WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Waste Management, Inc. v. Recycle Now, Inc.

Case No. D2002-0828

 

1. The Parties

Complainant is Waste Management, Inc. According to its Complaint, Waste Management, Inc. is a corporation incorporated under the laws of the State of Delaware, U.S.A., with its principal place of business in Houston, Texas, U.S.A.

Complainant is represented in this proceeding by Ben D. Tobor and Kimberly L. . Brown of the law firm Bracewell & Patterson, L.L.P., Houston, Texas.

The Respondent in this proceeding is Recycle Now, Inc. According to the Whois database of the Registrar of the Internet domain name at issue, Respondentís address is in Holland, Michigan, U.S.A.

 

2. The Domain Name and Registrar

The dispute is with respect to the following domain name (hereafter "the domain name"):

<recycleamerica.com>

The registrar with which this domain name is registered is NamesDirect.com (hereafter "the Registrar").

 

3. Procedural History

The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANNís Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").

The current dispute lies within the scope of the Policy, so that the Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between Registrar and the Respondent clearly incorporate the Policy, so that Respondent was notified of the existence of the Policyís provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that (ii) Respondent has no rights or legitimate interests in the domain name; and that (iii) Respondentís domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4(a). In order to successfully make its case, the Complainant must prove each of these three elements.

An electronic copy of the Complaint was filed with the Center on September 4, 2002, with a hard copy filed on September 12, 2002. A request for Registrar Verification was made to the Registrar on September 4, 2002, and such Verification was made on September 8, 2002.

On September 18, 2002, the Centerís Case Manager for this case completed the Centerís Formal Requirements Compliance Checklist in regards to the Complaint. The Centerís formal Notification to Respondent of the Complaint dated September 18, 2002, was sent to Respondent by post/courier and email. There is no indication of communication problems or non-receipt of this Notification by Respondent. In fact, the Center has supplied a copy of the courier delivery form indicating signed receipt by Respondentís representative of the Notification of Complaint. Paragraph 5 of this Notification indicates the last day for Respondent to send its Response to the Complaint to the Center and to Complainant was October 8, 2002. As Respondent has not replied, on October 9, 2002, a Notice of Default in the case was sent to Respondent. The Assistant Case Manager for the Center further informed the Panel in this case that the Notification of Commencement of Proceedings had not been sent to one of the Respondentís email addresses: postmaster@recycleamerica.com. She forwarded this Notification to this address on October 18, 2002.

Although no Response has been received, under Paragraph 6 of the Centerís Notification to Respondent of September September 18, 2002, citing Paragraph 14 of the Rules, the Administrative Panel may choose to go ahead and review the facts in the case and make its decision based upon the facts before it at this time, as well as drawing any appropriate inferences from Respondentís failure to respond.

The Panel consists of a single Panelist pursuant to Complainantís request, and the Panelist was duly appointed by the Center. A Statement of Acceptance and Impartiality and Independence was submitted to the Center by the Panelist on October 14, 2002, and the Panelist was appointed by the Center on October 15, 2002. A decision on the Complaint is normally due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules.

On October 25, 2002, the Panel issued to the parties, via the Center, an Interim Order for Production of Evidence. This Order asked the Complainant to clarify and verify the nature and sources of the email document attached to the Complaint as Annex I, by November 1, 2002, at the latest.

Complainant responded on October 31, 2002. Complainantís attorney sent the Center an affidavit, sworn under oath of perjury, in which the Director of Systems Development for Complainant explained and clarified the email document referred to in the previous paragraph.

There have been no further submissions by either side as of the date of this decision.

 

4. Factual Background

First, it is noted that because no Response has been received from Respondent, the facts cited in the Complaint will be evaluated on their own merits.

The domain name was registered by Respondent some time in 1997, according to the Complaint.

Complainant states that for a long time prior to Respondentís registration of the domain name, Complainant has continuously owned and used the name and service mark "RECYCLE AMERICA" in connection with its waste and recycling-related products and services (since 1986), with large numbers of Complainantís trademarks having been registered with the U.S. Patent & Trademark Office since 1994, as indicated in Annex D to the Complaint.

Complainant further alleges that Recycle America, Inc. is the name of a wholly-owned subsidiary of Complainant that provides commercial, residential and industrial recycling programs. See Complaint, paragraphs 12(A), 12(B) and annexes related thereto.

Complainant alleges in Paragraph 12(D)(5) that it registered the domain names <recycleamerica.net> and <recycleamerica.org> in December 1999, and <recycleamerica.biz> and <recycleamerica.info> in February 2002.

 

5. Partiesí Contentions

Because no answer has been received from Respondent, the contentions cited herein will be those of the Complainant only.

In paragraph 12(C) of its Complaint, Complainant alleges that Respondent registered the domain name, and up until Complainant sent Respondent a cease-and-desist letter on July 22, 2002, Respondent had not been using the domain name for any legitimate commercial purpose. Complainant alleges that only after the cease-and-desist letter was sent did Respondent decide to use the domain names in a manner which resolved to a website run by Respondent, at "www.recyclemichigan.com."

As a result, Complainant asks this Panel to issue a decision for the domain name to be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.

To support its contentions, Complainant alleges in Paragraph 13(a) of the Complaint that (1) the domain name is identical or confusingly similar to Complainantís marks referred to in Section 4 of this decision; (2) the Respondent has no rights or legitimate interests in the domain name; and (3) the domain name is registered and is being used in bad faith.

As regards element (1) above, the confusion element, Paragraph 12(B) of the Complaint alleges that Respondent has registered the domain name in this case that is identical to a service mark in which Complainant has rights, as described in Paragraph 12(A) of the Complaint.

As regards element (2) above, the lack of legitimate rights or interest in the domain name element, Paragraph 12(B) of the Complaint asserts that Respondent has no intellectual property rights in the domain name, and is using the domain name without the consent of Complainant.

As regards element (3) above, the bad faith element, Paragraph 12(D) of the Complaint alleges that Respondent has used the domain to leverage Complainantís name, reputation and mark to attract visitors and automatically redirect them to Respondentís site "www.recyclemichigan.com." Complainant alleges that this re-direction referred to above was initiated by Respondent only upon its receipt of a cease-and-desist letter sent by Complainant.

Complainant further cites provisions of the U.S. Anti-Cybersquatting Consumer Protection Act (ACPA) to illustrate elements of bad faith in this case.

 

6. Discussion and Findings

Based on the facts and contentions referenced above, the Panel finds as follows:

a. Respondent has not disputed any allegations of fact by Complainant in Section 5 of this Decision, and the Panel accepts these allegations as true, with the exception of the very last paragraph of Section 5.

b. Complainant has adequately demonstrated its own intellectual property rights in the service mark "Recycle America."

c. As regards proof of element (1) above, the confusion element, Complainant alleges that its service mark "Recycle America", registered for many years with the U.S. Patent & Trademark Office and in active commercial use since 1986, is identical to the domain name registered by Respondent with the domain name Registrar in 1997. This Panel finds that Complainant has established the confusion element of its case.

d. As regards proof of element (2) above, the lack of legitimate interest or rights in the domain name, Respondent has failed to assert any such interest or right. Therefore, the Panel finds that Respondent does not have any such interest or right.

e. As regards proof of element (3) above, the bad faith element, Complainant cites the U.S. ACPA list of bad faith elements. However, the elements of bad faith under the U.S. ACPA are not necessarily the same as those under the UDRP here.

Nevertheless, Complainant has made its case for bad faith under the UDRP by proving Respondentís intention to sell the domain name to the Complainant for the proposed sum of US$50,000. Annex I to the Complaint contains a set of emails attempting to prove this fact

Because unverified emails are not always reliable evidence in the view of this Panel, the Panel asked Complainant to attest under oath to the veracity of the emails and to also clarify the positions and roles of Messrs. Reposa and Gray. Complainant satisfied the Panelís request by submitting a sworn affidavit of Mr. Joe Reposa on October 31, 2002.

Annex I includes an email dated May 29, 2002, from Mr. Nick Christman of the Respondent, to Complainantís representative, Douglas Gray of Vancouver, Canada, in which Mr. Christman offered to sell the domain name for $50,000 to Complainant. This email was forwarded by Mr. Gray to Mr. Joe Reposa, Director of Systems Development for Complainant.

This kind of offer for sale well in excess of the domain name registration costs is an example of bad faith cited by the Policy and a variety of WIPO cases.

The Panel concurs with Complainant that Respondent appears to have had no other commercial use for the domain name other than to attract visitors to a its own website based on attempts to create confusion with the legitimate "Recycle America" mark. Potential visitors who type in "www.recycleamerica.com" are automatically redirected to Respondentís own website "www.recyclemichigan.com", without any written reference back to the original site accessed, "www.recycleamerica.com."

The Panel notes that Respondentís line of business involves sales of air filters, which does not appear to compete directly with Complaint. Even so, use of Complainantís mark to redirect web traffic is a strong indication of bad faith.

Respondent did not bother to place a disclaimer on its site stating that it is in no way affiliated with Complainant, its products or its services. This failure further aggravates the bad faith claim against Respondent.

Paragraph 4(b) of the Policy cites, without limitation, various examples of bad faith. Paragraph 4(b)(iv) of the Policy provides one such example of bad faith by a Respondent:

"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Panel finds that this situation has occurred in the present case.

 

7. Decision

Based upon the Panelís Findings from Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panelís Decision and order is for the Registrar to transfer the domain name registration to the Complainant. as soon as possible.

 


 

Paul E. Mason
Sole Panelist

Dated: November 1, 2002