WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlliedBarton Security Services LLC v. Contact Privacy Inc. Customer 0132268359 / ICS INC.
Case No. D2012-2361
1. The Parties
Complainant is AlliedBarton Security Services LLC of King of Prussia, Pennsylvania, United States of America, represented by Cozen O’Connor, United States of America.
Respondent is Contact Privacy Inc. Customer 0132268359 / ICS INC., of Toronto, Canada, and Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, respectively.
2. The Domain Name and Registrar
The disputed domain name <aliedbartonedge.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 November 29, 2012. On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 Complainant on December 3, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 3, 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 Respondent of the Complaint, and the proceedings commenced on December 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2013.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 11, 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
Complainant is a Delaware corporation, established in 1957, which provides security services.
Complainant owns and operates the website ‘’www.alliedbartonedge.com’’, which offers training classes for current and prospective customers, and owns several United States trademark registrations including the following (Annexes D-H of Complaint):
- registration number 3728360, for ALLIEDBARTON EDGE;
- registration number 3751627, for ALLIEDBARTON EDGE EDUCATE DEVELOP GROW ENGAGE;
- registration number 3144421, for ALLIEDBARTON;
- registration number 3152959, for ALLIEDBARTON SECURITY SERVICES.
The disputed domain name was registered by Respondent on September 16, 2012.
5. Parties’ Contentions
Complainant identifies itself as the largest American-owned security officer services company and states that one of the main components of its business is the provision of security services in connection with its set of ALLIEDBARTON registered trademarks.
According to Complainant, its well-known set of ALLIEDBARTON registered trademarks, which include
ALLIEDBARTON EDGE and other ALLIEDBARTON EDGE related marks, have achieved significant recognition in the marketplace in connection with Complainant’s services.
Complainant contends that it has gained significant common law trademark and other rights with its ALLIEDBARTON trademarks, including ALLIEDBARTON EDGE and other related marks, through their use, advertising and promotion.
Complainant argues that the disputed domain name incorporates its registered ALLIEDBARTON EDGE trademark creating confusion and violating Complainant’s rights. Complainant further owns and operates the website located at <alliedbartonedge.com>, registered on June 25, 2008, and launched in 2009, which offers online training classes for current and prospective customers of Complainant.
Complainant also states that, with the exception of one letter (the double “l”), the disputed domain name displays the identical characters in the exact same chronological order as Complainant’s registered ALLIEDBARTON EDGE trademark and <alliedbartonedge.com> domain name.
Complainant alleges Respondent had full knowledge of Complainant’s rights and activities when registering the disputed domain name and claims that Respondent is not affiliated with Complainant, and that there is no evidence to suggest that Respondent has registered the disputed domain name with legitimate interests or for offering, in good faith, legitimate goods or services.
Complainant attests that Respondent has anonymously registered the disputed domain name in an effort to evade the consequences of registering a domain name for which he/she has no rights or legitimate interests.
Respondent has solely used the disputed domain name in connection with a commercial link service, known as a “link farm”, which is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the disputed domain name. In this sense, see previous UDRP decisions: 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; and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550.
Complainant claims that Respondent’s adoption and use of the disputed domain name is in bad faith, since it has attempted to take advantage of Complainant’s trademarks and commercial reputation and to trade off Complainant’s goodwill. Also, use of the disputed domain name is likely to give rise to confusion as to an association, affiliation, or sponsorship between Complainant and Respondent, since its website lacks any independent content of its own, reverting only to links to third-party commercial sites with headings such as “Security Guard Jobs” and “Security Central” that comprise similar services to those offered by Complainant under its ALLIEDBARTON and ALLIEDBARTON EDGE registered trademarks.
Finally, Complainant alleges that on October 23, 2012 and November 6, 2012, Complainant respectively sent Respondent two letters in which it notified Respondent of Complainant’s rights and requested that Respondent transferred the disputed domain name to Complainant (Annexes K-L of Complaint). Respondent has ignored both of Complainant’s correspondences. Accordingly, Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that 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.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations containing ALLIEDBARTON EDGE in the United States and that such trademark is, except for the double “l”, entirely incorporated in the disputed domain name <aliedbartonedge.com>. The lack of a letter “l” obviously does not avoid confusion with Complainant’s trademarks, especially since the combination of the words “allied”, “barton” and “edge” is quite unusual.
The Panel also attests prior registration and use of domain name <alliedbartonedge.com> by Complainant and its clear similarity to the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, Complainant has provided sufficient prima facie proof of no rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not filed any Response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <aliedbartonedge.com>.
The Panel acknowledges that Respondent is not affiliated with Complainant, and agrees that there is no evidence to suggest that Respondent has registered the disputed domain name with legitimate interests or for offering, in good faith, legitimate goods or services.
The Panel also concurs with the previous UDRP decisions mentioned by Complainant to understand that the sole use of the disputed domain name in connection with a commercial link service, known as a “link farm”, is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the disputed domain name
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements 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 include: (iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds it is highly unlikely that Respondent was not aware of Complainant’s use and legal rights to the trademarks ALLIEDBARTON and ALLIEDBARTON EDGE and to the domain name <alliedbartonedge.com> at the time of registration of the disputed domain name.
The fact that the disputed domain name resorts to links associated with safety and security services, and as the ALLIEDBARTON and ALLIEDBARTON EDGE trademarks are also for these kinds of services, is another sign that Respondent was acting in a way as to make an undue profit from the use of a domain name confusingly similar to Complainant’s trademark.
The Panel feels this is a typical case of “typosquatting”, which is when a domain name is registered with insignificant modifications to another’s registered and usually renowned trademark, relying on possible typographical errors or misspellings to draw users to its website. The lack of simply one letter “l” in the disputed domain name, obviously deliberately designed to confuse consumers looking for Complainant’s website and services and to prompt them instead to visit Respondent’s website, clearly configures “typosquatting”.
Previous UDRP panels have already acknowledged “typosquatting” in similar cases, such as Autodesk, Inc. v. PrivacyProtect.org / Tech Domain Services Private Limited, WIPO Case No. D2011-1958 and Autodesk, Inc. v. PrivacyProtect.org / Trade Out Investments Ltd, WIPO Case No. D2012-0238, where the panels found the domain names <autoddesk.com> (which included Complainant’s trademark with only a single letter misspelling - double “d”) and <autodesck.com> (which included Complainant’s trademark with only a single letter misspelling - “c”) to be clearly confusingly similar, phonetically and virtually identical to Complainants’ trademark AUTODESK.
It is, therefore, apparent that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's trademarks and registered domain name.
Accordingly, the Panel concludes 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 <aliedbartonedge.com> be transferred to Complainant.
Gabriel F. Leonardos
Date: January 25, 2013