Stericycle, Inc. v. Nanci Nette / Name Management Group
Claim Number: FA2305002045321
Complainant is Stericycle, Inc. (“Complainant”), represented by Howard S. Michael of Crowell & Moring LLP, Illinois, USA. Respondent is Nanci Nette / Name Management Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stericorp.com>, registered with Dynadot Inc.
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 Forum electronically on May 19, 2023; Forum received payment on May 19, 2023.
On May 21, 2023, Dynadot Inc confirmed by e-mail to Forum that the <stericorp.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 May 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2023 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@stericorp.com. Also on May 24, 2023, 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 June 19, 2023, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Stericycle, Inc. is the worldwide leading provider of medical waste, document destruction, and patient engagement solutions.
Complainant asserts common law rights in the STERICORP mark. The <stericorp.com> domain name is identical or confusingly similar to Complainant’s mark because the at-issue domain name includes the STERICORP mark in its entirety with the addition of the generic top level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the <stericorp.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the STERICORP mark. Respondent also does not use the at-issue domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is deceiving consumers and impersonating Complainant. The domain name has been associated with malware. The domain name often redirects to pornography websites.
Respondent registered and uses the <stericorp.com> domain name in bad faith. Respondent is redirecting internet traffic to pornography websites. Respondent is redirecting Internet traffic to other third party websites. The domain name is likely used to redirect to malware. Additionally, Respondent had actual knowledge of Complainant’s rights in the STERICORP mark prior to registration of the at-issue domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in STERICORP.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in STERICORP.
Respondent uses the at-issue domain name to randomly redirect internet traffic to third party websites some that feature either adult oriented material or other material unrelated to Complainant.
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 mark in which Complainant has rights.
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case, Complainant shows evidence that STERICORP has acquired secondary meaning through long term continuous use and promotion of the mark as a source identifier related to it medical waste related business. Respondent having failed to respond to the Complaint offers no evidence challenging Complainant’s contentions regarding Complainant’s rights in the STERICORP mark. In light of the foregoing, the Panel concludes that Complainant has acquired sufficient common law rights in the STERICORP mark for the purposes of Policy ¶ 4(a)(i). See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Respondent’s <stericorp.com> domain name contains Complainant’s entire trademark followed by the “.com” top-level name. The slight difference between the at-issue <stericorp.com> domain name and Complainant’s STERICORP mark are insufficient to distinguish the domain name from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <stericorp.com> domain name is identical or confusingly similar to STERICORP. See 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 may find that the disputed domain name is identical to Complainant’s mark.”).
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 failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <stericorp.com> 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 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 identifies the domain name’s registrant as “Nanci Nette” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <stericorp.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See 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).
Respondent uses the at-issue domain name to address to randomly redirect internet traffic, presumable for its commercial benefit, to third party websites that offer different types of content, e.g. sites concerned with pornography, gambling, or credit cards. Respondent’s use of <stericorp.com> in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). 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.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to randomly redirect internet users to websites featuring adult content as well as to other websites, presumptively for commercial gain. Such use of <stericorp.com> is disruptive to Complainant’s business and demonstrates Respondent’s bad faith regarding the at-issue domain name per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”).
Additionally, some of the random websites that are accessed via <stericorp.com> may contain malware thereby further indicating Respondent’s bad faith registration and use of the at-issue domain name. See WordPress Foundation v. Above.com Domain Privacy, FA 1641647 (Forum Nov. 9, 2015) (“Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name” where “Respondent is using the domain name for commercial gain by redirecting Internet users to a rotating series of unrelated third-party websites, some of which attempt to install malware on a user's computer.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the STERICORP mark when it registered <stericorp.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s STERICORP trademark and from Respondent’s use of the domain name to trade off such mark. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s trademark rights in STERICORP further demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stericorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 20, 2023
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