WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlliedBarton Security Services LLC v. ICS INC. / Whois Privacy Protection Service, Inc.
Case No. D2012-2474
1. The Parties
The Complainant is AlliedBarton Security Services LLC of King of Prussia, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is ICS INC. / Whois Privacy Protection Service, Inc., of Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland; Bellevue, Washington, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <myaliiedbarton.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center”) on December 17, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 18, 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 December 19, 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 December 19, 2012.
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 Respondent of the Complaint, and the proceedings commenced on December 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2013.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on January 18, 2013. 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 the largest American-owned security officer services company, established in 1957. The Complainant owns several trademark registrations with the United States Patent and Trademark Office for trademark comprising or consisting of the word “alliedbarton”. The Complainant has also registered and is using a website at <myalliedbarton.com>.
5. Parties’ Contentions
The Complainant states that it has used the family of ALLIEDBARTON trademarks in commerce long before the Disputed Domain Name was registered on October 8, 2012 and that there can be little question that the Respondent registered the Disputed Domain Name with full knowledge of and the intent to trade off of the Complainant's pre-existing rights.
The Complainant further contends that the Disputed Domain Name incorporated the Complainant's ALLIEDBARTON trademarks, displaying all but one of the identical characters in the same chronological order.
The Complainant states that it is not affiliated with the Respondent and that the Respondent has anonymously registered the Disputed Domain Name in an effort to evade consequences of registering a domain name for which it has not legitimate interests. The Respondent cannot claim to have been commonly known by the Disputed Domain Name or a similar name.
Concerning registration and use of the Disputed Domain Name in bad faith, the Complainant contends that the Respondent has recently been ordered to transfer three domain names to the Complainant, see AlliedBarton Security Services LLC v. ICS Inc., WIPO Case No. D2012-0411; AlliedBarton Security Services LLC v. ICS Inc., WIPO Case No. D2012-1003.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Disputed Domain Name consists of the Complainant's trademark ALLIEDBARTON, with the second "L" changed into an "I" and with adding the word "my" in front of the Disputed Domain Name.
Replacing the letter "L" with the letter "I" is merely a typo (graphical error) and does not alter the overall impression of the mark ALLIEDBARTON. The word "my" is commonly used in the Internet to describe a service that can be tailored to meet the needs of a specific Internet user.
Bearing also in mind that the Complainant is operating a website at <myalliedbarton.com>, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's registered trademark ALLIEDBARTON.
B. Rights or Legitimate Interests
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 mark.
The Complainant relies on the fact that there is no evidence that the Respondent used the Disputed Domain Name for anything but a pay-per-click (“PPC”) website, which in some instances advertised competing products. This effectively shifts the burden of production to the Respondent to demonstrate rights or legitimate interests in the Disputed Domain Name.
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.
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.
It is noted by the Panel that the Respondent has recently been ordered to transfer three other domain names to the Complainant. The Panel find that such conduct is in itself evidence that the Disputed Domain Name has been registered and is being used in bad faith. The Respondent has clearly engaged in a pattern of conduct designed to cause confusion with the Complainant's trademarks and services.
The Panel also notes that the Disputed Domain Name resolves to a so called pay-per-click site, where links to third party websites are provided. This means that the Respondent is generating revenue with the Disputed Domain Name, which also has been established as evidence that the Disputed Domain Name has been registered and is being used in bad faith, see Asian World Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Disputed Domain Name has been 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 <myaliiedbarton.com> be transferred to the Complainant.
Date: January 24, 2013