Verizon Trademark Services LLC v. Paul Swider d/b/a OnClick
Claim Number: FA0603000670992
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by David M. Kelly of Finnegan Henderson Farabow Garrett & Dunner LLP, 901 New York Ave NW, Washington, DC, 20001. Respondent is Paul Swider d/b/a OnClick (“Respondent”), 686 Bay Road, Shelburne, VT, 05482.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <verizonwireless.biz>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 31, 2006; the National Arbitration Forum received a hard copy of the Complaint April 3, 2006.
On March 31, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <verizonwireless.biz> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 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@verizonwireless.biz by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <verizonwireless.biz>, is identical to Complainant’s VERIZON WIRELESS mark.
2. Respondent has no rights to or legitimate interests in the <verizonwireless.biz> domain name.
3. Respondent registered and used the <verizonwireless.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant established with extrinsic proof in this proceeding that as Verizon Trademark Services LLC, it offers and provides a wide array of communications services, products, and accessories under the VERIZON WIRELESS trademark and trade name and has done so since April 2000 to individuals and business consumers. Complainant’s services and products include voice services, messaging services, data services, international long distance services, Internet services, mobile game, music and video services, ring back tones, and ring tones and software.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the VERIZON WIRELESS mark (Reg. No. 2,884,027 issued September 14, 2004; filed May 11, 2000).
Respondent registered the <verizonwireless.biz> domain name March 27, 2002. Respondent is using the disputed domain name to redirect Internet users to its commercial website that features competing telecommunications consulting services.
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 will draw such inferences as the Panel 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 to 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 established rights in the VERIZON WIRELESS mark
through registration of the mark with the USPTO. Complainant’s rights in the mark date back to the filing date of
May 11, 2000. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., 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.”); 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).
The disputed domain name that
Respondent registered, <verizonwireless.biz>, is identical to Complainant’s VERIZON WIRELESS mark because Respondent’s domain name incorporates
Complainant’s mark in its entirety, adding only the generic top-level domain
“.biz.” The addition of a generic
top-level domain to Complainant’s registered mark does not negate the identical
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). Thus, the Panel finds that the disputed
domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Porto Chico Stores, Inc. v.
Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should
resolve whether a mark is identical or confusingly similar “by comparing the
trademark and the disputed domain name, without regard to the circumstances
under which either may be used”); see
also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the
addition of a generic top-level domain is irrelevant when considering whether a
domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights in the mark contained in its entirety within the disputed domain name and asserts that Respondent has no such rights to or legitimate interests in the <verizonwireless.biz> domain name. Once Complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the <verizonwireless.biz>
domain name to redirect Internet users to its commercial website that features
competing telecommunications consulting services. Respondent’s use of a domain name that is identical to
Complainant’s VERIZON WIRELESS mark to redirect Internet users interested in
Complainant’s services to a website that offers services in competition with
Complainant is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Coryn Group,
Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003) (finding that respondent was not using the domain
names for a bona fide offering of goods or services nor a legitimate
noncommercial or fair use because the respondent used the names to divert
Internet users to a website that offered services that competed with those
offered by the complainant under its marks); see also Glaxo Group Ltd. v.
WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent
was not using the domain name within the parameters of Policy ¶ 4(c)(i) or
(iii) because respondent used the domain name to take advantage of
complainant's mark by diverting Internet users to a competing commercial
site).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <verizonwireless.biz> domain name nor authorized to use a domain name featuring Complainant’s mark. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel presumes that Respondent receives click-through fees for diverting Internet users to competing websites. Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the disputed domain name. Therefore, Respondent’s use of the <verizonwireless.biz> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Respondent is using the <verizonwireless.biz> domain name to redirect Internet users to Respondent’s commercial website that features links to competing websites. The Panel finds that such use constitutes disruption of a competitor and evidences 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 v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Complainant 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 <verizonwireless.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 18, 2006.
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