WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Covanta Energy Corporation v. Moniker Privacy Services and Gregory Ricks
Case No. D2007-0182
1. The Parties
Complainant is Covanta Energy Corporation, of Fairfield, New Jersey, United States of America, represented by LeBoeuf, Lamb, Greene & MacRae, LLP, United States of America.
Respondents are Moniker Privacy Services of Florida, United States of America and Gregory Ricks of Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <covanta.com>, <covanta.net>, and <covanta.org> are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on February 9, 2007. On February 13, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On February 26, 2007, Moniker Online Services, LLC transmitted by email to the Center its complete verification response. Although the response purported to confirm that the Respondent named in the Complaint, Moniker Privacy Services, was listed as the registrant for each of the domain names, elsewhere it identified the registrant of each as “Domain Manager.” The response also purported to provide contact details for the administrative and technical contacts for each of the domain names, which were the same for all three domain names. In response to a notification of registrant changes by the Center based on the different registrant information provided by the registrar, the Complainant filed an amendment to the Complaint on March 7, 2007. The Center verified that the Complaint, together with the amendment, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2007.
Subsequently, on April 6, 2007 the Registrar contacted the Center by email to advise that its earlier verification response, which had identified the registrant of each of the domain names as “Domain Manager,” was incorrect. In another email to the Center on April 6, 2007, the registrar stated that the registrant for each of the domain names was an individual named Gregory Ricks of Texas, United States of America. The Center then, on April 12, 2007, formally notified Gregory Ricks of the Complaint, and provided a due date for his response of April 22, 2007.
Gregory Ricks did not submit any response. Accordingly, the Center notified the default on April 23, 2007.
The Center appointed Debra J. Stanek as the sole panelist in this matter on May 3, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant uses the trademarks COVANTA ENERGY and COVANTA for a variety of services including waste-to energy, engineering and construction, utilities, and waste treatment.
In July 2004, Complainant obtained a United States federal trademark registration for the mark COVANTA ENERGY. The registration issued in 2004 and alleges a date of first use of 2001.
Respondent registered the domain names <covanta.com> and <covanta.net> in November 2000 and the domain name <covanta.org> in 2004. It appears that the websites are being used to generate revenue through various affiliate programs.
5. Parties’ Contentions
Complainant makes the following contentions:
Each of the disputed domain names is identical or confusingly similar to Complainant’s COVANTA ENERGY and COVANTA marks.
Complainant owns a federal registration for the mark COVANTA ENERGY for waste-to-energy, engineering and construction, utilities, and waste treatment services. Complainant also owns a pending application for a federal registration of the mark COVANTA and has common law trademark rights in the mark COVANTA by virtue of its use of the term “to identify itself in company literature and in promoting itself to the public.” Complainant is widely known by the general public in the United States and internationally by the “Covanta” name.
Complainant has used its marks COVANTA and COVANTA ENERGY since at least as early as March 2000 and has continuously operated the “www.covantaenergy.com” website since April 2000 and its “www.covantaholdings.com” website since September 2005.
The disputed domain names incorporate the dominant element of Complainant’s COVANTA ENERGY mark and incorporate Complainant’s common law mark, COVANTA, in its entirety.
Respondent has no rights or legitimate interests in the domain names. Complainant has not authorized Respondent the right to use the domain names. Further, to Complainant’s knowledge, there has not been a bona fide offering of goods or services using the domain names because the disputed domain names merely lead visitors to sponsored links of third parties. In addition, the “www.covanta.org” site contains a link entitled “Covanta Energy” that leads to a webpage with links that are unrelated to Complainant.
The domain names were registered and are being used in bad faith. The <covanta.com> and <covanta.net>domain names were registered in November 2000, more than seven months after Complainant began using its COVANTA marks; while the <covanta.org> domain name was registered in August 2004.
Respondent (or the true registrant) has never made a bona fide offering of goods or services. Further, in response to Complainant’s inquiries to the registrar regarding purchase of the domain name, the registrar advised that the three domain names were owned by two different entities.
After Complainant was advised that it should “make an offer” for the <covanta.net> domain name, its offer of USD 300 was rejected and its subsequent inquiry regarding an acceptable price was ignored.
Complainant was invited, by the registrar, to “submit an offer of significance” for the <covanta.com> and <covanta.org> domain names. However, its offer of $2,500 was rejected and it was advised that the offer was “not even be close to being considered.” Because Complainant is not using those two domain names for any legitimate business, rejecting an offer of USD 2,500 each shows that they were registered, and continue to be maintained, in anticipation of selling them to the highest bidder.
Finally, use of the registrar’s privacy service to conceal the identity of the registrant evidences registration in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
The Rules define respondent as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” Based on the record, it appears that the Complaint correctly named as Respondent, Moniker Privacy Services, the registrant of record for each of the disputed the domain names at the time that the Complaint was filed. It was only after this proceeding was filed and commenced that the registrar changed the registration records and identified as the “registrant” the individual who was using its privacy service.
In this proceeding, the Center sent a copy of the Complaint and the Notification of Commencement to the Respondent named in the Complaint as well as to the individual using the privacy service, both of whom had an opportunity to submit a Response.
Therefore, in light of the foregoing, but without suggesting that the same result would obtain under other circumstances, the Panel finds that the Center has complied with its obligations under the Rules. It initially provided 20 days for the submission of a Response by the entity that was the Respondent and then extended that period to permit Gregory Ricks to submit a response. See Rules, paragraphs 5(a) and 5(d).
For the purposes of this proceeding, the Panel considers both Moniker Privacy Services and Gregory Ricks, jointly, as the Respondents and refers to throughout as “Respondent.”
B. Burden of Proof
In order to prevail, Complainant must prove, as to each of the disputed domain names:
(i) It is identical or confusingly similar to Complainant’s mark.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out four circumstances that may evidence a Respondent’s bad faith registration and use under paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
(1) Identical or Confusingly Similar
Complainant must establish that each of the disputed domain names is either identical or confusingly similar to its mark.
Complainant has established its rights in the mark COVANTA ENERGY by providing proof of its federal trademark registration.
The extent of Complainant’s rights in the mark COVANTA, standing alone, are less clear. The Complaint asserts that Complainant has been using the COVANTA mark since March 2000. However, the documentary evidence provided consists of what appear to be uses by Complainant’s parent company, Covanta Holding Corporation, and reprints of newspaper articles (all dated 2005 or 2006) in which various entities and facilities are identified by the name “Covanta.” The majority of these materials do not show trademark use, but instead reflects use of “Covanta” only as Complainant’s name.
Notably, Complainant has not provided evidence regarding length of use and amount of sales, the nature and extent of its advertising, consumer surveys, or media recognition, that would establish trademark rights in a mark that is not registered. See Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (complainant asserting rights in unregistered trademark rights must show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).
Therefore, Complainant has not established that the disputed domain name is identical to a mark in which it has rights.
As to confusing similarity, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name does incorporate the dominant and distinctive portion of the COVANTA ENERGY mark. For purposes of considering identity or confusing similarity, the top-level domains are not relevant.
The Panel finds that each of the disputed domain names is confusingly similar to Complainant’s COVANTA ENERGY mark.
(2) Rights or Legitimate Interests
Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph 4(c) of the Policy are applicable. This is consistent with the consensus view. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraphs 4(a)(ii) and (iii) of the Policy. There is no evidence that Respondent or Respondent’s business has ever been known by the name “Covanta.” See Policy, paragraph 4(a)(ii). The little evidence available suggests that Respondent has not been so known. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain names. The evidence available suggests that Respondent is using the domain names for commercial purposes.” See Policy, paragraph 4(a)(iii).
It is less clear that Complainant has made a prima facie showing as to the example set out in paragraph 4(a)(i) of the Policy. Paragraph 4(a)(i) of the Policy provides that use of a domain name in connection with a bona fide offering of goods or services “before any notice to you of the dispute,” demonstrates rights or legitimate interests to the domain name.
On this record, it appears that the filing of the Complaint in 2007 was the first “notice of dispute.” At that time, it appears that Respondent was using the disputed domain names to generate “click-through” revenue by offering links to an array of products and services.
As an initial matter, there seems to be no obvious connection between the domain names and the nature of the goods and services to which the web pages link. Respondent’s failure to submit a Response may give rise to certain adverse inferences regarding its rights or interests in the domain names, which correspond exactly to the distinctive and dominant portion of Complainant’s COVANTA ENERGY mark. These factors weigh in favor of finding that Respondent’s offering is not bona fide.
On the other hand, however, while Complainant alleges that it has been using its marks COVANTA and COVANTA ENERGY since March 2000 –seven months before the registration of <covanta.com> and <covanta.net>and several years before registration of <covanta.org> -- it has offered no evidence in support of this assertion. In fact, the evidence that Complainant has provided contradicts this assertion. Complainant’s federal trademark registration for the COVANTA ENERGY mark – identifies a date of first use of the mark as “0-0-2001.” Complainant did not provide a copy of its pending application to register the mark COVANTA, but the Panel reviewed the record for that application on the United States Patent and Trademark Office online Trademark Electronic Search System (“TESS”) database and found that it shows the same 2001 date of first use. Likewise, Complainant offers no evidence to support its assertion that it has continuously operated the “www.covantaenergy.com” website since April 2000.
Thus, it appears that Respondent registered <covanta.com> and <covanta.net> before Complainant had begun using its mark.
The Panel recognizes that establishing that a Respondent has no rights or legitimate interest in the domain names – proving a negative – can be difficult. Establishing this element has been made more difficult here, where the domain names were registered using the registrar’s privacy service. However, here, the proof that would have most aided Complainant would appear to be evidence in its own control regarding use of its trademarks.
Under these circumstances, where it appears that two of the three registrations at issue predate Complainant’s use of the mark, the Panel cannot –in the absence of additional evidence – conclude that any of Respondent’s offerings are not bona fide.
(3) Registered and Used in Bad Faith
In light of the conclusion that Complainant has not established the second element, it is not necessary to address the element of bad faith. However, the Panel does so in the interests of completeness. The Policy sets out four sets of circumstances, evidence of which can establish that the mark was registered and is being used in bad faith, see Policy, Paragraph 4(b)(i) (iv):
(i) registering the domain name primarily to sell it to complainant for more than documented out of pocket costs;
(ii) registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct;
(iii) registering the domain name primarily to disrupt the business of a competitor; or
(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other on line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
The consensus view, and the view of the Panel, is that as a general matter, a domain name that is registered before a trademark right has been established cannot be found to have been made in bad faith. The registrant would not have been aware of the complainant’s trademark rights, because those rights did not then exist. See Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1. Of course, like any general statement, there are exceptions. For example, where the facts indicate that the respondent was clearly aware of the complainant and it is clear that the domain name was registered to exploit confusion between the domain name and any potential rights of the complainant, bad faith can be found. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1. There is no evidence of any such exception here.
Under other circumstances, the communications regarding possible sale of the domain names might support a finding of bad faith. However, the fact that Respondent rejected Complainant’s purchase offer in 2007 does not suggest that Respondent’s purpose in registering the domain names was primarily to sell them to Complainant.
Under these circumstances, the Panel does not find that Respondent has registered and used the domain names in bad faith.
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Date: May 17, 2007