WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tervita Corporation v. Dallas Paisley, AAAAA2010.COM

Case No. D2018-2179

1. The Parties

The Complainant is Tervita Corporation of Calgary, Alberta, Canada represented by Norton Rose Fulbright LLP, Canada.

The Respondent is Dallas Paisley of Prince George, British Colombia, Canada.

2. The Domain Name and Registrar

The disputed domain name <tervita.company> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On September 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2018 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on October 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.

The Center appointed Cherise Valles as the sole panelist in this matter on November 15, 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 one of the largest environmentally-focused energy, environmental and waste management services providers in Canada. It primarily services companies in the oil and gas industry, as well as the industrial and natural resource sectors, predominantly in western Canada. The Complainant operates more than 115 operating facilities in Canada and the United States.

The Complainant owns a number of trademarks in jurisdictions around the world for the term TERVITA, including the following:

- Canadian trademark No. TMA908326 for TERVITA, registered on July 13, 2015, in classes 1, 4, 35, 36, 37, 38, 39, 40, 42, and 45;

- United States trademark No. 4564647 for TERVITA, registered on July 8, 2014, in class 40;

- Canadian trademark No. TMA908327 for the TERVITA design, registered on July 13, 2015, in classes 1, 4, 35, 36, 37, 38, 39, 40, 42, and 45; and

- United States trademark No. 4568747 for the TERVITA design, registered on July 15, 2014, in class 40.

The Complainant adopted the name “Tervita Corporation” in 2012 and since then has developed substantial goodwill and reputation for its business and services. The Complainant’s services have been advertised in Canada since at least 2012 using the Complainant’s TERVITA trademarks through its website <tervita.com> (which has always prominently displayed the Complainant’s TERVITA trademarks) and advertising campaigns, including on social media. The Complainant actively promotes and advertises its services associated with its TERVITA trademarks through presentations, conferences and speaking events provided to customers, clients and investors. The TERVITA trademarks are prominently displayed on all presentation materials.

Throughout Canada and the United States, the Complainant has become a well-known source of environmental solutions for parties the oil and gas industry, and has been the subject of extensive news coverage.

The disputed domain name <tervita.company> was registered on June 29, 2018.

The disputed domain name automatically redirects Internet users to the website “paisleycontracting.com”. The WhoIs database search result for “paisleycontracting.com” lists the Respondent as the associated Registrant Name.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is identical to the Complainant’s registered trademark, TERVITA, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the owner of multiple registrations in jurisdictions throughout the world for the trademark TERVITA, as indicated in Section 4 above.

The disputed domain name is identical both to the Complainant’s TERVITA trademarks and to the Complainant’s disputed domain name <tervita.com>. The generic Top-Level Domain “.company” does not render the disputed domain name any less confusingly similar to the Complainant’s TERVITA trademarks.

In the light of the foregoing, the Panel finds that the disputed domain name <tervita.company> is identical to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s TERVITA trademarks in any manner. There is no evidence that the Respondent has ever been commonly known by the disputed domain name, or that the Respondent owns any trademarks that are identical or similar to the Complainant’s TERVITA marks. In any event, previous UDRP panels have held that the onus is on a respondent to produce concrete credible evidence that it is commonly known by the disputed domain name. See Compagnie Gervais Danone v. Duxpoint and Alejandro Gomez, WIPO Case No. D2008-1799. Previous UDRP panels have found that the risk of misrepresentation suggests a respondent lacks rights or legitimate interests in cases involving a domain name identical to a complainant’s trademark.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Previous UDRP panels have held that the blatant use of another’s mark in a domain name used to divert Internet traffic cannot constitute a “legitimate use” in connection with a bona fide offering of goods or services. See Williams-Sonoma, Inc. v. Zhao Jiafei, WIPO Case No. D2014-0938.

The Respondent did not register the disputed domain name until well after the Complainant had both used and registered the TERVITA trademarks in association with its services and as a result had built up goodwill in the name “Tervita”. The Respondent must have been aware of the Complainant’s rights in the TERVITA marks. The disputed domain name resolves to a website reproducing the Tervita Marks without authorization and in a manner that falsely suggested an affiliation between the Complainant and the Respondent’s purported service offerings. The Respondent also purported to offer services as or on behalf of the Complainant, indicating that the Respondent registered and is using the disputed domain name to confuse Internet users as to the source or affiliation of its goods and services.

The disputed domain name automatically redirects Internet users to the Respondent’s website and references a variety of services purportedly offered by the Respondent. The Panel finds that the Respondent likely does not offer these services and does not accurately and prominently disclose that no relationship exists between the Respondent and the Complainant. The disputed domain name therefore fails the “Oki Data Test” and so the Panel finds that the disputed domain name is not being used in connection with a bona fide offering of goods or services.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The disputed domain name was registered after the Complainant had used and registered its TERVITA marks. Given the Complainant’s reputation in Canada and other jurisdictions such as the United States, the Respondent must have been aware of the Complainant’s TERVITA trademarks when the disputed domain name was registered. The Respondent must have registered the disputed domain name to misdirect customers looking for the Complainant’s website and/or to divert Internet users by creating a likelihood of confusion with the Complainant’s TERVITA marks, for commercial gain, both of which constitute evidence of registration and use in bad faith under the Policy.

The Respondent has engaged in a pattern of conduct of improperly registering and using domain names that incorporate the trademarks of other entities operating in energy and other similar industries in Canada, and in some instances creating websites associated with these domains that improperly suggest affiliation with such entities. The WhoIs database search result for the domains <suncorenergy.co>, <suncor.company>, <crescentpointenergy.co> and <encana.company> all list the Respondent as the associated Registrant Name. Suncor Energy, Encana Corporation and Crescent Point Energy Corp. are all participants in the Canadian energy industry and are all owners of identical or near identical domain names to the Respondent’s registered domain names. Previous UDRP panels have found a pattern of abuse exists where a respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. See Crescent Point Energy Corp v. Adex Adex, WIPO Case No. D2017-1980.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <tervita.company> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: November 29, 2018