Complainant is Casella Waste Systems, Inc., United States of America (“United States”), represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States
Respondent is Save Forest Lake, United States, represented by Orr & Reno, P.A., United States.
The disputed domain name <casellawastesystems.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2020. On August 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. The Response was filed with the Center on September 18, 2020 after the Center granted a four-day automatic response extension.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 16, 2020. 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.
Complainant is a waste management and recycling services provider. Since June 1983, Complainant has used the mark CASELLA in commerce to identify and distinguish its waste disposal, recycling, and related services. Complainant holds several registered trademarks for CASELLA with the United States Patent and Trademark Office (“USPTO”), including USPTO Registration No. 3,439,611 (registered June 3, 2008), USPTO Registration No. 3,494,839 (registered September 2, 2008), and USPTO Registration No. 4,511,691 (registered April 8, 2014).
Complainant has owned the domain name <casella.com> since April 1996, and operates a commercial website via that domain name.
The Domain Name was registered on May 16, 2020. Currently, the Domain Name resolves to a parking page which contains various hyperlinks, including “Junk Removal”, “Waste Disposal”, and “Recycling Companies”. The parking page also indicates that the Domain Name is available for purchase.
Previously, the Domain Name resolved to a website where Respondent’s apparently forthcoming book, Bad Company: Casella Waste Systems, an Unauthorized Accounting, is advertised. (Respondent’s name, according to the WhoIs database, is “Save Forest Lake,” but in fact Respondent is an individual.)
On June 1, 2020, Complainant’s counsel sent Respondent’s counsel a cease-and-desist email missive, asserting that Respondent was in violation of the United States federal anti-cybersquatting statute and demanding that the Domain Name be transferred to Complainant. On June 9, 2020, Respondent’s counsel indicated that Respondent had legitimate free speech rights to own and use the Domain Name as he was doing, but Respondent would agree to transfer the Domain Name if Complainant would agree to release Respondent from all claims, including any anti-cybersquatting claims.
On June 11, 2020, Complainant’s counsel wrote to Respondent’s counsel, stating that Respondent should have taken down the allegedly infringing website content and stating that Respondent would have to pay Complainant USD 5,000 to obtain a release from liability. On June 13, 2020, Respondent’s counsel replied by stating that the website content would be removed but Respondent would not pay Complainant for a release.
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent denies bad faith registration and use of the Domain Name, and disputes that he lacks a legitimate interest in the Domain Name. Nonetheless, Respondent has expressed his willingness to transfer the Domain Name, asserting that Complainant’s demand for payment in exchange for a release from liability has been the only obstacle to the transfer.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the trademark CASELLA through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The Domain Name entirely incorporates the CASELLA mark, and adds the descriptive term “waste systems.” The additional words do not prevent a finding of confusing similarity between the Domain Name and the mark. Put another way, the CASELLA mark is clearly recognizable within the Domain Name, and is the dominant portion thereof.
Complainant has established Policy paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Apparently, Respondent is coming out with a book somehow critical of Complainant’s business. Respondent has every right to publish such a book, but Respondent has no right to appropriate Complainant’s trademark and, by means of the consumer confusion generated by the Domain Name, try to increase his book sales.
Complainant has established Policy paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith. Respondent obviously was aware of the CASELLA mark at the time he registered the Domain Name. As respects bad faith use, the above-quoted Policy paragraph 4(b)(iv) applies here. For commercial gain (enhanced book sales), Respondent has sought to engender consumer confusion by registering the Domain Name and advertise his forthcoming book.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <casellawastesystems.com> be transferred to Complainant.
Robert A. Badgley
Date: October 22, 2020
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