DECISION

 

Republic Services Intellectual Property Holdings, LLC v. Republic Services / republlcservices

Claim Number: FA2502002139057

 

PARTIES

Complainant is Republic Services Intellectual Property Holdings, LLC ("Complainant"), represented by Mario C. Vasta of Fennemore Craig, P.C., Arizona, USA. Respondent is Republic Services / republlcservices ("Respondent"), Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <republlcservices.com>, registered with Tucows Domains 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 6, 2025; Forum received payment on February 6, 2025.

 

On February 7, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <republlcservices.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 11, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2025 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@republlcservices.com. Also on February 11, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 20, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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

Complainant contends in part as follows:

 

Complainant, Republic Services, Inc., is a waste disposal company offering services in solid waste collection, waste transfer, waste disposal, recycling, and energy services.

 

Complainant asserts rights to the REPUBLIC SERVICES mark based upon registration with the United States Patent and Trademark Office ("USPTO").

 

Respondent's <republlcservices.com> domain name is confusingly similar to Complainant's mark as Respondent's domain name differs from the RepublicServices.com domain (and the Republic marks) only by replacing the letter "I" in "Republic" with an additional letter "L". The at-issue domain name uses the identical ".com" top-level domain as does Complainant's RepublicServices.com domain name. The addition of a second letter "L" in the word "Republic" creates significant confusion and is hard to decipher.

 

Respondent does not have rights or legitimate interests in the <republlcservices.com> domain name. Respondent's use of at-issue domain name has no connection with a bona fide offering of goods and services. Indeed, the domain name does not appear to address an active website at this time; consequently, it does not list any bona fide goods or services provided by Respondent.  

 

The fact that the at-issue domain name was only recently registered demonstrates that the Respondent has not been utilizing the domain name for a bona fide offering of goods or services. Republic has used the word elements of the Complainant's mark in association with its services since at least as early as 1998. Complainant has not licensed or otherwise permitted Respondent to use any portion of its Complainant's mark in any fashion. Respondent is not making a legitimate noncommercial or fair use of the at-issue domain name. Respondent's intent is commercial gain; it is using the domain name in a way that is highly likely to confuse customers or others into believing that Respondent is associated with Republic.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent is able to utilize email addresses with the suffix "@republlcservices.com." Respondent's email suffix is confusingly similar to Republic's email suffix of "@republicservices.com." Respondent is able to defraud customers and others by confusing them into falsely believing that emails coming from <republlcservices.com> are from employees of Republic. This fraud likely causes financial damage to both Republic and its customer and damage to Complainant's goodwill. Respondent registered <republlcservices.com> primarily for the purpose of disrupting the business of Republic and its customers. Respondent used false information to register the domain name, including listing "Republic Services" as the registrant despite not being affiliated with Republic.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark 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 the REPUBLIC SERVICES trademark.

 

Respondent uses the at-issue domain name to host emails that pose as Complainant to perpetrate fraud.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's registration of the REPUBLIC SERVICES mark with the USPTO sufficiently demonstrates Complainant's rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

 

Respondent's <republlcservices.com> domain name contains an overt misspelling of Complainant's REPUBLIC SERVICES trademark less its domain name impermissible space, where the domain name's letter "I" is replaced with the lookalike letter "L" and all is followed by the ".com" top-level domain name . Respondent's slight alteration to Complainant's trademark in creating the at-issue domain name fails to distinguish the domain name from Complainant's REPUBLIC SERVICES trademark. Therefore, the Panel concludes that Respondent's <republlcservices.com> domain name is confusingly similar to Complainant's REPUBLIC SERVICES trademark pursuant to Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, "Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶4(a)(i) is appropriate.");see also, 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.'")

 

Rights or Legitimate Interests

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).

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue 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 at-issue domain name indicates "Republic Services" is the domain name's registrant. Complainant disputes the veracity of the domain name registrant's identity claim, Respondent has made no objection to such claim, and there is no reliable evidence before the Panel that tends to prove that Respondent is commonly known by the <republlcservices.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't" as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent's <republlcservices.com> domain name is used to host email pretending to come from one of Complainant's employees. Such communication impersonates Complainant's employee, misrepresents that there were changes to Complainant banking information, and in multiple other ways attempts to have Complainant's customers direct funds according to Respondent's corrupt direction. Respondent's sham email address thus endeavors to aid Respondent's deception regarding the email's source so that funds might be misdirected to Respondent's account. Respondent's use of the <republlcservices.com> domain name evidences neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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 purportedly from agents of complainant to be 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)).

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in <republlcservices.com>.

 

Registration and Use in Bad Faith

As discussed below without limitation, there is evidence that leads the Panel to find that Respondent acted in bad faith pursuant to the Policy.

 

First as noted above regarding rights and legitimate interests, Respondent used the at-issue domain name in connection with an email based scheme intent on defrauding Complainant's customers. Respondent uses <republlcservices.com> hosted email pretending to be from one of Complainant's employees so that it might ultimately trick the email's recipient into misdirecting funds to Respondent. Respondent's use of the domain name to provide an impostor and swindler a credible email address in furtherance of fraud shows Respondent's bad faith registration and use of the at-issue domain name under 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)"); see also 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)).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the REPUBLIC SERVICES mark when Respondent registered <republlcservices.com> as a domain name. Respondent's actual knowledge is gleaned from REPUBLIC SERVICES notoriety as well as from Respondent's use of the domain name to host fraudulent email pretending to be from Complainant's employee. Respondent's prior knowledge of Complainant's trademark rights further shows Respondent's bad faith registration and use of <republlcservices.com>. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum Sept. 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

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 <republlcservices.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: March 21, 2025