Verizon Trademark Services LLC v 石磊 (Shi Lei / Lei Shi)

WIPO Case No. D2024-1150

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Verizon Trademark Services LLC v. 石磊 (Shi Lei / Lei Shi)

Case No. D2024-1150

1. The Parties

The Complainant is Verizon Trademark Services LLC, United States of America, internally represented,

United States of America (“USA” or “United States”).

The Respondent is 石磊 (Shi Lei / Lei Shi), China.

2. The Domain Names and Registrars

The disputed domain names <verizonadministrativechagesettlement.com>,

<verizonadministrativechargesettle.com>, <verizonadministrativechargesettlements.com>,

<verizonchargesettlement.com>, and <verizonclassactionsettlement.com> are registered with Chengdu

West Dimension Digital Technology Co., Ltd.; the disputed domain name

<verizonadministrativechargesettement.com> is registered with Cloud Yuqu LLC; and the disputed domain

names <verizonadministrativechargelawsuit.com>, <verizonadministrativechargesettlemen.com>,

<verizonadministrative.com>, <verizonclassactionlawsuit.com>, <verizonclassactionlawsuit2023.com>,

<verizonclassactionsettlementclaim.com>, <verizonclassactionsettlement2024.com>,

<verizonclassactionsuit.com>, <verizonlawsuitclaim.com>, <verizonlawsuitclaimform.com>,

<verizonsettlementclaimform.com>, <verizonsettlementform.com>, <verizonsettlement2024.com>, and

<whatisverizonadministrativecharge.com> are registered with Dynadot Inc (collectively the “Registrars”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March

15, 2024 as regards the disputed domain name <verizonadministrativechargesettement.com>. On March

18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection

with the disputed domain name. On March 19, 2024, 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 (John Doe / Cloud Yuqu LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainant on March 19, 2024 providing the registrant and

contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed a first amended Complaint in English on March 19, 2024.

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On March 19, 2024, the Center informed the parties in Chinese and English, that the language of the

registration agreement for the disputed domain name <verizonadministrativechargesettement.com> is

Chinese. On March 20, 2024, the Complainant confirmed its request that English be the language of the

proceeding. The Respondent did not submit any comment on the Complainant’s submission.

On June 7, 2024, the Complainant filed a second amended Complaint in English, requesting the addition of

the disputed domain names <verizonadministrativechagesettlement.com>,

<verizonadministrativechargelawsuit.com>, <verizonadministrativechargesettle.com>,

<verizonadministrativechargesettlemen.com>, <verizonadministrativechargesettlements.com>,

<verizonadministrative.com>, <verizonchargesettlement.com>, <verizonclassactionlawsuit.com>,

<verizonclassactionlawsuit2023.com>, <verizonclassactionsettlementclaim.com>,

<verizonclassactionsettlement.com>, <verizonclassactionsettlement2024.com>,

<verizonclassactionsuit.com>, <verizonlawsuitclaim.com>, <verizonlawsuitclaimform.com>,

<verizonsettlementclaimform.com>, <verizonsettlementform.com>, <verizonsettlement2024.com>, and

<whatisverizonadministrativecharge.com>. On June 10, 2024, the Center transmitted by email to the

Registrars a request for registrar verification in connection with the additional disputed domain names. On

June 11, 2024, the Registrars transmitted by email to the Center the verification responses confirming that

the Respondent is listed as the registrant and providing the contact details for the other disputed domain

names.

The Center verified that the Complaint together with the amended Complaints 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 in English

and Chinese of the Complaint, and the proceedings commenced on June 13, 2024. In accordance with the

Rules, paragraph 5, the due date for Response was July 3, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on July 4, 2024.

The Center appointed Karen Fong as the sole panelist in this matter on July 8, 2024. 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 the intellectual property holding company arm of Verizon Communications Inc.

(“Verizon”). Verizon was formed in 2000 and is a provider of technology and communications products.

Headquartered in New York, United States, it generated revenue of USD 134 billion in 2023. Verizon

operates in over 150 countries around the world under the brand name VERIZON.

The Complainant is the owner of many VERIZON trade mark registrations around the world including the

following:

- United States Trade Mark Registration No. 2886813, VERIZON, registered on September 21, 2004;

- United States Trade Mark Registration No. 5223839, VERIZON and device, registered on June 13, 2017.

(individually and collectively, the “Trade Mark”).

The Complainant licenses to Verizon and its other affiliates the use of the Trade Mark. The Complainant is

currently the defendant in a class action lawsuit, Esposito et al. v. Cellco Partnership d/b/a Verizon Wireless

regarding an administrative charge on certain Verizon service plans (the “Lawsuit”). On November 8, 2023,

the Complainant entered into an agreement to settle the Lawsuit where it agreed to pay a specified amount

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of money into a settlement fund to be administered by a third-party administrator. The settlement requires

that the administrator create and maintain a website at the domain name

<verizonadministrativechargesettlement.com> (the “Settlement Website”). Parties who believe they are

entitled to payment from the settlement fund may file a claim through the Settlement Website.

The disputed domain names were registered by the Respondent, who appears to be based in China, on the

following dates:

- January 4, 2024 - <verizonadministrativechargesettlements.com>, <verizonchargesettlement.com>,

<verizonclassactionsettlement.com>, <verizonadministrativechargesettement.com>;

- January 6, 2024 - <verizonadministrativechagesettlement.com>, <verizonadministrativechargesettle.com>;

- January 8, 2024 - <verizonadministrativechargesettlemen.com>, <verizonclassactionsuit.com;

- January 18 2024 - <verizonadministrative.com>, <verizonadministrativechargelawsuit.com>,

<verizonclassactionlawsuit.com>, <verizonclassactionlawsuit2023.com>,

<verizonclassactionsettlement2024.com>, <verizonclassactionsettlementclaim.com>,

<verizonlawsuitclaimform.com>, <verizonsettlement2024.com>, <verizonsettlementform.com>;

- January 19, 2024 - <verizonsettlementclaimform.com>;

- January 23, 2024 - <verizonlawsuitclaim.com>, <whatisverizonadministrativecharge.com>.

The 20 disputed domain names resolve to websites which are parking pages with pay-per-click (“PPC”) links

to third party websites (individually and collectively the “Websites”).

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 are identical and/or confusingly similar to

the Trade Mark in which it has rights, that the Respondents have no rights or legitimate interests with respect

to the disputed domain names, and that the disputed domain names were registered and are being used in

bad faith.

B. Respondents

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

6. Discussion and Findings

6.1. Preliminary Issue

A. Language of the Proceeding

The language of the Registration Agreement for the disputed domain names

<verizonadministrativechagesettlement.com>, <verizonadministrativechargesettle.com>,

<verizonadministrativechargesettlements.com>, <verizonchargesettlement.com>,

<verizonclassactionsettlement.com>, and <verizonadministrativechargesettement.com> is Chinese.

Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless

specified otherwise in the registration agreement, the language of the administrative proceeding shall be the

language of the registration agreement.

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The Complaint was filed in English. The Complainant requested that the language of the proceeding be

English for the following reasons:

- The Complainant is a United States entity, and its representative is unable to communicate in Chinese and

the Complainant would be prejudiced if the proceeding is conducted in Chinese;

- The disputed domain names are in English and combines the Complainant’s coined word mark VERIZON

with words in the English language and intentional misspellings of such words indicating that the Respondent

is able to understand and communicate in English; and

- Substantial additional expense and delay would be incurred if the Complaint has to be translated into

Chinese.

The Respondent has not challenged the Complainant’s language request and in fact has failed to file a

response in either English or Chinese.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to

exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all

relevant circumstances of the case, including matters such as the parties’ ability to understand and use the

proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the

language of the proceeding shall be English.

6.2. Substantive Issues

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 trade mark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark

or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds that the entirety of the Trade Mark is reproduced within the disputed domain names.

Accordingly, the disputed domain names are confusingly similar to the Trade Mark for the purposes of the

Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms here which includes the words “administrative”, “charge”, “settlement”,

“settle”, “class action”, “lawsuit”, “claim” and “form” or misspellings of these words and the numbers “2023”

and “2024” 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 Trade

Mark for the purposes of the Policy. WIPO Overview 3.0, sections 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

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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 the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the

Policy or otherwise.

Moreover, the nature of the disputed domain names is inherently misleading as they effectively impersonate

or suggest sponsorship or endorsement by the Complainant, or suggest a connection to the Settlement

Website, especially since many of the disputed domain names contain the same word combination (or

misspellings of the same) of domain name connected to the Settlement Website connected to the

Complainant. WIPO Overview 3.0, section 2.5.1.

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

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.

In the present case, the Panel notes that the Respondent must have been aware of the Trade Mark when it

registered the disputed domain names given the reputation of the Trade Mark and the publicity surrounding

the Lawsuit. It is therefore implausible that the Respondent was unaware of the Complainant when he

registered the disputed domain names.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in

circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a

respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),

panels have been prepared to infer that the respondent knew, or have found that the respondent should

have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further

factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,

or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s

mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice

of the 20 disputed domain names without any explanation is also a significant factor to consider (as stated in

WIPO Overview 3.0, section 3.2.1). The disputed domain names fall into the category stated above and the

Panel finds that the registration is in bad faith. The addition of the terms “administrative”, “charge”,

“settlement”, “settle”, “class action”, “lawsuit”, “claim”, “form” or misspellings of these words refer to the

Lawsuit and Settlement Website, indicating that the Respondent had actual knowledge of and was targeting

the Complainant.

The disputed domain names are also being used in bad faith.

The Websites are PPC sites which have been set up for the commercial benefit of the Respondent. It is

highly likely that Internet users when typing the disputed domain names into their browser, or finding them

through a search engine would have been looking for a site operated by the Complainant or the Settlement

Website rather than the Respondent. The disputed domain names are likely to confuse Internet users trying

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to find the Complainant’s website or the Settlement Website. Such confusion will inevitably result due to the

fact that the disputed domain names comprise the Complainant’s distinctive Trade Mark and terms

referencing the Lawsuit and Settlement Website.

The Respondent employs the reputation of the Trade Mark to mislead users into visiting the disputed domain

names instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally

attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s

Websites are those of or authorised or endorsed by the Complainant, or related to the Settlement Website.

Further, the large number of disputed domain names involved is an indication that the Respondent is a serial

cybersquatter.

The Panel therefore also concludes that the disputed domain names were registered and are being used in

bad faith under paragraph 4(b)(iv) of the Policy.

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, <verizonadministrativechagesettlement.com>,

<verizonadministrativechargelawsuit.com>, <verizonadministrativechargesettement.com>,

<verizonadministrativechargesettle.com>, <verizonadministrativechargesettlemen.com>,

<verizonadministrativechargesettlements.com>, <verizonadministrative.com>,

<verizonchargesettlement.com>, <verizonclassactionlawsuit.com>, <verizonclassactionlawsuit2023.com>,

<verizonclassactionsettlementclaim.com>, <verizonclassactionsettlement.com>,

<verizonclassactionsettlement2024.com>, <verizonclassactionsuit.com>, <verizonlawsuitclaim.com>,

<verizonlawsuitclaimform.com>, <verizonsettlementclaimform.com>, <verizonsettlementform.com>,

<verizonsettlement2024.com>, and <whatisverizonadministrativecharge.com>, be transferred to the

Complainant.

/Karen Fong/

Karen Fong

Sole Panelist

Date: July 23, 2024