Verizon Trademark Services LLC v Hope Lee

WIPO Case No. D2023-1232

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Hope Lee

Case No. D2023-1232

1. The Parties

The Complainant is Verizon Trademark Services LLC, United States of America (“United States”), internally represented.

The Respondent is Hope Lee, China.

2. The Domain Names and Registrar

The disputed domain names <bytotalverizon.com>, <mytotalverizon.com>, <rewardstotalbyverizon.com>,
<toalverizon.com>, <toatalbyverizon.com>, <tobyverizon.com>, <totalbuyverizon.com>,
<totalbyvarizon.com>, <totalbyverazon.com>, <totalbyveriaon.com>, <totalbyveriozon.com>,
<totalbyverision.com>, <totalbyverizen.com>, <totalbyverizion.com>, <totalbyverizone.com>,
<totalbyverizons.com>, <totalbyversion.com>, <totalbyvirizon.com>, <totalbyvision.com>,
<totalbyvorizon.com>, <totalbyzerizon.com>, <totallybyverison.com>, <totallybyverizion.com>,
<totallybyverizon.com>, <totallybyverzion.com>, <totallyverison.com>, <totallyverizion.com>,
<totalmyverizon.com>, <totalverison.com>, <totalverizen.com>, <totalverizion.com>, <totalverizom.com>,
<totalverizone.com>, <totalverozon.com>, <totalverzion.com>, <totalvetizon.com>, <totalvirizon.com>,
<totalybyverizon.com>, <totaverizon.com>, <totoalbyverizon.com>, and <verizonbytotal.com> are registered

with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2023. On March 22, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 24, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name[s] which differed from the named Respondent (Dynadot Privacy Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 3, 2023.

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

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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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2023.

The Center appointed John Swinson as the sole panelist in this matter on May 11, 2023. 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 is an intellectual property holding company, and is part of the Verizon group of companies. Verizon Communications Inc. was formed in June 2020, is headquartered in New York, United States, and in 2022 generated over USD 136 billion in revenue. Verizon operates in over 150 countries, including in China.

The Complainant owns a portfolio of trademark registrations for VERIZON and TOTAL WIRELESS, including:

1.        United States Registration No. 2,886,813 for the mark VERIZON, filed September 10, 1999, registered September 21, 2004.

2.        United States Registration No. 4,732,218 for the mark TOTAL WIRELESS, filed July 10, 2013, registered May 5, 2015.

On September 21, 2022, Verizon introduced a new retail brand, TOTAL BY VERIZON, and began using the

TOTAL BY VERIZON trademark on that day.

The Complainant has pending trademark applications for TOTAL BY VERZION, including United States

Application No. 97358855, that were filed on April 12, 2022.

The disputed domain names were registered on the following dates:

September 21, 2022: <totalmyverizon.com>; <totalbuyverizon.com>; <bytotalverizon.com>;
<verizonbytotal.com>; <totalbyvarizon.com>; <totalbyvirizon.com>; <totalverzion.com>;
<totalbyvorizon.com>; <totalbyversion.com>; <totalbyverizons.com>; <totalbyverizone.com>;
<totalbyverizion.com>; <totalbyverizen.com>; <totalverison.com>; <totalbyverision.com>;

<mytotalverizon.com>; <bytotalverizon.com>

September 22, 2022: <totaverizon.com>; <totalbyverazon.com>; <totalbyveriaon.com>;
<totallybyverizon.com>; <totalbyveriozon.com>; <totalbyzerizon.com>; <toatalbyverizon.com>;

<tobyverizon.com>

September 24, 2022: <totalverizom.com>; <totalverizen.com>; <totalverizone.com>; <totalvetizon.com>;

<totalverozon.com>; <toalverizon.com>;

September 26, 2022: <totalbyvision.com>

October 13, 2022: <totallyverison.com>; <totalybyverizon.com>

October 20, 2022: <rewardstotalbyverizon.com>

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October 24, 2022: <totallyverizion.com>; <totalverizion.com>

October 29, 2022: <totallybyverzion.com>; <totallybyverison.com>; <totallybyverizion.com>

November 3, 2022: <totalvirizon.com>

The Respondent did not file a Response, so little information is known about the Respondent. According to the Registrar’s records, the Respondent has an address in Tangshan, China.

The disputed domain names all resolve to pay-per-click (PPC) websites where the advertising links are provided by Bodis, LLC of Florida. On most websites, the advertising links relate to telecommunications products or services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names bespeak deliberate typosquatting. The disputed domain names resolve to landing pages the feature sponsored links to third party websites offering products and services of the type that consumers would expect to find on the Complainant’s

<totalbyverizon.com> website. The Complainant contents that this is not legitimate use of the disputed
domain names. Additionally, the registration of 41 domain names that incorporate the Complainant’s

trademarks or obvious misspellings thereof is evidence of a pattern of cybersquatting.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the
Policy have been satisfied, namely:

(i)        the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

The onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

The Complaint relates to 41 domain names. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Applying

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paragraph 3(c), the Panel finds that it is proper for this Complaint to proceed in respect of these 41 domain

names because they are all owned by the same person.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of two trademarks for the purposes of the Policy, namely VERIZON and TOTAL WIRELESS. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the VERIZON mark is reproduced within many of the disputed domain names. of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds that either the VERIZON mark or the TOTAL WIRELESS mark is recognizable within the other disputed domain names. Accordingly, these disputed domain names are identical or confusingly similar to either or both these mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms, such as “rewards”, “by”, and “my”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing similarity between the disputed domain names and the marks for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names.

Use of a domain name to resolve to a pay-per-click advertising page, where the advertising is relevant to the trademark value of the domain name, does not to establish rights or legitimate interests in respect of the disputed domain name. UnitedHealth Group Incorporated v. Privacy Protection / Domain Administrator, WIPO Case No. D2021-4334.

Based on the available record, the Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel considers that the record of this case reflects that:

The Respondent has registered 41 disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct. Paragraph 4(b)(ii) of the Policy, and WIPO Overview 3.0, section 3.1.2.

and

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

The Respondent registered the first 17 of the disputed domain names on the day that the Complainant announced its new TOTAL BY VERIZON brand, being a brand that combined the well-known VERIZON trademark with part of the TOTAL WIRELESS trademark. The Respondent’s conduct is clear evidence of bad faith registration. See, for example, Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236, where (similar to the present case) the disputed domain name was registered on the same day that the Complainant issued a press release.

Fédération Française de Tennis (FFT) v. Daniel Hall, dotCHAT, Inc., WIPO Case No. D2016-1941.

The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and the that relate to telecommunications products and services, demonstrates that the Respondent knew of and targeted the Complainant. See
Complainant’s trademarks. By registering the disputed domain names on the day of and shortly after the

Additionally, previous panels have found that “typosquatting” is sufficient to establish use and registration in bad faith. This is a clear case of typosquatting, having regard to the number of disputed domain names and the minor differences between the disputed domain names and the Complainant’s trademarks. See, for

example, FragranceX.com, Inc. v. Argosweb Corp a/k/a Oleg Techino, WIPO Case No. D2010-1237, that

involved 37 domain names.

Based on the available record, the Panel finds the third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <bytotalverizon.com>, <mytotalverizon.com>,
<rewardstotalbyverizon.com>, <toalverizon.com>, <toatalbyverizon.com>, <tobyverizon.com>,
<totalbuyverizon.com>, <totalbyvarizon.com>, <totalbyverazon.com>, <totalbyveriaon.com>,
<totalbyveriozon.com>, <totalbyverision.com>, <totalbyverizen.com>, <totalbyverizion.com>,
<totalbyverizone.com>, <totalbyverizons.com>, <totalbyversion.com>, <totalbyvirizon.com>,
<totalbyvision.com>, <totalbyvorizon.com>, <totalbyzerizon.com>, <totallybyverison.com>,
<totallybyverizion.com>, <totallybyverizon.com>, <totallybyverzion.com>, <totallyverison.com>,
<totallyverizion.com>, <totalmyverizon.com>, <totalverison.com>, <totalverizen.com>, <totalverizion.com>,

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<totalverizom.com>, <totalverizone.com>, <totalverozon.com>, <totalverzion.com>, <totalvetizon.com>,
<totalvirizon.com>, <totalybyverizon.com>, <totaverizon.com>, <totoalbyverizon.com>, and

<verizonbytotal.com> be transferred to the Complainant.

/John Swinson/
John Swinson
Sole Panelist
Date: May 25, 2023