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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AlliedBarton Security Services LLC v. ICS Inc. / Contact Privacy Inc.

Case No. D2013-1612

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 of Overseas Territory of United Kingdom of Great Britain and Northern Ireland / Contact Privacy Inc. of Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <myalliedbarton.org> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2013, 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 September 18, 2013 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 September 20, 2013.

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 September 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2013.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on November 4, 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 states that it is the largest U.S.-owned security officer services company and that it was established in 1957. One of the main components of its business is the provision of security services in connection with its family of ALLIEDBARTON trademarks.

The Complainant is the registered proprietor of the following United States registered service marks which it relies on:

- U.S. Reg. No. 3,144,420 for the ALLIEDBARTON device mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, filed on February 21, 2005 and registered on September 19, 2006. The Complainant says it has used this mark in connection with the registered services since at least September 4, 2004.

- U.S. Reg. No. 3,144,421 for the ALLIEDBARTON word mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, filed on February 21, 2005 and registered on September 19, 2006. The Complainant says it has used this mark in connection with the registered services since at least September 4, 2004.

- U.S. Reg. No. 3,152,959 for the ALLIEDBARTON SECURITY SERVICES word mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, filed on February 21, 2005 and registered on October 10, 2006. The Complainant says it has used this mark in connection with the registered services since at least September 4, 2004.

- U.S. Reg. No. 3,223,891 for the ALLIEDBARTON SECURITY SERVICES device mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, filed on February 21, 2005 and registered on April 3, 2007. The Complainant says it has used this mark in connection with the registered services since at least September 4, 2004.

The Complainant further states that it has gained significant common law trademark and other rights in its family of ALLIEDBARTON marks through their use, advertising and promotion. The Complainant operates the website located at “www.myalliedbarton.com” as its main corporate website for its employees. This domain name was registered to the Complainant on June 24, 2008.

The disputed domain name <myalliedbarton.org> was created on June 24, 2013 (the “Relevant Date”).

Evidence shows that, as at the date of the Complaint, the disputed domain name was being used to host a “link farm” which provided links to a variety of websites, including links with titles such as “Security Guard” and “Security Officer” that offer similar services to those offered by the Complainant under its ALLIEDBARTON marks. The Complainant asserts that the websites linked to may be of interest to consumers and employees of the Complainant who are seeking the Complainant’s main employee website found at “www.myalliedbarton.com”.

The Respondent, ICS Inc. has recently been the subject of four previous adverse decisions under UDRP concerning domain names incorporating the Complainant’s trademarks. In particular, the Complainant has referred the Panel to:

(a) AlliedBarton Security Services LLC v. ICS Inc., WIPO Case No. D2012-0411, in which the Respondent was ordered to transfer the domain names <alliedbartonipay.com> and <wwwmyalliedbartonsecurity.com> to the Complainant;

(b) AlliedBarton Security Services LLC v. Registrant: ICS INC., WIPO Case No. D2012-1003, in which the Respondent was ordered to transfer the domain name <myaliedbarton.com> to the Complainant;

(c) AlliedBarton Security Services LLC v. ICS Inc., WIPO Case No. D2012-2474, in which the Respondent was ordered to transfer the domain name <myaliiedbarton.com> to the Complainant;

(d) AlliedBarton Security Services LLC v. ICS INC. / Whois Privacy Protection Service, Inc., WIPO Case No. D2012-2361, in which the Respondent was ordered to transfer the domain name <aliedbartonedge.com> to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.

The Complainant also asserts that the Respondent is “a serial cyber-pirate and typosquatter” by way of its intentional registration of several domain names confusingly similar to the Complainant’s marks.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

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

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant had registered rights in the service mark ALLIEDBARTON as at the Relevant Date by way of its U.S. registered service marks for ALLIEDBARTON and ALLIEDBARTON SECURITY SERVICES in class 45. Each well predates June 24, 2013, when the disputed domain name was registered.

The Panel considers that the Complainant’s ALLIEDBARTON registered service mark is instantly recognizable within the disputed domain name and the descriptive “my” does not sufficiently differentiate the disputed domain name from the Complainant’s trademark so that confusion will not arise. The Panel also notes that the disputed domain name is substantially identical to the Complainant’s domain name <myalliedbarton.com> associated with its main corporate website for its employees.

The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

The Complainant states, and the Panel accepts, that it has never given the Respondent any licence or authority to use, or apply for the registration of, the disputed domain name, and the Respondent is not related in any way to the Complainant’s business.

In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, and in the absence of any Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

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

(ii) that the Respondent has registered the disputed 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

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

(iv) that 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.

As already stated, the Complainant has service mark registrations in the U.S. for ALLIEDBARTON which well predate the Relevant Date of June 24, 2013. The Panel finds that the Respondent ICS Inc. must have been aware of the Complainant’s service mark at the time of registration of the disputed domain name, since prior to the creation of the disputed domain name on the Relevant Date, the Respondent had already been ordered (as a result of adverse UDRP decisions in 2012 or early 2013), to transfer domain names containing the Complainant’s registered service mark or typo-variants of it to the Complainant. The decisions in those cases clearly identified the Complainant’s registered trademark rights to its service mark registrations.

The Panel is therefore satisfied on the facts that the disputed domain name was registered in bad faith.

As to the second limb of the third element, the Panel is also satisfied that the disputed domain name is being used in bad faith, in particular for intentionally attempting to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks. Pay-per-click sponsored links on the “link farm” located at the Respondent’s website are tailored to match services covered directly by the Complainant’s registered service marks or to divert business to rival brands of the Complainant’s products. There is therefore a demonstrated intent to attract Internet users to the Respondent’s website for commercial gain.

7. Decision

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 <myalliedbarton.org> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: November 14, 2013

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