The Complainant is Allied Barton Security Services LLC of King of Prussia, Pennsylvania, United States of America (“USA”), represented by Cozen O'Connor, USA.
The Respondent is PrivacyP/Domain Admin of Nobby Beach, Queensland, Australia/ Kim Bum of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013 against PrivacyP. On February 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 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 March 11, 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 March 13, 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 March 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2013. The Center appointed Joseph Dalby as the sole panelist in this matter on April 17, 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 a company, incorporated in Delaware, USA with its principal place of business in King of Prussia, Pennsylvania, USA. It was established in 1957 and provides security services to users. In connection with this business it is the registered proprietor of several USA trademarks, including ALLIEDBARTON (two registered on September 19, 2006, one under No 3,144,420, together with a design mark and another registered, and another under 3,144,421)) and ALLIEDBARTON SECURITY SERVICES (one registered on October 10, 2006 under number 3,152,959, and another – together a design right – registered on April 3, 2007 under number 3,223,891). The Complainant avers that the trademarks were used in connection with its services at least as early as September 4, 2004.
In addition, the Complainant refers to the domain name , which was registered to the Complainant on December 13, 2004. A website resolving to that domain name was launched in 2012 and serves as the Complainant's main employment website.
The disputed domain name was registered through RegisterMatrix on December 6, 2012.
No details have been provided about the Respondent’s background or business. But the registrar has confirmed that the Respondent is the incumbent registrant. 5. Parties’ Contentions A. The Complainant
The Complainant firstly contends that the disputed domain name is identical or confusingly similar to its trademark, in which the Complainant has rights, or has gained significant common law trademark and other rights. In evidence, the Complainant refers to its registered trademark, and to its domain name, , Complainant’s main employment website. Evidence of registration of the proprietary trademarks has been produced by the Complainant.
The Complainant avers that the disputed domain name is confusingly similar to its trademark and its domain name, since the disputed domain name incorporates the Complainant’s trademarks in its entirety and is confusingly similar to its domain name. It adds that even though the Complainant’s domain name also incorporates an additional letter (“s”) and a period/full stop, the disputed domain name displays identical characters in the same “chronological order” as the Complainant's domain name. The Panel observes that the Respondent operates a pay-per-click website at the disputed domain name with links that compete with the services offered at the Complainant's main employment website. Finally, it submits that the Complainant's trademark has a notoriety and unique character such that there can be no doubt that consumers will reasonably believe that the disputed domain names are related to the Complainant, although no evidence is offered in support of this submission.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It states in evidence that the Respondent is not affiliated with the Complainant.
Further, the Complainant avers that the disputed domain name was registered anonymously by the Respondent, in an effort to evade the consequences of registering a domain name for which he/she has not rights or legitimate interests. It notes that the Respondent has not provided any contact information whatsoever on the website resolving to the disputed domain name; accordingly the Respondent cannot claim to have been commonly known by the disputed domain name or similar names related thereto and has made no effort to associate him or her with the disputed domain name.
The Complainant avers that the disputed domain name is being used solely for commercial gain. It submits that it is being used in connection with a commercial link service, or “link farm”, which is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest. Rather, the Complainant avers, it is being used to lure Internet users and divert them to other commercial sites.
Thirdly, and finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant avers that the Respondent's adoption and use has continued with full knowledge of, and in willful infringement of the Complainant's prior rights. It points out that an Internet user seeking to find the Complainant's main employment website, and who types in is directed to a website that lacks significant independent content of its own, but rather offers links to third-party commercial sites, that include similar services to those offered by the Complainant under its family of trademarks and its registered domain name . The Complainant reproduced the webpage resolving to the disputed domain name on February, 25, 2013.
The Complainant states that it wrote twice (January 14 and 29, 2013) to the Respondent to notify same of its rights and to request the transfer of the disputed domain name. It further states that there was no reply to either letter. It states that, accordingly, 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 trademark and its main employment website.
The Complainant points to other administrative proceedings in which the Respondent was named in connection with the registration and use of domain names that are identical or confusingly similar to an existing trademark. It observes that in all these (four) administrative proceedings the disputed domain name the UDRP panel found for the complainant, that in three, the domain name was transferred to the complainant and in the fourth it was cancelled. B. The Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The domain name registration is governed by the Policy, by virtue of the contract between the Registrar and Registrant/Respondent.
Initially, the Complainant did not provide the underlying registrant name for the Respondent in the title of the proceeding nor in its Complaint. According to paragraph 3(v) of the Rules, the Complainant is required to “provide the name of the respondent (domain name holder)…” Thus, even in the absence of any Response from the Respondent, this irregularity might affect the admissibility of the Complaint. However, the Complainant faithfully re-produced the WhoIs information that was available to it in the public domain, identifying Privacy P as the domain name registrant. The Center contacted the Registrar of the disputed domain name to verify the name of the Registrant, and was informed that the correct name was “Kim Bum” located in Seoul, Gyeongsangbugdo, Korea”
This information was supplied to the Complainant as a Notice of Change of Registrant Information, and giving leave to amend the Complaint, prior to any consideration of the formal requirements pursuant to the Policy, Rules and Supplemental Rules. The Complainant elected to amend its Complaint and substituted Kim Bum as Respondent in place of Privacy P.
The Panel considers that the Center becomes seized of a Complaint when it is initiated. A complaint is initiated, per paragraph 3(a) of the Rules, when a complaint is submitted. Subsequently, per paragraph 4 of the Policy, a Respondent is not required to submit to an administrative proceeding until a complainant asserts to the applicable provider, in compliance with the Rules, that the three heads of complaint set out therein are made out. Further, the paragraph 4(c) of the Rules provides that the date of commencement of the administrative proceeding shall be the date on which the provider completes its responsibilities under paragraph 2(a) of the Rules in connection with sending the complaint to the respondent. The Panel finds that between being seised of a Complaint and the commencement of the administrative proceedings, the Center is not precluded by the Policy Rules or Supplemental Rules from forwarding a Notice of Change of Registrant, and that the Complainant is not precluded from amending its Complaint to substitute the name of underlying registrant in place of the person or entity against whom the complaint was originally initiated.
The Respondent has been given an adequate opportunity to deal with the allegations against him and it is thus noted that the Respondent has not offered any contentions in rebuttal of the claims and contentions made by the Complainant.
The Panel finds that the Amended Complaint is admissible and that the administrative proceeding formally commenced when the Amended Complaint was declared compliant under paragraph 4(c) of the Rules. The fact that the pre-administrative proceeding letters from Complainant were addressed to Privacy P does not invalidate the Complaint, as it is not a requirement of the Policy, Rules or Supplemental Rules (nor practically possible) for the Complainant to have first put the Respondent Kim Bum on notice of same. A. Identical or Confusingly Similar
The Complainant has proven that is has rights to an established and valid registered trademark. The Panel finds that although the trademark certificates supplied are not certified as identical to the original, in the absence of any challenge from the Respondent, they are deemed to be authentic.
The disputed domain name reproduces in whole or almost in whole, each of the trademarks relied upon by the Complainant. In both cases, the risk of confusion is that an Internet user or potential customer may unwittingly conclude that a website to which the disputed domain name resolves is endorsed by the Complainant. The addition of the word “jobs” descriptively or subjectively to the main object “alliedbarton” does not overturn, on the balance of probabilities, that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
As regards the Complainant’s domain name , the Panel finds that this is not an unregistered trademark for purposes of the Policy. In this regard, the Panel notes that the Complainant avers, and the registered trademarks indicate, that the business of the Complainant is the provision of security services and not the provision of employment services or jobs in the Complainant or in the security services sector.
In WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0” © 2011), the consensus view on “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” is:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
Adopting the consensus view as a correct statement of the position, the Panel does not find that the Complainant’s domain name is a distinctive identifier associated with the provision of goods or services. However, the Panel finds that the disputed domain name is similar to with the Complainant on account of the fact that it includes its registered trademark.
In this regard, other than the addition of the word “job” and the gTLD “.com”, the disputed domain name is identical or confusingly similar to the trademark relied upon. B. Rights or Legitimate Interests
Taking the Complaint in its entirety, the Complainant has satisfactorily demonstrated a prima facie case that the Respondent has no rights to or legitimate interests in the disputed domain name. In default of the Respondent adducing any evidence to rebut this contention, the Complainant has adequately proved this element.
Moreover, the Panel accepts that, as it has transpired that the Respondent was or should have been the true registrant, whose details should have appeared on the WhoIs database for “.com” domains names, in appearing to use an agent as registrant, the Respondent was an undisclosed principal who could not, for that reason alone, claim or prove that it was commonly known by the disputed domain name or similar names related thereto and that the Respondent has made no effort to associate himself or herself with the disputed domain name. Accordingly in the Panel's view this fortifies the contention that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that none of the scenarios in paragraph 4(b) of the Policy are commented on by the Respondent.
The Panel finds that as the Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain name, this is suggestive of bad faith in the registration and use of the disputed domain name. The Panel finds that the trademark relied upon is sufficiently distinctive and well-known and that the registration of a similar name as a domain name in this case bolsters a finding of bad faith. The fact that the Respondent has demonstratively used the disputed domain name in connection with competing goods and services, and that it appears that he or she has done so for commercial gain, raises a prima facie case to this Panel that he or she must have been aware of the Complainant’s established reputation and the notoriety of the trademark relied upon, and which case has not been discounted or rebutted by the Respondent as well as falling under the conduct described at paragraph 4(b)(iv) of the Policy. The Panel is satisfied that the fact that the Respondent has been a named Respondent in four other administrative proceedings, in which the respective panels found for the complainants, suggests a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name. The Panel does not find that, as the Respondent failed to respond to the Complainant's letters prior to commencement of this administrative proceeding, that this (as the Complainant suggests) is indicative in itself of intentionally attempting to attract Internet users for commercial gain. As discussed, these letters were not issued to the Respondent named in the Amended Complaint. Whilst there might be a case for averring that Privacy P was the agent of the Respondent, this must first be demonstrated if such a connection was to be made. However, in this Panel's final analysis, any disconnection does not negate the findings otherwise made that there is evidence that there was an intention to attract Internet users for commercial gain.
Accordingly, it is reasonable to infer that the Respondent must have been aware of the Complainant’s trademark both at the initial point of registering the disputed domain name and subsequently.
Thus the Panel finds the disputed domain name has been registered and used in bad faith. 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.
Joseph Dalby
Sole Panelist
Date: May 8, 2013
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