WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal Services of America, LP d/b/a Allied Universal v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundación Comercio Electrónico
Case No. D2019-0156
1. The Parties
The Complainant is Universal Services of America, LP d/b/a Allied Universal of Santa Ana, California, United States of America (“United States or “U.S.”) represented by Cozen O’Connor, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundación Comercio Electrónico of San Francisco, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <allieduniversalservices.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 January 23, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2019, 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 January 30, 2019 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 January 31, 2019.
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 February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019. Due to a technical problem with one of the fax numbers, the Respondent was granted additional time to file a response until March 18, 2019. The Respondent did not submit any formal response.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on March 20, 2019. 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 one of the largest security services company in North America, with more than 150,000 employees.
The Complainant has gained significant common law trademark rights in its ALLIED UNIVERSAL marks, through the use, advertisement and promotion of such marks in connection with the Complainant’s security services.
Besides, the Complainant is the owner of the following trademark registrations registered with the United States Patent and Trademark Office (“USPTO”):
U.S. Reg. No. 5,136,006 for the ALLIED UNIVERSAL trademark, filed on May 6, 2016 and registered on February 7, 2017.
U.S. Reg. No. 5,136,124 for the “ALLIEDUNIVERSAL & Design” trademark, filed on May 6, 2016 and registered on February 7, 2017.
The disputed domain name <allieduniversalservices.com> was registered on August 23, 2018. The disputed domain name resolves to a parking page with pay-per-click links that provides a number of links related to security services.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name incorporates Complainant’s federally registered ALLIED UNIVERSAL trademark. Therefore, the <allieduniversalservices.com> is confusingly similar to the ALLIED UNIVERSAL Trademarks in which Complainant has established rights.
With regard to the second element, the Complainant contends that the Respondent is not an affiliate and neither the Respondent is commonly known as “allieduniversalservices”.
The Respondent is using the disputed domain name as a “link farm,” which is not a bona fide offering of goods or services, nor is capable of giving rise to a right or legitimate interest in the disputed domain name <allieduniversalservices.com>. Such a use does not confer rights or legitimate interests to use the disputed domain name. Further, the registration of the disputed domain name was concealed by a proxy service in an attempt to evade the consequences of registering a domain name for which the Respondent has no rights or legitimate interests.
Finally, and with respect the third element, the Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant shows that the Respondent has been a respondent in numerous adverse UDRP decisions over the last several years. As such, International Business Machines Corporation v. Domains By Proxy, LCC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2657, John Middleton Co. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2600, The Commissioners for HM Revenue and Customs v. Domains By Proxy, LLC DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2348, The British United Provident Association Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1755. Accordingly, the Respondent’s pattern of past cybersquatting suggests bad faith in the instant case.
The Respondent is using the disputed domain name in connection with a link farm with links to services similar or identical to those offered by the Complainant. This use is likely to give rise to confusion as to an association, affiliation, or sponsorship between the Complainant and the Respondent, and is further evidence of bad faith pursuant to the Policy, Paragraph 4(b)(iv).
On October 29, 2018, the Complainant sent a cease and desist letter with an offer of transfer of the disputed domain name. However, the Respondent did no reply. The Respondent’s lack of answer is an evidence of bad faith registration and use.
Upon the above the Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its common law and USPTO trademarks registration upon the ALLIED UNIVERSAL trademark.
The Complainant’s mark ALLIED UNIVERSAL is completely reproduced and recognizable in the disputed domain name “allieduniversalservices”. The addition of the term “services” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Further, it is well established in decisions under the UDRP that generic Top-Level Domains (“gTLDs”) are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Accordingly, the first requirement is met under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In relation to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. As such, the Respondent is not an affiliate of the Complainant nor has been commonly known by the name “allied universal”.
Besides it is apparent for the Panel that the Respondent has not been authorized to use the Complainant’s ALLIED UNIVERSAL trademark to promote competitor’s services. Indeed, the Panel notes that the Oki Data Test (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) is to be applied for a finding of lack of rights or legitimate interests. Amongst other requirements, the Respondent is promoting competitor’s services through the PPC. In addition, the Panel notes section 2.8.2 of the WIPO Overview 3.0 stating that: “Panels have found that PPC websites do not automatically meet the OKI Data requirements as they do not themselves directly offer the goods or services at issue“.
Further, the disputed domain name composition effectively impersonates or falsely suggest sponsorship or endorsement by the Complainant. The Panel refers to the WIPO Overview 3.0 section 2.5 which states that “Fundamentally, a respondent’s use of a domain name will not be considered fair if it falsely suggests affiliation with the trademark owner”.
While the Respondent has failed to respond the complaint, the prima facie case has not been rebutted. Under these circumstances the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy.
C. Registered and Used in Bad Faith
As set out at paragraph 4(a)(iii) of the Policy the Complainant is required to show that the Respondent both registered and is using the disputed domain name in bad faith.
As it results from the case file, the Respondent has been engaged in a pattern of cybersquatting conduct giving rise on bad faith registration and use. The previous UDRP cases were the Respondent was involved back this finding.
Additionally, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. As noted previously the nature of the disputed domain name suggests sponsorship or endorsement by the Complainant. Under these circumstances the Panel looks at Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753 where the learned Panel stated: “By creating a PPC parking website that featured PPC links to the Complainants’ competitors, the Respondent similarly used the domain name in bad faith. The purpose of this PPC parking website clearly was to attract Internet users to the site, for profit, based on their confusing the Respondent’s domain name and/or website with the Complainants and/or their website”. And this is what occurs in the present case where everything evidences that the Respondent foresaw a profit from the PPC and the disputed domain name.
Upon the above mentioned, the Complainant has established the third element of the Policy.
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 <allieduniversalservices.com> be transferred to the Complainant.
Date: March 28, 2019