Verizon Trademark Services LLC v Lin Jin Jiang

WIPO Case No. D2022-0344

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Lin Jin Jiang

Case No. D2022-0344

1. The Parties

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

The Respondent is Lin Jin Jiang, China.

2. The Domain Name and Registrar

The disputed domain name <verizonfamilymoney.com> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2022. On February 1, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2022, the Registrar 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 February 14, 2022 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 amendment to the Complaint in English on February 21, 2022.

On February 14, 2022, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on February 17, 2022. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to the 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 and 4, the Center formally notified the Respondent of the paragraph 5, the due date for Response was March 14, 2022. The Respondent did not submit any

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response. Accordingly, the Center notified the Respondent’s default on March 15, 2022.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 18, 2022. 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 a company headquartered in the USA and active in the communications, information, and entertainment industries. The Complainant has been using the VERIZON trademark in the USA and in other jurisdictions around the world since 2000. The Complainant’s parent company Verizon Communications Inc. is ranked as a Fortune 20 company and generated annual consolidated operating revenues of more than USD 128 billion in 2020 and currently employs approximately 132,200 employees.

The Complainant submits evidence that it owns an international trademark portfolio for VERIZON (word and logo marks), including, but not limited to, USA trademark registration number 2886813 for the word mark VERIZON registered on September 21, 2004, and Chinese trademark registration number 44522087 for the word mark VERIZON, registered on November 28, 2020. The Complainant also owns a portfolio of official domain names, including, <verizon.com> registered on March 6, 2000.

The disputed domain name was registered on June 16, 2021, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an active domain name auction webpage, where the disputed domain name is offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for VERIZON, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information. The Complainant also submits a number of prior UDRP decisions in which earlier panels have recognized the Complainant’s rights in the VERIZON marks and recognized such marks as well-known trademarks, see for instance Verizon Trademark Services LLC v. Mike Duffy, London Central Communications Ltd, WIPO Case No. D2014-1994. The Complainant particularly contends that the Respondent is using the disputed domain name to take advantage of the goodwill and reputation of the Complainant’s VERIZON marks, that the Respondent has intentionally created a likelihood of confusion with the Complainant’s marks, and that the Respondent is attempting to sell the disputed domain name for an amount in excess of the Respondent’s out-of-pocket costs. The Complainant contends that there are no justifications for such registration and use of its trademarks in the disputed domain name and that such registration and use was made in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

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6. Discussion and Findings

6.1. Preliminary Issue: Language of the Administrative Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

According to the Registrar’s verification response, the Registration Agreement for the disputed domain name is in Chinese. Nevertheless, the Complainant filed its Complaint in English, and requests that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding and did

not submit any arguments on the merits of this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements February 14, 2022, in which the Respondent offered to transfer the disputed domain name for USD 1,000, from which the Panel deducts that the Respondent is able to understand and communicate in English; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and decides that the language of this administrative proceeding shall be English.
particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of
comment on the language of the proceeding and the lack of response on the merits of this proceeding by the
Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its
response and arguments in either English or Chinese, but chose not to do so); the fact that the disputed
domain name contains the Complainant’s VERIZON trademark in its entirety and that the disputed domain
name contains two words in English (namely “family” and “money”), and that it is written in Latin letters and

not in Chinese characters; the fact that the website linked to the disputed domain name is bilingual in

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is 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 name; and

(iii)         the disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark VERIZON, based on its intensive use and registration of the same as trademarks in various jurisdictions, including in the jurisdiction where the Respondent is based, namely China.

Moreover, as to whether the disputed domain name is identical or confusingly similar to the Complainant’s
mark, in the Panel’s opinion, the disputed domain name consists of three elements, namely the
Complainant’s registered trademark for VERIZON, combined with two terms, namely “family” and “money”.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the
“WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed
domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or
otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes
that the disputed domain name contains the entirety of the Complainant’s trademark VERIZON, and that the

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addition of the terms “family” and “money” does not prevent a finding of confusing similarity. The Panel also
finds that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this proceeding) is viewed as a
standard registration requirement, and may as such be disregarded by the Panel, see in this regard the

WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s
registered trademark, and that the Complainant has satisfied the requirements of the first element under the

Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making a legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, the Respondent did not provide any response or evidence in this administrative proceeding.

Moreover, upon review of the facts and evidence submitted, the Panel notes that the disputed domain name directs to an active domain name auction webpage, where the disputed domain name is offered for sale. The Panel also notes that the Complainant provides evidence that the Respondent offered, via an email in English on February 14, 2022, to sell the disputed domain name to the Complainant for USD 1,000, which is an amount far in excess of the documented out-of-pocket costs related to the disputed domain name. In the Panel’s view, this shows that the Respondent’s intention was not to make any use of the disputed domain name as a bona fide provider of goods or services, or to make legitimate noncommercial use or fair use of the Complainant’s trademarks in the disputed domain name. Instead, it shows the Respondent’s clear intention to mislead and divert Internet users for commercial gain to the domain name auction webpage offering the disputed domain name for sale, by taking unfair advantage of the goodwill and reputation of the Complainant’ trademarks for VERIZON.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain name, which is confusingly similar to the Complainant’s well-known trademark for VERIZON and contains such mark in its entirety, is clearly intended to mislead and divert consumers away from the Complainant’s official websites to the website linked to the disputed domain name. The Panel finds that the Complainant’s VERIZON trademarks became well-known years prior to the Respondent’s registration and use of the disputed domain name. Based on this fact, the Panel considers that the Respondent’s registration of the disputed domain name constitutes a clearly intentional attempt to target the Complainant’s well-known trademark, of which it could not reasonably be unaware. Based on the above elements, the Panel finds that the registration of the disputed domain name was in bad faith.

As to use of the disputed domain name in bad faith, the website linked to the disputed domain name
currently directs to an active domain name auction webpage, where the disputed domain name is offered for
sale. The Panel notes that the Complainant provides evidence that the Respondent offered, via an email in
English on February 14, 2022, to sell the disputed domain name to the Complainant for USD 1,000. This
leads the Panel to conclude that the Respondent is using the disputed domain name to sell it in excess of the
documented out-of-pocket costs related to the disputed domain name. In this regard, paragraph 4(b)(i) of
the Policy states that such use constitutes direct evidence of bad faith of the Respondent. Based on the
aforementioned elements, the Panel concludes that it has been demonstrated that the Respondent is using

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the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.

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 name, <verizonfamilymoney.com>, be transferred to the Complainant.

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: March 24, 2022