WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlliedBarton Security Services LLC v. Domain Administrator / Zhichao Yang
Case No. D2015-1991
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 Domain Administrator of Phoenix, Arizona, United States of America / Zhichao Yang, of Anhui, China.
2. The Domain Names and Registrar
The disputed domain names <accessalliebarton.com> and <accessalliedburton.com> are registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2015. On November 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 2015 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 November 11, 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 November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2015.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on December 10, 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 is the largest American-managed security company, stablished in 1957.
The Complainant owns a family of registered ALLIEDBARTON trademarks since at least September 19, 2006, including ALLIEDBARTON and ALLIEDBARTON SECURITY SERVICES, all of them of high reputation and recognition.
The Complainant also owns several domain names that comprise the trademark ALLIEDBARTON in its entirety. Currently the Complainant uses the domain name <access.alliedbarton.com> for its employees to access information, requesting its user ID and a password to log in the Complainants website. The Complainant registered this domain name <access.alliedbarton.com> on July 24, 2004.
Also, on July 21, 2011, the Complainant registered the domain name <accessalliedbarton.com>. On its research, the Panelist found that currently this domain name does not display any content on the Internet.
The Respondent registered both disputed domain names on August 6, 2015.
Both disputed domain names are connected to "link farms", directing Internet users to other websites links.
In 2013, the same Respondent, Zhichao Yang, of Anhui, China, was the subject of another UDRP proceeding, AlliedBarton Security Services LLC v. Zhichao Yang, WIPO Case No. D2013-0839. In that case, the panel ordered the three disputed domain names to be transferred to the Complainant.
5. Parties' Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain names are confusingly similar to the ALLIEDBARTON trademark, which is owned by the Complainant. The ALLIEDBARTON trademark has achieved significant recognition in the marketplace in connection with the Complainant's services and both disputed domain names fully incorporate the Complainant's registered ALLIEDBARTON marks with the exception of one letter. The Complainant further argues that it owns the <accessalliedbarton.com> domain name, registered on July 24, 2011, used by the Complainant in connection with its website for its employees to "access" information. Both disputed domain names are identical to this previous domain name, owned by the Complainant, except for one letter. Additionally, this similarity is likely to give rise to confusion as to an association, affiliation or sponsorship between the Complainant and the Respondent.
2. The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant states that the Respondent is not affiliated with the Complainant in any manner and the Complainant argues that there is no evidence of legitimate interests or for the bona fide offering of legitimate goods or services. Additionally, the fact that the Respondent connected both disputed domain names to websites in which Internet users are lured and diverted to other commercial sites does not confer rights or legitimate interests to the disputed domain names.
3. The Respondent has registered and is using the disputed domain names in bad faith. Both disputed domain names direct Internet users to third-party commercial sites, some of them including similar services to those offered by the Complainant under the ALLIEDBARTON trademarks. This suggests an attempt to take commercial advantage of the Complainant's trademarks and commercial reputation. Additionally, the Complainant notified the Respondent twice and there was no reply and finally, it turned out that the Respondent had been the subject of a previous proceeding relating to three domain names comprising the ALLIEDBARTON trademarks, which strongly suggests the clear intention of registering several domain names confusingly similar to the Complainant's ALLIEDBARTON trademarks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name". Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The Complainant is the owner of the family of ALLIEDBARTON trademarks and is also the owner of several domain names that comprise the trademark ALLIEDBARTON in its entirety, including <access.alliedbarton.com> and <accessalliedbarton.com>, used specifically for the Complainant's employees.
The disputed domain names <accessalliebarton.com> and <accessalliedburton.com> incorporate the trademark ALLIEDBARTON in its entirety except for on letter: the disputed domain name <accessalliebarton.com> misses the letter "d" and the disputed domain name <accessalliedburton.com> swaps the letter "a" for the letter "u". Moreover, both disputed domain names also incorporate the term "access", added to the trademark ALLIEDBARTON, identical to the Complainant's domain names.
As noticed on the previous UDRP decision held against the same Respondent, AlliedBarton Security Services LLC v. Zhichao Yang, supra, the panel stated that "These small differences are insufficient to distinguish the disputed domain names from the Complainant's trademarks."
The Panel agrees with this view and finds that the disputed domain names are confusingly similar to the Complainant's trademarks.
B. Rights or Legitimate Interests
In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name to the panel.
In this case, the Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the facts that not only the Complainant has not given the Respondent permission to use its trademarks in any manner, nor the Respondent replied to the Complainant's contentions to demonstrate its rights or legitimate interests.
In the absence of a response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Respondent was the subject of a previous proceeding against him, also for the use of domain names that were misspellings of the same Complainant's ALLIEDBARTON trademarks. The Panel decided that the domain names under dispute in those proceedings were to be transferred to the Complainant. The Panel finds that this fact is further indicia that the Respondent was aware of the Complainant's rights in the ALLIEDBARTON trademarks at the time of the registration of the disputed domain names.
As well noted by AlliedBarton Security Services LLC v. Zhichao Yang, supra, "The most plausible explanation to such variations [between the trademark and the registered disputed domain names spelling] seems to be related to the Respondent's intention to create customer confusion and diversion by misleading Internet users who mistype the proper spelling of the Complainant's marks."
The Panel agrees with this view and accepts that the disputed domain names were registered and are currently being used in bad faith.
Therefore, the Panel finds that the third element of the Policy has been satisfied.
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 names, <accessalliebarton.com> and <accessalliedburton.com>, be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: December 23, 2015