Republic Services, Inc. v. Holly Guarino
Claim Number: FA1902001832139
Complainant is Republic Services, Inc. (“Complainant”), represented by Ray K. Harris of Fennemore Craig, P.C., Arizona, USA. Respondent is Holly Guarino (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <republicservlces.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2019; the Forum received payment on February 28, 2019.
On March 2, 2019, Google LLC confirmed by e-mail to the Forum that the <republicservlces.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 March 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2019 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@republicservlces.com. Also on March 8, 2019, 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 April 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Republic Services, Inc., uses their trademark REPUBLIC SERVICES in connection with the services of waste management, waste disposal, and garbage collection. Complainant has rights in the REPUBLIC SERVICES mark based on registration with the United States Patent and Trademark Office (“USPTO”). Such registrations date back to 2012 and claim first use of the mark in commerce in 1998. Respondent’s <republicservlces.com> domain name, registered on December 11, 2018, is confusingly similar to Complainant’s REPUBLIC SERVICES mark, as it includes a copy of the mark, merely substituting the letter “L” for the letter “I” in the word “services.”
Respondent has no rights or legitimate interests in the <republicservlces.com> domain name as Complainant has not licensed or otherwise permitted Respondent to use any portion of its marks in any fashion. Further, Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to send deceptive emails to Complainant’s customers seeking to have them send payments to an unauthorized bank account that is not affiliated with Complainant. Additionally, the disputed domain name does not resolve to an active web page.
Respondent registered and is using the <republicservlces.com> domain name in bad faith. Respondent intentionally seeks to attract Complainant’s customers, for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s activities. Respondent’s use of the disputed domain name disrupts Complainant’s business by confusing customers and diverting customer payments to an unauthorized bank account. Respondent’s misspelling of Complainant’s mark when registering the disputed domain name constitutes typosquatting. Finally, Respondent has exhibited a pattern of bad faith registration because it uses one other domain name that copies a well-known trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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(f), 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 (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.”).
Complainant claims rights in the REPUBLIC SERVICES trademark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel may therefore hold that Complainant’s registration of the REPUBLIC SERVICES mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <republicservlces.com> domain name is confusingly similar to the REPUBLIC SERVICES mark, as it includes the entire mark, merely substituting the letter “L” for the letter “I” in the word “services.” The intentional misspelling of a complainant’s mark when registering a disputed domain name is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Klein Tools, Inc. v. chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Further, the addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark is nearly always irrelevant under a Policy ¶ 4(a)(i) analysis. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”) In the present case, the Panel agrees that the <republicservlces.com> domain name is confusingly similar to Complainant’s REPUBLIC SERVICES mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <republicservlces.com> domain name as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise permitted Respondent to use any portion of its marks in any fashion. Where a response is lacking, WHOIS information can support a finding that the respondent is not known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Holly Guarino” and no information of record indicates that Respondent is known otherwise or that it was authorized to register a domain name with Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <republicservlces.com> domain name.
Next, Complainant argues that Respondent’s lack of rights or legitimate interests in the <republicservlces.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that Respondent uses the domain name to send deceptive emails to Complainant’s customers seeking to have them deposit funds into an unauthorized bank account. Fraudulent use of a domain name to deceive a complainant’s customers is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Here, Complainant provides a copy of an email thread which shows that Respondent uses the domain name to send various emails to individuals requesting payment via checks or credit cards into an unauthorized bank account that has no connection with the Complainant or any of its business partners. Accordingly, the Panel finds that this use of the <republicservlces.com> domain name to send emails seeking to perpetrate a fraudulent scheme is not bona fide, fair, or otherwise legitimate under Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant asserts that Respondent’s lack of rights or legitimate interests is demonstrated by its inactive holding of the <republicservlces.com> domain name, as the domain does not resolve to any website. Passively holding a disputed domain name does not demonstrate rights or legitimate interests per Policy ¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). It should be noted that Complainant does not provide any evidence to support this contention but the Panel has attempted to browse to the disputed domain name and observed that there is no resolving web content. The Panel thus accepts Complainant’s assertion and finds that Respondent’s failure to use the domain name does not confer rights or legitimate interests in the same per Policy ¶ 4(c)(i) or (iii).
Complainant claims that the Respondent registered and uses the <republicservlces.com> domain name in bad faith. It is noted, above, that the Complainant had established rights in its REPUBLIC SERVICES trademark prior to the creation of the disputed domain name. It is also apparent, from the nature and use of the <republicservlces.com> domain name and the content of its emails that have been sent to Complainant’s customers, that the Respondent was on actual notice of the mark at the time it registered the domain name. True Value Company, L.L.C. v. Paul Skulitz / True Value, FA1807001798403 (Forum Aug. 17, 2018) (use of the domain name <truevaluesavings.com> “to promote competing products which are not connected with Complainant … indicates that Respondent was aware of the significance of the TRUE VALUE name and Complainant’s rights at the time of registration.”).
Next, Complainant claims that Respondent intentionally attempts to confuse users by sending fraudulent and deceptive emails, thereby disrupting Complainant’s business. Using a confusingly similar domain name to send fraudulent emails can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As noted above, Complainant provides an email thread that shows that Respondent uses the domain name to send emails to Complainant’s customers requesting payment via checks or credit cards to an unauthorized bank account that is not associated with Complainant or its business partners. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off confusion with Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant avers that Respondent’s misspelling of Complainant’s mark when registering the disputed domain name constitutes typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, as outlined under Policy ¶ 4(a)(i), the disputed domain name differs from Complainant’s mark by the substitution of the letter “L” for the letter “I" within the word “services” in the REPUBLIC SERVICES mark. Thus, the Panel finds that Respondent’s changes to Complainant’s mark in the domain name further demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent has exhibited a pattern of registering typosquatted domain names. Registration of multiple domain names targeting other trademarks may demonstrate bad faith per Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks). Here, Complainant alleges that Respondent not only owns the disputed domain name, but also owns the <marchofdirnes.org> domain name (which is a mis-spelled variation of the well-known MARCH OF DIMES trademark), and Complainant attaches the WHOIS information for said domain name. In light of the other grounds upon which the Panel bases its finding of bad faith registration and use, it declines to consider the question of whether the Respondent’s having registered one additional typo-squatted domain name, in addition to the disputed domain, results in a pattern of conduct under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <republicservlces.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 2, 2019
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