Verizon Trademark Services LLC v. Rocky Production
Claim Number: FA0609000806329
Complainant is Verizon Trademark Services LLC (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is Rocky Production (“Respondent”), 23852 Pacific Coast Highway 720, Malibu, CA 90265, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <vzjobs.com> and <vzmusic.com>, registered with Fabulous.com Pty Ltd., and <vzpc.com>, registered with Dotster.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2006.
On September 27, 2006, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <vzjobs.com> and <vzmusic.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 September 27, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <vzpc.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On October 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 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@vzjobs.com, postmaster@vzmusic.com, and postmaster@vzpc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an intellectual property holding company,
whose parent company, Verizon Communications, together with its affiliates,
form one of the leading providers of communications products and services to
wireline and wireless customers in the world.
Since 2000, Complainant and its parent company have utilized
the VZ mark in connection with the operation of its business.
Complainant has used the VZ mark as its stock ticker symbol
since July 2000.
Moreover, Complainant and the affiliated companies of its
parent company have used the VZ mark to identify their coprorate newsletter for
its over 252,000 employees since at least as early as December 2000.
Respondent, Rocky Production registered the <vzjobs.com> domain name on March 2, 2001, the <vzmusic.com> domain name on April 22, 2002, and the <vzpc.com> domain name on September 15, 2002.
Respondent’s domain names resolve to commercial websites featuring links to third-party websites, some of which are related to Complainant’s communications products and services, as a result of which Respondent presumably receives click-through revenue.
Respondent is not and never has been a licensee of Complainant, and Respondent has never been authorized by Complainant to use its VZ mark.
Respondent’s <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names are confusingly similar to Complainant’s VZ mark.
Respondent does not have any rights or legitimate interests in the <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names.
Respondent registered and uses the <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts that it has used its VZ mark in connection with the marketing of its communications products and services and as its stock ticker symbol since at least 2000. Complainant also alleges that it, its parent company and its affiliates have used the VZ mark to identify its corporate newsletter since at least 2000, so that its mark is recognized as being associated with Complainant. Consequently, no evidence to the contrary appearing in the record, Complainant has sufficiently established common law rights in its VZ mark, pursuant to Policy ¶ 4(a)(i) through the continuous and substantial use of the mark prior to Respondent’s registrations of the disputed domain names in 2002. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that a complainant had provided adequate evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001): “[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.” See further Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for it to establish rights in a mark).
There is also no dispute in the record that Respondent’s <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names are confusingly similar to Complainant’s VZ mark for purposes of Policy ¶ 4(a)(i). Each of these domain names incorporates Complainant’s VZ mark in its entirety, with the mere addition of the generic or descriptive terms, “jobs,” “music,” or “pc,” and the generic top-level domain (“gTLD”) “.com.” Consistent with the holdings of previous panels, we conclude that the additions of such terms to Complainant’s mark do not suffice to distinguish Respondent’s disputed domain names from Complainant’s mark and thus avoid the creation of confusing similarity pursuant to Policy ¶ 4(a)(i). See Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that alterations to a complainant’s DISNEY mark in a respondent’s <finestdisneyhomes.com> domain name were insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)). The addition of a gTLD to Complainant’s mark likewise fails to negate the confusing similarity between the mark and the disputed domain names under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that a top level domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he
addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . .
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant possesses the initial burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant establishes a prima facie case, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests with respect to the domains. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Complainant has established a prima facie case. Nonetheless, we will evaluate the evidence of record to determine whether there is any basis for concluding that Respondent has any rights or legitimate interests with respect to the disputed domain names under Policy ¶ 4(c).
We begin by observing that the undisputed evidence shows that Respondent’s domain names resolve to commercial websites featuring links to a variety of third-party websites, some of which are related to Complainant’s offering of communications products and services. We are entitled to and do infer from these circumstances that Respondent receives click-through revenue from the operation of the websites located at the disputed domains. Consequently, Respondent’s use of the <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names does not constitute either 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, the evidence of record fails to demonstrate that Respondent is commonly known by the <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names in accord with Policy ¶ 4(c)(ii). The record is devoid of evidence suggesting that Respondent is affiliated with Complainant, and it is undisputed that Respondent is not licensed or otherwise authorized by Complainant to use the VZ mark. Additionally, Respondent’s WHOIS information does not indicate that Respondent is commonly known by any of the disputed domain names. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names resolve to commercial websites offering links to various third-party websites. It may safely be inferred that Respondent receives click-through revenue from the operation of the websites located at the disputed domain names. We conclude therefore that Respondent registered and uses the disputed domain names to benefit commercially from the diversion of Internet users seeking websites related to Complainant’s VZ mark to the websites of Respondent, and that Respondent registered and uses these domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that a respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and a complainant’s AOL mark, which indicated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using disputed domain names to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors, as well as by diverting Internet users to other domain names).
For this reason, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <vzjobs.com>, <vzmusic.com>, and <vzpc.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 8, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum