The Complainant is Defenders, Inc. of Indianapolis, Indiana, United States of America (“USA”), represented by Ice Miller LLP, USA.
The Respondent is Domain Administrator, PrivacyG, of Phoenix, Arizona, USA / Zhichao Yang of Hefei, Anhui, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2019. On February 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 19, 2019 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 23, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 27, 2019. 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 an Indiana Corporation having its principal place of business in Indianapolis, Indiana. Established in 1998, it is one of the largest home security companies in the world and the only ADT Authorized Premier Provider. The Complainant has more than a hundred installation branches throughout the USA and has served more than two million customers since its inception, adding more than 250,000 customers a year in each of the last two years. The Complainant operates under the business name “Protect Your Home” and has been operating a website at its corresponding domain name, , since 2007. Said website is the Complainant’s primary marketing tool and principal point of communication between it and its customers. The Complainant states that it spends tens of millions of dollars per year in advertising.
The disputed domain name was created on June 28, 2018 and the disputed domain name was created on August 31, 2018. The websites associated with the disputed domain names are typical “pay-per-click” (“PPC”) pages, featuring a range of “Related Links” and a search bar. The links, as demonstrated in a screenshot taken by the Complainant on January 30, 2019, all relate to the Complainant’s line of business, including “Home Security Systems”, “Monitored Home Security Companies”, and “Home Security”.
The Complainant notes that in September 2018 a phishing attack was carried out against it and its customers from the domain name , adding that said domain name was transferred to it following a complaint under the Policy, namely Defenders, Inc. v. Domain Administrator, See PrivacyG / Zhichao Yang,WIPO Case No. D2018-2670. The respondent in that case is the same Respondent in the present case. The domain name in that case was created on August 31, 2018, being the same date of creation as the second disputed domain name in the present case.
The Complainant lists some 28 UDRP cases filed before the Center since 2013 in which the Respondent was the named respondent and which the Complainant says demonstrate that the Respondent is a repeat offender who regularly registers and uses in bad faith domain names that are confusingly similar to the trademarks of others. The Panel has reviewed all of those cases occurring in the last three years in detail and has noted that in each of these a finding of registration and use in bad faith was made against the Respondent. Further, many of the domain names in such cases featured typographical variants of the complainant’s mark(s) together with the use of PPC pages incorporating content relevant to the trademarks concerned. For example, in the case of Accor SA v. Domain Administrator, PrivacyG / Zhichao Yang,WIPO Case No. D2017-1322, the Panel noted that the Respondent had registered some 2,273 domain names which included typographical variants of famous trademarks. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Complainant asserts that each of the disputed domain names is a typo-squatting domain one letter off from the Complainant’s legitimate domain name used for its website, adding that such domains were registered at or near the same time that a phishing attack targeting the Complainant was launched from another typo-squatting domain, , also registered to the Respondent.
The Complainant asserts that it has unregistered trademark rights in its assumed business name PROTECT YOUR HOME based on its continuous use for more than ten years together with extensive advertising and promotion to the relevant consuming public, including 250,000 customers in each of the last two years. The Complainant notes that it has received nearly 1,200 reviews on a third party consumer review website which score a near five out of five rating.
The Complainant states that the similarity and near identity between the disputed domain names and its PROTECT YOUR HOME mark, in appearance, sound and connotation, support a finding of confusing similarity, as does the fact that the disputed domain names contain incorrectly spelled versions of such mark. The Complainant notes that the first disputed domain name merely deletes a letter “e” from the Complainant’s mark and that the second disputed domain name similarly deletes a letter “o”, adding that such deletions do not affect either appearance or sound.
The Complainant contends that the Respondent is not affiliated or connected with the Complainant in any way, that the Complainant has never licensed or authorized the Respondent to use its PROTECT YOUR HOME mark or to register any domain name incorporating such mark. The Complainant submits that the Respondent cannot show any facts, including facts based on paragraph 4(c) of the Policy, which establish any rights to or legitimate interests in the disputed domain names. The Complainant notes that its first use of the PROTECT YOUR HOME mark dates back to 2007 whereas the disputed domain names were created in 2018.
The Complainant asserts that the Respondent created the disputed domain names to produce an impression of association with the Complainant’s mark, adding that this cannot give rise to rights or legitimate interests. The Complainant states that there is no evidence that the Respondent has been commonly known by the disputed domain names or has any rights predating those of the Complainant and likewise that there is no evidence of the Respondent’s legitimate use of or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant asserts that there can be no fair use of the disputed domain names when there is no legitimate connection between the Respondent’s use of the disputed domain names and the Complainant and its mark.
The Complainant contends that the Respondent acted in bad faith because it knew of the Complainant’s rights in the PROTECT YOUR HOME mark before it registered the disputed domain names and that the Respondent registered the disputed domain names for commercial gain by intentionally creating a likelihood of confusion with the Complainant’s mark and name as to the source, sponsorship, affiliation, or endorsement of the Respondent’s services. The Complainant adds that the Respondent has engaged in typo-squatting and that the Respondent employed a privacy protection service in the registration of the disputed domain names, each of which can constitute bad faith in the circumstances of the case. The Complainant asserts that the only logical conclusion from the facts of this case are that the Respondent registered the disputed domain names in bad faith with intent to capitalize on the Complainant’s fame and reputation, adding that the Respondent is the same registrant as in Defenders, Inc. v. Domain Administrator, See PrivacyG / Zhichao Yang, supra, the facts of which involved the Complainant being targeted in a phishing scheme. The Complainant notes that, based upon previous cases, the Respondent is a repeat offender in connection with the registration and use of domain names in bad faith.
The Complainant requests consolidation of its complaints regarding the disputed domain names, making various submissions regarding the Respondent’s common control and purpose. The Panel notes in passing that paragraph 3(c) of the Rules provides in any event that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder, which is the situation here. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied in respect of the disputed domain name concerned:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the 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 must first demonstrate that it has rights in a trademark and that the disputed domain names are identical or confusingly similar to that trademark. The Complainant relies for this purpose upon its PROTECT YOUR HOME business name and unregistered trademark. In order to establish unregistered trademark rights under the Policy, the Complainant must show by reference to relevant evidence that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services (see the example factors set out in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant produces its website, marketing materials, and extensive independently sourced consumer testimonials in support of its submission that it has adopted the business name “Protect Your Home” and traded under it for more than a decade. The Complainant also notes that its correspondingly named website has likewise been in operation for over ten years, that it has served two million customers over the entire period, and has provided services to 250,000 of such customers in each of the last two years. The Respondent has not taken issue with any of the Complainant’s submissions in this respect.
While at first glance the mark in which the Complainant claims rights may appear to have a descriptive quality, it is clear that the Complainant has made extensive use of such mark over a lengthy period and has achieved substantial consumer recognition with it, such that the Panel is prepared to find on balance of probabilities that it has become a distinctive identifier of the Complainant’s goods and services. The Panel notes that this mirrors the finding of the panel in Defenders, Inc. v. Domain Administrator, See PrivacyG / Zhichao Yang, supra, in which the Complainant’s submissions were of a similar nature, and is thereby fortified in its opinion. In all of these circumstances, the Panel finds that the Complainant has established that it has a common law trademark in the term PROTECT YOUR HOME.
The Panel therefore turns to a comparison of the Complainant’s trademark and the disputed domain names, disregarding the generic Top-Level Domain (“gTLD”) in each of the disputed domain names, as is customary in cases under the Policy, on the grounds that it is required for technical reasons only. In each case, it may be seen that the disputed domain name concerned is alphanumerically identical to the Complainant’s mark with the exception of the omission of a single letter. In the Panel’s view, the Complainant is correct in its contention that in the case of neither of the disputed domain names does the omission substantially change the character, appearance, connotation or pronunciation thereof, which remains almost identical to the Complainant’s mark. In all of these circumstances, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in each disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent is not affiliated or connected with the Complainant in any way, that the Complainant has never licensed or authorized the Respondent to use its PROTECT YOUR HOME mark or to register any domain name incorporating such mark, that there is no evidence that the Respondent has been commonly known by the disputed domain names or has any rights predating those of the Complainant, and likewise that there is no evidence of the Respondent’s legitimate use of or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Panel also notes that the Complainant asserts that there is no legitimate connection between the Respondent’s use of the disputed domain names and the Complainant’s mark and that there can be no fair use in these circumstances.
In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in the disputed domain names. The Respondent has chosen not to engage with the present proceeding and has not provided any submissions which might have supported a claim of rights or legitimate interests in respect of either or both of the disputed domain names. The Panel has not been able to determine any likely rights or legitimate interests which the Respondent might have claimed had it otherwise participated.
The Panel cannot overlook the proximity in time between the registrations of the disputed domain names in the present case and that of the domain name in the previous case of Defenders, Inc. v. Domain Administrator, See PrivacyG / Zhichao Yang, supra, in which the Respondent was found to have registered a domain name which was a typographical variant of the Complainant’s mark and which had been used in connection with a phishing scheme. In the Panel’s view, and in the absence of a suitable explanation from the Respondent, such proximity taints the registrations of the disputed domain names in the present case given that these too are alternative typographical variations of the Complainant’s mark. Furthermore, the use of such variants to point to PPC advertising which matches the line of business in which the Complainant is engaged does not on any view constitute a bona fide offering of goods and services. In conclusion, the Respondent’s apparent activities in the present case do not confer any rights or legitimate interests upon it.
In all of these circumstances, the Panel finds that the Complainant’s prima facie case on rights and legitimate interests has not been rebutted by the Respondent and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant in the present case focuses primarily on paragraph 4(b)(iv) of the Policy. The Complainant shows that the disputed domain names contain close typographical variations to its PROTECT YOUR HOME mark and that these are both pointed to PPC advertising which relates to the Complainant’s line of business. It is thus apparent to the Panel that the Respondent registered the disputed domain names with knowledge of the Complainant’s mark and intent to target it. This is an indication of registration and use in bad faith. As noted above, the Panel is also mindful of the fact that the disputed domain names were created around the same time as a different typographical variant of the Complainant’s mark was likewise registered by the Respondent and used in connection with a phishing scam, as described in Defenders, Inc. v. Domain Administrator, See PrivacyG / Zhichao Yang, supra. This too is an indication of registration and use in bad faith.
A further such indication may be found in the fact that the Respondent has a demonstrable history of registering and using domain names in bad faith, notably in connection with typographical variants of well-known marks. This is amply demonstrated by a detailed review of multiple cases brought under the Policy against the Respondent spanning the last three years. While each case must be taken on its merits, there is an evident pattern of abusive conduct demonstrated in a wealth of past cases where the circumstances of the present case appear to match such pre-existing pattern. This is also indicative of registration and use in bad faith in terms of paragraph 4(b)(ii) of the Policy (see also section 3.1.2 of the WIPO Overview 3.0).
It is particularly significant that despite the allegations levelled at the Respondent in the present case, it has chosen not to engage with the proceeding and to provide any explanations or alleged good faith motivations in respect of its conduct regarding the disputed domain names. In the absence of such, the Panel notes that the present record does not give rise to any potential or apparent good faith motivation that the Respondent might reasonably have put forward.
Accordingly, the Panel finds on the balance of probabilities that the disputed domain names have been registered and are being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: April 10, 2019
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