Republic Services, Inc. v. dianne Chandler Wright
Claim Number: FA2003001890010
Complainant is Republic Services, Inc. (“Complainant”), represented by Mario Vasta of Fennemore Craig, P.C., Arizona, United States. Respondent is dianne Chandler Wright (“Respondent”), Georgia, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <republlcservlces.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2020; the Forum received payment on March 26, 2020.
On March 27, 2020, Google LLC confirmed by e-mail to the Forum that the <republlcservlces.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 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2020 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@republlcservlces.com. Also on March 30, 2020, 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 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 contends as follows:
Complainant, Republic Services, Inc. is a company that offers waste management services.
Complainant has rights in the REPUBLIC SERVICES mark through its registration of the mark with the United States Patent and Trademark Office.
Respondent’s <republlcservlces.com> domain name is identical or confusingly similar to Complainant’s REPUBLIC SERVICES mark, because it is a misspelling of the mark with the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <republlcservlces.com> domain name. Respondent is not commonly known by the at-issue domain name and is not authorized or permitted to use Complainant’s REPUBLIC SERVICES mark. Additionally, Respondent fails to use the domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the at-issue domain name and instead uses the at-issue domain name in furtherance of a phishing scheme.
Respondent registered and uses the <republlcservlces.com> domain name in bad faith. Respondent uses the at-issue domain name in furtherance of a phishing scheme. Respondent disrupts Complainant’s business by purposefully deceiving Internet users for financial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the REPUBLIC SERVICES mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its REPUBLIC SERVICES trademark.
Respondent uses the at-issue domain name to host email pretending to originate from Complainant in furtherance of fraud.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for REPUBLIC SERVICES is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <republlcservlces.com>domain name contains a misspelling of Complainant’s REPUBLIC SERVICES trademark. In forming the domain name, Respondent substitutes the two “i” characters in Complainant’s mark with similarly looking “l” characters, removes the mark’s domain impermissible space, and appends the top-level domain name “.com” to the resulting string. Nevertheless, the differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4 (a)(i). Therefore, the Panel concludes that Respondent’s <republlcservlces.com> domain name is confusingly similar to Complainant’s REPUBLIC SERVICES trademark. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “dianne Chandler Wright” (sic). The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the <republlcservlces.com> domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally and as discussed below regarding bad faith, Respondent uses the <republlcservlces.com> domain name to host email designed to pass itself off as originating from Complainant. The <republlcservlces.com> hosted email is part of a fraudulent invoicing scheme. As part of its ruse, Respondent poses as an employee of Complainant who is purportedly a “billing coordinator.” Respondent sends bogus email to third parties having business dealings with Complainant. The email displays Complainant’s trademark and contains wire instruction asking for payment on Complainant’s invoices. The instructions further commands that the recipient wire the funds to someone who was later found by Complainant to be unrelated to Complainant. Respondent’s use of the confusingly similar domain name in this manner, to pass itself off as Complainant in furtherance of blatant fraud, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <republlcservlces.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and interests, Respondent uses the <republlcservlces.com> domain name to host an email address for use in connection with a scheme that is enabled by Respondent’s masquerading as Complainant. The scheme fraudulently seeks that payments from targeted third parties invoiced by Complainant be ostensive paid to Respondent. Thereby, Respondent inappropriately usurps the goodwill inherent in Complainant’s mark through its use of the confusingly similar <republlcservlces.com> domain name. Respondent’s illegal tactics are disruptive to Complainant’s business and are, of course, intended to benefit Respondent financially. Respondent’s use of the domain name in this manner shows Respondent’s bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)).
Additionally, Respondent is engaging in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into another’s trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. The registrant then may take advantage of the confusion to inappropriately exploit the target mark’s goodwill. In the instant case, Respondent formed the at-issue <republlcservlces.com> domain name by substituting the “i“ characters in Complainant’s trademark with similarly depicted “l” characters as part of its scheme to pass itself as Complainant. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <republlcservlces.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 24, 2020
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