WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AlliedBarton Security Services LLC v. Kevin Luu

Case No. D2013-0071

1. The Parties

Complainant is AlliedBarton Security Services LLC, King of Prussia, Pennsylvania, United States of America (the “USA”), represented by Cozen O'Connor, USA.

Respondent is Kevin Luu, Chicago, Illinois, USA.

2. The Domain Name and Registrar

The disputed domain name <alliedsecurityservicescorp.com> is registered with New Dream Network, LLC dba DreamHost.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 January 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 14, 2013.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on February 27, 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 owns various trademark registrations containing the terms “allied” and “security,” including for example United States Trademark Registration No. 2,680,917 for the service mark ALLIED SECURITY, registered January 28, 2003 in International Class 45 with first use in commerce dating from 1961.¹ Complainant also owns United States trademark registrations for other related marks including the term ALLIED BARTON and ALLIEDBARTON SECURITY SERVICES. Complainant is also registrant of the domain name <alliedsecurity.com>, registered October 2, 1995.

The disputed domain name was registered August 11, 2012 and routes to a website that appears to promote a Chicago-area security services business using the name Allied Security Services Corp.²

5. Parties’ Contentions

A. Complainant

Complainant avers that its business was established in 1957 and that it is the largest “American-owned” security officer services company today. Without detail, Complainant avers that its “family” of ALLIED SECURITY and ALLIED BARTON marks are well known.

Complainant alleges that: (1) the disputed domain name is confusingly similar to Complainant’s trademarks; (2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) “Respondent’s adoption and use of the ALLIEDSECURITYSERVICESCORP.COM domain name is in bad faith, has continued with full knowledge of Complainant’s prior rights given the affirmative notice provided by Complainant, and is in willful infringement of Complaint’s prior rights. Respondent has attempted to take commercial advantage of Complaint’s trademarks and commercial reputation and to trade off Complainant’s good will.”

Complainant avers that it sent notification letters to Respondent describing Complainant’s trademark rights and requesting transfer of the disputed domain name on September 27 and October 10, 2012, without response.

On October 29, 2012, Complainant avers, Complainant called the phone number listed on the website to which the disputed domain name routed and “spoke with Mr. Darryl Carter who identified himself as the owner of Allied Security Services Corp.” On November 2, 2012, Complainant avers, it sent a letter to Mr. Carter describing its rights in the marks and requested that Mr. Carter transfer the disputed domain name. On November 7, 2012, Complainant avers, Mr. Carter called back and “advised that he will discontinue all use” of the disputed domain name and that the domain name would be cancelled. The Complaint continues to describe later unsuccessful attempts by Complainant to communicate with Mr. Carter, characterized by lack of response.³

On the basis of the foregoing, Complainant seeks transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Proper Respondent

As a preliminary matter, it is necessary to decide whether both Kevin Luu and Mr. Carter named as respondents are proper parties to this proceeding.

First, the Panel rules that Mr. Luu is a proper respondent since, as confirmed by the Registrar, Mr. Luu is the current registrant.

Second, despite the Complaint naming Darryl Carter as a second respondent, Mr. Carter is not a registrant. In this panel’s view, there is no legal basis supporting the formal presence of Mr. Carter as a party. See Policy paragraph 4(a). As “owner” of the “Allied Security Services Corp.” business, Mr. Carter may have interest in the outcome of the proceedings, but the record is devoid of any indication that he consented to jurisdiction under the Policy.

Therefore, the Panel rules that the sole Respondent in this proceeding is limited under the UDRP to the registrant of record, Mr. Luu.

The Complaint does not distinguish between the two respondents it names. Since the Panel rules that Mr. Carter is not a respondent, all references to “Respondent” in the Complaint are construed to signify Respondent Mr. Luu.

B. Notification of Proceedings to Respondent

The Policy and the Rules establish procedures to give respondents notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

The Center sent to Respondent by courier notification of these proceedings. The Center used the address from the Registrar’s verification, but the notification was not deliverable to that address. The Center also sent email and fax notifications to contacts provided by the Registrar, but the fax notifications returned delivery errors.

The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.

C. Substantive Rules

The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

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

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

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

These elements must be established even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

D. Identical or Confusingly Similar

The Panel agrees with Complainant that the disputed domain name is confusingly similar to a mark in which Complainant has rights.

Panels usually disregard the generic top-level domain (gTLD) suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-KassekraftfahrenderBeamterDeutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

The disputed domain name <alliedsecurityservicescorp.com> fully includes Complainant’s ALLIED SECURITY mark, adding only the descriptive word “services” and the commonly used abbreviation for the word “corporation.” Disregarding the “.com” suffix, the Panel finds that the addition of the descriptive term “services” and the abbreviation for the common word “corporation” does not alleviate the confusion that arises from Respondent’s complete inclusion of Complainant’s mark.

The Panel finds therefore that the Complaint fulfills the first element of paragraph 4(a) of the Policy.

E. Rights or Legitimate Interests

The Panel also concludes that the circumstances also establish the second element of paragraph 4(a) of the Policy.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(1) the use of the domain name in connection with a bona fide offering of goods and services;

(2) being commonly known by the domain name; or

(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Complainant must establish a record showing a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De AgostiniS.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.

Under the above rules, does Respondent have rights or legitimate interests to use the disputed domain name?

The Complaint does not address the possibility of bona fide use, whether Respondent is commonly known by the disputed domain name, or the question of legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” It is nonetheless necessary to consider these issues under Policy paragraph 4(c), to determine whether the Complaint establishes a prima facie case.⁴

First, lacking any Response, the Panel accepts as true Complainant’s factual allegations that Respondent has no authorization or license to use Complainant’s trademark and that Respondent has no affiliation with Complainant.

The website to which the disputed domain name routes appears to offer security services. Complainant has established trademark rights, and the services on the website at the disputed domain name appear to have no relation to those marks. Therefore, and as further discussed under the third element, the Panel rules there is no bona fide use.

As for whether Respondent is commonly known by the disputed domain name, the evidence on record is scant. First, on the website, the terms “Allied Security” and “Allied Security Services Corp.” are alternatively cited to refer to its business. Another record reference to this business name is the Complaint’s description of telephone conversation with Mr. Carter (without declarations or supporting evidence): Mr. Carter allegedly stated that he was owner of Allied Security Services Corp. The only other source is counsel’s notification letters referring to use of the business name “Allied Security Services Corp.”

The Panel finds in the absence of a Response that these sources are insufficient to establish Respondent’s rights to use the disputed domain name on the ground that Respondent is “commonly known” by the disputed domain name.

Since Respondent’s website expressly offers commercial services, the record also establishes that there is no legitimate noncommercial or fair use.

In sum, the Panel concludes that a prima facie case is established. Filing no response, Respondent has not rebutted that case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.

Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

F. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme ParfumsetBeauté&Cie v. Unasi, Inc, WIPO Case No.D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint and the failure to correct erroneous or outdated contact details with the registrar. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complaint does not address bad faith registration but appears only to address Respondent’s continued use of the disputed domain name after being put on notice by Complainant’s letters. Was Respondent aware of Complainant’s marks before Respondent’s registration? The record does not indicate directly, but the Panel concludes that Respondent was aware, as explained below.

The Complaint appears to be based on the allegation that the ALLIED SECURITY mark is well known.

Since the Complaint provides no proof in support of that contention, the Panel cannot embrace such a conclusion.⁵

Some UDRP panels have ruled that the existence of a federally registered trademark provides constructive notice to Respondents residing in the United States. E.g., WIPO Overview 2.0 (citing cases). In this case, however, the Panel need not follow such a route.

The ALLIED SECURITY mark was used with the gTLD “.com” suffix by Complainant as a domain name promoting security services for many years before Respondent’s registration.⁶ Complainant’s <alliedsecurity.com> domain name and the disputed domain name are so similar that the Panel finds it highly unlikely that Respondent would have been unaware of Complainant’s domain name before registering or acquiring the disputed domain name. As the services offered on the website are in the same field, the Panel also infers that Respondent would have known of Complainant’s large, well-established business and marks, which are all similar to the disputed domain name.

In light of these circumstances, the Panel infers that Respondent registered the disputed domain name intending to trade on the value of Complainant’s trademarks.⁷ Since the Panel finds that Respondent deliberately attempted to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with Complainant’s mark, the Panel rules that Respondent registered the disputed domain name in bad faith.

The Panel views Respondent’s use of the disputed domain name to promote a business in direct competition with Complainant as evidence of use in bad faith. See, e.g., CasioKeisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400.

Finally, the Panel finds that Respondent’s choice to refrain from submitting a response to these proceedings and his failure to maintain accurate contact details with the Registrar are additional evidence of use in bad faith.Telstra Corporation Limited v. Nuclear Marshmallows, supra; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No.D2002-0131; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 (citing The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340).⁸

The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

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 <alliedsecurityservicescorp.com> be transferred to Complainant.

Jeffrey D. Steinhardt
Sole Panelist
Date: March 6, 2013

¹ The Complaint erroneously lists registration number 3,144,421 and provides as a supporting exhibit a copy of the certificate for Complainant’s ALLIED BARTON trademark registration instead of the number and certificate for the ALLIED SECURITY mark. However the Panel has confirmed the United States Patent and Trademark Office registration records for the ALLIED SECURITY mark.

² The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5. Complainant also submitted evidence of the appearance of the website which is consistent with its present appearance on line.