WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Covanta Energy Corporation v. Anthony Mitchell

Case No. D2007-0185

1. The Parties

The Complainant is Covanta Energy Corporation of Fairfield, New Jersey, United States of America, represented by LeBoeuf, Lamb, Greene & MacRae, LLP, United States of America.

The Respondent is Anthony Mitchell of Seattle, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <covantasucks.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2007. On February 12, 2007, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On February 12, 2007, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 14, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2007. The Response was filed with the Center on March 4, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on March 20, 2007. 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 large provider of waste management and energy-related services in the United States and elsewhere, including the operation of waste-to-energy (incineration) facilities that convert municipal solid waste into renewable energy. The Complainant is the owner of the registered mark COVANTA ENERGY¹ and has a pending federal trademark application for COVANTA, in which the Complainant asserts common law rights based on use in connection with its services since as early as 2000.

The Respondent offers professional services in relation to hazardous waste facility siting and design and waste management, and maintains an active commercial website at “www.incinerationsites.com”. The Respondent registered the disputed domain name <covantasucks.com> on March 30, 2001. It appears that the Respondent has made no active use of the domain name since its initial registration.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the federally registered COVANTA ENERGY mark, and asserts common law trademark rights in COVANTA based on its use since 2000 in connection with the Complainant’s waste disposal and energy services. The Complainant contends that the disputed domain name is confusingly similar to its marks, and that the Respondent lacks rights or legitimate interests in the domain name. According to the Complainant, the Respondent is not commonly known by the domain name, and has never made any commercial use of the domain name or maintained a criticism site using the domain name. The Complainant further contends that the Respondent registered the disputed domain name in bad faith for the purpose of selling the domain name to the highest bidder.

B. Respondent

The Respondent argues that the Complainant cannot claim exclusive rights to use “Covanta” in a domain name because the Complainant has not established trademark rights in the name independent of its COVANTA ENERGY mark. Further, the Respondent contends that his registration of the disputed domain name has not resulted in any diversion of Internet users seeking the Complainant’s website. The Respondent asserts that he is a supporter of the waste-to-energy technologies utilized by the Complainant, and that he has a legitimate free speech right to use the domain name to attract individuals looking for negative information about incineration technologies to a website providing an objective factual presentation regarding this technology. The Respondent denies any use of the domain name for commercial gain, to divert consumers, or to tarnish the Complainant’s trademarks.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a 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.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Complainant has established rights in its COVANTA ENERGY mark through registration and use. At a minimum, the Complainant’s COVANTA ENERGY mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Complainant also asserts that it has established common law trademark rights in COVANTA. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Based on the evidence of use submitted by the Complainant, the Panel is of the opinion that the Complainant has established common law trademark rights in COVANTA.

The Panel further concludes that the disputed domain name is confusingly similar to Complainant’s COVANTA and COVANTA ENERGY marks for purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the Complainant’s COVANTA mark in its entirety, and the Panel finds that the disputed domain name and the Complainant’s marks, when directly compared are confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Accordingly, the Complainant has met its burden under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has provided uncontested evidence that it has not authorized or licensed the Respondent to use the Complainant’s marks or to register domain names reflecting those marks. There is no evidence that the Respondent has ever been commonly known by the disputed domain name. Although the Respondent registered the domain name on March 30, 2001, the record does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with any bona fide offering of goods or services prior to receiving notice of this dispute. There is also no evidence of any noncommercial or fair use prior to the Respondent’s receiving notice of the dispute.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 maintains that his registration of the disputed domain name falls within the safe harbor provisions of paragraph 4(c)(iii), under which a respondent can establish rights or legitimate interests in a disputed domain name by 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. Two main views have emerged from prior panel decisions as to whether a respondent legitimately can operate a genuine, bona fide criticism site utilizing a domain name that is identical or confusingly similar to a complainant’s mark.² One view is that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.³ A second and diverging view is that, irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.⁴ Other panels have suggested that the Policy envisions a more holistic approach, which balances the interests of trademark owners against those of the public in the reasonably free use of domain names to effectively facilitate freedom of expression.⁵

It is not necessary for the Panel to decide the precise parameters of the “fair use” doctrine to resolve this case. Rather, the Panel concludes that whatever the underlying intent may be, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names under paragraph 4(c)(iii). In the first place, it is clear that paragraph 4(c)(iii) is intended to protect sites that practice genuine, noncommercial criticism.⁶ The Respondent concedes that he did not register the domain name for use with a criticism site as to the Complainant. The Respondent says he is not critical of the Complainant. According to the Respondent, he registered a domain name incorporating the Complainant’s COVANTA mark to attract internet users to a website that would promote his own views of the incineration technology utilized by the Complainant, which he claims are favorable to the Complainant.

Even were the Panel to assume that such alleged use might fall within the safe harbor provisions of paragraph 4(c)(iii), the record is undisputed that for more than six years since registering the disputed domain name, the Respondent has never launched a website of the type for which he claims to have registered the disputed domain name. Nor, even now, has the Respondent provided evidence of demonstrable preparations to do so. In short, the Respondent has presented no evidence of any use or of demonstrable preparations to use the disputed domain name in a manner that might constitute a legitimate noncommercial or fair use of the disputed domain name under the Policy.⁷

To the contrary, the record reflects only one active website operated by the Respondent – a commercial site at “www.incinerationsites.com”, where the Respondent promotes his own services related to hazardous waste facility siting and design and waste management. While there is no evidence in the record that the Respondent has used the disputed domain name in the past to divert internet users to his commercial website, the Respondent appears to be a sophisticated internet user and the potential for such misuse of the Complainant’s mark is clear. Under the circumstances, the Respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.

Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie showing under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the disputed domain name.

D. 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 or 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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, paragraph 4(a)(iii) embodies a requirement that is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

As noted above, while the Respondent avers that he registered the disputed domain name for what he contends would be a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy, no evidence has been provided that, in more than six years, the Respondent has attempted any such use of the domain name. Nor has the Respondent offered evidence of any demonstrable preparations to do so, even after being placed on notice of this dispute. See Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668 (cybersquatting inferred from the respondent’s failure to actively use or make preparations to use the disputed domain name for noncommercial purposes until he was notified by the complainant of the dispute).

The Respondent’s unexplained failure to make any active use of the disputed domain name for more than six years does not preclude a determination of bad faith registration and use in the circumstances of this case. The Respondent registered a domain name incorporating the Complainant’s COVANTA mark in its entirety. By the Respondent’s own admission, he did not register the mark for use with a criticism site. While the Panel does not find the Respondent’s explanation of why he registered the disputed domain name to be credible, the argument advanced by the Respondent plainly belies his awareness of the Complainant and the COVANTA mark and a likely intent to use the goodwill developed in the Complainant’s mark to attract internet users to his website.

As noted in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. See also Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668. For the reasons discussed above, this Panel cannot in the circumstances of this case conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would be legitimate, particularly given circumstances strongly indicating that the Respondent was aware of the Complainant’s mark at the time he registered the disputed domain name.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) to demonstrate bad faith registration and use of the disputed domain name.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <covantasucks.com>, be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: April 3, 2007

¹ The United States Patent and Trademark Office (USPTO) registered COVANTA ENERGY on March 20, 2004.

² Refer to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.5.

³ This view has been more prevalent in criticism site cases outside the United States. See, e.g., The Laurel Pub Company Limited v. Peter Robertson / Turfdata, WIPO Case No. DTV2004-0007; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248.

⁴ This view seems to have found greater initial acceptance among U.S. based panelists, in recognition of the “robust free speech tradition” of the United States reflected in the First Amendment. See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536; Bridgestone Firestone, Inc. v. Myers, WIPO Case No. D2000-0190. Nevertheless, other U.S. based panelists, noting that the Policy’s ultimate concern is the potential for false and misleading association, have applied an initial interest confusion approach, concluding that a respondent cannot have a legitimate interest in using a domain name identical to the complainant’s mark, regardless of the content of the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175; Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778.

⁵ See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988.

⁶ Refer to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.5.

⁷ According to the Respondent, he adopted the domain name, consisting of the Complainant’s mark and the pejorative term “sucks”, in order to effectively “trick” internet users looking for a website critical of the Complainant to his own website, where they would be exposed to the Respondent’s own views regarding the benefits of the incineration technology utilized by the Complainant. Thus, even were the Panel to accept the Respondent’s explanation as credible, which the Panel does not, this would still constitute the use of the domain name – including the Complainant’s COVANTA mark – to misleadingly divert consumers to the Respondent’s website.