Republic Services, Inc. v. ICS Inc
Claim Number: FA1801001767748
Complainant is Republic Services, Inc. (“Complainant”), represented by Blake Atkinson of Fennemore Craig, P.C., Arizona, USA. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <repblicservices.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.
On January 20, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <repblicservices.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@repblicservices.com. Also on January 29, 2018, 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 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 its REPUBLIC SERVICES mark to promote its waste management, waste disposal, garbage collection, and other related waste services. Complainant established rights in the REPUBLIC SERVICES mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,084,686, registered Jan. 10, 2012). Respondent’s <repblicservices.com> domain name is confusingly similar to Complainant’s REPUBLIC SERVICES mark as it merely eliminates the letter “u” and appends the generic top-level domain (“gTLD”) “.com” to the fully-incorporated mark.
Respondent does not have rights or legitimate interests in the <repblicservices.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its REPUBLIC SERVICES mark in any fashion. Respondent is not commonly known by the disputed domain name as the WHOIS information of record lists “ICS Inc” as the registrant. Respondent is not using the <repblicservices.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website that features deceptive bill-paying features and explicit adult content. Further, the resolving website prompts Internet users to download unknown browser extensions and computer programs and requests for users to call unknown and unrelated telephone numbers.
Respondent registered and is using the <repblicservices.com> domain name in bad faith. Respondent uses the domain name to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. Further, Respondent uses the domain name to create a likelihood of confusion with Complainant’s REPUBLIC SERVICES mark for Respondent’s commercial gain. Respondent also uses the domain name to resolve to a website featuring adult content. Finally, Respondent uses the domain name to phish for Internet users’ personal information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <repblicservices.com> domain name.
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 contends it established rights in the REPUBLIC SERVICES mark through registration with the USPTO (e.g. Reg. No. 4,084,686, registered Jan. 10, 2012). Registration of a mark with a trademark agency such as the USPTO is sufficient to establish rights in the mark per Policy 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel holds that Complainant has established rights in the REPUBLIC SERVICES mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <repblicservices.com> domain name is confusingly similar to Complainant’s REPUBLIC SERVICES mark as it merely eliminates the letter “u” and appends the gTLD “.com” to the fully incorporated mark. The elimination of a single letter and addition of a gTLD to a fully incorporated mark does not sufficiently differentiate between a disputed domain name and a mark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel finds that the disputed domain name is identical to Complainant’s mark.”). The Panel holds that Respondent’s <repblicservices.com> domain name is confusingly similar to Complainant’s REPUBLIC SERVICES mark.
Complainant has proved this element.
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 alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its REPUBLIC SERVICES mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <repblicservices.com> lists “ICS Inc” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <repblicservices.com> domain name.
Next, Complainant argues that Respondent is not using the <repblicservices.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant alleges that Respondent has used the domain name to resolve a variety of websites over time. The domain name previously resolved to websites that featured explicit adult content or links for bill-paying features. Use of a domain name to feature adult content may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Further, use of a domain name to feature pay-per-click hyperlinks related to a Complainant’s business may not be considered a bona fide offering of goods or services. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant alleges that screenshots of the <repblicservices.com> domain name’s resolving website indicate that the website has previously featured adult-oriented images and hyperlinks such as “Online Bill Payment Services,” “Trash Removal Services,” and “Financial Services Companies.” Therefore, the Panel finds that Respondent previously used the domain name to resolve to websites containing adult-oriented images and competitive hyperlinks and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Further, Complainant contends that the <repblicservices.com> domain name has also resolved to websites that prompt Internet users to download unknown and possibly malicious browser extensions and computer programs. Use of a domain name to host a website that attempts to download potentially malicious software may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Complainant alleges that screenshots of the <repblicservices.com> domain name’s previous resolving websites indicate that the site has previously featured downloads for software programs like “Top Trending extension,” “Fun Safe Tab extension,” and “Browsing Privately extension.” Accordingly, the Panel finds that the <repblicservices.com> domain name has resolved to websites featuring unwanted browser extensions and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Finally, Complainant alleges that Respondent is using the disputed domain name to deceive Internet users into providing personal information. Use of a domain name to phish for users personal information may indicate a respondent’s failure to use a disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). Complainant contends that Respondent has used the domain name to redirect to a landing page that informs Internet users that their Facebook login, credit card details, and other personal information has been compromised and prompts the users to call an unknown number for assistance. Complainant argues that Respondent most likely uses the phone call to fraudulently gain personal information from the deceived Internet user. The Panel finds that Respondent has used the domain name in connection with a phishing scheme and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant argues that Respondent registered and is using the <repblicservices.com> domain name in bad faith by diverting Internet users to Respondent’s competing website and disrupting Complainant’s business. Use of a domain name to disrupt a complainant’s business may be evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant contends that screenshots indicate that Respondent has used the domain name to host a variety of competing websites including sites featuring competing hyperlinks, adult-oriented content, and browser extensions. Accordingly, the Panel finds that Respondent used the <repblicservices.com> domain name to divert internet users away from Complainant’s website to Respondent’s competing website and holds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant alleges that Respondent uses the domain name to create a likelihood of confusion with Complainant’s REPUBLIC SERVICES mark for Respondent’s commercial gain. Complainant alleges that Respondent has used the domain name to resolve to competing websites and websites that feature adult-oriented material. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement therein may indicate bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Further, use of a domain name to cause confusion and commercially benefit from linking the domain name to adult oriented material or other competing websites may indicate bad faith registration and use. See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). Complainant argues that screenshots of the domain name’s resolving website indicate that the site has previously resolved to sites containing adult-oriented material or competing hyperlinks. As such, the Panel finds that Respondent used the domain name to create confusion between the domain name and Complainant’s REPUBLIC SERVICES mark for Respondent’s commercial gain and holds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent uses the domain name to phish for Internet users’ personal information. Use of a domain name to phish for personal or financial information may be considered bad faith use under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant claims that screenshots of the disputed domain name’s resolving websites indicate that the site once featured a fraudulent message that informed Internet users that their “Facebook Login, Credit Card Details, and Email account information” had been compromised. The message indicated that Internet users “must contact us immediately so that our engineers can walk you through the removal process over the phone” and to “please call us within the next 5 minutes to prevent your computer from being disabled.” Id. Complainant alleges that Respondent most likely encourages Internet users to call the number to procure users’ personal information. Therefore, the Panel finds that Respondent engaged in a phishing scheme and holds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <repblicservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 26, 2018
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