(June 8, 2020) - Verizon’s intellectual property affiliate has persuaded the World Intellectual Property Organization to award the telecommunications conglomerate two domain names that combine Verizon trademarks with the name of the disease caused by the coronavirus.
Verizon Trademark Services LLC v. Walker, No. D2020-960, 2020 WL 2836417 (WIPO Arb. May 26, 2020).
Both myverizonwirelesscovid19.com and verizonwireless-covid-19.net domains resolved to one website that looked like a legitimate site belonging to Verizon Wireless, Verizon Trademark Services LLC had complained.
U.S. resident Keith Walker registered the domains on April 12, just as the COVID-19 pandemic was gripping American communities.
The panelist appointed by the WIPO Arbitration and Mediation Center deduced that Walker was using the domains for a phishing scheme, the process of impersonating a legitimate company to dupe interested parties into providing personal and financial information on a phony site.
Evidence of a phishing scheme is a strong indication that the registrant was using the domains in bad faith, the panelist said in a May 26 decision.
The Uniform Domain Name Dispute Resolution Policy, commonly called UDRP, is the legal framework established by the Internet Corporation for Assigned Names and Numbers for the resolution of domain name registration disputes.
In addition to providing evidence of bad faith, a complainant seeking to transfer a disputed domain name must show it has priority rights to at least one trademark that is confusingly similar to the disputed domain and that the registrant had no legitimate interest in the domain.
The complainant in this case holds U.S. trademark registrations for “Verizon” and “Verizon Wireless” on behalf of Verizon Communications Inc., one of the world’s largest telecoms.
The company registered the marks shortly after its 2000 formation as a result of the merger between Bell Atlantic and GTE Corp.
While the domains combine Verizon marks with other words, such as “my” and “covid-19,” these words qualify as merely descriptive or dictionary terms that the panelist said are “insufficient to avoid confusing similarity.”
Verizon also provided sufficient evidence showing Walker lacked any legitimate rights to the trademarks, as the company showed it had not licensed such use nor did it have any relationship with the registrant, the panelist said.
As of the time of the panel’s decision, the disputed domains resolved to web pages that informed the visitor that a website was unavailable, but Verizon provided screenshots of the impersonator website when it first complained to WIPO on April 17, the panelist noted.
The resemblance was indictive of a phishing scheme, which “evidences a clear intent to disrupt the complainant’s business, deceive individuals and trade off the complainant’s goodwill,” the panelist said.
Because Verizon met the requirements of the UDRP, the panel ordered Walker to transfer myverizonwirelesscovid19.com and verizonwireless-covid-19.net to Verizon.