WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlliedBarton Security Services LLC v. Registrant: ICS INC.
Case No. D2012-1003
1. The Parties
The Complainant is Allied Barton Security Services LLC, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Registrant: ICS INC., Grand Cayman, Cayman Islands.
2. The Domain Name and Registrar
The Disputed Domain Name <myaliedbarton.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2012. On May 11, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On May 11, 2012, Tucows Inc. 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 May 18, 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 amended Complaint on May 22, 2012.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on May 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2012.
The Center appointed Andrea Mondini as the sole panelist in this matter on July 3, 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.
4. Factual Background
The Complainant is AlliedBarton Security Services LLC, an American-owned security services company established in 1957. It offers various services in the field of private security personnel services.
The Complainant has obtained the following registrations with the United States Patent and Trademark Office (the "Trademarks"):
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 use dating back to at least September 4, 2004; and
d. ALLIEDBARTON SECURITY SERVICES & Design (US Reg. No. 3,223,891), registered April 3, 2007, with use dating back to at least September 4, 2004.
The Respondent is registrant ICS Inc. of Cayman Islands. As the Respondent did not file a response, no further information is known about the Respondent.
The Complainant has notified the Respondent of its rights in the Trademarks and requested transfer of the Disputed Domain Name on April 11, 2012 and April 25, 2012. Respondent, however, did not reply to any of these letters.
5. Parties’ Contentions
The Complainant asserts that the Disputed Domain Name was registered with the Registrar on February 12, 2012.
The Complainant states that it operates the website “www.alliedbarton.com” as the Complainant's main corporate website where it offers information about the Complainant's security related services. The Complainant also operates the website "www.myalliedbarton.com" as a website for its employees.
The Complainant asserts that a main component of his business is the provision of security services in connection with the Trademarks. The Complainant also states that the Trademarks have achieved significant recognition in the marketplace in connection with the Complainant's security personnel services.
The Complainant claims that it has gained significant common law trademark and other rights in respect of the Trademarks, through their use, advertising and promotion. In the Complainant's opinion, the Disputed Domain Name is confusingly similar to the Trademarks as the Disputed Domain Name incorporates all but one of the identical characters of the ALLIEDBARTON trademark.
The Complainant also states, that the Respondent has no rights or legitimate interests in the Disputed Domain Name since the Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent registered the Disputed Domain Name to advance legitimate interests for the bona fide offering of legitimate goods or services.
The Complainant also states, that the Respondent registered the Disputed Domain Name anonymously in an effort to avoid the consequences of registering a domain name for which it does not have legitimate rights or interests. The Complainant further argues, that because the Disputed Domain Name was registered anonymously and does not provide contact information, the Respondent cannot claim to have been commonly known by the Disputed Domain Name.
Further, the Complainant argues that the Disputed Domain Name is being used in connection with a commercial link service, or "link farm". In the Complainant’s opinion the Disputed Domain Name is designed to lure Internet users and divert them to other commercial sites. In the opinion of the Complainant 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 Name (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. D 2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).
Also, the Complainant claims that the Respondent's adoption and use of the Disputed Domain Name is in bad faith, that has continued with the full knowledge of the Complainant's prior rights, and that it is in willful infringement of the Complainant's prior rights. Further, the Complainant claims that the Respondent has attempted to take commercial advantage of the Complainant's Trademarks and commercial reputation and to trade off the Complainant's goodwill by creating a likelihood of confusion with the Trademarks.
Moreover, the Complainant affirms that the Disputed Domain Name directs users to a website that lacks significant independent content of its own, but rather uses the Disputed Domain Name in connection with links to third party commercial sites with titles such as "Police Employment", "Home Alarm System", and "Part Time Jobs". The Complainant alleges also that these sites include similar services to those offered under the Trademarks and are likely to give rise to confusion as to an association, affiliation or sponsorship between the Complainant and the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant owns the rights in the trademarks for ALLIEDBARTON and ALLIEDBARTON SECURITY SERVICES and provided evidence of its ownership of such trademarks.
The Disputed Domain Name clearly incorporates the ALLIEDBARTON trademark. The Panel finds that regardless of some minor differences, such as the prefix "my" or the lack of one "l", the ALLIEDBARTON trademark is the dominant element in the Disputed Domain Name. The addition or exclusion of descriptive or non-distinctive terms does not avoid the confusing similarity of the Disputed Domain Name to the ALLIEDBARTON trademark.
Consequently, the Disputed Domain Name is confusingly similar to Complainant's Trademarks.
B. 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 Name.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the Respondent. Therefore, the common 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 Name. However, the Complainant has to make 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.
The Complainant made a prima facie case that the Respondent is not affiliated with the Complainant, that it has not been commonly known by the Disputed Domain Name, and that that the Respondent does not have any rights or legitimate interest in the Disputed Domain Name.
The Respondent had the opportunity to demonstrate that it has rights or legitimate interests in the Disputed Domain Name, but it failed to do so. Consequently, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name.
C. 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 Name 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 deliberately attract, for commercial gain, Internet users to a website 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, the Complainant has established that the Respondent's registration and use of the Disputed Domain Name is in bad faith. The Disputed Domain Name is linked to third party commercial sites such as "Armed Security Guards", "Security Officers Jobs" or "Security Firms". Therefore, the Disputed Domain Name is designed to attract Internet users who are looking for Complainant's services. It also causes confusion with the Complainant's Trademarks and websites. Finally, the Disputed Domain Name is likely to disrupt the Complainant's business by diverting consumers away from the Complainant's website. All the afore mentioned acts are for commercial gain, because Respondent's website posted under the Disputed Domain Name features sponsored links, indicating that the Respondent generates revenue through a pay-per-click system. Asian World Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
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 Name <myaliedbarton.com> be transferred to the Complainant.
Dated: July 17, 2012