Verizon Trademark Services LLC v Lin Yanfei

WIPO Case No. D2023-1560

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. Lin Yanfei

Case No. D2023-1560

1. The Parties

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

The Respondent is Lin Yanfei, China.

2. The Domain Names and Registrar

The Disputed Domain Names <totalbyveriz.com> and <totalbyveron.com> (“the Disputed Domain Names”) are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2023. connection with the Disputed Domain Names. On April 11, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 Complaint, and the proceedings commenced on April 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2023.

The Center appointed Jacques de Werra as the sole panelist in this matter on May 19, 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.

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4. Factual Background

The Complainant is the intellectual property holding company for Verizon Communications Inc. (“Verizon”) which was formed on June 30, 2000 and is one of the world’s leading providers of technology and communications products and services. Headquartered in New York, US, Verizon generated revenues of USD 136.8 billion in 2022 and employs a diverse workforce of approximately 117,100 employees. It operates in over 150 countries around the world, including in China, serving 99% of the Fortune 500.

The Complainant has registered various trademarks around the world, including the following US trademarks:

- Registration No. 2,886,813 for the mark VERIZON in standard character form, filed September 10,
1999, first used April 4, 2000, registered September 21, 2004, covering goods and services in
International Classes 9, 16, 35, 36, 37, 38, 41, and 42, including telecommunications products and
services (the “VERIZON Trademark”);

- Registration No. 4,732,218 for the mark TOTAL WIRELESS, filed July 10, 2013, registered May 5, 2015, covering goods and services in International Class 35 (the “TOTAL WIRELESS Trademark”).

The Complainant filed the "intent to use” based trademark and service mark applications with the United 9, 16, 35, 38 and 42 (“the TOTAL BY VERIZON Trademark”). These applications have been approved for publication for opposition, but have yet to register. The Complainant and Verizon shall hereafter be collectively referred to as “the Complainant”.
States Patent and Trademark Office on April 12, 2022 for the trademark TOTAL BY VERIZON, Application
No. 97358855, covering goods and services in International Classes 9, 16, 35, 38 and 42 and TOTAL BY

The Complainant began using the TOTAL BY VERIZON Trademark in commerce in connection with its wireless telephone communications products and services on September 21, 2022. The Complainant provides its TOTAL BY VERIZON branded goods and services at the website <totalbyverizon.com>.

The Disputed Domain Names were registered on October 19, 2022. They are actively used and resolve to a landing page featuring sponsored links to third party websites offering products and services some of which can compete with those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Disputed Domain Names are confusingly similar to its trademarks because the Respondent has formed each of the Disputed Domain Names by (1) misappropriating the Complainant’s TOTAL BY VERIZON Trademark, (2) altering the Complainant’s TOTAL BY VERIZON Trademark by

deleting letters from “VERIZON” and (3) adding the generic Top-Level Domain “.com” thereto. The
Respondent has formed the Disputed Domain Name <totalbyveriz.com> by deleting the letters “ON” from
“VERIZON”, and adding the generic Top-Level Domain “.com” to the Complainant’s TOTAL BY VERIZON
Trademark. The Respondent has formed the Disputed Domain Name <totalbyveron.com> by deleting the
letters “IZ” from “VERIZON”, and adding the generic Top-Level Domain “.com” to the Complainant’s TOTAL
BY VERIZON Trademark. The Respondent’s formulation of the Disputed Domain Names bespeaks
deliberate typosquatting, and the Complainant’s TOTAL BY VERIZON Trademark and the Disputed Domain
Names are confusingly similar to one another as the intended result. In addition, the fame of the
Complainant’s VERIZON Trademark renders confusion particularly likely in this case.

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The Respondent has no rights or legitimate interests in the Disputed Domain Names because the
Complainant has not authorized the Respondent to register or use the Disputed Domain Names. The
Respondent is not commonly known by the Disputed Domain Names given that the Respondent is named
Lin Yanfei.

The Respondent has not made a legitimate commercial or noncommercial use of the Disputed Domain Names because the Respondent’s landing page features 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 in order to divert the Complainant’s customers. The Respondent’s act of directing the Disputed Domain Names to parked webpages populated with sponsored links that are of the type consumers would expect to see on the Complainant’s <totalbyverizon.com> website to websites offering third party goods and services constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names.

The Respondent registered and is using the Disputed Domain Names to take advantage of the goodwill and reputation of the Complainant’s VERIZON Trademark, and the trademarks derived from this trademark including the TOTAL BY VERIZON Trademark. Based on the evidence in this case, it is clear that the Respondent was aware of the Complainant’s rights in the VERIZON and TOTAL BY VERIZON Trademark at the time the Respondent registered and began using the Disputed Domain Names. The Complainant has submitted evidence to the effect that the VERIZON Trademark became famous well prior to the Respondent’s registration and use of the Disputed Domain Names. Moreover, the fact that the Respondent elected to use the Disputed Domain Names to divert computer users seeking the Complainant’s products and services on the Internet to a website featuring to pay-per-click links to advertisements for the products and services of the Complainant’s competitors indicates (1) that the Respondent had knowledge of the facts of the Complainant’s use of the Complainant’s trademarks when they registered and used the Disputed Domain Names and (2) that the Respondent registered and used the Disputed Domain Names with the opportunistic intent to profit unfairly from the traffic generated by confused Internet users seeking the Complainant’s website.

The Respondent has also intentionally created a likelihood of confusion with the Complainant’s trademarks. the Disputed Domain Names to attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. The Respondent has incorporated the Complainant’s VERIZON Trademark, the dominant portion of the Complainant’s TOTAL WIRELESS Trademark, and the TOTAL BY VERIZON Trademark into the Disputed Domain Names without the Complainant’s consent or authorization for the purpose of capitalizing on the reputation of the Complainant’s trademarks by diverting Internet users to pay-per-click landing pages for commercial gain.

By registering and using the Disputed Domain Names, the Respondent is further engaged in bad faith “typosquatting”. The Disputed Domain Names that the Respondent has registered consist of obvious misspellings of – or omissions from the Complainant’s TOTAL BY VERIZON Trademark – a practice commonly referred to as “typosquatting”. Plainly, the Respondent seeks to profit from Internet traffic generated by the fact that some computer users will inadvertently omit letters from the Complainant’s VERIZON Trademark when they type the address of the Complainant’s website at <totalbyverizon.com> into

their browsers as they seek to locate the Complainant on the web. Those unfortunate spellers will be
diverted to one of the Respondent’s websites which feature to pay-per-click links to advertisements for third-

party products and services.

B. Respondent

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

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6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy:

(i)        the Respondent’s Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      the Respondent’s Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that the Respondent’s Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel notes that the Complainant has established that it is the owner of various trademarks, including the VERIZON Trademark which corresponds to the Complainant’s corporate name. It notes in this respect that the VERIZON Trademark has a high degree of global distinctiveness and recognition, whereby this has not been disputed by the Respondent. The Panel also notes that the Complainant has established that it

has applied for trademark protection for the TOTAL BY VERIZON Trademark, which has however not been
granted yet.

The Panel notes that the Disputed Domain Names consist of an intentional misspelling of the VERIZON Trademark (typosquatting) which is generally found sufficient to admit that the Disputed Domain Names are confusingly similar to the VERIZON Trademark. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”).

The first of the two Disputed Domain Names (<totalbyveriz.com>) is composed of the following three word elements: “total”, “by” and “veriz”. The Panel finds that the term “veriz” is closely and thus confusingly similar to the VERIZON Trademark (it replicates the first five letters of the VERIZON Trademark). The second of the two Disputed Domain Names (<totalbyveron.com>) is structured in an identical manner with three elements, whereby the last one (i.e. “veron”) can also be considered as being confusingly similar to the VERIZON Trademark of the Complainant (it replicates the first two letters and the final three letters of the VERIZON Trademark). The Panel notes that the confusing similarity between the Disputed Domain Names and the VERIZON Trademark is reinforced by looking jointly at the two Disputed Domain Names which constitute two cases of typosquatting of the VERIZON Trademark.

The Panel notes in this respect that another Panel has very recently found the existence of a confusing similarity between the VERIZON Trademark and various domain names consisting of typosquatted domain names revolving around the distinctive and well-established VERIZON Trademark. See Verizon Trademark Services LLC v. Licheng Weng, WIPO Case No. D2023-0737.

In relation to the Complainant’s reliance on the TOTAL BY VERIZON Trademark as a basis for the Complaint, the Panel notes that while the Complainant filed trademark applications for TOTAL BY VERIZON, those applications by themselves would not be sufficient to satisfy the requirement under the first element. The Panel considers that the Complainant has not provided sufficient evidence to establish unregistered trademark rights in TOTAL BY VERIZON under the Policy. Section 1.1.4 of the WIPO Overview 3.0 states that “[a] pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”. Therefore, in relation to the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy, the Panel can only give consideration to the established rights that the

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Complainant has in the VERIZON Trademark. This is also what was done by the Panel in the previous case cited above (whereby in that case, the Disputed Domain Names were registered on the day of the commencement of use of the TOTAL BY VERIZON Trademark). See Verizon Trademark Services LLC v. Licheng Weng, WIPO Case No. D2023-0737.

As a result, based on the rights of the Complainant on the VERIZON Trademark and on the confusing similarity between the VERIZON Trademark and the Disputed Domain Names, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the
Disputed Domain Name by demonstrating any of the following:

(i)        before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii)       the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii)      the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Complainant’s earlier use and registration of the VERIZON Trademark clearly predate the registration dates of the Disputed Domain Names. The

Complainant did not license nor authorize the Respondent to use the VERIZON Trademark in a domain name. Neither is there any evidence showing that the Respondent is commonly known by the Disputed Domain Names. The Disputed Domain Names which incorporate the Complainant’s VERIZON Trademark

are used in relation to parking pages with PPC links to does not constitute a bona fide offering of good or services nor a legitimate noncommercial or fair use of the Disputed Domain Names within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy, whereby certain subject matter reflected on the parked pages corresponds to and/or are related to that of the Complainant’s line of business.

Having established a prima facie case, the burden of production shifts to the Respondent to show that she has rights or legitimate interests in the Disputed Domain Names, which has not been established given that the Respondent has not participated to the proceedings.

The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i)        circumstances indicating that the respondent registered or acquired the domain name primarily for the

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purpose of selling, renting, or otherwise transferring the domain name registration to the complainant
(the owner of the trademark or service mark) or to a competitor of that complainant, for valuable
consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii)       circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii)      circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

WIPO Overview 3.0 at section 3.1.4 (“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”).

The Panel notes that the Disputed Domain Names constitute cases of typosquatting of the famous VERIZON bad faith. See

In this case, the Panel finds on the basis of the allegations of the Complainant (to which the Respondent has not reacted) that the Respondent registered and uses the Disputed Domain Name in bad faith on the basis of the following elements (by reference to the Panel’s reasoning in the previous similar case, Verizon Trademark Services LLC v. Licheng Weng, WIPO Case No. D2023-0737):

(i)        the high degree of distinctiveness and reputation of the Complainant’s VERIZON Trademark;

(ii)       the timing of the Respondent’s registration of the Disputed Domain Names which took place shortly after the date the TOTAL BY VERIZON Trademark was first used and publicized;

(iii)      the PPC links on the parking pages to which the Disputed Domain Names resolve, some of which are related to the type of goods or services provided by the Complainant under the VERIZON Trademark and via its official websites at “ and “

(iv)      the nature of the Disputed Domain Names which incorporate misspelt versions of the TOTAL BY VERIZON Trademark, and PPC links to certain third-party competing websites;

(v)       the failure of the Respondent to show she has rights or legitimate interests in the Disputed Domain Names; and

(vi)      the implausibility of any good faith use to which the Disputed Domain Names may be put.

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On this basis, the Panel concludes that the Respondent has registered and is using the Disputed Domain satisfied.

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 <totalbyveriz.com> and <totalbyveron.com> be transferred to the Complainant.

/Jacques de Werra/
Jacques de Werra
Sole Panelist
Date: June 9, 2023