Complainant is Toter, LLC, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Brad Johnson, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 18, 2021.
The Center verified that the Complaint together with the amended 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2021.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on September 24, 2021. 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 BackgroundComplainant is a provider of waste and recycling carts to waste haulers and municipalities. Complainant introduced its first product in the 1960s: an automated cart system for curbside garbage collection. Complainant manufactures a wide range of products - caster carts, organics carts, stationary containers, front-load containers, tilt trucks, cart lifters and more - for diverse markets.
Since at least as early as 1962, Complainant adopted and has used the TOTER trademark in connection with the marketing, advertising, promotion, sale, and rendering of Complainant’s waste handling equipment products and services.
Complainant applied for and owns trademark registrations for the TOTER trademark worldwide (the “TOTER Mark”), including the below United States trademarks evidenced in the Complaint:
- TOTER - United States Reg. No. 1426599 - Classes 20 and 21 - registered on January 27, 1987;
- TOTER - United States Reg. No. 4140415 - Classes 20 and 21 - registered on May 8, 2012.
Complainant registered and has continually used the
The Disputed Domain Name was registered on June 20, 2021. The Disputed Domain Name resolves to a website comprised of sponsored pay-per-click advertisements. The Disputed Domain Name is also associated with an active mail server.
5. Parties’ Contentions A. ComplainantThe Disputed Domain Name is unquestionably confusingly similar to the TOTER Mark as the Disputed Domain Name wholly incorporates the TOTER Mark preceded by the descriptive term TRASH, a term directly related to Complainant’s TOTER products and services.
Respondent does not have any prior rights or legitimate interest in the Disputed Domain Name, Respondent is not commonly known by the name “toter” or “trash toter”, and thus, Respondent lacks rights and legitimate interest in the Disputed Domain Name. Complainant has not authorized Respondent to use Complainant’s well-known TOTER Mark nor is Respondent a licensee of the TOTER Mark.
Respondent cannot assert that it has been using the Disputed Domain Name, prior to any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparation to do so.
The Disputed Domain Name is being used to resolve to the Website which features sponsored advertisements. Respondent is not making a bona fide offering of goods or services in connection with the Disputed Domain Name because Respondent’s current use thereof appears intended only to drive traffic to the Website based on confusion with Complainant’s TOTER Mark and to capitalize on the goodwill and notoriety associated therewith as a result of the aforementioned confusion.
The combination of Complainant’s TOTER Mark and the descriptive term TRASH, a term which directly relates to Complainant’s products and services, is implicit proof of Respondent’s knowledge of Complainant and Complainant’s TOTER Mark prior to registration of the Disputed Domain Name and Respondent’s intention to target the TOTER Mark, which in turn is evidence that Respondent could not, and does not, have any rights or legitimate interest in the Disputed Domain Name.
Using the confusingly similar Disputed Domain Name, Respondent is attempting to redirect Internet traffic for its own profit to a parked website containing only sponsored links to third-party websites for products and services related to and competitive with Complainant’s products and services and is certainly not a legitimate noncommercial or fair use of the Disputed Domain Name or a bona fide offering of goods or services.
Given (i) that Complainant’s TOTER Mark is well-known as a result of Complainant’s extensive use thereof over the past 50-plus years and (ii) the confusing similarity created by the Disputed Domain Name, it is entirely plausible that, when combined with the fact that the Disputed Domain Name is currently associated with email servers, that it was Respondent’s intention to confuse or defraud people via Respondent’s use of email addresses associate with the Disputed Doman Name through either a phishing scam or a business email compromise attack.
Given the international success and renown associated with the TOTER Mark, there is no explanation for or rights or legitimate interests in the Disputed Domain Name to justify Respondent’s choice to register the Disputed Domain Name other than to trade off the good will and reputation of Complainant’s TOTER Mark or otherwise create a false association with Complainant, which amounts to registration of the Disputed Domain Name in bad faith.
Respondent intentionally selected and used Complainant’s TOTER Marks in order to create confusion so that Respondent could trade off of the goodwill and reputation associated with the TOTER Mark for Respondent’s own financial gain.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has demonstrated it owns registered trademark rights in the TOTER trademark in the United States and throughout the world. The addition of the dictionary term “trash” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate InterestsComplainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been commonly known by the Disputed Domain Name; and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant has also presented prima facie evidence Respondent is using the Disputed Domain Name to direct Internet users seeking to find Complainant’s website to third party websites which sell goods that compete with Complainant.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Disputed Domain Name was registered many years after Complainant first registered and used its TOTER Mark. The evidence provided by Complainant makes it clear Respondent undoubtedly knew of Complainant’s TOTER Mark and knew that it had no rights or legitimate interests in the Disputed Domain Name.
There is no benign reason for Respondent to have registered a domain name that is confusingly similar to Complainant’s famous name and mark.
Currently, the Disputed Domain Name resolves to the Registrar’s landing page with pay‑per‑click links offering goods and services competing with Complainant. See section 3.5 of the WIPO Overview 3.0. Furthermore, Complainant has submitted evidence that a MX (mail exchange) sever is linked to the Disputed Domain Name, which could allow Respondent to send and receive emails. This fact constitutes a threat hanging over Complainant in that Respondent could use the Disputed Domain Name to contact people in a manner which would lead the recipients to believe that they are being contacted by Complainant. In the absence of any evidence or explanation from Respondent, the Panel finds that the only plausible basis for registering the Disputed Domain Name would be for illegitimate purposes.
The Panel finds that the only plausible basis for registering and using the Disputed Domain Name has been for illegitimate and bad faith purposes.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
7. DecisionFor 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,
Colin T. O’Brien
Sole Panelist
Date: October 6, 2021