Nominet UK Dispute Resolution Service

DRS 04940

Verizon Trademark Services LLC v Paul Martin

Decision of Independent Expert

1.	Parties

Complainant:	Verizon Trademark Services LLC	
Country:	United States

Respondent:	Paul Martin	
Country:	United Kingdom

2.	Domain Name

verizonwireless.co.uk (“the domain name”)

3.	Procedural Background

On 7 August 2007, Nominet received hard copy of the complaint dated 3 August. It checked that the complaint complied with the Nominet UK Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”). The complaint was supported by material in a series of exhibits:

A.	printout of the homepage at verizon.com

B.	extracts from the website at verizonbusiness.com

C.	printout of the homepage at verizonwireless.com

D.	European Union trademark registrations for ‘verizon’ and ‘verizonwireless’

E.	UK Intellectual Property Office registrations for ‘verizon’

F.	US Patent and Trademark Office registrations for ‘verizon’ and ‘verizon wireless’

G.	printout of results of a WHOIS query on verizonwireless.co.uk

H.	printouts of the webpages at verizonwireless.co.uk on 2 August 2007

The day the complaint was received, Nominet notified the Respondent and informed him that he had 15 working days within which to lodge a response. No response was received. Informal mediation not being possible, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 3 September. 

On 5 September I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I have confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.

4.	Outstanding Formal/Procedural Issue

There is an email delivery failure report on file, generated in connection with Nominet’s attempt to notify the Respondent of the complaint. My starting point in considering the effect of this is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Procedure says that Nominet will send a complaint to the Respondent by, at its discretion, any one of a range of means – including

-	email using the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute

-	email to postmaster@<the domain name in dispute>

In the event, Nominet sent the complaint to both elayn727@aol.com (presumably the contact address in the register entry for the domain name) and postmaster@verizonwireless.co.uk. The delivery failure report relates to the second of these addresses.

Given that it is the Respondent’s obligation to keep his contact details with Nominet up to date, I am satisfied that Nominet did what it could to notify the Respondent of the complaint. (In fact there is no delivery failure report in connection with the first address, but I would have taken the same view even if there had been.) I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.

5.	The Facts

I have visited the Respondent’s website at verizonwireless.co.uk and the websites mentioned in the complaint run by members of the Verizon group of companies (verizon.com, verizonbusiness.com and verizonwireless.com). From those visits and the complaint I accept the following as facts. 

The Complainant, Verizon Trademark Services LLC (‘VTS’), is part of the Verizon group of companies - one of the world’s leading providers of communications and entertainment products and services, including an internet network serving some 2,700 cities in 150 countries. The Verizon group employs around 250,000 people and has an annual turnover of some $90 billion - putting it within the top 20 of the Fortune 500 list.

VTS is an intellectual property holding company. It has registered the names ‘Verizon’ and ‘Verizon Wireless’ as trademarks. VTS has granted an associated company, Verizon Licensing Company (‘VLC’) an exclusive licence to sublicense the use of Verizon trademarks in connection with a range of goods and services. VLC has in turn granted licences to various companies in the Verizon group, including the parent company Verizon Communications (‘VC’).

The Verizon group has two business units, focusing, respectively, on wired and on wireless products and services: Verizon Business and Verizon Telecom make up the ‘Wirelines’ unit, while Verizon Wireless covers the market for ‘Domestic Wireless’.

Verizon Business provides internet and data services to businesses and governments across the world.

Verizon Telecom provides telephone, broadband and entertainment products and services within the US. It supports some 44 million lines and 7m broadband connections, reaching one third of US households.

Verizon Wireless sells communications goods and services under the ‘Verizon Wireless’ trademark to around 62 million US customers. In partnership with Vodaphone Group PLC, Verizon Wireless offers wireless voice and data services to travellers abroad, including in the UK.

The ‘Verizon’ trademark has been used since at least as early as April 2000. The Verizon group of companies has spent millions of dollars each year since 2000 to promote ‘Verizon’ and ‘Verizon Wireless’ products and services in the United States, the United Kingdom and beyond.

The Verizon group has registered the domain name verizon.com and used it since at least as early as June 2000.

Verizon Wireless has used a website at the domain name verizonwireless.com since April 2000.

The domain name at issue was registered on 14 November 2004. It connects to a web directory containing search categories including the kind of products and services (for example, mobile phones, ringtones and mobile accessories) supplied by Verizon companies. The links on the directory connect to competitors (for example, Motorola, Nokia, Samsung and Siemens) of the group to which the Complainant belongs.

6.	The Parties’ Contentions

Complainant

The Complainant says it has rights in a name (‘Verizon’) which is similar to the domain name (with the addition simply of the generic suffix ‘wireless’) and in a name (‘Verizon Wireless’) which is identical to the domain name.

It says the domain name is an abusive registration because

(i)	it is a blocking registration

(ii)	the Respondent’s use of the domain name is unfairly disrupting the Complainant’s business

(iii)	the Respondent’s use of the domain name will have confused internet users into believing that the domain name is in some way connected with the Complainant. 

Respondent

There has been no response.

7.	Discussion and Findings

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

-	he or she has rights in respect of a name or mark which is identical or similar to the domain name; and

-	the domain name, in the hands of the Respondent, is an abusive registration.

Complainant’s Rights

The Complainant bases its claim to rights on

-	the considerable investment by the group of which it is a member in the names ‘Verizon’ and ‘Verizon Wireless’, giving it – as the intellectual property holding company for the group - unregistered rights in both names; and on

-	its many trademark registrations for the names in the United States, the United Kingdom and Europe.

Given the unchallenged evidence that I have accepted, I am satisfied that the Complainant has both registered and unregistered rights in ‘Verizon’ and in ‘Verizon Wireless’.

The domain name is verizonwireless.co.uk. Ignoring the .co.uk as generic features of the domain name register (as well as case, which is not relevant to the host name element of the Uniform Resource Locator), that is identical to one of the names in which the Complainant has rights (‘Verizon Wireless’). It is also similar to the other name in which the Complainant has rights (‘Verizon’) – with the simple addition of the generic descriptor ‘wireless’ to that other name.

The Complainant therefore has rights in respect of a name which is identical or similar to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an abusive registration as a domain name which either
-	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s rights; or

-	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

Where there is no response to a complaint that a domain name is an abusive registration, the approach to be taken by experts is now well established. It is for the Complainant to make out a prima facie case. Such a case demands an answer. In the absence of an answer, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has established a prima facie case.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. The only factors that might be relevant here are
(i)	circumstances indicating that the Respondent registered the domain name primarily
-	as a blocking registration against a name…in which the Complainant has rights; or

-	for the purpose of unfairly disrupting the business of the Complainant

(ii)	circumstances indicating that the Respondent is using the domain name in a way which has confused people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant.

These cover the essential elements of the Complainant’s claims (though, on the question of unfair disruption, the complaint refers to the Respondent’s use of the domain name rather than the purpose at registration).

As a matter of fact, the registration of a domain name will prevent other registrations of the same name. In that sense, all registrations are ‘blocking’ registrations. But this factor on the Policy’s non-exhaustive list requires some judgement about the motive behind the registration. Invariably, in cases of dispute where there is no response, there is little or no direct evidence of a Respondent’s motive. The present case is no different and it becomes necessary to draw conclusions about the character of the registration from the other evidence.

Similarly, the Complainant has not offered any evidence either that the Respondent’s registration of the domain name was primarily intended unfairly to disrupt its business or that use of the name has in fact resulted in unfair disruption. Neither has it offered any evidence that internet users have actually been confused by the use of the domain name. The key here is that the list of factors in this section of the Policy is non-exhaustive. There are two other factors that seem to me to weigh very heavily.

First, though there is no actual evidence of unfair disruption or confusion it seems clear that – in these circumstances – there is a very high probability of such disruption having occurred and of internet users having been confused into thinking that the domain name is connected with the Complainant. That would be telling even if the disruption was temporary and any confusion was likely to be removed once users arrived at the webpages at the domain name itself. But given that the webpages there offer links to the kind of products and services sold by the Complainant, this looks like disruption and confusion that could last.

Second, registrants of domain names that are identical to names in which others have rights have to take special care. As the appeal panel noted in GuideStar UK v Wilmington Business Information Limited (DRS 02193):
Registering as a domain name, the name of another (without any adornment), knowing it to be the name of that other and intending that it should be recognised as the name of that other and without the permission of that other is a high risk activity insofar as the DRS Policy is concerned. Ordinarily, it would be tantamount to impersonating the person whose name it is. 
Rarely will it be the case that deliberate impersonation of this kind will be acceptable under the DRS Policy. 
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration, but none of these appears relevant here.

The Complainant here has only to make out a prima facie case that the domain name is an abusive registration. It seems very clear to me that in taking a name identical to one in which the Complainant has rights and using that name in an attempt to divert internet traffic to competitors of the Complainant, the Respondent’s use of the domain name takes unfair advantage of the Complainant’s rights. That in turn makes it seem probable that the registration of the domain name in the first place was also unfair.  At the very least, the Complainant has made out an arguable case that this is an abusive registration. In the absence of an answer to that case, the complaint succeeds. 

8.	Decision

I find that the Complainant has rights in respect of a name which is identical or similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain name be transferred to the Complainant.

Mark de Brunner

21 September 2007