WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlliedBarton Security Services LLC v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com; Domain Admin, PrivacyProtect.org / Online Management; ICS INC.
Case No. D2014-0036
1. The Parties
Complainant is AlliedBarton Security Services LLC of United States of America, represented by Cozen O’Connor, United States of America.
Respondent are Registration Private, Domains By Proxy, LLC, DomainsByProxy.com; Domain Admin, PrivacyProtect.org / Online Management; ICS INC. of Scottsdale, Arizona, United States of America; Nobby Beach, Queensland, Australia / Grand Cayman, Cayman Islands, Overseas Territories of the United Kingdom of Great Britain and Northern Ireland (“Respondent”).
2. The Domain Names and Registrars
The disputed domain names <myaaliedbarton.com> and <myalliedbartion.com>(the “Domain Names”) are registered with GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2014. On January 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 13, 2014 and January 24, 2014, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 24, 2014, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 30, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 21, 2014.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 28, 2014. 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 following facts are undisputed.
Complainant, AlliedBarton Security Services LLC, is the largest American-owned security officer services company, which was established in 1957. One of the main components of Complainant’s business includes the provision of security services and operates under “www.myalliedbarton.com”.
The Complainant has obtained the following registrations with the United States Patent and Trademark Office:
- ALLIEDBARTON (& Design) (United States Registration No. 3,144,420) registered September 19, 2006;
- ALLIEDBARTON (United States Registration No. 3,144,421), registered September 19, 2006;
- ALLIEDBARTON SECURITY SERVICES (United States Registration No. 3,152,959), registered October 10, 2006; and
- ALLIEDBARTON SECURITY SERVICES (& Design) (United States Registration No. 3,223,891), registered April 3, 2007.
The Domain Names were registered on October 6, 2013.
5. Parties’ Contentions
Insofar as relevant, Complainant contends the following:
The Domain Names incorporate the Trademarks or a sign that is confusingly similar to one of the Trademarks. The Domain Names incorporate one of Complainant’s Trademarks, displaying all but one of the identical characters in the same chronological order.
Respondent is not affiliated with Complainant, and there is no evidence to suggest that Respondent has registered the Domain Names to advance legitimate interest or for the bona fide offering of legitimate goods or services. Respondent has anonymously registered the Domain Names in an effort to evade the consequences of registering a domain name for which it has no rights or legitimate interest.
Respondent has used the Domain Names in connection with a commercial link service, known as a “link farm”, which is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the Domain Names. Furthermore, use of the Domain Names in connection with a commercial link service, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant’s trademark, does not confer a legitimate right to or interest in a domain name.
Respondent’ adoption and use of the Domain Names is in bad faith and has continued with full knowledge of Complainant’s prior rights given the affirmative notice provided by Complainant, and is an infringement of Complainant’s prior rights. Respondent has attempted to take commercial advantage of Complainant’s Trademarks and commercial reputation and to trade off Complainant’s goodwill.
Respondent’ use of the Domain Names is likely to give rise to confusion as to an association, affiliation, or sponsorship between Complainant and the Respondent.
Complainant sent several letters notifying Respondent of Complainant’s rights and requesting Respondent to transfer the Domain Names to Complainant. Respondent has ignored Complainant’s correspondences. Accordingly, Respondent has been intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Trademarks.
Respondent is the same as the respondent that was recently ordered by a UDRP decision to transfer the domain name <myalliedbarton.org> to Complainant. Respondent was further recently ordered by a UDRP decision to transfer the domain names <myaliedbarton.com>, <myaliiedbarton.com> and <aliedbartonedge.com>. It is therefore clear that Respondent is a serial cyber-pirate and typosquatters who has intentionally registered several domain names confusingly similar to Complainant’s Trademarks, including the Domain Names, in an attempt to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with the Trademarks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements:
(i) the Domain Names registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names registered by Respondent has been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names incorporate Complainant’s ALLIED BARTON trademarks in its entirety. The Panel finds that regardless of some minor differences, such as the prefix “my” or the difference of one letter, ALLIED BARTON is the dominant element in the Domain Names. The addition or exclusion of descriptive or non-distinctive terms does not avoid the confusing similarity of the Domain Names to the ALLIED BARTON Trademark.
In Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828, the panel found that the mere addition of one letter can be defined as a case of “typosquatting”, namely a conduct that aims at reaching Internet users that would misspell the name of a certain domain name […]. If it was not for the adjunction of the letter “t”, the domain name would be identical to the complainant’s trademark.
Moreover, the Panel also takes into account that Internet users considering the Domain Names without awareness of its content may believe that the Domain Names are in some way connected and associated with Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
Finally, with regards to the suffix “.com” (which indicates that the Domain Names are registered under the generic Top-Level Domain, “gTLD”, “.com”), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar to a trademark; indeed, the suffix is a necessary component of the domain name and generally does not give any distinctiveness.
Thus, the Panel finds that the Domain Names are confusingly similar to Complainant’s ALLIED BARTON trademark.
For all the foregoing reasons, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
B. Rights or Legitimate Interests
Respondent did not reply to Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by Complainant. In particular, Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has rights or legitimate interests in the Domain Names, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Trademark or service mark at issue.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Names.
Complainant made a prima facie case that Respondent is not affiliated with Complainant, that it has not been commonly known by the Domain Names, and that that Respondent does not have any rights or legitimate interest in the Domain Names.
Finally, given the circumstances of this case, the Panel finds that Respondent’s lack of rights or legitimate interests in the Domain Names may further be inferred by the fact that no Response was filed by the Respondent. According to previous UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Names were registered and are being used in bad faith.
In light of the evidence filed by Complainant and the absence of a reply, the Panel considers that Complainant’s Trademarks and activities are well-known. Accordingly, in the Panel’s view, Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Names. A further indication that Respondent must have been aware of the existence of “AlliedBarton Security Services” when Respondent registered the Domain Names, is that the websites at the disputed domain names linked to third party commercial sites such as “Terremark Data Security” and “Security Jobs - Hiring”. Therefore, the Domain Names are designed to attract Internet users who are looking for Complainant’s services. It also causes confusion with the Complainant’s Trademarks and websites. Finally, the Domain Names are likely to disrupt the Complainant’s business by diverting consumers away from Complainant’s website.
Respondent’s websites posted under the Domain Names features sponsored links, indicating that Respondent generates revenue through a pay-per-click system.See Asian World Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Although the lack of a reply by Respondent, as such cannot by itself lead to the conclusion that there is bad faith, the Panel finds that this further evidences Respondent’s bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and are 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 Domain Names <myaaliedbarton.com> and <myalliedbartion.com> be transferred to Complainant.
Willem J. H. Leppink
Date: March 14, 2014