Verizon's biggest ever UDRP win reminds users of the Mechanism's value

Verizon has recovered more than 70 infringing domains in a UDRP decision handed down last week. The case highlights the value – and cost-saving benefits – of the process to rights holders at a time when the system is under review.

Verizon recovered more than 70 infringing domains in its biggest ever UDRP win last week.

In WIPO Case D2022-2224, an administrative panel considered a case filed by the communications and technology giant in a bid to recover 72 domains registered by Zhi Chao Yang in China.

The domains – which included ‘myverizonbenefitsconnection.com’, ‘verizonbeefitsconnection.com’, ‘verizonbenefitcsonnection.com’, ‘verizonbenefitsconnectino.com’ and ‘verizonbenefitsconnectiom.com’ – were misspellings of the company’s own ‘verizonbenefitsconnection.com’ domain. In some instances, an additional element was included (eg, ‘comverizonbenefitsconnection.com’).

The respondent did not reply to the complaint. Therefore, the sole panellist considered the three prongs of the UDRP. First, Verizon succeeded in showing that the disputed domain names were confusingly similar to its VERIZON mark. Second, the lack of response from the registrant combined with Verizon having no affiliation with the individual (and the lack of evidence that Zhi Chao Yang is commonly known by any of the disputed domain names) led to the finding that the respondent had no legitimate interest in the domains.

Finally, the panellist considered the question of whether the domains were registered and used in bad faith. Again, the finding favoured Verizon. Among other things, the domains resolved to parked pages comprising pay-per-click links and the registrant did not respond to the complaint and had a history of abusive domain name disputes against third-party trademark owners.

“This was our largest ever UDRP filing and win,” Patrick Flaherty, senior managing associate general counsel marketing, IP and digital media law and policy at Verizon, confirms to WTR. But it was one of three UDRP complaints that the company has filed with WIPO against cyberquatters who have registered misspellings of its ‘comverizonbenefitsconnection.com’ domain. “The two remaining UDRP proceedings are still pending,” Flaherty observes. 

The UDRP has become a key weapon for Verizon, especially given the impact that the EU General Data Protection Regulation has had on the availability of registrant information. “The lack of access to WHOIS domain name registration information makes me very frustrated when fighting domain name infringement,” Flaherty laments. This frustration is exacerbated when legitimate requests for access to registrant information go unanswered. “Most registrars do not respond to our requests to reveal WHOIS information without a subpoena or having filed a UDRP complaint,” Flaherty told WTR last month.

In this difficult environment, Flaherty’s team relies on watch notice reports to uncover infringement. “When we see infringing domain names that could possibly be used for domain name abuse, like fraud or phishing, we file a UDRP complaint,” he explains.

This requires constant vigilance and is a task that is complicated by the scope of Verizon’s assets. The company has a zero-tolerance stance on infringement. But with 4,000 trademark applications and registrations, and 9,000 domain names (its domain portfolio having grown significantly since the company’s acquisition of TracFone Wireless Inc and its family of brands in late 2021), this is no easy feat.

The UDRP is therefore an essential part of the brand toolkit. The Verizon team looks to control the costs associated with protecting a domain name portfolio that is frequently targeted by bad actors by using the WIPO Model UDRP Complaint to create their own template complaints in-house when instances of cybersquatting, typosquatting and pornosquatting are encountered.

Ultimately, cost control has to be front of mind. Reflecting on Verizon’s current UDRP cases, Flaherty notes: “These three filings are proving to be a very efficient way to address a large number of infringing domain names and thankfully we were able to offset some of the costs by drafting the complaints in-house. This leaves us with more room in our budget to be able to file more UDRP complaints.”

At a time when the UDRP is under review, Verizon’s experience in this case illustrates the critical role that the mechanism plays in helping brand owners to not only protect their rights, but also better manage the finite resources available for combatting infringement.

Source: worldtrademarkreview.com-Trevor Little

Editor:IPR Daily-Ann