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 Respondents are Janice Liburd and Moniker Privacy Services, LLC of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2010. On December 21, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 21, 2010, Moniker Online Services, LLC 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 December 22, 2010, 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 December 23, 2010.
The WhoIs research services consulted by the Complainant revealed that the identity of the underlying registrant was shielded by the Registrar Moniker Online Services, LLC. The identity of the underlying registrant, Janice Liburd, was disclosed by the Registrar to the Center. It has been held in a number of cases, where the name of a privacy services firm has been used as a shield of the registrant’s identity, that both the holder’s name involving the privacy services provider and the name of the registrant communicated to the Center by the Registrar may be properly identified as respondents. In the present case, both the name of the privacy services provided, Moniker Online Services, LLC and the name Janice Liburd identified by the Registrar as the registrant, are referred to collectively as the “Respondent”, in the singular, in the balance of this decision. See Kira Reed Lorsch v. K c/o Host Master, A Domain Privacy and the Transure Enterprise Ltd.,WIPO Case No. D2010-0850.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2011.
The Center appointed Joan Clark as the sole panelist in this matter on January 24, 2011. 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 asserts ownership of the trademarks ALLIEDBARTON and ALLIEDBARTON EDGE, and several other trademarks including the words “alliedbarton” or “alliedbarton edge”. The earliest registration for ALLIEDBARTON, United States (“U.S.”) Trademark Registration No. 3,144,421 relied upon by the Complainant was on September 19, 2006 with use dating back to September 4, 2004. The earliest registration for ALLIEDBARTON EDGE, US Trademark Registration No. 3,728,360 was on December 22, 2009 with use dating back to February 9, 2009.
The disputed domain name was registered on October 18, 2010 with an expiration date of October 18, 2011. 5. Parties’ Contentions A. Complainant
The Complainant states that it is the largest American-owned security officer services company, which was established in 1957, and that one of the main components of the Complainant’s business includes the provision of security services in connection with its family of ALLIEDBARTON marks. The Complainant asserts that its well-known family of ALLIEDBARTON marks has achieved significant recognition in the marketplace in connection with the Complainant’s services.
The Complainant states that it has gained significant common law trademark and other rights in its family of ALLIEDBARTON marks, including ALLIEDBARTON EDGE and other related marks, through their use, advertising and promotion.
The Complainant states that it has used its family of ALLIEDBARTON marks, including ALLIEDBARTON EDGE and other related marks, long before the Respondent registered the domain name in dispute on October 18, 2010. The Complainant maintains that there can be little question that the Respondent acquired the disputed domain name with full knowledge of and the attempt to trade off of the Complainant’s preexisting rights. The Complainant states that it clearly has rights in the ALLIEDBARTON EDGE mark which is fully incorporated in the disputed domain name .
The Complainant maintains that the Respondent has no legitimate interest in respect of the disputed domain name, that it is not affiliated with the Complainant and that it has anonymously registered the disputed domain name in an effort to evade the consequences of registering a domain name in which the Respondent has no rights or legitimate interest.
The Complainant notes that since the Respondent anonymously registered the disputed domain name and has not provided any contact information on its website, the Respondent cannot claim to have been commonly known by the domain name or similar name related thereto. The Complainant argues that the Respondent solely has used the disputed domain name in connection with a commercial link service, known as a “link farm”, which is not a bona fide offering of goods or services giving rise to a right or legitimate interest in the disputed domain name.
The Complainant further asserts that the Respondent’s adoption and use of the disputed domain name was and is in bad faith, that it has continued with full knowledge of the Complainant’s prior rights given the affirmative notice provided to the Respondent by the Complainant, and is in willful infringement of the Complainant’s prior rights.
The Complainant states that an Internet user seeking the Complainant’s products or services, who types in the disputed domain name that is registered to the Respondent, is directed to a website that lacks any independent content of its own, but rather displays links to third-party commercial sites that include similar services to those offered by the Complainant under its ALLIEDBARTON and ALLIEDBARTON EDGE marks. The Complainant continues that the Respondent’s use of the disputed domain name is likely to give rise to confusion as to an association, affiliation or sponsorship between the Complainant and the Respondent.
The Complainant concludes with a request that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but which are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the trademarks ALLIEDBARTON and ALLIEDBARTON EDGE. The addition of the word “my” as a prefix to the unusual combination of “allied”, “barton” and “edge” does not avoid confusion with the Complainant’s trademarks, each of which is exactly and totally incorporated in the disputed domain name .
The trademark ALLIEDBARTON EDGE, relied upon by the Complainant, is registered in its name, according to the certificate of U.S. Registration provided with the Complaint. The trademark ALLIEDBARTON, also relied upon by the Complainant and having an earlier date of registration and use, was registered in the name of “Allied Security LLC”, a different name from that of the Complainant, according to the certificate of registration produced by the Complainant. Nevertheless, the registration certificate for ALLIED BARTON EDGE bears the notation that the owner of that mark is also the owner of U.S Trademark Registration No. 3,144,421, which is the registration number for ALLIEDBARTON. Therefore the Panel accepts on the uncontroverted record that the Complainant is the current owner of the trademark ALLIEDBARTON, presumably as successor in title to the previously registered owner.
The Panel finds that the disputed domain name is confusingly similar to the trademarks ALLIEDBARTON and ALLIEDBARTON EDGE in which the Complainant has rights, and the first element required for the Complaint to succeed has been established. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no indication in the record that the Respondent was previously known by the domain name. Further, there is no indication that the Respondent has made a bona fide offering of sales or services in connection with the disputed domain name nor is there indication that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
In the absence of any response from the Respondent to rebut the charges made by the Complainant, and in view of the evidence adduced by the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element required for the Complaint to succeed has been established. C. Registered and Used in Bad Faith
In the absence of any explanation from the Respondent, and in view of the incorporation into the disputed domain name of the exact and unusual trademark of the Complainant, ALLIEDBARTON EDGE, the Panel finds that the Respondent’s registration of the disputed domain name was in bad faith. It is inconceivable to the Panel that the Respondent picked the distinctive part of the disputed domain name out of the blue without prior knowledge of and a desire to benefit from association with the Complainant’s trademark ALLIEDBARTON EDGE.
According to statements made by the Complainant, the Respondent has used the website located at the disputed domain name in connection with links to third-party commercial sites that include services similar to those offered by the Complainant under its trademarks ALLIEDBARTON and ALLIEDBARTON EDGE. The Panel therefore finds that the Respondent has intentionally attempted to use the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. The Panel is justified in assuming that this activity on the part of the Respondent was for commercial gain, there being no other explanation apparent to the Panel for the adoption by the Respondent of a confusing domain name and the use of its corresponding website as links to third-party commercial sites.
The Panel finds that the domain name in dispute was registered in bad faith and has been used in bad faith.
Accordingly, the third element required for the Complaint to succeed has been established. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Joan Clark
Sole Panelist
Dated: February 7, 2011
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