The Complainant is Universal Services of America, LP d/b/a Allied Universal of Santa Ana, California, United States of America (“United States”), represented by Cozen O’Connor, United States.
The Respondent is Shilei of Hangzhou, Zhejiang, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , and are registered with Ourdomains Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2017. On February 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on April 27, 2017. 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 security services company in North America with over 150,000 employees. It trades under the name “Allied Universal”.
The Complainant owns a number of registered trade marks for ALLIED UNIVERSAL, including United States trade mark no. 5,136,006 filed May 6, 2016, registered February 7, 2017, in classes 37, 41, 42 and 45. The trade mark claims a first use date of August 1, 2016.
On September 26, 2016, the Complainant registered the domain name and has used it since then for a website providing benefits information and services to its employees.
The disputed domain names were all registered on November 13, 2016.
As of February 23, 2017, each of the disputed domain names resolved to websites with sponsored links relating to employee benefits.
The Complainant sent a legal letter to the Respondent on December 22, 2016, concerning four of the disputed domain names. The Respondent responded on January 4, 2017, simply offering to sell those domain names for USD 2,000. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions.
The Complainant owns significant common law rights in the term “Allied Universal” through its use, advertising and promotion.
Each of the disputed domain names incorporates the Complainant’s trade mark or minor misspellings and the descriptive word “benefits”. The disputed domain names are confusingly similar to the Complainant’s trade marks.
The Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent is not affiliated with the Complainant.
The Respondent has used the disputed domain names as “link farms”, designed to lure Internet users and divert them to other commercial sites by use of domain names identical or similar to the Complainant’s trade mark. Such activity does not confer rights or legitimate interests.
There is no evidence that the Respondent has been commonly known by the names “Allied Universal” or “Allied Universal Benefits”.
The Respondent owns many other domain names which are misspellings of well-known trade marks.
The disputed domain names have been registered and used in bad faith.
Internet users seeking the Complainant’s goods or services or the employee benefit information and services provided by the Complainant who type any of the disputed domain names into a browser are directed to websites with sponsored links relating to employee benefits and include similar services to those offered by the Complainant under its trade marks. This is likely to cause confusion as to an association with the Complainant.
The Respondent is a serial infringer who has been the subject of multiple adverse UDRP decisions.
The Respondent’s offer to sell four of the disputed domain names to the Complainant is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark ALLIED UNIVERSAL by virtue of its registered trade mark as well as unregistered trade mark rights deriving from its trading activity under that name.
The disputed domain names are all confusingly similar to the Complainant’s trade mark as they consist of that distinctive trade mark or misspellings thereof plus the descriptive term “benefits”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded (see below) that the disputed domain names have been used for a parking page with services relating to those supplied by the Complainant. Such use of the disputed domain names could not of itself confer rights or legitimate interests. See paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In this case, the advertising links are clearly based on the value of the Complainant’s trade mark ALLIED UNIVERSAL. In particular, they relate to employee benefit services provided by the Complainant to its own employees via the Complainant’s website at “www.m”.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
As mentioned above, the disputed domain names consist of the Complainant’s distinctive trade mark, or obvious “typo-squatting” variations thereof, together with the descriptive term “benefits”. They have all been used for parking pages with links to employee benefit-related services.
Clearly the websites were designed to target, confuse and profit from, the Complainant’s employees who mistype the website address of the Complainant’s own employee benefits website at “www.m”.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel also notes that the Respondent has been found to have registered and used domain names in bad faith in many other UDRP cases. See, for example, Fiserv, Inc. v. Shi Lei / Domain Whois Protection Service Whois Agent,WIPO Case No. D2015-0150; Fiserv, Inc. v. shilei,WIPO Case No. D2015-1565; A Inc., Amazon Technologies,Inc., Goodreads, Inc. v. Shi Lei aka shilei,WIPO Case No. D2014-1093; and LEGO Juris A/S v. shilei,WIPO Case No. D2016-0152.
For the above reasons, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 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 names, , , , , , , and be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: May 10, 2017
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