WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal Services of America, LP d/b/a Allied Universal v. George Washere
Case No. D2017-0618
1. The Parties
The Complainant is Universal Services of America, LP d/b/a Allied Universal of Santa Ana, California, United States of America ("US"), represented by Cozen O'Connor, US.
The Respondent is George Washere of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <allieduniversial.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2017. On March 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2017, 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 March 30, 2017, 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 March 31, 2017.
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 April 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2017.
The Center appointed David Stone as the sole panelist in this matter on May 12, 2017. 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 security services company in the US, with 150,000 employees. It is the owner of multiple US registered trademarks, including
- ALLIED UNIVERSAL: US registration number 5136006, filed on May 6, 2016, registered on February 7, 2017 and in use since at least August 1, 2016;
- ALLIED UNIVERSAL (device): US registration number 5136124, filed on May 27, 2016, registered on February 7, 2017 and in use since at least August 1, 2016.
These, and related trade marks, are used by the Complainant in connection with its security, employment and employee services, through both the Complainant and its divisions, for example Allied Universal Security Services, Allied Universal Security Systems, Allied Universal Janitorial Services, and Allied Universal Staffing Services.
The disputed domain name was registered on January 23, 2017.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical to the Complainant's ALLIED UNIVERSAL trade marks but for the inclusion of the additional letter "i", and is therefore confusingly similar to trade marks in which the Complainant has rights. As well as rights deriving from registration, the Complainant asserts significant common law rights in the ALLIED UNIVERSAL marks due to their use, advertising and promotion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. Because the Respondent initially registered the disputed domain name anonymously and supplied no contact information, it could not claim to have been commonly known by the domain name, and registered anonymously to evade the consequences of this. The Complainant further states that the Respondent has used the disputed domain name solely in connection to a commercial link service, or "link farm", that is designed to lure Internet users and divert them to commercial sites unrelated to the Complainant. Such use 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. Lacking provision by the Respondent of any evidence to the contrary, the Complainant claims that these assertions suffice to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Respondent has attempted to take commercial advantage of the Complainant's trademarks and reputation. The website associated with the disputed domain name lacks independent content, and an Internet user who visits it seeking information on the Complainant's products or services will, on following the links it contains, be diverted to third-party commercial sites for services identical to those offered by the Complainant. Furthermore, the disputed domain name is offered for sale both on the associated website and, for a specific sum, in its DomainTools WhoIs record. The asking price is considerably more than the out-of-pocket costs related to registering the disputed domain name. This indicates that the Respondent registered the disputed domain name with the intention of selling it to the Complainant. By the criteria in the Policy, both of these points indicate registration and use in bad faith.
On February 13, 2017 the Complainant sent the Respondent a letter advising the Respondent of the Complainant's rights in the ALLIED UNIVERSAL trademarks and requesting transfer of the disputed domain name to the Complainant. Despite sending a follow-up letter on March 3, 2017, the Complainant has received no response.
Finally, having learned the identity of the Respondent as registered, the Complainant believes that he is the same Respondent who was previously ordered by the Center to transfer the domain name <allidebarton.com> to the Complainant's predecessor company, AlliedBarton Security Services LLC. See AlliedBarton Security Services LLC v. George Washere, WIPO Case No. D2013-1005. On this basis the Complainant asserts that the Respondent has a history of intentionally registering domain names confusingly similar to trade marks owned by the Complainant, and that this is evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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 Complainant has demonstrated that it has rights in ALLIED UNIVERSAL trade marks registered in the US. It also does business under the name Allied Universal. The Panel notes that the disputed domain name, <allieduniversial.com>, was registered before the two trade marks referred to above by the Complainant. However, according to the Trademark Status & Document Retrieval service of the US Patent and Trademark Office, the date of first use in commerce of both trade marks was August 1, 2016, which predates registration of the disputed domain name.
Because the disputed domain name differs from the word "allieduniversal" only by the inclusion of the additional letter "i" after the "s", the Panel finds that it is confusingly similar to the Complainant's ALLIED UNIVERSAL trade marks and that, accordingly, the condition in paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or 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) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent is making use of the website associated with the disputed domain name only as a "link farm", as contended by the Complainant. The website does not have its own substantive content, but contains a number of links that, when followed, produce advertisements for services similar to those provided by the Complainant. Given the confusing similarity between the disputed domain name and the Complainant's trade marks, this does not constitute a bona fide offering of goods or services. See 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; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550. Furthermore, the links are described on the website as "Sponsored Listings". The Panel may infer that this use of the confusingly similar disputed domain name is intended to divert consumers for commercial gain, and that, consequently, the Respondent is not making legitimate use of the disputed domain name. Finally, no evidence has been provided that the Respondent has ever been commonly known by the disputed domain name.
In light of the Respondent's failure to reply to these contentions the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is satisfied and that the Respondent has no rights or legal interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
As averred to in Section 5.B, use of the disputed domain name to host a "link farm" connecting to advertisements for competing goods and services similar to those offered by the Complainant is an indication that the Respondent registered the disputed domain name with the intention of diverting Internet users for commercial gain. This generates advertising revenue, and further evidence of desire for monetary gain comes from the fact that the disputed domain name is being offered for sale at a price, according to the DomainTools WhoIs service on the date of this decision, of USD4,449. This is considerably more than the typical cost of registration. Although the Respondent has not made a direct offer to sell the disputed domain name to the Complainant, the Complainant contends that this is the Respondent's intent.
The Respondent has not provided any evidence of there being a legitimate purpose to the "link farm" associated with the disputed domain name, has not sought to dispel or explain the confusing similarity between the disputed domain name and the Complainant's ALLIED UNIVERSAL trade marks, and has not challenged the Complainant's assertion that registration of the disputed domain name was for the purpose of selling it to the Complainant for a profit. The Panel is therefore satisfied that the registration was done in bad faith according to paragraphs 4(b)(i) and 4(b)(iv).
Finally, the Complainant notes that the registered identity of the Respondent matches that of the respondent in AlliedBarton Security Services LLC v. George Washere, WIPO Case No. D2013-1005, who was found to have registered a domain name in bad faith in breach of the rights of the Complainant's predecessor company, AlliedBarton Security Services LLC. The Respondent has not sought to contradict this, and the Panel therefore infers that he is indeed the same person and finds this further evidence of bad faith in the instant case.
In conclusion, the Panel finds that the condition in paragraph 4(a)(iii) of the Policy is satisfied and that the disputed domain name has been 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 <allieduniversial.com> be transferred to the Complainant.
Date: May 26, 2017