WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Covanta Energy Corporation v. Domains By Proxy, LLC / Peter Allen, Covantaholdingcorporation
Case No. D2018-0285
1. The Parties
Complainant is Covanta Energy Corporation of Morristown, New Jersey, United States of America ("US"), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, US / Peter Allen, Covantaholdingcorporation of Los Angeles, California, US.
2. The Domain Name and Registrar
The disputed domain name <covantaholdingcorporation.com> (hereinafter "the Disputed Domain Name") is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 8, 2018. On February 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 13, 2018 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 20, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 16, 2018.
The Center appointed Andrew Mansfield as the sole panelist in this matter on March 20, 2018. 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
The Complainant is a US multinational corporation that is headquartered in New Jersey. With over 70 facilities around the world, Complainant provides sustainable waste and energy solutions. The company was founded in 1939 but changed its name to Covanta Energy Corporation in 2001. Covanta Holding Corporation is the parent corporation of Covanta Energy Corporation. The Complainant indicates that it has registered over 50 domain names containing the term Covanta. It makes use of several of those domain names in commerce.
Complainant has registered several trademarks consisting of or containing the term "Covanta" in several jurisdictions throughout the world, including in Canada, China, the European Union, Poland, Turkey, and the US. Such trademark registrations include but are not limited to the following:
- US Trademark No. 3451902 COVANTA covering classes 35, 37, 39, 40 and 42, registered on June 24, 2008;
- Canadian Trademark No. TMA916516 COVANTA covering classes 35, 37, 39, 40 and 42, registered on October 6, 2015; and
- European Union Trade Mark No. 009587775 COVANTA ENERGY covering classes 35, 37, 39, 40 and 42, registered on July 13, 2011.
Copies of these trademark registrations were provided to the Panel.
Respondent appears to have registered the Disputed Domain Name on June 22, 2017. According to evidence provided by Complainant, Respondent used the Disputed Domain Name, or the email server associated with that Disputed Domain Name, to send and receive emails relating to the purchase of equipment.
5. Parties' Contentions
Complainant argues that the Disputed Domain Name is identical or confusingly similar to Complainant's trademark, which it identifies for the purpose of the Complaint as COVANTA (the "Trademark"). Complainant asserts that the Disputed Domain Name incorporates the Trademark in its entirety and is, therefore, confusingly similar. The Disputed Domain Name only differs from the Trademark by the addition of the generic terms "holding" and "corporation." While these generic terms should not be used to distinguish the Disputed Domain Name, Complainant argues that the addition of the terms is, in this case, the source of additional confusion. The corporate parent of Complainant is known as Covanta Holding Corporation.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant points to the fact that numerous panels have found under the UDRP that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.
Complainant indicates that Respondent is not an authorised dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by Complainant to make any use of the Trademark. In fact, Respondent registered the Disputed Domain Name after Complainant allowed it to expire. That was on or around October 1, 2016. Respondent has since that time used the Disputed Domain Name, or the email server associated with that Disputed Domain Name, to send and receive emails relating to the purchase of equipment. Because various emails came from individuals with an email address ending in "@covantaholdingscorporation.com," Complainant alleges that Respondent was able to fraudulently induce third parties to provide goods to Respondent expecting payment from Complainant.
Complainant further asserts that the Disputed Domain Name was registered and is being used in bad faith. Complainant bases its argument on the fact that Respondent registered the Disputed Domain Name after Complainant allowed it to expire and that the Trademark is distinctive and known to a wide audience of those who work with or interact with the company around the world. Complainant argues that the inclusion of the words "holding" and "corporation" with the Trademark is more than coincidental. Finally, Complainant alleges that the Disputed Domain Name was used as an email address domain to commit fraud and this use occurred only days after the registration.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark of Complainant; (ii) Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the Disputed Domain Name is confusingly similar to its Trademark (COVANTA). The Disputed Domain Name contains the Trademark in its entirety, adds two descriptive terms ("holding" and "corporation") that also happen to form the name of the actual parent corporation of Complainant, and finally adds the generic Top-Level Domain ".com". The Disputed Domain Name is confusingly similar to the Trademark and the first element of the Policy has been met.
B. Rights or Legitimate Interests
Even when a respondent fails to participate in a UDRP dispute, the complainant is required to make out at least a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to produce evidence that would demonstrate rights or legitimate interests under the Policy. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is deemed to have satisfied the second element of the Policy.
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Complainant indicates Respondent was not licensed or authorized to use the trademark at issue or any variation thereof. Respondent has not, as far as Complainant can find, been commonly known by a name identical to or similar to the Disputed Domain Name. Finally, the current use alleged by Complainant is not a legitimate noncommercial or fair use of the trademarks but is either a simple "domain parking" use or, if Complainant is correct, a use to commit financial fraud. Respondent has not come forward with any appropriate allegations or evidence. Based on the evidence presented, the Panel concludes that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a UDRP panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances is addressed to the respondent. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's 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 Respondent knew of the existence of Complainant's trademarks and had these trademarks in mind at the time of registration of the Disputed Domain Name. The fact that the Disputed Domain Name had been held for many years by Complainant and came open to registration only by the act of Complainant not continuing its registration only strengthens this finding. The Panel finds that the evidence supports no other conclusion than that the Disputed Domain Name was registered in bad faith for the purpose of using the Disputed Domain Name in email meant to confuse recipients.
It is equally clear that the Disputed Domain Name is also being used in bad faith. The Disputed Domain Name was used in an apparent attempt to perpetrate a fraud by directing or misdirecting shipments and payments. The use of a domain name in an email address meant to confuse the recipient through similarity to a trademark is bad faith use of the disputed domain name. Tetra Laval Holdings & Finance S.A. v. Harry Bradley, Harry B. Holdings Ltd., WIPO Case No. D2016-0616.
The Panel concludes, after reviewing all of the evidence submitted, that Respondent or an agent or affiliate of Respondent used access to the Disputed Domain Name to operate a mail server sending and receiving emails with "covantaholdingcorporation.com" appearing as the email domain, following the ubiquitous "@" sign in an email address. There are many ways this can be done and various forms of hosted and cloud software can be obtained readily and at low cost to run a mail server. The key is access to the Disputed Domain Name and its DNS records. One such record is called the MX record. An MX record (where MX stands for "mail exchange") is an entry in your DNS zone file which specifies a mail server to handle a domain's email.
The evidence submitted by Complainant indicates that Respondent or an agent or affiliate of Respondent created false form Purchase Order templates, complete with Complainant's trademark, and invented a fictional officer at the main corporate office and correct address of Complainant. The fictional corporate officer, sending an email from "[…]@covantaholdingcorporation.com", attempted to order approximately USD 38,000 worth of hardware and equipment in the name of Complainant. Respondent (or an agent or affiliate) even created apparently false and fraudulent credit references to provide to the third-party hardware vendor.
The Panel notes that this activity, if correctly reported by Complainant, represents an expanded and long-term phishing attack. For want of a better phrase, because this is a business-to-business domain-based phishing, the Panel will describe this as B2B Domain Registration Phishing. With access to an email address that appears to originate from a legitimate and well-known company, coupled with basic information about that target company, a domain name can be used as the foundation upon which to build an elaborate and potentially long-running multi-target phishing campaign. In this case, Respondent, its agents, or its affiliates, appear to have attempted to have had goods shipped to an address unaffiliated with the target company (in this case, Complainant), while confusingly and intentionally having a third-party invoice the target company (Complainant) for the goods received by a company engaged in fraudulent misrepresentation (Respondent, in this matter).
The pattern of activity described above as B2B Domain Registration Phishing is an extreme example of registration and use in bad faith. For all the reasons above, the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <covantaholdingcorporation.com> be transferred to Complainant.
Date: April 12, 2018