verzonwireless.com> domain name under Policy ¶ 4(c).
Complainant contends that Respondent has not been granted permission to use its mark in any way, and that Respondent has not become known by the disputed domain name. The WHOIS information for the <verzonwireless.com> domain name identifies “Venta c/o Leonard Bogucki” as the registrant, and Respondent has not submitted any evidence to refute Complainant’s accusations. Therefore, the Panel finds that Respondent is not and has not been commonly known by the <verzonwireless.com> domain name under Policy ¶ 4(c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further alleges that Respondent is not using the
disputed domain name for a legitimate business purpose and as such does not
have rights or legitimate interests in the disputed domain name. Complainant has submitted evidence to show
that Respondent’s <verzonwireless.com>
domain name resolves to the third-party website <usseek.com>, which
displays various third-party links and advertisements for cellular and wireless
communications businesses and websites in competition with Complainant. The Panel finds that Respondent’s use of the
disputed domain name to divert Internet users who are seeking Complainant’s
products to the products and services of Complainant’s competitors is not 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 Expedia, Inc. v.
Compaid, FA 520654
(Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of
the <expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant 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)); see also Wal-Mart Stores, Inc. v.
Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of
domain names confusingly similar to the complainant’s WAL-MART mark to divert
Internet users seeking the complainant’s goods and services to websites
competing with the complainant did not constitute 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has submitted evidence to show that Respondent
has been the Respondent in several previous UDRP proceedings in which
Respondent was ordered to transfer the disputed domain names to the respective
complainants in those cases. See Expedia, Inc. v. Venta, Bogucki, D2001-1222 (WIPO Dec. 19, 2001); see also AutoNation Holding Corp. v. Venta,
D2002-0984 (WIPO Dec. 17, 2002); see also
Wells Fargo & Co. v. Venta and Bogucki, FA 147305 (Nat. Arb. Forum April
16, 2003). Complainant contends that
Respondent is a serial cybersquatter, and as such can be found to have
registered the <verzonwireless.com>
domain name in bad faith under Policy ¶ 4(b)(ii). The Panel finds that Respondent’s past
registration of trademark infringing domain names and its subsequent
registration of the <verzonwireless.com>
domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Philip
Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that
the respondent’s previous registration of domain names such as
<pillsbury.net>, <schlitz.net>, <biltmore.net> and
<honeywell.net> and subsequent registration of the disputed
<marlboro.com> domain name evidenced bad faith registration and use
pursuant to Policy ¶ 4(b)(ii)); see also
Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a
pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii)
when the respondent previously registered domain names incorporating well-known
third party trademarks).
Complainant argues that Respondent is using the disputed domain name to divert Internet users who are seeking Complainant’s products to the products and services of Complainant’s competitors. Complainant contends that such use results in a disruption of Complainant’s wireless communications business because some Internet users will purchase products from those advertised competitors of Complainant. The Panel finds that Respondent’s use of the disputed domain name to display third-party links to the competitors of Complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) where Respondent is using the disputed domain name to divert Internet users to the commercial websites of Complainant’s competitors, and is presumably receiving financial compensation for this diversion. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <verzonwireless.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 30, 2010
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