Verizon Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630
Case No. D2011-1092
1. The Parties
The Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America represented internally.
The Respondent is clpik-studio.com Pawel Tykwinski of Mielno, Poland and Registration Private ID: CR68165630 of Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2011. On June 28, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 1, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2011 providing the registrant and contact information disclosed by GoDaddy.com, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 8, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 9, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant in these proceedings (Verizon Trademark Services, LLC) is an intellectual property holding company and the owner of numerous trademark and service mark registrations consisting of or incorporating VERIZON.
The Complainant provides advanced intellectual property, data, voice and wireless solutions to business and government customers in 150 countries worldwide. It holds several trademark registrations for the word and device mark VERIZON in many countries around the world.
The Respondent is based in Poland and the disputed domain name was registered on December 1, 2010.
5. Parties’ Contentions
The Complainant argues the following:
The disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has registered trademark rights.
The Respondent has no rights or legitimate interests in respect of the disputed domain name; the disputed domain name resolves to a website offering adult material and this use does not constitute a bona fide offering of goods or services.
The disputed domain name has been registered and is being used in bad faith because the Respondent registered the disputed domain name well after the registration of the Complainant’s trademarks and the Complainant’s trademarks have become famous. The Respondent’s use of the disputed domain name creates initial interest confusion, and therefore attracts Internet users to its website.
In addition the disputed domain name also contains the trademark IPHONE, and the Complainant has obtained a letter of authorization from Apple Inc. (owner of IPHONE trademarks) to obtain the transfer of this disputed domain name if ordered in this UDRP proceeding.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy paragraph 4(a), the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered rights for the VERIZON trademarks in many countries around the world (including the Respondent’s jurisdiction in Poland) for, among others, telecommunications services. The Complainant is also using the VERIZON trademark in many countries worldwide since 2000.
The disputed domain name is confusingly similar to the VERIZON trademark. The addition of the terms “iphone” and “on” does not prevent confusion due to the fact that the word “on” is a generic term and the term “iphone” is a well-known trademark of Apple Inc. related to communications, and hence the disputed domain name misleads Internet users into thinking that the disputed domain name is related to the Complainant.
Therefore, Panel holds that the Complainant has established element (i) of the Policy’s paragraph 4(a).
B. Rights or Legitimate Interests
The Panel also finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name in that i) the Respondent does not appear to have been in any way or anywhere ever commonly known by the disputed domain name and ii) the Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks. The Panel finds on the current record that, the Complainant has made out a prima facie case that has not been rebutted by the Respondent.
The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).
C. Registered and Used in Bad Faith
It is not difficult, in the absence of any evidence to the contrary, to infer that Respondent knew or must have known of Complainant's trademark at the time it registered the disputed domain name. VERIZON is a well-known trademark with a well-established and widespread international reputation (see Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247; Verizon Trademark Services LLC v. Ali Aziz, WIPO Case No. D2010-0833).
The Panel presumes from the facts above mentioned, that the Respondent registered the disputed domain name with knowledge of the worldwide fame of the Complainant’s VERIZON trademark, and thus the Respondent registered the disputed domain name in bad faith.
The Panel also recognizes that in the circumstances of the present case, the pornographic content of the Respondent’s website, as it existed when the Complaint was initiated, constitutes significant indicia of bad faith. Prior decisions have consistently articulated support for this position, based on the concept of tarnishment: ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; America Online Inc. v. Viper, WIPO Case No. D2000-1198; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 and Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Pablo A. Palazzi
Date: August 23, 2011