Verizon Trademark Services LLC v Donald Sklenka
Claim Number: FA1411001588405
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by Patrick M. Flaherty, Virginia, USA. Respondent is Donald Sklenka (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <verizonindycarseries.com>,<verizonindycarseries.info>, <verizonindycarseries.net>, and <verizonindycarseries.org>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2014; the National Arbitration Forum received payment on November 4, 2014.
On November 5, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <verizonindycarseries.com>, <verizonindycarseries.info>, <verizonindycarseries.net>, and <verizonindycarseries.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2014 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@verizonindycarseries.com, postmaster@verizonindycarseries.info, postmaster@verizonindycarseries.net, postmaster@verizonindycarseries.org. Also on November 6, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on November 26, 2014.
Complainant submitted a timely and compliant Additional Submission on December 1, 2014. The Panel has noted the contents of this Additional Submission and taken it into account in considering its decision.
Respondent submitted a timely and compliant Additional Submission on December 7, 2014. The Panel has noted the contents of this Additional Submission and taken it into account in considering its decision.
The Panel has also noted the contents of correspondence between the parties and has taken it into account in considering its decision.
On December 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant uses the VERIZON mark to promote a wide range of telecommunication services to people around the globe. The VERIZON mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,886,813, registered Sept. 21, 2004). The <verizonindycarseries.com>, <verizonindycarseries.info>, <verizonindycarseries.net>, and <verizonindycarseries.org> domain names, add the third-party registered INDYCAR mark, the generic term “series” and gTLD “.com.”
Respondent uses the <verizonindycarseries.com>, <verizonindycarseries.info>, <verizonindycarseries.net>, and <verizonindycarseries.org> domain names. Respondent is not known by these domain names, nor has it received authority to use VERIZON in domain names. Respondent’s claim that it hoped to build a relationship with Complainant “at some point in the future” is a weak argument when the domain names are being parked to host advertisements. Furthermore, Respondent sought to blackmail Complainant by threatening to paint Complainant in an unfavorable light. See Compl., at Attached Annex 6.
Respondent
registered and is using the domain names in bad faith. Respondent is engaging
in a pattern of bad faith registration. The use of the domain names to allow
competing content on the domain names’ websites is indicative of Policy ¶
4(b)(iii) bad faith. Respondent’s decision to allow competing advertisements,
as well as other monetized advertising, is suggestive of Respondent’s aim to
capitalize on the likelihood of Internet users’ confusion under Policy ¶
4(b)(iv). Respondent acted in opportunistic bad faith by affecting the
registration of the domain names on the same day that Complainant announced a
partnership with the INDYCAR business.
B. Respondent
Respondent made the following contentions.
Some 15 years ago, Respondent registered the domain name “champweb.net” as an online community based website for the Champ Car motorsports series, it had operated successfully and Respondent’s plan in registering the disputed domain names in the present case was based on the objective of establishing a similar fan site for the community associated with the joint Verizon and Indycar motor sports series. Respondent did not register the domain names in bad faith. Complainant was free to register the domain names during its negotiations with the INDYCAR business, but failed to do so. Respondent is not profiting through the use of the domain names, as GoDaddy itself enjoys the ads that it elected to place on the website—Respondent has actually lost money because the domain names required a registration fee. Respondent is not seeking to sell the domain names.
Respondent admits that it registered the disputed domain names upon learning of the use of the VERIZON mark in the INDYCAR racing event. Although Respondent admits to many of the formal allegations in the complaint, it maintains that the domain names were registered in good faith and that Complainant has no evidence to support its assertions and conclusions.
C. Additional Submissions
Complainant
Complainant made the following additional submissions.
Respondent was clearly seeking a quid pro quo by using the domain names in the hope of getting Complainant’s approval for a project to be run by Respondent. Further, Respondent is to be held accountable for whatever content appears on the websites of the domain names that he registered—regardless of whether Respondent has allowed a third party to access or utilize the domain names.
Respondent
Respondent’s additional submission submits that:
1.Complainant has made a false accusation, claiming that the respondent
is generating revenue based off of PPC ads on the parked domains listed in the Complaint. The respondent has acknowledged that the domains are in fact parked. Until the site is connected to the respondent’s server, GoDaddy remains the hosting organization for the domains listed. The ads that are shown on the domains listed in the Complaint are placed there from GoDaddy, not the Respondent. Additional proof that the respondent is not taking part in any revenue sharing program with GoDaddy can be seen in the Annex Domain Details. You can see that in order to generate revenue, you have to add the “CashParking” (see annex cash parking) to your cart and purchase the feature as an add-on to the GoDaddy service. The Respondent has never added this feature to the domains in question and has no plans to ever do so.
2. The Complainant again claims that the Respondent is intending to sell the domains listed in the complaint, by creating a story based off the email that was sent to Verizon. The email is correct. The Respondent would like to obtain the rights to use the website to create an online community. No where does it say that the Respondent is looking to sell the domains or make money off the domains.
3. “The Respondent has indeed realized financial gain by creating a likelihood of
confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites, and the Panel may conclude that the Respondent is guilty of bad faith use and registration as the result.” This statement is 100% false as the Respondent has never realized any financial gain from the domains in question. The Complainant has zero evidence, hence the lack of support, that theRespondent has generated any revenue from the domains. Why is this the case? Because there has not been any.
4. The Complainant continues to make false accusations and the respondent hopes that the panel recognized the lack of evidence provided and understand that all the claims are false. The Respondent has never insinuated and attempted to sell the domains. The Respondent has not made any money off of the domains. The domains were and are registered for the attempt to create an online community similar to what the Respondent has accomplished in the past (see annex Champweb history).
1. Complainant is a United States company that is one of the world’s leading providers of communications, entertainment, IT and security products and services to residential, business, wholesale, and government wireline and wireless customers.
2. Complainant uses the VERIZON mark to promote a wide range of telecommunication services to people around the globe. The VERIZON mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,886,813, registered Sept. 21, 2004).
3. Respondent registered the disputed domain names on March 14, 2014.
4. The domain names are not used for websites specifically related to the disputed domain names, but resolve to parking pages carrying various advertising links.
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."
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant uses the VERIZON mark to promote a wide range of telecommunication services to people around the globe. Complainant argues that this VERIZON mark is registered with the USPTO (e.g., Reg. No. 2,886,813, registered Sept. 21, 2004). The Panel finds this USPTO registration as satisfactory and sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in a mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s VERIZON mark.
Complainant submits that the <verizonindycarseries.com>, <verizonindycarseries.info>, <verizonindycarseries.net>, and <verizonindycarseries.org> domain names, adds the third-party registered INDYCAR mark, and the generic word “series” and various gTLDs. The Panel agrees that neither the addition of the words “indycar” or “series”, nor the addition of the gTLDs defeats the inherent confusing similarity that arises when incorporating the entire VERIZON mark into a domain name that refers to a major racing event. Naturally, a domain name incorporating the trademark VERIZON will be interpreted by internet users as one invoking the well-known VERIZON mark and the company and activities associated with it. When internet users see that the VERIZON trademark is linked in the domain names with the expression “indycar”, they will naturally assume that the domain names are invoking a combined activity or enterprise between Complainant and those responsible for the Verizon and Indycar enterprise. When they see that the domain names also include the word "series”, they will naturally assume that the domain names relate to the series of races to be conducted by the combined Verizon and Indycar interests. See, e.g., Chevron Intellectual Property LLC v. Ryan G Foo / PPA Media Servs., FA 1572486 (Nat. Arb. Forum Sept. 16, 2014) (agreeing to transfer the <texacochevron.com> domain name as confusingly similar, even when the domain name was merely the complainant’s mark and the mark of an independent competitors).The domain names are therefore similar to the VERIZON trademark and confusingly so, as internet users will assume that the domain names are referring to the trademark. The Panel is re-enforced in its view that this is so, as the unchallenged evidence is that the domain names were registered on the same day that the combined enterprise between Complainant and Indycar was announced. Indeed, the Panel does not understand that Respondent denies that concurrence of events, but rather that he asserts it and that it was his motivation in registering the disputed domain names.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s VERIZON trademark and used it in its four domain names with the additions referred to above;
(b) Respondent has then retained the domain names and permitted them to be used to carry advertising links for various products;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent is not known by these domain names, nor has it received authority to use VERIZON in domain names. The Panel notes that Respondent does not suggest that he has ever been known by the domain names and it is clear on the evidence that he has not been so known; as such the Panel finds that Policy ¶ 4(c)(ii) does not apply here and that Respondent is not commonly known by the domain names. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
All of these matters go to make up the prima facie case against Respondent. That being so, the onus then falls on Respondent to show how he rebuts the prima facie case and it is to that issue that the Panel now turns.
Respondent’s case to rebut the prima facie case, as expressed and clearly argued for in the Response and Respondent’s additional Submission is essentially that, based on his experience with a similar Champ Car motorsports series and the website associated with it, he intended to use the disputed domain names in the present case to set up a fan site for followers and supporters of the combined Verizon-Indycar motor sports series to help build an online Indycar community and that his intention has been “to help drive traffic to building an online community for the Indycar series”. He also says that the registered domain names would help grow the support for the Indycar series, which in turn would help Complaint increase its fan base. To show his bona fides with respect to this intention, he adds that the current websites to which the domain names resolve do not currently redirect to any other site and have been in the same state since the domain names were registered. He adds that the advertising links presently on the websites are not his but that they are the responsibility of Go Daddy the registrar of the domain names and that he has not made money from the registration of the domain names, but is out of pocket from registering them. As to when this intention to create the fan site would be put into practice, he maintains that it would be “at some point in the future”.
The question, therefore, is whether this evidence is sufficient to rebut the prima facie case against Respondent. Complainant argues that Respondent’s claim that it hoped to build a relationship with Complainant “at some point in the future” is a weak argument when the domain names are being parked to host advertisements. Furthermore, Complainant alleges that Respondent threatened to paint Complainant in an unfavorable light. See Compl., at Attached Annex 6. The Panel notes that the domain names’ websites appear to be used for commercial advertising endeavors. In that regard the primary instigation for those commercial links may have come from Go Daddy as a registrar, but they are nevertheless on Respondent’s sites for which he is responsible and in any event they can and could have been removed at the direction of Respondent, which has not happened. See Compl., at Attached Ex. 5.
Essentially, Respondent claims that he has been motivated by the wish to establish a fan site and it is the Panel’s task to decide whether the evidence in support of that proposition is strong enough to satisfy the onus of proof which is now on Respondent.
In particular, Respondent is quite specific in saying that his intention is to establish a fan site based on his past experience, as he “has been wanting to restart Champweb.net using all of the experience gained over the past 15 years to fulfill a passion and fill a void to an incomplete story”, that he “has a clear history of working with the Indycar Series and creating online communities”, that he has the intention to start up the Champweb.net online site and community in a similar fashion. The use of verizonindycarseries.com would help drive traffic and be a leading domain for Champweb.net.”, that he “owned and operated an online Indycar community for 6 years” and, significantly, in the Additional Submission, that “The domains were and are registered for the attempt to create an online community similar to what the respondent
has accomplished in the past (see annex Champweb history)”.
Fan sites have been accepted in appropriate circumstances as giving rise to a legitimate interest in a domain name. The test, however, is whether the fan site defence is, on the evidence, “plausible”: Garth Brooks v Commbine.com, LLC , FA0011000096097 ( Nat. Arb. Forum, Jan. 3, 2001. Similar considerations in the case of gripe sites have been discussed in Dr. Herbert Nevyas and Dr. Anita Nevyas-Wallace v. Dom Morgan / n/a, FA1007001333710 ( Nat. Arb. Forum.Aug..26, 2010.
Sometimes, the evidence has been held to be adequate. For example, in Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross WIPO Case No. D2001-1042, the Panel was able to say:
“Respondent has been using the Domain Name in connection with a web site to share information on the author Gary Jennings. The Panel finds on this basis that Respondent has a legitimate interest in the Domain Name.”
But the Panel in the present case is unable to say the same about the action that Respondent has actually taken and the present case as a whole is analogous to those cases where the fan site defence has not been accepted on the evidence. For instance, in Hero Honda Motors Limited v. Rao Tella, WIPO Case No. D2000-0365 the Panel rejected the fan site defence for the following reasons, which are analogous to the present case:
“He (the Respondent) claims to have a legitimate interest in the said name because he is interested in establishing an internet fan club for Honda motor cars. In the view of this Administrative Panel, these plans, without more, would not give the Respondent any right or legitimate interest in the name. Although he submits that he has intentions so to do, the Respondent has not done anything to establish this fan club. Furthermore since the Respondent has not taken any steps whatsoever to establish his fan club www site it cannot be successfully argued that he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the present case, Respondent has declared his intention and wish, but has not pointed to any persuasive evidence by way of preparation for or consummation of the proposed fan site. That has been seen in some cases as a factor casting doubt on whether there is an actual fan site or an intention to establish a real fan site and the Panel concludes that it is a factor in the present case.
In the present case there are, in addition, other factors that also militate against a finding of the intention to establish a genuine fan site. First, there is the apparent commercial content of the websites to which the domain names presently resolve. Respondent is adamant in denying any responsibility for that commercial content. Respondent is, however, ultimately responsible for the contents of his websites.
Secondly, there is the curious fact that Respondent has registered four domain names when clearly one would be adequate for a fan site if that were Respondent’s only intention; registering four domain names suggests that Respondent’s intention may well have been to cover the field with the respective gTLDs and to prevent others registering the domain names.
Moreover and more importantly, in the opinion of the Panel, Respondent’s previous experience with a fan site had commercial associations and connections which cast doubt on whether his intention, even now, now is to establish a genuine fan site free of commercial content. If Respondent’s argument is that he is establishing a genuine fan site similar to the one that he previously ran, that argument tends to suggest that his intention now is to establish another website that will be in part commercial and hence not a genuine fan site. According to Respondent, the previous website produced “a full time marketing job” for him. Moreover, Respondent says that “The respondent would work full time for Champ Car for the years of 2005 and 2006. In December of 2007, the series would go through a merger with the Indy Racing League forming the “Indycar Series” ” which are allusions to commercial activity.
But the matter goes further, as Respondent has
urged the Panel to look at the previous website
and for that reason the Panel has done so. Respondent has exhibited to his Response, some extracts from the Wayback Machine of the content of the Champweb website, one of which is dated 23 September 2003, but that extract actually carries advertisements. The Panel has looked at other extracts on the Wayback Machine going into 2004 and they carry the word “Advertising”, which is an invitation to advertise on the website. Advertisements are a regular feature of the website going back to 2001. On 26 February 2001, the site carried an advertisements for Bosch. On 21 July 2001, it carried an advertisement for Klein tools. On 12 September 2002¸ the site carried a reader survey on the running of the site in which the options put to readers included the option of buying “Champweb merchandise”, “cross promotional sponsorship” and paying a small subscription fee, all of which are essentially commercial options. The site also carried small advertisements for commercial enterprises. On 23 November 2002, the site carried an invitation to “Advertise on this site” and that invitation is also found in editions of the site through November 2002 as well as advertisements for racewear and a photographer.
The proper categorisation of the previous website is that of a website that communicates information about the motor races concerned and information of interest to followers of the sport, but a website that is also commercial. As such, the proposed site, held out as to be similar to or based on the previous Champweb site is not a fan site free of commercial content.
Taken in its entirety, the Panel is unable to conclude on the balance of probabilities that Respondent intended to or has done anything directed towards establishing a genuine fan site. Accordingly, the Panel finds that the use made by Respondent of the four domain names and proposed to be made of them, is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, by way of a fan site or on any other basis.
There is no other ground on which it could be argued that Respondent had a right or legitimate interest in the domain names and accordingly the Panel finds that Respondent has no such right or interest in the domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith, within the meaning of the Policy. That is so for the following reasons.
First, it must be said that as the Panel has rejected the principal defence of Respondent relating to the alleged fan site, this suggests that the registration and use of the domain names, by retaining them and allowing them to carry advertisements and more importantly by proposing to use them for the similar and partly commercial Champweb website, is in the nature of bad faith, both as defined by the Policy and generally. Thus, Complainant submits that Respondent is engaging in a pattern of bad faith registration. The Panel agrees that Respondent’s registration of multiple domain names, all of which are confusingly similar to the VERIZON mark, and nearly identical to one another, provides an inference of Policy ¶ 4(b)(ii) bad faith. That is so because it suggests that Respondent’s intention was to register domain names that would prevent Complainant from registering the same domain names. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). As the Panel noted above, Respondent could have achieved his avowed purpose by registering a single domain name and the fact that he engaged in a pattern of multiple registrations inevitably raises an indication of bad faith registration that has not been negated by the evidence.
Secondly, Complainant submits that the use of the domain names to allow commercial content on the domain names’ websites is indicative of Policy ¶ 4(b)(iii) bad faith. The Panel notes that among the parked advertising on the <verizonindycarseries.com> domain name’s website are links to “Cheap Sprint,” while the other domain names feature unrelated advertising. See Compl., at Attached Ex. 5. As the Panel finds these advertisements on the <verizonindycarseries.com> domain name’s web page to be disruptive to the commercial interests of Complainant protected by its trademark, at least potentially, the Panel finds Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
But perhaps more importantly, as Respondent has specifically proposed to set up a new website similar to and based on the Champweb.net website, which was partly commercial, that is also indicative of Policy ¶ 4(b)(iii) bad faith. That is so because the proposed new website must inevitably disrupt the business of a competitor in promoting goods and services related to the Verizon and Indycar races, namely Complainant.
Thirdly, Complainant submits that Respondent’s decision to allow competing advertisements, as well as other monetized advertising and his decision to have a similar website to the Champweb.net site, presumably with similar content, is suggestive of his aim to capitalize on the likelihood of Internet users’ confusion under Policy ¶ 4(b)(iv). The Panel accepts that this argument is open on the evidence and the Panel so finds. The use of the domain names for advertising, particularly advertising in the same manner as on the Champweb.net site, carries an unacceptable risk that internet users will be directed to unrelated websites as they will believe the VERIZON mark is associated with the domain names’ websites and that Complainant is endorsing it or at least allowing it and that they will act accordingly. Respondent denies it, but advertisements trading on the use of Complainant’s trademark and leading to commercial interests must be there for the purpose of attracting business for those interests. See, e.g., 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).
Fourthly, Complainant also argues that Respondent acted in opportunistic bad faith by affecting the registration of the domain names on the same day that Complainant announced a partnership with the INDYCAR business. Complainant cites to e-mails suggesting that Respondent’s interest in registering the domain names was spurred by the endeavor involving Verizon and Indycar which involved using the VERIZON and INDYCAR marks. See Compl., at Attached Ex. 6. As the Panel agrees, it finds that Respondent registered the domain names to take advantage of the business partnership for the branding of the VERIZON on INDYCAR race events, and as such the inference is raised that Respondent has acted with opportunistic bad faith under Policy ¶ 4(a)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s trademark, its use to date of the disputed domain names and proposed use, modeled on the previous Champweb.net site, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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 <verizonindycarseries.com>, <verizonindycarseries.info>, <verizonindycarseries.net>, and <verizonindycarseries.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 5, 2014
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