WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlliedBarton Security Services LLC v. ICS Inc.
Case No. D2012-0411
1. The Parties
The Complainant is AlliedBarton Security Services LLC of King of Prussia, Pennsylvania, United States of America (“U.S.”) represented by Cozen O’Connor, U.S.
The Respondent is ICS Inc. of Grand Cayman, Cayman Islands (Overseas Territory of the United Kingdom of Great Britain and Northern Ireland).
2. The Domain Name and Registrar
The disputed domain names <alliedbartonipay.com> and <wwwalliedbartonsecurity.com> (the “Disputed Domain Names”) are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2012 regarding the disputed domain name <alliedbartonipay.com>. The named Respondent was WhoIs Privacy Protection Service, Inc. On March 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2012, 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 the Complainant on March 2, 2012 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 March 5, 2012, naming ICS Inc. 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 named Respondent of the Complaint, and the proceedings commenced on March 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was March 26, 2012. The named Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on March 27, 2012.
On March 23, 2012, the Complainant submitted an amended Complaint, seeking to add an additional domain name <wwwalliedbartonsecurity.com> (the “second domain name”) to the Complaint. The second domain name was the subject of WIPO Case No. D2012-0514; however, after the underlying registrant in that case was revealed to be the Respondent, the Complainant sought leave to withdraw WIPO Case No. D2012-0514 and amend the Complaint in the present case to add the second domain name.
The Center appointed John Swinson as the sole panelist in this matter on March 30, 2012. 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.
On April 4, 2012, the Panel issued Administrative Panel Procedural Order No. 1, as follows:
1 The Panel accepts for filing the Complainant’s Amended Complaint and orders that it be substituted for the Original Complaint as previously amended.
2 The Amended Complaint will be considered by the Panel as a complaint seeking the addition of a domain name.
3 In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center is directed to formally notify the Respondent of the Amended Complaint, and to set a due date for Responses in accordance with paragraph 5(a) of the Rules.
4 The due date for the Panel to submit its decision to the Center will be extended consistent with the foregoing.
The named Respondent did not submit a response to the Amended Complaint. Accordingly, the Center notified the Respondent’s default on April 25, 2012.
4. Factual Background
The Complainant is AlliedBarton Security Services LLC, an American-owned security services company established in 1957.
The Respondent is ICS Inc. of the Cayman Islands. As the Respondent did not file a Response, little information is known about the Respondent.
5. Parties’ Contentions
The Complainant makes the following submissions.
The Complainant asserts that the Disputed Domain Names were registered with the Registrar, as follows:
a. <alliedbartonipay.com> registered on December 7, 2011; and
b. <wwwalliedbartonsecurity.com> registered on January 8, 2012.
Identical or confusingly similar
A main component of the Complainant’s business is the provision of security services in connection with its family of ALLIEDBARTON trade marks, which includes ALLIEDBARTON SECURITY SERVICES trade marks (the “Trade Marks”). The Trade Marks have achieved significant recognition in the marketplace in connection with the Complainant’s services.
The Complainant has gained significant common law trade mark and other rights in respect of the Trade Marks, through their use, advertising and promotion. The Complainant has also obtained the following registrations with the United States Patent and Trademark Office:
a. ALLIEDBARTON & Design (US Reg. No. 3,144,420), registered September 19, 2006, with use dating back to at least September 4, 2004;
b. ALLIEDBARTON (US Reg. No. 3,144,421), registered September 19, 2006, with use dating back to at least September 4, 2004;
c. ALLIEDBARTON SECURITY SERVICES (US Reg. No. 3,152,959), registered October 10, 2006, with used dating back to at least September 4, 2004; and
d. ALLIEDMBARTON SECURITY SERVICES & Design (US Reg. No. 3,223,891), registered April 3, 2007, with used dating back to at least September 4, 2004.
The Disputed Domain Names are confusingly similar to the Trade Marks. The Disputed Domain Names incorporate all of the identical characters of the ALLIEDBARTON trade mark, in the same order. The <wwwalliedbartonsecurity.com> domain name also incorporates most of the identical characters of the Complainant’s ALLIEDBARTON SECURITY SERVICES trade marks (with the exception of the word “services”), in the same order.
Further, the Complainant owns and operates the website at “www.alliedbarton.com” (the “Website”). The Website is the Complainant’s main corporate website and the <alliedbarton.com> domain name was registered by the Complainant on December 13, 2004. The Website offers information about the Complainant’s security related services.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent registered the Disputed Domain Names to advance legitimate interests or for the bona fide offering of legitimate goods or services. The Disputed Domain Names have been registered anonymously so the Respondent can avoid the consequences of registering domain names for which it does not have legitimate rights or interests.
As the Disputed Domain Names are registered anonymously and do not provide contact information, the Respondent cannot claim to have been commonly known by the Disputed Domain Names.
The Disputed Domain Names are being used in connection with a commercial link service, or “link farm”. The Disputed Domain Names are designed to lure users and divert them to other commercial sites. This is not a bona fide offering of legitimate goods or services and does not confer a legitimate right or interest in the Disputed Domain Names (see e.g., Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).
Registered and Used in Bad Faith
The Respondent’s adoption and use of the Disputed Domain Names is in bad faith, has continued with the full knowledge of the Complainant’s prior rights, and is in willful infringement of the Complainant’s prior rights. The Respondent has attempted to take commercial advantage of the Complainant’s Trade Marks and commercial reputation and to trade off the Complainant’s goodwill by creating a likelihood of confusion with the Trade Marks.
The Disputed Domain Names direct users to a website that lacks significant independent content of its own, but rather uses the Disputed Domain Names in connection with links to third party commercial sites with titles such as “Allied Barton Security”, “Allied Barton Security Jobs”, “Security Guard Jobs”, “Security Companies”, “Guard Jobs” and “Alliedbartonipay Com”. These sites include similar services to those offered under the Trade Marks and are likely to give rise to confusion as to an association, affiliation or sponsorship between the Complainant and the Respondent.
The Complainant has notified the Respondent of its rights in the Trade Marks and requested transfer of the Disputed Domain Names as follows:
a. in respect of <alliedbartonipay.com> on February 2, 2012 and February 15, 2012; and
b. in respect of <wwwalliedbartonsecurity.com> on February 7, 2012 and February 21, 2012.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant owns U.S. trade mark registrations for ALLIEDBARTON and ALLIEDBARTON SECURITY SERVICES. The Complainant provided evidence of its ownership of such trade marks. The Panel accepts that the Complainant owns the registered trade marks for ALLIEDBARTON and ALLIEDBARTON SECURITY SERVICES and that have achieved significant recognition in the marketplace in connection with the Complainant’s services.
Both the Disputed Domain Names clearly incorporate the ALLIEDBARTON trade mark. One of the Disputed Domain Names also incorporates part of the ALLIEDBARTON SECURITY SERVICES trade mark. The Panel finds that despite some minor differences, such as the addition of “IPAY” in one of the Disputed Domain Names, the ALLIEDBARTON trade mark is the dominant element in both of the Disputed Domain Names. The addition or exclusion of descriptive or non-distinctive terms does nothing to prevent the confusing similarity of the Disputed Domain Names with the ALLIEDBARTON trade mark.
The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is 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 Disputed Domain Names, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
There is no evidence before the Panel that the Respondent has any legitimate connection with the ALLIEDBARTON name.
The Complainant relies on the fact that there is no evidence that the Respondent used the Disputed Domain Names for anything but a pay-per-click (“PPC”) website, which in some instances advertised competing products. This effectively shifts the burden to the Respondent to demonstrate rights or legitimate interests in the Disputed Domain Names.
The Respondent had the opportunity to demonstrate the presence of rights or legitimate interests, but did not do so. In the absence of an answer from the Respondent, the Complainant’s prima facie case has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location”.
In this case because both of the Disputed Domain Names resolve to landing pages at which competitive services are offered, the Complainant has established that the Respondent’s use of these domain names is in bad faith. The Disputed Domain Names appear designed to attract Internet users who are looking for the Complainant’s ALLIEDBARTON services, appear to cause confusion with the Complainant’s marks and websites, appear to disrupt the Complainant’s business by diverting consumers away from the Complainant’s websites, and do all of these things for commercial gain because the Respondent profits from the PPC revenue generated by these websites. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
In light of the Complainant’s significant reputation in the marketplace and the goodwill in the ALLIEDBARTON and for the reasons given above it is difficult to see how Respondent can claim to have registered and used the Disputed Domain Names otherwise than in bad faith.
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith as defined in paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <alliedbartonipay.com> and <wwwalliedbartonsecurity.com> be transferred to the Complainant.
Dated: May 7, 2012