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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Securitas AB v. Private by Design, LLC / John Dilback

Case No. D2020-2245

1. The Parties

The Complainant is Securitas AB, Sweden, represented by SILKA AB, Sweden.

The Respondent is Private by Design, LLC, United States of America (“United States”) / John Dilback, United States.

2. The Domain Name and Registrar

The disputed domain name <securitaslnc.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2020. On August 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2020, 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 August 31, 2020 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 amendment to the Complaint on September 2, 2020.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2020.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on October 8, 2020. 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 Securitas AB, is a Swedish joint stock company created in 1937, with leading global market presence. The Complainant operates in over 56 countries. The Complainant is worldwide known for its security solutions, including mobile and remote guarding electronic security, fire and safety, and corporate risk management.

The Complainant has over 370.000 employees throughout the world and has operations in Europe, North and South America, Africa, the Middle East and in Asia.

The Complainant owns several registrations and applications for the SECURITAS trademark, as well as for domain names incorporating “SECURITAS”, covering a wide range of services. Proofs of these registrations, all predating the registration of the disputed domain name, were duly produced in the Complaint in Annex 4.

The Complainant also owns a wide number of domain names bearing the mark SECURITAS under the available generic Top-Level Domains (gTLDs), as well as country code Top-Level Domains (ccTLD’s), among which is worth mentioning <securitasinc.com>.

The disputed domain name was registered on July 7, 2020. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <securitaslnc.com> is confusingly similar to the Complainant’s marks registered and used worldwide. In fact, the only distinctive word integrating the disputed domain name is “SECURITAS”, which is identical to the Complainant’s registered mark, the remaining elements being three letters with no signification.

Nevertheless, the combination of three letters chosen by the Respondent to compose the disputed domain name together with “SECURITAS” is “LNC” but in lower caps – which results in “lnc”, leading to a domain name that is virtually identical to the one owned by the Complainant and which is related to the Complainant’s activities. The descriptive terms do not negate the confusing similarity between the disputed domain name and the Complainant’s trademark. On the contrary, they lead to confusion, given the presence of the Complainant’s mark.

The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark associated with the letters LNC – show a clear intention of misleading Internet users, as these letters, in lower caps, read “lnc”, quite close to “inc”, whereas the Complainant owns the domain name <securitasinc.com>.

The disputed domain name does not direct to an active website, but has apparently been used at least once in a fraudulent attempt to obtain gain from a customer, by pretending to represent the Complainant. The Complainant presents evidence of this correspondence in Annex 5.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:

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

(ii) the 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.

A. Identical or Confusingly Similar

The disputed domain name <securitaslnc.com> is, indeed, confusingly similar to the SECURITAS trademark, as the latter is entirely incorporated in the disputed domain name.

The Complainant has presented consistent evidence of ownership of the trademark SECURITAS in jurisdictions throughout the world, by presenting several registrations for it, as well as comprehensive evidence of the use of the trademark.

The use of the trademark with the addition of the letters “lnc” in the disputed domain name does not prevent a finding of confusing similarity with the trademark.

Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

Given the clear evidence that the trademark SECURITAS is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent, the Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.

The use of the disputed domain name is intentionally misleading for consumers – the attempt to contact a customer from the Complainant, trying to benefit from the disputed domain name to obtain undue benefit is clear evidence of that. Such use to attempt impersonation of the Complainant can never confer rights or legitimate interests on the Respondent.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Given the circumstances of this case, the facts outlined in sections A and B above can evidence the Respondent’s bad faith in the registration and use of the disputed domain name.

The disputed domain name was registered to clearly mislead the consumers – hence the adoption of the letters “lnc”, confusingly similar to “inc”, in addition to the trademark SECURITAS reproduced in its entirety.

The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name seems to be making use of the Complainant’s renowned trademark for unlawful purposes – concrete evidence of an attempt was presented.

The fact that the disputed domain name does not resolve to an active website does not prevent a finding of bad faith from the Respondent.

The Panel, thus, finds for the Complainant under the third element 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, <securitaslnc.com> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: October 26, 2020

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