Waste Connections, Inc. v. DNS Department
Claim Number: FA1505001620560
Complainant is Waste Connections, Inc. (“Complainant”), represented by Scott M. Hervey of Weintraub Tobin Chediak Coleman Grodin, California, USA. Respondent is DNS Department (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wasteconnections.net> ('the Domain Name'), registered with TUCOWS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2015; the Forum received payment on May 20, 2015.
On May 21, 2015, TUCOWS, INC. confirmed by e-mail to the Forum that the <wasteconnections.net> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wasteconnections.net. Also on May 22, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant's contentions can be summarized as follows:
The Complainant is an industry leading waste services company. Founded in 1997, it went public in 1998; its stock is traded on the New York Stock Exchange under the ticker symbol WCN. It serves more than two million customers across the USA in 32 states.
It owns the federally registered trade mark WASTE CONNECTIONS INC for waste collection and disposal services. It owns the domain name wasteconnections.com registered in 1997 and operates a web site at that domain. It has been using its registered mark since 1998.
The Complainant is well known in the waste industry. The value of the goodwill it has in the registered mark is substantial.
On or about May 13, 015 the Complainant became aware of the Domain Name and that it was associated with a web site that promoted waste hauling services in Monroe, Louisiana. The Complainant has provided waste collection and disposal services in Monroe, Louisiana since 1999.
The Domain Name is substantiallly the same as the Complainant’s registered mark. Removing spaces between terms and inconsequential changes do not affect the application of the Policy.
The Complainant has not authorized, licensed or entered into any agreement with Respondent that would allow Respondent to use the Complainant's registered mark in a domain name.
The Domain Name was registered no earlier than 2012. The Complainant acquired trade mark rights in its registered mark as early as March, 1998, significantly earlier than this.
The website attached to the Domain Name offers competing waste collection services. This is not a bona fide offering of goods and services under s4(c) (i) of the Policy, nor a legitimate non-commercial or fair use under s4(c) (iii) of the Policy. There is no evidence that the Respondent has ever been commonly known as 'Waste Connections'. The web site lists the entity as 'Delta Disposals' and the WHOIS information shows it was registered under the name ‘DNS Department’. The Respondent is attempting to mislead or divert Internet users to competitive waste collection services for its own commercial gain.
Given the notoriety of 'Waste Connections’ in the waste industry, Respondent had actual or constructive knowledge of the Complainant’s rights in this mark when it registered the Domain Name.
Respondent’s use of 'Waste Connections' in the Domain Name is a misappropriation of the goodwill that the Complainant has built up in its mark. Respondent is attempting to mislead or divert Internet users to competitive waste collection services for its own financial gain.
Respondent is trying to pass itself off as being associated with the Complainant. Such passing off is bad faith.
The Respondent providing waste haulage services in Monroe, Louisiana is likely to cause actual customer confusion. Internet users may wrongfully believe that Respondent is associated with the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is a waste services company. It owns the federally registered trade mark WASTE CONNECTIONS INC for waste collection and disposal services. It owns the domain name wasteconnections.com registered in 1997 and operates a web site at that domain. It has been using its registered mark since 1998.
The Domain Name was registered no earlier than 2012. The Complainant acquired trade mark rights in its registered mark as early as March, 1998, significantly earlier than this. The website attached to the Domain Name offers competing waste collection services not connected with the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar
The Domain Name consists of the distinctive part of the Complainant’s mark WASTE CONNECTIONS and the gTLD .net.
The gTLD .net does not serve to distinguish the Domain Name from the WASTE CONNECTIONS INC mark, as WASTE CONNECTIONS is the distinctive component of both that mark and the Domain Name. As a general rule a gTLD does not distinguish a domain name from the mark at issue See Trip Network v Alviera FA 914943 (Nat. Arb. Forum March 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy 4 (a)(i) analysis.)
Also prior panels have found that a domain name is confusingly similar when it contains a distinctive element of a trade mark and merely omits a word See Asprey & Garrard Ltd. v Canlan Computing D2000-1262 (WIPO Nov 14, 2000)(finding that the domain name asprey.com is confusingly similar to the Complainant’s ASPREY & GARRARD and MISS ASPREY marks).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit.
The web site attached to the domain name uses the trading name 'Delta Disposals'. Accordingly it is not clear why The Respondent has used the Domain Name to promote goods and services in competition with those of the Complainant. It uses the Complainant's trade mark and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Benjamin FA 944242 (Nat. Arb. Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panellists find that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent’s use of the site is commercial and he is using it to make profit from using a web site which competes with the Complainant in a confusing manner. As held above the Panel believes that the use in confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant offering financial services under a very similar name to the Complainant which appears to be using a Domain Name which incorporates the distinctive part of the complainant’s trade mark WASTE CONECTIONS and is the .net equivalent of the Complainant’s .com domain name. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wasteconnections.net> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: June 22, 2015
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