The Complainant is Securitas AB, Sweden, represented by AWA Sweden AB, Sweden.
The Respondent is Chia Cheng Chye, PT SAS SECURITAS INDONESIA, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2021. On January 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2021, 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 27, 2021 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 January 27, 2021. 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 January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Center received the Respondent’s communication by email on February 15, 2021. On February 18, 2021, the Center informed the Parties that it would proceed to panel appointment. The Center appointed William R. Towns as the sole panelist in this matter on March 8, 2021. 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 security organization founded in 1972 and headquartered in Stockholm, Sweden. The Complainant offers a variety of specialized security services with operations in 58 countries in North America, Europe, Latin America, Africa, the Middle East, and Asia, utilizing more than 370,000 employees in 56 countries presently served by the Complainant. The Complainant has secured a substantial number of trademark registrations for its SECURITAS marks in over 100 countries around the world, including among others the following trademark registrations for SECURITAS in the European Union (EU), Sweden and Indonesia: - European Union Trade Mark (EUTM) registration No. 000603811 for SECURITAS, registered October 10, 2001; - Sweden Trademark registration No. 216784 for SECURITAS, registered May 11, 1990; - Indonesia Trademark registration No. IDM 000244534 for SECURITAS, registered April 20, 2010; and - Indonesia Trademark registration No. IDM000368339 for SECURITAS, registered September 11, 2012. The Complainant also has registered domain names in generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”) reflecting the Complainant’s SECURITAS marks, including for example The Complainant uses the disputed domain names with a website providing information about its security services. The Complainant utilizes the ccTLD domain name The disputed domain name The Complainant submits that the disputed domain name The Complainant further observes that its SECURITAS mark or at least a relevant feature of the SECURITAS mark is recognizable in the disputed domain name, and as such should be considered as confusingly similar for purposes of UDRP standing. The Complainant further remarks that many other UDRP panel decisions have confirmed that the addition of a generic Top-Level-Domain (“gTLD”) with a confusingly similar mark does not affect deliberations under the first element of the Policy. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has no corresponding trademark rights in the name SECURITAS, that the Respondent has not been commonly known by the disputed domain name, and that the Respondent has not been licensed or otherwise authorized or approved to use the Complainant’s SECURITAS trademarks and trade name. The Complainant further avers that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is neither making a legitimate noncommercial or other fair use of the disputed domain name. The Complainant contends that the Respondent is using the disputed domain name in conjunction with the non-distinct abbreviation “sa” in order to free-ride on the Complainant’s well-known SECURITAS marks. The Complainant acknowledges it has become aware of two pending trademark applications in Indonesia pertaining to SAS Securitas, which the Complainant is opposing. According to the Complainant, the Respondent’s trademark applications and the Respondent’s registration of the disputed domain name all have been done without any legitimate interests and contrary to the Complainant’s registered SECURITAS marks. The Complainant remarks that its rights in the SECURITAS marks are longstanding and well-established in the European Union (EU) as well as in other jurisdictions. The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent beyond question would have been aware of the Complainant and the Complainant’s well-known SECURITAS marks when registering the disputed domain name. The Complainant further asserts that even a cursory search by the Respondent would have disclosed the Complainant’s SECURITAS marks, and concludes that the Respondent is guilty of willful blindness, eschewing any search to avoid trademark-abusive domain name registrations. The Complainant asserts that the Complainant’s establishment of rights in its SECURITAS marks significantly predates the Respondent’s registration of the disputed domain name, and insists that the Respondent is offering identical or highly similar goods and services in order to pass itself off as the Complainant. According to the Complainant, any assertion by the Respondent to have been unaware of the Complainant would smack of willful blindness by the Respondent. The Complainant thus concludes as such that the Respondent is using the disputed domain name intentionally to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on its website or location. The Complainant considers it highly likely that the Respondent is profiting from the goodwill associated with the Complainant’s SECURITAS marks. The Complainant explains that Internet users upon seeing the disputed domain name are likely to assume that the disputed domain name would lead to the Complainant’s website, a subsidiary, or an affiliate. The Complainant also maintains it is more than evident that the Respondent has unlawfully used and altered the Complainant’s copyright protected materials that are displayed on the website to which the disputed domain name resolves, including copyright protected pictures and photograph cropped somewhat differently by the Respondent; digitally altered removal of the Complainant’s logotype; the Respondent’s words superimposed over an original picture; other images of a man; symbols identical to the Complainant’s copyright protected material; and other photographic images. According to the Complainant, the Respondent has not secured consent to use the Complainant’s copyright protected materials and has misappropriated copyright images in an attempt to free-ride on the Complainant’s reputation and success. B. Respondent The Respondent did not submit a formal response to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name The Complainant’s SECURITAS mark is clearly recognizable in the disputed domain name.2 The inclusion of the letters “sa” immediately preceding “securitas” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s SECURITAS mark. Nevertheless, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s SECURITAS mark, and which the Respondent by all appearances is using to mislead Internet users to a copycat website displaying similar content to the one used by the Complainant’s website. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant’s SECURITAS marks when registering the disputed domain name Having regard to all of the relevant circumstances, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s SECURITAS mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As set out above in the facts and circumstances of record, the Panel finds that the Respondent was aware of the Complainant and had the Complainant’s SECURITAS mark in mind when registering the disputed domain name. The Panel further concludes that the Respondent in all likelihood registered and has used the disputed domain name with the intent to exploit and profit from the goodwill associated with the Complainant’s mark through the diversion of Internet users seeking the Complainant’s services. See Kathleen M. Casacci DDS, P.C v. Kacalski and Hannon DDS,WIPO Case No. D2012-2539. The Respondent’s references to Complainant’s business on the website at the disputed domain name appears in all likelihood calculated to convey to Internet users the false or misleading impression that the Respondent’s website is somehow affiliated with, sponsored, or endorsed by the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. The Panel accordingly concludes that the Respondent registered and has used the disputed domain name in bad. 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 William R. Towns 1 See WIPO Overview 3.0, section 1.7. 2 See WIPO Overview 3.0, section 1.8. 3 See WIPO Overview 3.0, section 1.8 and cases cited therein.
Sole Panelist
Date: March 23, 2021
Full & Egal Universal Law Academy