Waste Connections, Inc. v. John Arwood / Arwood Waste
Claim Number: FA1505001618000
Complainant is Waste Connections, Inc. (“Complainant”), represented by Scott Hervey of Weintraub Tobin Chediak Coleman Grodin, California, USA. Respondent is John Arwood / Arwood Waste (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wasteconnections.us>, registered with GODADDY.COM, 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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2015; the Forum received payment on May 5, 2015.
On May 6, 2015, GODADDY.COM, INC. confirmed by e-mail to the Forum that the <wasteconnections.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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.us. Also on May 12, 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.
A timely Response was received and determined to be complete on June 1, 2015.
Complainant submitted a timely Additional Submission, which was received on June 5, 2015.
On June 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran, 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 available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the WASTE CONNECTIONS, INC. mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,714,422, registered Nov. 24, 2009). Complainant uses the WASTE CONNECTIONS, INC. mark in connection with its business, which provides waste services. The <wasteconnections.us> domain name is identical to Complainant’s WASTE CONNECTIONS, INC. mark. The <wasteconnections.us> domain name merely omits the space between “waste” and “connections,” removes the “Inc.” portion of Complainant’s mark, and adds the country code top-level domain (“ccTLD”) “.us” to the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name. Further, Respondent is not authorized or licensed by Complainant to use the registered mark. Complainant acquired trademark rights well before Respondent’s date of registration. Respondent lacks rights or legitimate interests in the <wasteconnections.us> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name to offer competing waste collection services. See Compl., at Attached Ex. B.
Respondent has engaged in bad faith registration and use of the <wasteconnections.us> domain name. Respondent seeks to trade off the goodwill of Complainant and its mark, through a likelihood of confusion, for its own commercial gain. Further, Respondent had knowledge of Complainant’s rights in the WASTE CONNECTIONS, INC. mark when it registered the disputed domain name.
B. Respondent
On January 24, 215, Respondent registered the disputed domain name, <wasteconnections.us>. Respondent registered the disputed domain name in good faith as part of its offering of waste clean-up services. Respondent is the owner of over 500 domain names that incorporate the word “waste.” Respondent registered the disputed domain name for the purpose of expanding its services. Complainant’s trademark is merely a joining of two common terms, “waste” and “connections,” and Complainant has no exclusive rights in the mark. The trademark is descriptive expression for connecting waste disposal service providers with customers, and Complainant has not demonstrated the requisite secondary meaning needed for protection over the expression.
Respondent has rights and legitimate interests in the <wasteconnections.us> domain name. Respondent has been in the business of waste removal for over thirty years. Both prior to and subsequent to Respondent’s registration of the disputed domain name, Respondent operated a business associated with waste removal services, and has made a bona fide offering of goods and services. Further, Respondent conducts business in Florida, a state in which Complainant does not claim to have any customers.
Complainant must prove that Respondent was clearly aware of Complainant, its product, and that the aim of Respondent’s registration was to take advantage of the confusing similarity. Respondent had no notice of Complainant’s existence until after registering the disputed domain name.
C. Additional Submissions
Complainant reiterates that its federally registered trademark satisfies the requirements of Policy ¶ 4(a)(i), and insists that a UDRP proceeding is not the proper forum to second-guess the USPTO’s determination that the registered mark is distinctive. Further, Complainant argues that Respondent has failed to show how or why the mark WASTE CONNECTIONS, INC. is merely descriptive or common terms. Complainant insists that its registered mark is not descriptive of waste collection services, and is therefore suggestive rather than descriptive. Complainant states that Respondent intends to use the disputed domain name for future plans, which directly compete with Complainant. Complainant further argues that a mere assertion of future plans, without any evidence demonstrating a preparation to use the disputed domain name in a non-competing manner, is not sufficient to establish rights and legitimate interests. Complainant urges that Respondent has not met its burden of showing rights and legitimate interests in the disputed domain name.
The Panel finds that Respondent’s case rises or falls on whether or not the term “waste connections” is generic of waste collection services. However, the Panel concludes that the term is, at best, suggestive of something waste related, but is not descriptive of waste collection services.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it owns the WASTE CONNECTIONS, INC. mark through its registration with the USPTO (Reg. No. 3,714,422, registered Nov. 24, 2009). Complainant states that it uses the WASTE CONNECTIONS, INC. mark in connection with its business, which provides waste services. This Panel concludes that Complainant’s valid registration of the WASTE CONNECTIONS, INC. mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the <wasteconnections.us> domain name is identical to Complainant’s WASTE CONNECTIONS, INC. mark. The <wasteconnections.us> domain name merely omits the space between “waste” and “connections” and adds the ccTLD “.us” to the disputed domain name. The Panel notes that Respondent also removes the “Inc.” portion of Complainant’s mark. Past panels have found that the removal of a generic term such as “Inc.” does not serve to eliminate confusing similarity. See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Further, the removal of spaces and the addition of a ccTLD has been routinely found as irrelevant under Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). This Panel agrees that the disputed domain name is confusingly similar to the WASTE CONNECTIONS, INC. mark under Policy ¶ 4(a)(i).
While Respondent contends that the <wasteconnections.us> domain name is comprised of common and descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel recognizes that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant alleges that Respondent is not commonly known by the disputed domain name, as the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “John Arwood / Arwood Waste” as the registrant of record. Additionally, Complainant asserts that the resolving website refers to the entity as “Waste Connect and Disposal,” which reveals that Respondent is not commonly known by <wasteconnections.us>. See Compl., at Attached Ex. B. Further, Complainant states that Respondent is not authorized or licensed by Complainant to use the registered mark, and Complainant acquired trademark rights well before Respondent’s date of registration. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights in the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent lacks rights or legitimate interests in the <wasteconnections.us> domain name is evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. According to Complainant, Respondent uses the disputed domain name to offer competing waste collection services. See Compl., at Attached Ex. B. Previous panels have found that use of a confusingly similar domain name to offer competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, this Panel finds that Respondent lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policies ¶¶ 4(c)(ii) or 4(c)(iv).
Respondent claims it has rights and legitimate interests in the <wasteconnections.us> domain name. Respondent asserts that it has been in the business of waste removal for over thirty years. Respondent states that both prior to and subsequent to Respondent’s registration of the disputed domain name, it operated a business associated with waste removal services, and has made a bona fide offering of goods and services. However, the Panel finds that such merely establishes Respondent as a competitor, but does not establish rights and legitimate interests in a domain and terms that have not been established as having been used in connection with such services.
Further, Respondent argues that Complainant’s mark is merely a joining of two common terms, “waste” and “connections”; however, the Panel points out that a mark must be viewed as a whole and not by dissecting of the terms of which it is comprised. No evidence has been provided to show that the combined term “waste connections” describes anything in particular in the industry or trade, while an online search for a definition of the term performed by the Panel revealed only references to Complainant. Thus, this Panel concludes that Respondent has failed to meet its burden of proof with respect to establishing that “waste connections” is generically descriptive in the waste removal trade.
Complainant asserts that Respondent seeks to trade off the goodwill of Complainant and its mark, through a likelihood of confusion, for its own commercial gain. Complainant alleges that Respondent intended for such confusion to occur, so that consumers would contract with one of Respondent’s affiliates for Respondent’s financial benefit, which harms Complainant’s business. Further, Complainant urges that Respondent’s bad faith is evidenced by its failure to include a disclaimer on its website, warning users that Respondent is not affiliated with Complainant, which shows that Respondent is attempting to pass itself off as being associated with Complainant. Previous panels have found bad faith registration and use where respondents create a false impression of association with a complainant for financial gain. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the WASTE CONNECTIONS, INC. mark when it registered the disputed domain name, due to its trademark registration and notoriety in the waste industry. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had to have had actual notice of Complainant's mark given the widespread activity of the Complainant and the fact that even the most rudimentary search relative to waste collection services on the internet would have revealed the existence of Complainant. Thus, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wasteconnections.us> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David S. Safran, Panelist
Dated: June 22, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page