WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ADT Services AG v. Direct Navigation Associates/Moniker Privacy Services

Case No. D2007-1207

 

1. The Parties

The Complainant is ADT Services AG, Schaffhausen, Switzerland, represented by Christopher & Weisberg, P.A., United States of America.

The Respondent is Direct Navigation Associates/Moniker Privacy Services, Panama City, of Panama.

 

2. The Domain Name and Registrar

The disputed domain name <adtsecurity.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2007. On August 20, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 27, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on August 28, 2007, on a change in the Registrant Information, the Complainant filed an amendment to the Complaint on August 31, 2007. The Center verified that 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 September 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2007.

The Center appointed Christian Schalk as the sole panelist in this matter on October 10, 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.

The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.

 

4. Factual Background

The Complainant is a corporation organized under the laws of Switzerland which owns trademark registrations for the letter combination ADT alone or in combination with generic terms, for example, ADT MONOGRAM, ADT MONOGRAM BLOCK, ADT MONOGRAM BLOCK BLUE, ADT SECURITY DIRECTOR, ADT ALWAYS THERE (referred to below as ADT-trademarks). The Complainant licenses the right to use these trademarks in their home country to companies belonging to the ADT group of companies.

The ADT group sells and offers for sale home security products and services in the United States of America and in many other countries under the trademark ADT.

The Complainant owns ADT-trademark registrations in more than hundred jurisdictions. In the United States of America, the priority date of the oldest trademark registration goes back to 1959. Use in commerce in the United States of America has been proved for a period starting in 1903. Nearly all ADT - trademarks registered outside the United States of America have priority dates between the mid eighties and the year 2002.

In accordance with the statements made by the Complainant, more than 7.3 million customers worldwide are using the Complainant’s products and services. Furthermore, over 13,500 support vehicles bear an ADT trademark and the same number of sales, services and response team members wear clothing bearing the ADT trademark. ADT has won numerous awards for its products and services.

The Complainant and its licensees have more than 70 additional domain names which include the letters ADT, for example, <adtsecurityservices.com>, <adtsecurity.com.au>, <adt.security.co.nz>, <adtindia.com>, <adt-deutschland.com>, <adtdealerlicences.com>, <adtinfo.com>, <adtsurvey.com>, <adteventmarketing.com>, <premieradt.com>.

The domain name at issue was registered on June 30, 2004. It redirects Internet users immediately to the website “www.homesecurity.org”. This website provides a long list of links to providers of home security systems, among them the Complainant but also to many of the Complainant’s competitors.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name at issue is identical or at least confusingly similar to the ADT-trademarks. In this context, the Complainant cites WIPO Case No. D2007-0459 - ADT Services A.G. v. Alarm Services, Cencom Inc., Safeguard America, Saveonmyalarm.com to support his conclusion. The Complainant believes that the term “security” is used by the Complainant to describe its own goods and services. Furthermore, the Respondent’s own website indicates this ADT description of its and others goods and services.

The Complainant alleges further, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has never granted the Respondent an express or implied license to use its trademarks. Even the Respondent’s website does not give any information regarding its possible rights or legitimate interests in the domain name at issue.

Furthermore, the contested domain name offers advertising links for competitive products including alarm systems and monitoring services and in addition information about products of the Complainant’s competitors. It is the Complainant’s opinion that the way the Respondent uses the domain name at issue constitutes improper use of the ADT-trademarks. The fact that the Respondent website suggests that the ADT systems of the Complainant and its competitors may be purchased or serviced neither constitute legitimate non-commercial or fair use of the domain name at issue.

The Complainant states further that the Respondent has not been commonly known by the domain name.

The Complainant alleges moreover, that the disputed domain name has been registered and is used in bad faith.

The Complainant argues that the Respondent must have been aware of the Complainant’s ADT-trademarks, since the ADT-trademarks are specifically used at the website corresponding to the domain name at issue. The Complainant refers in this context to an earlier UDRP decision in which its company was involved as well. The Panel of that case found that although the Respondent was well aware of the Complainant and its trademark, it nevertheless registered a domain name fully containing the Complainant’s trademark and a term descriptive of goods and services offered by the Complainant and used that domain name to automatically direct consumers to goods and services that compete with those of Complainant (see: ADT Services A.G. v. Alarm Services, Cencom Inc., Safeguard America, Saveonmyalarm.com, WIPO Case No. D2007-0459).

The Complainant believes further, that by using the disputed domain name, the Respondent intentionally seeks to obtain commercial gain by using the ADT-trademarks. The Respondent’s website includes specific references to the Complainant, improper uses its trademarks and employs a competitive language.

Furthermore, the Complainant alleges that the registration and use of the domain name at issue prevents the Complainant from reflecting its trademarks in a corresponding domain name. The Complainant explains in this context that it has engaged in a pattern of conduct to use the ADT-trademarks in more than 70 domain names, including the virtual identical domain name <adtsecurityservices.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

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

(ii) The domain name holder 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.

It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (See Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001).

A. Identical or Confusingly Similar

The Complainant has established trademark rights in the term “ADT”. Therefore, it is clear that the disputed domain name is not identical to any of the Complainant’s trademarks.

However, the Panel finds the disputed domain name to be confusingly similar with the Complainant’s trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Cases No. D2004-0565 and D2004-0624; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002.

Furthermore, given the fact that the Complainant’s business is in the field of home security systems it is likely that the disputed domain name could be understood by Internet users finding <adtsecurity.com> on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and therewith increase the likelihood of confusion (see also Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jšaskš) Kaketti, WIPO Case No. D2001-0231.

B. Rights or Legitimate Interests

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate rights or legitimate interest in the disputed domain name for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is known by the domain name at issue. The Complainant has also never granted the Respondent a license to use its trademark.

Furthermore, the fact that the contested domain name offers advertising links for competitive products including alarm systems and monitoring services and in addition information about products of the Complainant’s competitors does not show a bona fide offering of goods and services.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and uses the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:

(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the 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 the Respondent has engaged in a pattern of such conduct; or

(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party. Given the fact that the ADT-trademarks are specifically used at the website linked to the domain name at issue, the Panel finds that it is very unlikely that the Respondent would register, acquire and use such a domain name which fully contains the Complainant’s mark and a term descriptive of goods and services offered by the Complainant without being aware of the Complainant’s trademark (see Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864; ADT Services A.G. v. Alarm Services, Cencom Inc., Safeguard America, Saveonmyalarm.com, WIPO Case No. D2007-0459). Therefore, the Panel believes that the Respondent registered the domain name at issue in bad faith.

Furthermore, the disputed domain name directs consumers automatically to goods and services that compete with those of the Complainant. This may lead consumers, who are interested in the Complainant’s product and services, let believe, that the other provider of home security systems mentioned on the website are somehow linked with the Complainant. The Complainant risks commercial losses if such consumers buy the products and services from other companies instead from the Complainant. Furthermore, the reputation of the Complainant’s ADT trademarks may be diluted.

Moreover, the Respondent has actively provided inaccurate contact details when it registered the domain name at issue or failed to correct false contact details. The Center used the contact details given in the WHOIS information for the disputed domain name when it tried to contact the Respondent. However, the letter was returned because it could not be delivered. Therefore, the Panel finds that this is further evidence of the Respondent’s bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and may have acted so to frustrate or at least to delay any attempts to transfer the disputed domain name to the Complainant.

 

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 <adtsecurity.com> be transferred to the Complainant.


Christian Schalk
Sole Panelist

Dated: October 24, 2007