The Complainant is Securitas AB of Stockholm, Sweden, represented by Awapatent AB, Sweden.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America (“US”) / A. H. of Seattle, Washington, US. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2013, 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 28, 2013 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 February 1, 2013.
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 February 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2013. The Center received informal email communications from an individual A. H., on February 9, 14 and 27, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on February 25, 2013.
The Center appointed James Bridgeman as the sole panelist in this matter on February 28, 2013. 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 the owner of the trademark SECURITAS, alone and combined with other elements. The Complainant has obtained registered trademark protection for marks consisting of or containing the word SECURITAS in a great number of countries around the world for safekeeping of securities and valuables in safe, financial affairs, transport of money and valuables, security consultancy, computerized security services for corporate organizations, identification services namely identifying people and security services for the protection of property and individuals including the following:
- Community trademark SECURITAS registration number 603811 of October 29, 2001;
- Community trademark SECURITAS (logo)registration number 1408368 of December 15, 2000;
- US trademark SECURITAS registration number 4162812 of May 31, 2006;
- US trademark SECURITAS (logo)registration number 2712469 of May 6, 2003;
- Canadian trademark SECURITAS (logo)registration number TMA714845 of May 22, 2008;
- Canadian trademark SECURITAS (logo)registration number TMA714844 of May 22, 2008;
- Chinese trademark SECURITAS registration number 701362 of May 14, 1998;
- Chinese trademark SECURITAS (logo) registration number 1101166 of July 6, 2011;
- Japanese trademark SECURITAS logo registration number 883424 with application date of October 31, 2005;
- Australian trademark SECURITAS registration number 883424 with application date of October 31, 2005;
- Australian trademark SECURITAS (logo)registration number 885087 with application date of October 31, 2005;
- Russian trademark SECURITAS registration number 701362A of May 14, 1998;
- Russian trademark SECURITAS (logo)registration number 288431 of May 5, 2005;
- Brazilian trademark SECURITAS registration number 829138951 of August 2, 2011;
- Brazilian trademark SECURITAS (logo)registration number 829138919 of December 8, 2009;
- Argentinean trademark SECURITAS registration number 2231677 of May 28, 2008;
- Argentinean trademark SECURITAS (logo) registration number 2266339 of January 6, 2009;
- Saudi Arabian trademark SECURITAS registration number 957/02 of November 19, 2007;
- Saudi Arabian trademark SECURITAS (logo)registration number 957/16 of November 19, 2007;
- United Arab Emirates SECURITAS trademark registration number 92899 of January 26, 2009;
- United Arab Emirates trademark SECURITAS (logo) registration number 151986 of September 22, 2011;
- South African trademark SECURITAS registration number 06/06199 of March 23, 2006;
- South African trademark SECURITAS (logo)registration number 06/06208 of Febraury 2, 2010;
- OAPI (African Intellectual Property Organization) trademark SECURITAS registration number 53850 of August 31, 2006;
- OAPI (African Intellectual Property Organization) trademark SECURITAS (logo) registration number 53852 of August 31, 2006.
The disputed domain name was registered on May 4, 2012. It appears that the disputed domain name has never been used as the address of a website, however the Complainant has furnished prima facie evidence that the disputed domain name is being used as an email address to perpetrate a scam by the registrant.
The registrant has availed of a privacy protection service, however when contacted by the Center the concerned Registrar, eNom, has identified an individual, A. H., as the registrant of the disputed domain name. A. H. has denied any knowledge of the registration. 5. Parties’ Contentions A. Complainant
The Complainant submits that it is one of the world’s leading security services providers offering services for a wide range of customers in a variety of industries and customers segments. It employs 300,000 people in 51 countries in North America, Europe, Latin America, Asia, the Middle East and Africa. The Complainant has spent substantial time, effort and money advertising and promoting its SECURITAS trademarks worldwide and as a result, they have become globally well-known.
The Complainant argues that the disputed domain name is highly similar to the protected and well-known SECURITAS marks as the only difference is the additional “s” at the end in the domain name. The signs consequently give the same overall impressions in visual, aural and conceptual aspects and are clearly confusingly similar.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. As far as the Complainant knows, there has never been any active website in use for the disputed domain name and the Respondent has not used, or made any preparations to use, the disputed domain name in connection with an offering of goods or services.
Neither has the Respondent become commonly known by the disputed domain name nor is the Complainant aware of any trademark rights in the name of the Respondent.
As far as the Complainant knows, the disputed domain name has been used solely as part of email addresses in order to confuse Internet users of the origin of the emails sent.
The Complainant submits that the disputed domain name was registered and is being used in bad faith.
At the time of registration of the disputed domain name, May 4, 2012, the SECURITAS trademarks had been used substantially globally for many years by the Complainant and its affiliated companies and the marks had therefore obtained status as well known in relation to security services.
As the Respondent in email correspondence only a few months thereafter has referred to an address in the UK, nearly identical to one of the Complainant’s local UK addresses, by passing itself off as having this location, the Respondent must at the time of registration of the disputed domain name have been aware of the Complainant and the SECURITAS trademarks and registered the disputed domain name solely with the purpose of obtaining a domain name confusingly similar to the trademarks in order to confuse Internet users as to the origin of the Respondent’s emails, or affiliation of the Respondent with the Complainant.
The Complainant refers to email correspondence, copies of which have been furnished in an annex to the Complaint that, it submits demonstrates that the disputed domain name has been used in email correspondence, in which the Respondent has intentionally attempted to attract for commercial gain, Internet users to transfer money to the Respondent, by creating a likelihood of confusion with the Complainant’s SECURITAS marks as to the origin of the emails, or affiliation with the Complainant.
In the attached emails, the Respondent addresses a victim of a previous Internet scam whereby the victim transferred money to a company who promised high monetary returns, and the victim in question parted with ca NZD 12,000. This was highlighted as a confidence game and the victim ceased sending money. A few months thereafter, the scam victim was approached by a company identifying itself as “Security Securitas” in the UK, using email addresses incorporating the disputed domain name, and promising that they would award the scam victim USD 200,000 in payment from the Nigerian state as compensation for the prior scam.
In the further email correspondence, the Respondent repeatedly asked the scam victim to transfer money to it as fees for progressing the claim for compensation. In an email dated August 1, 2012 the Respondent has issued a “certificate”, allegedly originating from company “Security Securitas”, having an address nearly identical to the Complainant’s local UK address in Uxbridge. The address in the “certificate” is Securitas House, 171 High Street, Surrey UB8 1LQ, the UK, whereas the Complainant’s real local address is Securitas House, 271 High Street, Uxbridge, UB8 1LQ, UK.
The Respondent has clearly been using the disputed domain name in bad faith, trying to associate itself with a well-known security services company in order to gain people’s trust, to the extent that they would transfer money to the Respondent. B. Respondent
There was no Response filed by the Respondent. However, in email communications with the Center A. H. denied any knowledge of or connection with the disputed domain name. A. H. asserted that neither the contact telephone number nor the Hotmail email address in the WhoIs registration contact information belongs to that individual. 6. Discussion and Findings Preliminary Procedural Issue and Identity of Respondent
The Respondent, A. H., when served with the Complaint, contacted the Center and denied any knowledge of or connection with the disputed domain name. Within the limitations of the Policy it is not possible for this Panel to determine whether this denial is true and correct. In the circumstances described above however this Panel is of the view that it is far from improbable that the Respondent has been the victim of personality theft in this regard.
Paragraph 1 of the Rules place an onus on the Center (as “Provider”) to serve the Complaint and annexes on the Respondent. A. H. has been identified as the owner of the disputed domain name registration. Paragraph 2 of the Rules defines the Respondent as “the holder of a domain-name registration against which a complaint is initiated”. It follows that for the purposes of this Complaint the Center has complied with its obligations in respect of service pursuant to paragraph 2 and this Panel may proceed to make the decision. Substantive Issues
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the said 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 Complainant has furnished evidence that it is the owner of the SECURITAS trademark through its substantial portfolio of registered service marks and a substantial goodwill in the use of the mark in the provision of security services worldwide.
When the disputed domain name is compared with the Complainant’s SECURITAS mark it is clearly confusingly similar. The only difference between the mark and the disputed domain name is the addition of a letter “s” to the Complainant’s word-mark. It is well established that the generic top-level domain (gTLD) “.com” extension may be ignored for the purposes of the comparison.
In the circumstances, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
It is well established that once a complainant has made out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden of production shifts to the respondent. In the present case, the Respondent has failed to discharge the burden.
The Complainant has provided evidence that it has a significant reputation in the use of the SECURITAS mark and has made out a prima facie case that, in view of its reputation and goodwill and the confusing similarity of the disputed domain name and the mark, it is improbable that the Respondent has any such rights or legitimate interests.
In any event A H., who is the Respondent has stated that it has no connection with the disputed domain name and so makes no claim to any rights or legitimate interests but rather indicated that it is a victim to an identity theft.
This Panel finds that the Complainant must therefore succeed in the second element of the test also. C. Registered and Used in Bad Faith
The Complainant has furnished prima facie evidence that the disputed domain name is being used as an email address to perpetrate a scam on a member of the public who has already been the victim of an Internet scam under the pretence that he is to be compensated for his initial loss.
Given the similarity of the disputed domain name and the Complainant’s mark, the fact that the Complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate a scam, this Panel finds that on the balance of probabilities the disputed domain name was registered for the purpose of sending scam emails and confusing Internet users as to the origin of the emails, or affiliation of the emails with the Complainant. In the circumstances, this Panel has no hesitation in finding that the disputed domain name was registered and is being used in bad faith.
The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a) of the Policy and is entitled to succeed in this Complaint. 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 be transferred to the Complainant.
James Bridgeman
Sole Panelist
Date: March 12, 2013
Full & Egal Universal Law Academy