Republicservicesltd.com

The timeline behind republicservicesltd.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Republic Services Intellectual Property Holdings, LLC v. Andrew Terry / Napp Pharmaceuticals Ltd Claim Number: FA2408002109352 PARTIES Complainant is Republic Services Intellectual Property Holdings, LLC ("Complainant"), represented by Mario C. Vasta of Fennemore Craig, P.C., Arizona, USA. Respondent is Andrew Terry / Napp Pharmaceuticals Ltd ("Respondent"), United Kingdom. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <republicservicesltd.com>, registered with NameCheap, Inc.. PANEL 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. The Honorable Neil Anthony Brown KC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on August 1, 2024; Forum received payment on August 1, 2024. On August 2, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <republicservicesltd.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 August 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2024 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@republicservicesltd.com. Also on August 5, 2024, 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 August 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant made the following contentions. 1. The Complainant is a United States company that is an affiliate of Republic Services, Inc., which is a United States company engaged in the provision of waste management, waste disposal, garbage collection and related waste services. 2. Republic Services, Inc. provides its services under the service mark for REPUBLIC SERVICES. In particular, the evidence will establish that it has acquired registered rights in the REPUBLIC SERVICES service mark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration Number 4,084,686, registered on January 10, 2012 and other service marks for REPUBLIC SERVICES and derivatives (collectively "the REPUBLIC SERVICES service mark"). The Complainant has used the service mark since 1998 and continuously since its registration to offer its services. 3. Republic Services, Inc. assigned its rights in the REPUBLIC SERVICES service mark to the Complainant on January 8, 2024 and the Complainant has retained all such rights since that date. 4. The REPUBLIC SERVICES service mark has attracted substantial goodwill and is uniquely associated with Republic Services, Inc.'s and the Complainant's services. 5. As well as its service mark, Republic Services, Inc. registered the domain name <republicservices.com> on July 2, 1998 that it and the Complainant use in their business and in particular for Republic Services, Inc.'s website at www.republicservices.com where it markets its products under the REPUBLIC SERVICES service mark and for the purpose of legitimate email communications utilizing the email address "@republicservices.com". 6. The Respondent registered the <republicservicesltd.com> domain name on July 1, 2024 ("the disputed domain name"). 7. The disputed domain name embodies, without the consent of the Complainant, the REPUBLIC SERVICES service mark with the addition of the letters "ltd" and the generic Top Level Domain ".com". 8. The disputed domain name is confusingly similar to the REPUBLIC SERVICES service mark as it includes the mark in its entirety, the letters "ltd" which are the corporate nomenclature for "limited company" and the generic Top Level Domain ".com", none of which can negate a finding that a domain name is confusingly similar to a trademark. 9. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because: (a) the intention of the Respondent in registering and retaining the disputed domain name was to have a confusingly similar domain name that it could use to confuse third parties into believing that the Respondent is or is associated with the Complainant and to perpetrate frauds and to do so for commercial gain; (b) the Respondent has not used the disputed domain name for an active website or any other legitimate purpose but has caused it to resolve to an inactive website and to perpetrate a series of frauds; (c) the Respondent has therefore not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); (d) the Respondent is not commonly known by the domain name within the meaning of Policy ¶ 4(c)(ii); (e) the Complainant has never given any licence, permission or authority to the Respondent to use the REPUBLIC SERVICES service mark or any similar mark and there has never been any affiliation between the Complainant and the Respondent. (f) the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); (g) there is no plausible ground on which it could be said that the Respondent has a right or legitimate interest in the disputed domain name and the totality of the Respondent's conduct shows that it has no such right or legitimate interest. 10. The Respondent has registered and used the disputed domain name in bad faith. That is so because: (a) the evidence of the whole of the conduct of the Respondent in both the registration and use of the disputed domain name will show that the Respondent registered and has used it in bad faith; (b) the intention of the Respondent in registering and using the domain name in the manner described in the evidence was to disrupt the business of the Complainant within the meaning of Policy ¶ 4(b)(iii); and (c) all of the acts, facts, matters and circumstances revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 1.The Complainant is a United States company that is an affiliate of Republic Services, Inc., a United States company which is engaged in the provision of waste management, waste disposal, garbage collection and related waste services. 2. Republic Services, Inc. provides its services under the service mark for REPUBLIC SERVICES. In particular, the evidence has established that it has acquired registered rights in the REPUBLIC SERVICES service mark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration Number 4,084,686, registered on January 10, 2012 and other service marks for REPUBLIC SERVICES and derivatives (collectively "the REPUBLIC SERVICES service mark") and that it has used the mark since 1998 and continuously since its registration. 3. Republic Services, Inc. assigned its rights in the REPUBLIC SERVICES service mark to the Complainant on January 8, 2024 and the Complainant has retained all such rights since that date. 4. The Respondent registered the <republicservicesltd.com> domain name on July 1, 2024 ("the disputed domain name"). 5. The disputed domain name embodies, without the consent of the Complainant, the REPUBLIC SERVICES service mark with the addition of the letters "ltd" and the generic Top Level Domain ".com". 6. The Respondent has not used the disputed domain name for an active website or any other legitimate purpose but has caused it to resolve to an inactive website and to perpetrate a series of frauds. 7. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's REPUBLIC SERVICES service mark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith. 8. Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 :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"). Identical and/or Confusingly Similar The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence has shown that the Complainant is a United States company that is an affiliate of Republic Services, Inc., a United States company which is engaged in the provision of waste management, waste disposal, garbage collection and related waste services. The evidence also shows that Republic Services, Inc. provides its services under the service mark for REPUBLIC SERVICES and that it acquired registered rights in the REPUBLIC SERVICES service mark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration Number 4,084,686, registered on January 10, 2012 and other service marks for REPUBLIC SERVICES and derivatives (collectively "the REPUBLIC SERVICES service mark"). The Complainant has used that service mark since 1998 and continuously since its registration to offer its services. It has also been established by the evidence that Republic Services, Inc. assigned its rights in the REPUBLIC SERVICES service mark to the Complainant on January 8, 2024 and that the Complainant has retained all such rights since that date. All of the foregoing matters have been established by documentary evidence of the USPTO record that the Panel has examined and which it finds to be in order. The evidence also includes the Declaration of Lauren McKeon, made on July 30, 2024 which is Annex P to the Complaint and which verifies, inter alia, that "Complainant holds valid trademark registrations for and, in conjunction with its affiliates, including Republic, (Republic Services, Inc.) continuously uses the Republic Marks to market its services to Republic's and its affiliates' customers (collectively "Republic's Customers") with authorization from Complainant." The Complainant has thus established its service mark rights within the meaning of Policy ¶ 4(a)(i) and hence its standing to bring this proceeding. The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's REPUBLIC SERVICES service mark. The Panel finds that the disputed domain name is confusingly similar to the REPUBLIC SERVICES service mark for the following reasons. First, the disputed domain name is confusingly similar to the REPUBLIC SERVICES service mark as it includes the mark in its entirety. Internet users would therefore conclude that the domain name is invoking the mark and the services legitimately provided under it. Secondly, the domain name includes the letters "ltd" which make up the corporate nomenclature for "limited company", invoking the notion that the domain name and the mark are owned by and used by a company. Internet users would assume, which is widely the case, that the domain name and the mark are owned and used by a company which is a normal commercial practice. In the particular circumstances of this case, as the letters "ltd" have been added after the words "republicservices", internet users would conclude that the domain name is the designation of a company named Republic Services Ltd which is of course close to the service mark itself and virtually identical to Republic Services Inc. Thirdly, the domain name includes the generic Top Level Domain ".com" which is ignored in the interpretation of a domain name and cannot negate a finding of confusing similarity between a domain name and a trademark, as all domain names require such an extension. Internet users would therefore read the whole of the domain name as invoking the Complainant and its REPUBLIC SERVICES service mark. The domain name is therefore similar to the service mark and confusingly so, the confusion being whether it is a genuine domain name of the Complainant or not. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's REPUBLIC SERVICES service mark under Policy ¶ 4(a)(i). The Complainant has thus made out the first of the three elements that it must establish. Rights or Legitimate Interests It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)). The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name because: (a) it is clear from the evidence that the intention of the Respondent in registering and retaining the disputed domain name was to construct a confusingly similar domain name that it could use to confuse third parties into believing that the Respondent was or was associated with the Complainant and to perpetrate frauds and to do so for commercial gain; that is so because, as already indicated, the Respondent has devised a domain name that is very similar to the REPUBLIC SERVICES service mark itself and virtually the same as Republic Services Inc., an affiliated company of the Complainant to which Republic Services Inc. has assigned its rights in the mark; this could scarcely have been done on a whim, by accident or for some altruistic reason but the Respondent must have done it deliberately to mislead internet users into believing that it was the owner of the REPUBLIC SERVICES mark or authorized by it and also, as is now known from the evidence, to attempt to perpetrate a series of frauds; the whole conduct of the Respondent therefore sprang from a deceptive intention which could not conceivably give rise to a right or legitimate interest in the domain name used to carry out these subterfuges; (b) the Respondent has not used the disputed domain name for an active website or any other legitimate purpose but has caused it to resolve to an inactive website as is shown by the Complainant's Annex D to the Complaint and to perpetrate a series of frauds; this absence of any legitimate use has always been seen in this field as a strong reason for finding a lack of a right or legitimate interest in a domain name; that is because, as the Complainant points out, it makes it plain that the registrant of the domain name was intent on creating public misconception and a basis for carrying out fraud and deception which the evidence shows the Respondent has attempted to do and in which it may well have succeeded had it not been for the astute observations of the Complainant and its management and employees; (c) the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); the Respondent's conduct has not been bona fide but has clearly been motivated by bad faith designed to mislead internet users; the evidence shows that how the Respondent has actually used the domain name has been to attempt to carry out a series of frauds; the evidence is that it has done this by sending out emails which purport to come from employees of the Complainant's affiliate Republic Services Inc. because they use the email address of the sender as "(@republicservicesltd.com"; recipients of these emails may be suppliers of goods and services on credit for which they are not paid but who then look to Republic Services Inc. for payment; this must be damaging to the reputation of Republic Services Inc. and hence to the Complainant as well as damaging to the supplier; as the Complainant also points out, all of the machinations of the fraudulent scheme may not yet be known but, despite that, it is clear that the Respondent was setting up a system for fraud which would also cause confusion and harm to all concerned; in that regard, the Complainant has usefully given several detailed examples of how the Respondent has attempted to perpetrate its frauds by using the above method and which are evidenced by Annexes M, N and O to the Complaint and verified by the Declaration of Lauren McKeon, made on July 30, 2024 which is Annex P to the Complaint; it is not necessary to set them out here, suffice to say that they all involve actual cases of the Respondent using the disputed domain name to send emails purporting to come from employees of the Complainant asking for information, proposing a building project and communications with building companies, all having the propensity to defraud vendors and others; for present purposes it is clear that none of this conduct could conceivably give rise to a right or legitimate interest in the domain name used to carry out the repeated subterfuge; (d) the Respondent is not commonly known by the domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence to that effect and it is unlikely that the Respondent would answer to the name "republicservicesltd.com" or anything like it; moreover, it is more likely than not that the Respondent is commonly known as Andrew Terry, as that is his name; (e) the evidence shows that the Complainant has never given any licence, permission or authority to the Respondent to use the REPUBLIC SERVICES service mark or any similar mark and there has never been any affiliation between the Complainant and the Respondent, again showing that the Respondent has concocted the domain name to mislead internet users into believing that it is an official domain name of the Complainant, showing that the intention of the Respondent has been to register and use the domain name for a deceptive purpose and negating any possibility that it has a right or legitimate interest in the disputed domain name; (f) the evidence shows that the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); there is nothing legitimate in stealing a trade or service mark, concocting a confusingly similar domain name and using it to perpetrate a fraud; nor is it non-commercial, as it was clearly done for monetary gain, which is commercial; nor is it fair to anyone to engage in the fraud; and (g) the evidence also shows that there is no plausible ground on which it could be said that the Respondent has a right or legitimate interest in the disputed domain name and the totality of the Respondent's conduct shows that it has no such right or legitimate interest. The Complainant has therefore made out all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name. All of these matters make out the prima facie case against the Respondent. As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name. The Complainant has thus made out the second of the three elements that it must establish. Registration and Use in Bad Faith It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, it is clear that the Complainant has made out all of the grounds relied on, as the Respondent has clearly been motivated by bad faith in the registration and use of the domain name and in particular in the deception of third parties in which the Respondent has been engaged. In particular, it is clear from the evidence that, as the Complainant has submitted: (a) the evidence shows that the Respondent registered and has used the disputed domain name in bad faith; the Respondent was deceptive in copying the name Republic Services Inc. and the REPUBLIC SERVICES service mark to formulate its confusingly similar domain name and deceptive in using it, not for any legitimate purpose but to attempt to perpetrate a series of frauds on innocent parties; that deception shows bad faith in the registration and use of the domain name; (b) thus, the intention of the Respondent in registering and using the domain name in the manner described in the evidence was to disrupt the business of the Complainant within the meaning of Policy ¶ 4(b)(iii); the Respondent was clearly masquerading as the Complainant and others in the Complainant's corporate group and misleading them into the false belief that it was one of those parties, with the intent of defrauding their vendors, damaging the vendors and diminishing the goodwill in the REPUBLIC SERVICES service mark for its own financial gain; all of this shows nothing but bad faith in the registration and use of the domain name; (c) it is also clear from the evidence that the Respondent has sought to cause confusion with the REPUBLIC SERVICES service mark within the meaning of Policy ¶ 4(b)(iv); and (d) all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith. Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the REPUBLIC SERVICES service mark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. The Complainant has thus made out the third of the three elements that it must establish. The Complainant has also correctly cited several prior UDRP decisions that support all of its contentions. The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <republicservicesltd.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Neil Anthony Brown KC Panelist Dated: August 28, 2024 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.