WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlliedBarton Security Services LLC v. Unknown! c/o Moniker Privacy
Services / Charlie Kalopungi (Registrant ID: 3197166)
Case No. D2010-1657
1. The Parties
The Complainant is AlliedBarton Security Services LLC of King of Prussia, Pennsylvania, the United States of America, represented by Cozen O'Connor, the United States of America.
The Respondents are Unknown! c/o Moniker Privacy Services of Pompano Beach, Florida, the United States of America and Charlie Kalopungi of Seychelles, Republic of Seychelles.
2. The Domain Name and Registrar
The disputed domain name <wwwmyalliedbarton.com> (“the Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010 naming Anonymous Registrant of <wwwmyalliedbarton.com> as the Respondent. On October 1, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On the same day, Moniker Online Services, LLC. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day, naming Charlie Kalopungi as the Respondent.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on October 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2010.
The Center appointed David Taylor as the sole panelist in this matter on November 8, 2010. 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 factual background is taken from the submissions contained in the Amended Complaint and the exhibits annexed thereto given that no Response was filed.
The Complainant is AlliedBarton Security Services LLC, a Delaware corporation. The Complainant is engaged in the business of security services. The Complainant operates the website “www.myalliedbarton.com”. The website “www.myalliedbarton.com” is used for the benefit of the Complainant's employees.
The Complainant owns several United States trade mark registrations including the following:
- ALLIEDBARTON registered on September 19, 2006 with the USPTO under number 3144421;
- ALLIEDBARTON SECURITY SERVICES registered on October 10, 2006 with the USPTO under number 3152959;
- ALLIEDBARTON SECURITY SERVICES & Design registered on April 3, 2007 with the USPTO under number 3223891; and
- ALLIEDBARTON & Design registered on September 19, 2006 with the USPTO under number 3144420.
The Domain Name was registered on July 21, 2010 via the domain name privacy service of the registrar, Moniker Online Services, LLC.
The Domain Name resolves to a parking page containing a variety of links categorized under headings relating to employment opportunities and security services.
5. Parties’ Contentions
The Complainant identifies itself as the largest American-owned security officer services company and asserts that it was established in 1957. The Complainant is the registered owner of the ALLIEDBARTON trade marks in the United States, and alleges that the marks have been used as early as September 4, 2004, in relation to the Complainant’s security guard services. According to the Complainant, Complainant's well-known family of ALLIEDBARTON trade marks have achieved significant recognition in the marketplace in connection with these services.
The Complainant contends that the Domain Name incorporates its registered ALLIEDBARTON trade mark in its entirety and displays identical characters in the exact same chronological order. The Complainant alleges that the Domain Name resolves to a “commercial link service, known as a ‘link farm’”, where links to third party commercial websites are grouped under headings such as “Allied Barton”, “Home Alarm System” and “Network Security” that include similar services to those offered by the Complainant under its ALLIEDBARTON trade marks.
The Complainant asserts that the Respondent Charlie Kalopungi is not affiliated with the Complainant and that, given that the Respondent Charlie Kalopungi decided to register the Domain Name anonymously in an effort to evade the consequences of registering a domain name for which he/she had no rights or legitimate interests.
The Complainant alleges that the Respondent Charlie Kalopungi does not have rights or legitimate interests in the Domain Name, but is instead attempting to lure Internet users and divert them to other commercial sites. The Complainant further contends that the Respondents cannot claim to have been commonly known by the Domain Name, since the website located at “wwwmyalliedbarton.com” does not provide any contact information whatsoever and thus the Respondent Charlie Kalopungi has made no effort to associate himself or herself with the Domain Name.
The Complainant further alleges that the use of the Domain Name in connection with a commercial link service, designed to lure and divert Internet users to other commercial websites, is not a bona fide offering of goods and services capable of giving rise to a right or legitimate interests.
The Complainant argues that the Domain Name was registered and is being used in bad faith.
The Complainant asserts that the Respondent Charlie Kalopungi has attempted to take commercial advantage of the Complainant's trade marks and commercial reputation and to trade off Complainant's goodwill.
The Complainant further argues that bad faith is demonstrated by the content of the website at the Domain Name. According to the Complainant, directing Internet users to a website that lacks any independent content on its own and provides links to third party websites including similar services to those offered by the Complainant is likely to give rise to confusion as to an association, affiliation or sponsorship between the Complainant and the Respondent Charlie Kalopungi. The Complainant contends that the Respondent Charlie Kalopungi had received affirmative notice of the Complainant's prior rights when the Complainant sent a letter to Anonymous Registrant of WWWMYALLIEDBARTON.COM c/o Moniker Privacy Services requesting that the Domain Name be transferred to the Complainant, but continued using the Domain Name in the same manner.
For all the foregoing reasons, the Complainant seeks the transfer of the Domain Name from the Respondents in accordance with paragraph 4(i) of the Policy.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In this case the Respondents have not submitted any Response and consequently have not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondents have 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 will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
Taking each of these issues in turn, the Panel decides as follows:
A. Identical or Confusingly Similar
The first element that needs to be established is whether the Complainant has rights in a term to which the Domain Name is identical or confusingly similar.
Based on the evidence provided by the Complainant to substantiate its trade mark rights, the Panel is satisfied that the Complainant has prior rights in the term ALLIEDBARTON which is incorporated in its entirety in the Domain Name.
The second element that needs to be considered is whether the Domain Name is identical or confusingly similar to the term ALLIEDBARTON in which the Complainant has rights.
The Domain Name reproduces the Complainant's exact trade mark in the term ALLIEDBARTON with the addition of the prefix “wwwmy” as well as the gTLD “.com”.
The Panel finds that the dominant and distinctive element of the Domain Name is “alliedbarton” which is identical to the Complainant’s trade mark. The Panel is of the view that generally confusing similarity may not be avoided where a domain name reproduces the entire mark of a third party with the mere addition of descriptive or non-distinctive terms. In this case, the addition of the prefix “wwwmy” comprising of “www”, a commonly known generic element of a URL syntax and “my”, a generic term, to the trade mark ALLIEDBARTON does not sufficiently differentiate the Domain Name from the Complainant's ALLIEDBARTON trade mark so as to avoid confusing similarity.
With regard to the addition of the gTLD “.com”, it is widely accepted that it is irrelevant in assessing the issue of confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service trade 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 trade mark or service trade mark at issue.”
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie case by showing of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut that showing.
For instance, there is no evidence suggesting that any of the Respondents is affiliated with the Complainant, is commonly known by the Domain Name, or has obtained any licence or authorization to use the Complainant’s ALLIEDBARTON trade mark.
In addition, the Panel finds that the Domain Name points to a parking page, through which Internet users are very likely to be directed to competing websites providing services similar to those covered by the Complainant’s trade marks. Such use of the Domain Name cannot constitute a bona fide offering of goods or services, nor a legitimate noncommercial of fair use of the Domain Name since it essentially relies on user confusion, most probably to generate financial gain.
Finally, the Panel considers the Respondents’ failure to respond to the Complaint as an additional suggestion of the lack of rights and legitimate interests of the Respondents in the Domain Name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
“(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”
The content of the website to which the Domain Name points is providing links to websites providing services which are similar to the Complainant’s. The Complainant has also provided evidence showing that, on August 18, 2010 the website at the Domain Name included a link entitled “Allied Barton”. The Panel is therefore of the opinion that the Respondents would in all likeliness have been fully aware that the registration and use of the Domain Name would infringe the Complainant’s rights in the ALLIEDBARTON trade marks.
Furthermore, based on the evidence produced by the Complainant regarding the website to which the Domain Name resolves, the Panel considers that the commercial links contained on the website to which the Domain Name points suggest that the Respondents are engaged in a revenue-generating scheme based on user confusion.
Further, whilst the use of domain name privacy services can serve legitimate and useful purposes, such services can and seem to be increasingly used in order to dissimulate the identity of bad faith actors. The consequence is that this impedes or indeed prevents the timely identification of the parties allegedly involved in illegal, harmful or objectionable activities. Moreover it is becoming evident that there is, in general, an intentional passive collusion between some domain name privacy service providers and bad faith actors which is a major concern and needs to be addressed so as to combat the increase in phishing, malware and other electronic crime especially given the intended launch of new gTLDs in 2011.
Finally, the Respondents’ failure to rebut any of the Complainant’s arguments is a supplementary element from which the Panel infers bad faith on the Respondents’ part.
The Panel therefore finds that the Respondents registered and are using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <wwwmyalliedbarton.com> be transferred to the Complainant.
Dated: November 23, 2010