WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Able Security Locksmiths Inc. v. Shai Levi, All Door Services, Inc.
Case No. D2015-1725
1. The Parties
The Complainant is Able Security Locksmiths Inc. of Kenvil, New Jersey, United States of America ("United States" or "U.S."), represented by The Ingber Law Firm, LLP, United States.
The Respondent is Shai Levi, All Door Services, Inc. of Willingboro, New Jersey, United States, represented by an internal representative.
2. The Domain Name and Registrar
The disputed domain name <ablesecuritylocksmith.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2015. On September 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 2, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2015. The Response was filed with the Center on October 29, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on November 18, 2015. 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, located in Kenvil, New Jersey, is a provider of commercial and residential locksmith services. The Complainant operates under the trade name "Able Security Locksmiths", and maintains a website at "www.ablesecuritylocksmiths.com". The Complainant registered ABLE SECURITY LOCKSMITHS as a trademark with the State of New Jersey on March, 18, 2014, and asserts common law rights in the mark based on use in commerce in New Jersey since as early as 1999.
The Respondent is the registrant of the disputed domain name <ablesecuritylocksmith.com> according to the concerned Registrar's WhoIs database. The Respondent's physical address according to the WhoIs records is in Willingboro, New Jersey. Prior WhoIs registrant information provided by the Complainant reflects that as recently as June 17, 2015, the registrant was Jose Gonzales, Able Security Locksmith, located in Randolph, New Jersey. The Respondent, however, maintains that he registered the disputed domain name in early 2013, a year before the Complainant registered ABLE SECURITY LOCKSMITHS as a New Jersey trademark in March 2014.
A screen shot of the website to which the disputed domain name resolves was captured by the Complainant on June 17, 2015 (the "June 2015 screen shot"). The website reflects that "Able Security Locksmith" is located in Randolph, New Jersey, and identifies Jose Gonzales (the previous WhoIs registrant) as the "Locksmith". The website to which the disputed domain name presently resolves bears a strong resemblance to the website depicted in the June 2015 screen shot. Other than the substitution of "Tampa Locksmith 33602" for "Randolph Locksmith 07869" (and phone numbers with different area codes), the content of the Respondent's current website essentially is identical to that of the earlier website. The current website also continues to show Jose Gonzales as the "Locksmith" of "Able Security Locksmith".
5. Parties' Contentions
A. Complainant
The Complainant submits that it has established trademark rights in ABLE SECURITY LOCKSMITHS based on common law use and registration of the mark with the State of New Jersey. According to the Complainant, the disputed domain name is identical or confusingly similar to the Complainant's mark, differing only by the deletion of the second "s" in "Locksmiths".
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complaint asserts that the Respondent is a "locksmith scammer" who victimizes customers – part of a growing nationwide issue. The Complainant submits as an annex to the Complaint a Facebook page where comments have been posted stating that the Respondent's website is a scam. The Complainant asserts the Respondent's website is "strikingly similar" to the Complainant's website, and that the sole reason the Respondent registered the disputed domain name was to create confusion in the minds of consumers for the Respondent's commercial gain.
Based on all of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent has intentionally attempted to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, and endorsement of the Respondent's website. The Complainant further contends that the Respondent has concealed his true identity in order to exploit and profit from the Complainant's rights in the ABLE SECURITY LOCKSMITHS mark.
B. Respondent
The Respondent asserts that the disputed domain name was registered in good faith, and objects to the entirety of the proceedings herein. The Respondent submits that while the disputed domain name is similar, this does not give the Complainant the right to a transfer of the disputed domain name. According to the Respondent, his website is very different from the Complainant's website and there is no confusion between the two. The Respondent observes that the Complainant could have registered the disputed domain name but did not do so.
The Respondent asserts that he first registered the disputed domain name in 2013, and began using the disputed domain name prior to the Complainant's application to obtain a New Jersey trademark registration for ABLE SECURITY LOCKSMITHS. The Respondent observes that the Complainant has asserted inconsistent first use dates for the first use of the mark, and that the registration is for a trademark classification that has nothing to do with locksmiths. The Respondent further submits that the Complainant's business status in New Jersey currently is revoked, which according to the Respondent means that the Complainant may not conduct business in that state, constituting a "break in the use" of the mark. The Respondent also asserts that in any event the Complainant's alleged trademark rights extend only to the New Jersey localities where the Complainant is.
The Respondent maintains that there are a number of companies in the United States using the name "Able Locksmith" and that the Complainant on its New Jersey trademark application lied when claiming not to be aware of any, given that the Complainant already knew of the Respondent's use of "Able Security Locksmith." The Respondent further contends that the Complainant is attempting to steal the disputed domain name, and denies that its website at "www.ablesecuritylocksmith.com" has anything to do with "spammers" mentioned in the Complaint, and that the Complainant's assertion to the contrary is slanderous. The Respondent observes that the complaints posted on the Facebook page were made by the Complainant and a former employee of the Complainant.
Finally, the Respondent asserts that he is operating a legitimate online business in which locksmith jobs are subcontracted to locally licensed locksmiths. The Respondent submits that online business such as his are not restricted to a specific location, and can be moved to different states where the Complainant does not have trademark rights. The Respondent states that he will be moving the address to Florida and that his website is now pointing to Tampa, Florida, a location where he submits the Complainant has no legal rights. This, according to the Respondent, will resolve any "confusion" that might exist.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a 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, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark rights in ABLE SECURITY LOCKSMITHS for purposes of paragraph 4(a)(i) of the Policy. The term "trademark or service mark" as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers' Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
The Complainant has registered ABLE SECURITY LOCKSMITHS as a trademark with the State of New Jersey, but does not hold a United States registration for the mark. Further, the mark appears to the Panel to be to some degree descriptive of the services offered by the Complainant. Nevertheless, the record reflects the Complainant's continuous and substantially exclusive use of ABLE SECURITY LOCK in the geographic area served by the Complainant for at least fifteen (15) years, with advertising on the Internet, in local media, and on Angie's List. The Panel finds that the Complainant has sufficiently demonstrated common law rights under U.S. law in the geographic area served by the Complainant. That is to say, the Complainant's use of the ABLE SECURITY LOCKSMITHS mark has been such that the relevant segment of the public recognizes it as a symbol that distinguishes the Complainant's goods and services from those of others. See United Drug Company v. Theodore Rectanus Company, 248 U.S. 90 (1918).1
The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the Complainant's mark, differing only by the omission of the final "s" in the Complainant's mark. This omission does not serve to distinguish the disputed domain name from the Complainant's mark.
Although the Top-Level Domain ("TLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is confusingly similar if not virtually identical to the Complainant's mark, which the Respondent has used to offer locksmith services directly competing with the Complainant in the same geographic area served by the Complainant. This is strongly indicative of the Respondent's passing off of his services as those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent claims to have first registered the disputed domain name in early 2013. This suggests that the Respondent and the prior WhoIs registrant, Jose Gonzales, are likely one and the same person. In any event, by the Respondent's own admission he has exercised control of the disputed domain name dating back to 2013. Based on the totality of circumstances reflected in the record, the Panel considers it more likely than not that the Respondent had the Complainant's ABLE SECURITY LOCKSMITHS mark in mind when registering the disputed domain name. The Respondent has used the disputed domain name, which is virtually identical to the Complainant's mark, to offer locksmith services in the geographic area served by the Complainant. This strongly evinces the Respondent's intent to pass off such services as those of the Complainant.
The foregoing does not constitute use or preparations to use of the disputed domain name by the Respondent with a bona fide offering of goods or services. Nor does such male fide use qualify as a legitimate noncommercial or fair use of the disputed domain name, or support any claim by the Respondent that he has been commonly known by the disputed domain name. The Respondent's purported redirection of his website to Tampa, Florida, subsequent to the filing of the Complaint, does not support a claim of rights or legitimate interests in the disputed domain name. The Respondent's assertion that he merely subcontracts work to local licensed locksmiths, also first asserted after the filing of the Complainant, is completely unsupported in the record.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant's mark in mind when registering the disputed domain name. The record convincingly demonstrates that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights, by intentionally creating a likelihood of confusion with the Complainant's mark as to sponsorship, endorsement or affiliation with the Respondent's website and the services offered thereon. In view of all of the foregoing, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <ablesecuritylocksmith.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 2, 2015
1 The Panel further notes that common law protection generally is recognized in connection with the tort of passing off. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.7 (UDRP affords protection in civil law jurisdictions equivalent to trademark protection under the tort of passing off).
2 See WIPO Overview 2.0, paragraph 1.2.