DECISION

 

Republic Services, Inc. v. timbers community

Claim Number: FA2101001929423

 

PARTIES

Complainant is Republic Services, Inc. (“Complainant”), represented by Mario C. Vasta of Fennemore Craig, P.C., Arizona, USA.  Respondent is timbers community (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <republlicsarvices.com>, registered with Register.Com, Inc..

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 22, 2021; the Forum received payment on January 22, 2021.

 

On January 27, 2021, Register.Com, Inc. confirmed by e-mail to the Forum that the <republlicsarvices.com> domain name is registered with Register.Com, Inc. and that Respondent is the current registrant of the name. Register.Com, Inc. has verified that Respondent is bound by the Register.Com, 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 January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 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@republlicsarvices.com.  Also on January 28, 2021, 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 February 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant has rights in the REPUBLIC SERVICES mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,084,686, registered January 10, 2012). See Compl. Annex B-1. Respondent’s <republlicsarvices.com> is identical or confusingly similar to Complainant’s REPUBLIC SERVICES mark as it merely adds an extra letter ‘L’ in the word “republic” and replaces the first “E” in the word “services” with an “A” while adding the top-level domain “.com.”

2.    Respondent lacks rights or legitimate interests in the <republlicsarvices.com> domain name. Respondent is not authorized by Complainant to use the REPUBLIC SERVICES mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name fails to resolve to an active webpage. Furthermore, Respondent uses the disputed domain name to send emails mimicking Complainant’s employees in furtherance of a financial scam.

3.    Respondent registered and uses the <republlicsarvices.com> domain name in bad faith. Respondent uses the disputed domain name to send emails mimicking Complainant’s employees in furtherance of a financial scam.

 

 

B.   Respondent

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <republlicsarvices.com> domain name is confusingly similar to Complainant’s REPUBLIC SERVICES mark.

 

2.    Respondent does not have any rights or legitimate interests in the <republlicsarvices.com> domain name.

 

3.    Respondent registered or used the <republlicsarvices.com> domain name in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the REPUBLIC SERVICES mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 4,084,686, registered January 10, 2012). See Compl. Annex B-1. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the REPUBLIC SERVICES mark per Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <republlicsarvices.com> is identical or confusingly similar to Complainant’s REPUBLIC SERVICES mark as it merely adds an extra letter ‘L’ in the word “republic” and replaces the first “E” in the word “services” with an “A” while adding the top-level domain “.com.” The intentional misspelling of a mark and the addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show 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 contends Respondent lacks rights or legitimate interests in the <republlicsarvices.com> domain name as Respondent is not authorized to use the REPUBLIC SERVICES mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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 for the disputed domain name lists the registrant as “timbers community,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the REPUBLIC SERVICES mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the <republlicsarvices.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name fails to resolve to an active webpage. Failure to make active use of a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant provides a screenshot from the disputed domain name that shows its failure to resolve to an active webpage. See Compl. Ex. D. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Complainant also argues that Respondent fails to use the <republlicsarvices.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to send emails mimicking Complainant’s employees in furtherance of a financial scam. Using a confusingly similar domain name to pass off as a complainant in furtherance of a financial scam may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also 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 argues that Respondent seeks to defraud customers by using the disputed domain name to send email requests to Complainant’s customers for payments of invoices. See Compl. Annex E and F. Complainant further argues Respondent seeks to confuse customers into believing that emails are from employees of Complainant and that Respondent emails Complainant’s customers that Complainant has new ACH direct deposit instructions and bank information to which the customers should direct their payments. See Compl. Annex E and F. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and uses the <republlicsarvices.com> domain name in bad faith as Respondent uses the disputed domain name to send emails mimicking Complainant’s employees in furtherance of a financial scam. Using a confusingly similar domain to pass off as an employee of a complainant can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (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)”). Complainant provides screenshots of emails in which Respondent attempts to pass off as an employee of Complainant. See Compl. Annex E and F. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <republlicsarvices.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 8, 2021