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 Respondent is Customer 0131242686 Contact Privacy Inc. of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 6, 2012, 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 August 7, 2012.
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 August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2012.
The Center appointed James Bridgeman as the sole panelist in this matter on September 5, 2012. 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 a large American-owned security officer services company, which was established in 1957.
The Complainant uses the service mark ALLIEDBARTON and other associated marks incorporating ALLIEDBARTON including ALLIEDBARTON EDGE in connection with provision of security services.
The Complainant owns and has rights in the following United States (“U.S.”) registered trademarks:
U.S. Registration No. 3,144,421 for the ALLIEDBARTON mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, registered on September 19, 2006.
U.S. Registration No. 3,728,360 for the ALLIEDBARTON EDGE mark for “Educational services, namely, conducting classes, seminars, conferences, workshops, and podcasts in the field of security guard training and proper surveillance and distributing course materials in connection therewith; providing on-line training classes, courses, seminars, workshops, and podcasts in the field of security guard training and proper surveillance and distributing course materials in connection therewith; training services in the field of security guard and proper surveillance in connection therewith” in International Class 41, and for “Security services in the nature of security guard services; security consulting services, namely, evaluating and assessing on-site security programs for others; providing property surveillance services, namely, monitoring security systems and security guarding for facilities; security protective services, namely, providing executive protection, personal security consultation, and personal body guarding” in International Class 45, registered on December 22, 2009.
U.S. Registration No. 3,751,627 for the ALLIEDBARTON EDGE EDUCATE DEVELOP GROW ENGAGE mark for “Educational services, namely, conducting classes, seminars, conferences, workshops, and podcasts in the field of security guard training and proper surveillance and distributing course materials in connection therewith; providing on-line training classes, courses, seminars, workshops, and podcasts in the field of security guard training and proper surveillance and distributing course materials in connection therewith; training services in the field of security guard and proper surveillance in connection therewith” in International Class 41, and for “Security services in the nature of security guard services; security consulting services, namely, evaluating and assessing on-site security programs for others; providing property surveillance services, namely, monitoring security systems and security guarding for facilities; security protective services, namely, providing executive protection, personal security consultation, and personal body guarding” in International Class 45, registered on February 23, 2010.
U.S. Registration No. 3,722,330 for the EDGE mark for “Educational services, namely, conducting classes, seminars, conferences, workshops, and podcasts in the field of security guard training and proper surveillance and distributing course materials in connection therewith; providing on-line training classes, courses, seminars, workshops, and podcasts in the field of security guard training and proper surveillance and distributing course materials in connection therewith; training services in the field of security guard and proper surveillance in connection therewith” in International Class 41, and for “Security services in the nature of security guard services; security consulting services, namely, evaluating and assessing on-site security programs for others; providing property surveillance services, namely, monitoring security systems and security guarding for facilities; security protective services, namely, providing executive protection, personal security consultation, and personal body guarding” in International Class 45, registered on December 8, 2009.
U.S. Registration No. 3,152,959 for the ALLIEDBARTON SECURITY SERVICES mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, registered on October 10, 2006.
U.S. Registration No. 3,223,891 for the ALLIEDBARTON SECURITY SERVICES & Design mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, registered on April 3, 2007.
U.S. Registration No. 3,144,420 for the ALLIEDBARTON & Design mark for “security services in the nature of security guard services; evaluating and assessing on-site security programs for others; and property surveillance and security protective services” in International Class 45, registered on September 19, 2006.
The Complainant also owns and operates a website to which the domain name resolves. The domain name was registered by the Complainant on June 25, 2008. The website to which it resolves was launched in 2009, and offers online training classes for current and prospective customers of the Complainant.
The disputed domain name was registered on May 14, 2012, and resolves to a website with links to third-party goods and services. 5. Parties’ Contentions A. Complainant
The Complainant submits that it was established in 1957, and has since grown to become the largest American-owned security officer services company. The Complainant relies on its above-listed registered trademarks and its rights at common law in the ALLIEDBARTON mark and other associated marks including ALLIEDBARTON EDGE acquired though use, advertising and promotion. The Complainant submits that it has acquired an Internet presence through the use of the domain name and the website to which it resolves which was launched in 2009, on which the Complainant offers online training classes to its current and prospective customers.
The Complaint submits that the disputed domain name is confusingly similar to the Complainant’s ALLIEDBARTON EDGE service mark. The Complainant submits that with the exception of one letter, the disputed domain name displays the identical characters in the exact same order as the Complainant’s registered trademark. The Complainant further submits that the disputed domain name further incorporates, with the exception of one letter, the whole of the Complainant’s similar domain name.
The Complainant alleges that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not affiliated with the Complainant, and there is no evidence to suggest that the Respondent has registered disputed domain name to advance legitimate interests or for the bona fide offering of goods or services. The Complainant argues that the Respondent anonymously registered the disputed domain name, and has not provided any contact information whatsoever on the website to which the disputed domain name resolves. The Complainant submits that because of its anonymity, the Respondent (as an individual, business, or other organization) cannot claim to have been commonly known by the disputed domain name or similar name related thereto and it is clear that the Respondent has made no effort to associate himself or herself with the disputed domain name .
The Complainant submits that the Respondent has solely 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 capable of giving rise to a right or legitimate interest in the disputed domain name. The Complainant submits that such use of the disputed domain name 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 the Complainant’s trademark, does not confer a right to or legitimate interest in a domain name. 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, and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith and alleges that the Respondent has anonymously registered the disputed domain name in an effort to evade the consequences of registering a domain name for which he/she has no rights or legitimate interests.
The Complainant argues that it has used its ALLIEDBARTON, ALLIEDBARTON EDGE and other related marks, in commerce, and obtained the above-referenced trademark registrations long before the disputed domain name was registered on May 14, 2012. Given the Complainant’s extensive and exclusive rights in its family of ALLIEDBARTON marks, including the mark ALLIEDBARTON EDGE, there can be little question that the Respondent registered the disputed domain name with full knowledge of and the intent to trade off of the Complainant’s pre-existing rights.
The Complainant submits that the Respondent’s adoption and use of the disputed domain name is in bad faith and has continued with full knowledge of the Complainant’s prior rights given the affirmative notice provided by the Complainant, and is in willful infringement of the Complainant’s prior rights. The Complainant submits that the Respondent has attempted to take commercial advantage of the Complainant’s trademarks and commercial reputation and to trade off the Complainant’s goodwill.
The Complainant argues that an Internet user seeking the Complainant’s products or services who types in the disputed domain name is directed to a website that lacks any independent content of its own, but rather uses the disputed domain name in connection with links to third-party commercial sites grouped under headings such as “Security Guard Companies”, “Security Officers” and “Security Guard Training Online” that include similar services to those offered by the Complainant under its ALLIEDBARTON and ALLIEDBARTON EDGE marks and on its website established at the domain name.
The Complainant submits 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.
On June 12, 2012, the Complainant sent a letter to the Respondent in which it notified the Respondent of the Complainant’s rights and requested that the Respondent transfer the disputed domain name to the Complainant. On June 27, 2012, the Complainant sent a follow up letter once again notifying the Respondent of the Complainant’s rights and requesting that the Respondent transfer the disputed domain name to the Complainant. Copies of these letters of June 12, 2012, and June 27, 2012, have been provided in an annex to the Complaint. The Complainant states that the Respondent has ignored the Complainant’s correspondence.
The Complainant submits that it follows that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks.
Moreover the Respondent is a known cybersquatter and typosquatter. The Respondent was a respondent in AlliedBarton Security Services LLC v. Registrant: ICS INC.,WIPO Case No. D2012-1003, brought by the Complainant regarding the domain name . In that case, the panel found that the Respondent was not affiliated with the Complainant, that the Respondent had not been commonly known by the domain name, that Respondent did not have any rights or legitimate interest in the domain name, and that the domain name was registered and was being used by the Respondent in bad faith. Accordingly, the panel recently ordered Respondent to transfer the domain name 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 requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:
(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. A. Identical or Confusingly Similar
The Complainant has satisfied this Panel that it has acquired rights in the trademarks and service marks ALLIEDBARTON, ALLIEDBARTON EDGE and related marks through the above-listed U.S. federal trademark registrations and has furthermore acquired rights at common law through the goodwill established through its use of the marks in trade.
The Complainant has also successfully argued that the disputed domain name is confusingly similar to the Complainant’s ALLIEDBARTON EDGE service mark. As can be seen by a comparison of the domain name and the mark, with the exception of one letter, the disputed domain name displays the identical characters in the exact same order as the Complainant’s registered trademark.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark and service mark ALLIEDBARTON EDGE in which the Complainant has rights and the Complainant has therefore succeeded in the first element of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Panel finds the Respondent has no association with the Complainant and is not commonly known by the disputed domain name.
On the evidence in the record it has been established that the Respondent is using the disputed domain name in connection with a commercial link service and in the circumstances set out in the Complaint, the Respondent would not acquire any right to or legitimate interest in a domain name by such use.
In these circumstances it is now well established under the Policy that the burden of production shifts to the Respondent to demonstrate such rights or legitimate interests, and in the absence of a Response or other communication, the Respondent has failed to discharge the burden. The Complainant has therefore succeeded in the second element of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that it is improbable that the Respondent had no knowledge of the Complainant when the disputed domain name was registered. With the exception of one letter, the disputed domain name displays the identical characters in the exact same order as the Complainant’s registered trademark. The disputed domain name has no meaning other than as a reference to the Complainant. Furthermore, the Panel views it as improbable that the registrant was not aware of the Complainant’s domain name when selecting and registering the disputed domain name which is almost identical.
This Panel finds on the evidence, and on the balance of probabilities, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the web site; that the disputed domain name was registered and has been used in order to take predatory advantage of the reputation of the Complainant and the goodwill that the Complainant has acquired in the ALLIEDBARTON EDGE mark; and that because the disputed domain name and the Complainant’s mark are almost identical except for one letter, by registering and using the domain name in this manner the Respondent has engaged in typosquatting.
It follows that the disputed domain name was registered and is being used in bad faith and the Complainant has therefore succeeded in the third and final element of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: September 25, 2012
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