Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

America Online, Inc. v. connectionworldwide inc a/k/a gary francis [2005] GENDND 62 (1 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allied Services, LLC v. Auggie Truglfile

Case No. D2004 -0966

1. The Parties

The Complainant is Allied Services, LLC, of Scottsdale, Arizona, United States of America, represented by Fennemore Craig, United States of America.

The Respondent is Auggie Truglfile, of Denver, Colorado, United States of America, proceeding pro se.

2. The Domain Name and Registrar

The disputed domain name <midwestwaste.com> is registered with Register.com.

3. Procedural History

The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) in hard copy on November 15, 2004, and in electronic form on November 16, 2004. On November 16, 2004, the Center transmitted by email to Register.com a request for registrar verification, and received back from Register.com, the same day, an email confirming Register.com as the registrar of the disputed domain name, that Respondent is listed as the registrant, and that the Policy is in effect in respect of the domain name, and providing details for the administrative, billing, and technical contacts.

On November 22, 2004, the Center notified Complainant pursuant to Rules, paragraph 4(b), that it found the Complaint to be administratively deficient for failing to contain evidence of trademark or service mark rights. Complainant timely submitted an amended Complaint, by email on November 23, 2004, and in hard copy on November 29, 2004, curing the deficiency.

The Center verified that the Complaint, as amended, 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 these proceedings commenced on November 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2004. Respondent filed a Response with the Center on December 19, 2004, in electronic form, and then in hard copy, but unsigned, on January 6, 2005.

The Center appointed Seth M. Reiss as the sole panelist in this matter on January 3, 2005. 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. The original due date for the decision was January 17, 2005.

On January 27, 2005, and pursuant to paragraph 12 of the Rules, the Panel issued Procedural Order No. 1 requesting both Complainant and Respondent to submit additional statements and documents, and set February 4, 2005, as the due date for receipt of such additional statements and documents. The Complainant made a responsive submission within the time set. No responsive submission was received from Respondent. Consequent to the Panel’s request for additional statements and documents and pursuant to the Rules, paragraph 10(c), the due date for submission of the decision was extended to February 11, 2005.

The Panel has examined the communications of the Center, the Complainant and Respondent, and the pleadings and evidence submitted by the parties, and confirms that the Administrative Panel was properly constituted.

The language of the proceeding is English.

4. Factual Background

Complainant Allied Services, LLC is a limited liability company engaged in the business of providing waste management services and having a principal place of business in Scottsdale, Arizona. Complainant claims rights in the mark MIDWEST WASTE (the “Mark”) by virtue of use and not registration. Complainant obtained rights in the Mark on December 31, 1997, when it acquired the property of a company called Midwest Waste, Inc. through a merger of Midwest Waste, Inc, and other companies into Complainant.

It is unclear from the Complaint when Complainant’s predecessor first began using the Mark. The Complaint does contain evidence of the Mark’s use, in conjunction with waste management services, from August 1994. Complainant claims that it and its predecessor have continuously used the MIDWEST WASTE mark, and that Complainant continues to use the Mark, to distinguish the source of its services from those of its competitors.

Respondent, an individual resident in the Midwestern United States, is the registered owner of the domain name <midwestwaste.com> (“disputed domain name”). The disputed domain name was registered on November 30, 2001, and Respondent maintains a website “www.midwestwaste.com”. Complainant claims, and Respondent acknowledges, that the contact information listed in the Whois database for Respondent is fictitious.

Appended to the Complaint are printouts of Respondent’s webpages located at the disputed domain name. Most appear to be random photographs. Some comprise text that can be described as public, artistic or editorial commentary, including text that comments on the subject dispute. None suggest any commercial service or offering of any kind and none comment on Complainant or waste management services apart from comments directed to the dispute.

Also appended to the Complaint is a printout of the source code, with metatags, of Respondent’s homepage. The source code contains the word “midwestwaste” as well as the words “Midwest”, “waste”, “rubbish”, and “trash,” together with a great variety of other random words and phrases. The source code also reveals that Respondent’s website homepage included, at the time it was captured for the appendix, a general offer to sell the site as well as a disclaimer that read “[t]his site is in NO way affiliated with midwestwaste, the trash company!” Complainant characterizes this disclaimer as small and ineffectual.

Complainant also claims Respondent altered, and then removed, the content of its website when it received notice of this UDRP proceeding. Appended to the amended Complaint are printouts of the altered webpages. Respondent contends that the content alteration and removal had to do with refreshing content and downtime for web server maintenance, and was not in response to being notified of the Complaint.

5. Parties’ Contentions

A. Complainant

Complainant acknowledges that its MIDWEST WASTE mark is unregistered but contends that it has developed common law rights in the mark through its, and its predecessor’s, use of the Mark in conjunction with waste management services. Complainant submits that Respondent’s <midwestwaste.com> domain name is identical to Complainant’s MIDWEST WASTE mark. Complainant contends that Respondent’s use of the <midwestwaste.com> domain name, and Respondent’s maintenance of a website located at the disputed domain name, create a likelihood of confusion regarding Complainant’s sponsorship and approval of Respondent’s website. Complainant further contends that Respondent adopted the disputed domain name knowing that Complainant held rights in the Mark and with the intent of diverting Complainant’s customers. Complainant also claims Respondent has no legitimate interest in the disputed domain name as Respondent registered the domain name after Complainant had already established rights in its Mark. Complainant further claims that the images and contents of Respondent’s website are harmful to Complainant and not protected by the First Amendment or fair use precepts.

Complainant next contends that Respondent’s registration and use of the disputed domain name was in bad faith as evidenced by the fact that: Respondent’s website maintained at “www.midwestwaste.com” disrupts Complainant’s business by creating a likelihood of confusion; because Respondent was aware of Complainant’s Mark at the time Respondent registered the disputed domain name; because Respondent embedded its Mark in metatags found in Respondent’s homepage; and because Respondent used fictitious contact information in its domain name registration statement. Complainant claims it is entitled to relief under the Policy for the reasons that Respondent’s registration and maintenance of the disputed domain name prevents Complainant from using its MIDWEST WASTE mark in a domain name, and because use by Respondent of the disputed domain name benefits Respondent by causing “initial source confusion.”

Complainant concludes by requesting, in accordance with paragraph 4(i) of the Policy, that the Panel issue a decision that the domain name <midwestwaste.com > be transferred to Complainant.

B. Respondent

Respondent concedes that the name Auggie Truglfile is fictitious and claims to be an artist who works under this pseudonym. Respondent explains that, when registering the <midwestwaste.com> domain name, he/she used fictitious contact information so that his/her personal information would not be available on the Internet. Respondent selected the phone number (513) 867-5309 to correspond to a popular music song by Tommy Tutone entitled Jenny (867-5309), typically found written in public restroom stalls. Respondent listed his Denver, Colorado street address as “572 Mylawnisnice Ln” to be read as “my lawn is nice.”

Respondent claims to have registered and developed a website at the domain name <midwestwaste.com> without knowledge of Complainant or its claims to the MIDWEST WASTE mark. Respondent contends that she/he selected the domain name as the title of Respondent’s “piece of work” and because Respondent lives in the Midwest. Respondent considers the website’s content to be a “literary creation.” Respondent works with photographs that Respondent characterizes as not aesthetically pleasing but thought provoking. Respondent denies use of the website for any commercial purpose, to disrupt the business of Complainant, or to confuse consumers regarding source, sponsorship or affiliation.

Respondent claims to have invested substantial money, time and hard work into the website and describes his use of the domain name and website as being for “recreational purposes.”

Respondent denies that Complainant is entitled to relief under the Policy or that the disputed domain name should be transferred, but expresses a willingness to work with Complainant to attempt to find a solution that would address Complainant’s concerns.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:

(i) The disputed domain name 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 in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar: Policy, paragraph 4(a)(i)

Complainant has established that it holds rights in the mark MIDWEST WASTE for waste management services in the geographic area of its use.¹ Under U.S. law, as under the laws of certain other countries, trademark and service mark rights can be established, without registration, by virtue of adoption and continuous and substantially exclusive use. 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, Chapter 16 (4^th ed. 2004); Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (December 12, 2000). The Policy does not require a complainant to establish rights in a mark through registration. The Policy protects also against the bad faith registration and use of domain names that are identical or confusingly similar to marks acquired through use under common law. Adobe Systems Inc. v. Domain OZ, WIPO Case No. D2000-0057 (March 22, 2000).

While Complainant offers only modest evidence of use, that evidence appears sufficient, in absence of any contradictory evidence, to establish some legally cognizable rights to the MIDWEST WASTE mark in Complainant.

The disputed domain name <midwestwaste.com> is virtually identical to the mark in which Complainant is claiming rights. Incorporation of a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to a complainant’s mark. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case no. D2001-0505 (July 6, 2001). The addition of a top-level domain, in this case “.com”, to a trademark results in a domain name that is identical to the trademark for purposes of paragraph 4(a)(i) of the Policy. Accor v. P.C. Communication Ltd., WIPO Case No. D2000-1580 (January 18, 2001).

The Panel notes that the term “midwest” is geographically descriptive while the term “waste” is descriptive of Complainant’s services. If the Mark were generic of Complainant or its services, then it would be incapable of functioning as a mark and Complainant would not be entitled to claim any proprietary interests therein. 2 J. McCarthy, supra, Chapter 12 (4^th ed. 2004). UDRP panels considering a trademark comprised of a highly descriptive or common term and a domain name comprised of that mark plus a generic term, have accorded the mark limited protection. See, e.g., Grand Bay Management Company v. Allegory Investments, WIPO Case No. D2001-0874 (September 21, 2000); Virgin Enterprises Limited v. Internet Domains, WIPO Case No. D2001-1008 (October 16, 2001). Considered as a whole, this Panel concludes that MIDWEST WASTE is a highly descriptive mark and, while entitled to some protection, not entitled to the scope or degree of protection as would an arbitrary or fanciful mark.

The Panel therefore finds that the domain name <midwestwaste.com > is identical and confusingly similar to the MIDWEST WASTE mark in which Complainant claims rights and that Complainant has established element (i) of the Policy’s paragraph 4(a).

B. Rights or Legitimate Interests: Policy, paragraph 4(a)(ii)

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that complainant has not authorized respondent to use the mark, the burden shifts to respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074 (November 28, 2000). In this Panel’s opinion, Respondent has discharged the burden of demonstrating some right to or legitimate interest in the <midwestwaste.com> domain name within the meaning of paragraph 4(a)(ii) of the Policy.

Paragraph 5(c) of the Policy lists the following three non-exclusive circumstances, any of which, if found by the Panel, demonstrate a Respondent’s right or legitimate interest in respect of a domain name:

(i) Before any notice to Respondent of the dispute, Respondent used or prepared to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or service; or

(ii) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights therein; or

(iii) 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.

Whereas Complainant alleges that Respondent knew about its Mark and the rights Complainant claims therein at the time Respondent registered the disputed domain name, and that Respondent registered the <midwestwaste.com> domain for the purpose of disrupting Complainant’s business and confusing the public regarding sponsorship and affiliation, Complainant offers little evidence to support these allegations. Nor does the evidence appended to the Complaint compel the conclusions that Complainant would have this Panel draw.

Instead, the printouts of Respondent’s website located at “www.midwestwaste.com” attached as appendixes to the Complaint are generally consistent with Respondent’s position: that Respondent was not aware of Complainant or its MIDWEST WASTE mark at the time it registered the <midwestwaste.com> domain name and created a website with content thereat; that Respondent selected the disputed domain name for creative reasons and not with the purpose of disrupting business or confusing web-browsers; and that Respondent’s website located at “www.midwestwaste.com” is non-commercial, artistic (though perhaps not tasteful) in character, and likely eligible for some measure of First Amendment protection. The "fair use doctrine applies in cyberspace as it does in the real world." Bridgestone Firestone, Inc. et al. v. Jack Myers, WIPO Case no. D2000-0190 (July 12, 2000), quoting Brookfield Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036, 1065 (9th Cir. 1999).

Respondent claims to have invested substantial money, effort and time to develop, maintain and regularly update its website containing artistic photography and commentary located at <midwestwaste.com> for some period of time prior to being notified by Complainant of its dispute with Respondent’s registration and use of the disputed domain name. Whereas the Mark is merely descriptive of Complainant’s services, <midwestwaste.com> is substantially arbitrary when used nominatively in reference to a website having artistic and editorial content. Respondent has therefore developed arguably protectable rights in the <midwestwaste.com> domain name.

That Respondent’s website contained a disclaimer, and that the disclaimer appears to have been incorporated into Respondent’s website prior to Respondent having been placed on notice of Complainant’s objections, does favor Complainant’s position. In Procedural Order No. 1, the Panel asked both parties to address the issue of when the disclaimer first appeared on the “www.midwestwaste.com” website, and the relationship of that date to the date Respondent first had notice of the dispute. Complainant provided evidence that the disclaimer existed on September 13, 2004, prior to Complainant notifying Respondent that Complainant objected to Respondent’s registration and use of the <midwestwaste.com> domain name. Respondent failed to provide any evidence or response.

If Respondent had been aware of Complainant and its MIDWEST WASTE mark at the time Respondent registered the <midwestwaste.com> domain name, Respondent’s claim to some right or legitimate interest in respect of the domain name would be weakened. While the disclaimer is evidence that Respondent was aware of Complainant and its MIDWEST WASTE mark in September 2004, this hardly compels a conclusion that Respondent was similarly aware of Complainant and its service mark on November 30, 2001, almost three years earlier, when Respondent first registered the disputed domain name. Moreover, Complainant provides no evidence that its MIDWEST WASTE mark enjoys extensive geographic use or considerable notoriety, nor some other objective basis to conclude that Respondent would have known of Complainant or its MIDWEST WASTE mark at the time Respondent registered the <midwestwaste.com> domain name.

In sum, the evidence submitted by Complainant is insufficient to overcome Respondent’s evidence that his/her use of the disputed domain name is noncommercial, a fair use, and not for purposes of misleading Complainant’s customers or tarnishing Complainant or its MIDWEST WASTE mark. Accordingly, Respondent has established some right or legitimate interest in respect to the <midwestwaste.com> domain name.

The Panel therefore finds that Complainant has failed to establish element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith: Policy, paragraph 4(a)(iii)

The Complaint does contain evidence tending to establish bad faith registration and use, the more compelling of which is Respondent’s admitted use of false contact information. Respondent’s use of false contact information is in clear violation of the services agreement Respondent entered into with Register.com when Respondent registered its <midwestwaste.com> domain name, and such false contact information is similarly in violation of paragraph 2(a) of the Policy which requires applicants to provide accurate and reliable information and to update the information promptly. Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155 (April 24, 2002); Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (April 11, 2000). “Maintaining [] false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration.” Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613 (September 22, 2004).

While Respondent admits having used a false name and contact information when registering its <midwestwaste.com> domain name, Respondent claims to have done so in order to protect his/her personal privacy and not for any improper purpose. Because the information provided to Register.com was obviously fictitious, Respondent takes the position that others should not have taken it seriously.

This Panel understands the importance of privacy in the context of the domain name system. On the other hand, the domain name system cannot be expected to function fairly and efficiently in the absence of complete and accurate information being provided by domain name registrants. ICANN continues to debate the correct resolution of the conflict between the DNS’ need for complete and accurate contact information and the individual’s right to safeguard personal information. See, e.g., “http://gnso.icann.org/issues/whois-privacy/index.shtml”. And there were other avenues available to Respondent that would have safeguarded Respondent’s privacy but not involved supplying false information to the domain name registrar.²

Because Complainant was unsuccessful in establishing the second element of the Policy, this Panel is relieved of the obligation to determine whether Respondent’s use of fictitious contact information would be sufficient, under the circumstances of this case, to establish bad faith use and registration on the part of Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

Pursuant to paragraph 15 of the Rules, on the basis of the statements and documents submitted and in accordance with the Policy, Rules and applicable rules and principles of law, and for the reasons set out above, the Panel concludes that the domain name <midwestwaste.com> registered by Respondent is confusingly similar to the mark in which the Complainant has rights, but that Complainant has failed to establish that Respondent has no rights to or legitimate interest in respect of the domain name. As Complainant has failed to demonstrate all three elements of paragraphs 4(a) of the Policy, the Panel declines to order transfer of the disputed domain name and dismisses the Complaint.

Seth M. Reiss
Sole Panelist

Dated: February 10, 2005

² Respondent could have registered using a legitimate company owned by Respondent or third party, or a dba registered with a local government. Also available are Whois alias services, although the use of such services may itself be evidence of bad faith. “[W]hilst the use by the Respondent of a whois alias service, the Whois Privacy Protect Service, may not necessarily be an indication of bad faith on its own since Internet users are entitled to seek privacy as regards the public display of their personal details, such use in the circumstances is suspect to say the least . . . .” Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 (July 22, 2004). See also Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case no. D2004-0453(August 25, 2004)(respondent’s efforts to disguise its true identity by using the privacy protection feature of the registrar held one of several indicia of bad faith conduct).