ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Universal Services of America, LP d/b/a Allied Universal v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2023-3207 1. The Parties The Complainant is Universal Services of America, LP d/b/a Allied Universal, United States of America, represented by Cozen O'Connor, United States of America ("US"). The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar The disputed domain name
(the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2023. On July 26, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 2023 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 July 31, 2023. 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 August 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 22, 2023. page 2 The Center appointed Carolina Pina-Sánchez as the sole panelist in this matter on August 29, 2023. 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 As explained in the Complaint, the Complainant is one of the world's largest security and facility services companies providing its services since 1957. It operates in more than 90 countries having around 800,000 employees around the world and a revenue of approximately 18 billion dollars. The Complainant owns several trademarks that protect the sign "Allied Universal" as evidenced in Annex 4 of the Complaint (the "Allied Universal Trademarks"): - US trademark registration No. 5136006 ALLIED UNIVERSAL registered on February 7, 2017, in classes 37, 41, 42 and 45. - US trademark registration No. 5136124 registered on February 7, 2017, in classes 37, 41, 42 and 45. - US trademark registration No. 5136112 ALLIED UNIVERSAL SECURITY SERVICES registered on February 7, 2017, in classes 41, 42 and 45. Furthermore, the Complainant owns the Domain Name that hosts a website where the Complainant's employees can access their benefits and company perks (Annex 5 of the Complaint). The Respondent is Carolina Rodrigues - Fundacion Comercio Electronico. According to the evidence provided by the Complainant, the Respondent has been involved in more than 80 UDRP cases, the majority of which concern the Respondent registering and using domain names incorporating famous and well-known marks (e.g., Skyscanner, Starbucks, Patagonia, Air France, Ford, Nestle, among others). The Domain Name was registered on July 3, 2023 (Annex 1 of the Complaint) and resolves to a website displaying commercial links . Concretely these links lead to three websites related to (i) Employee Benefits Administration Software; (ii) Employee Health Insurance; and (iii) Employee Benefit (vid. Annex 6). 5. Parties' Contentions A. Complainant On the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (a) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argues that the Domain Name is confusingly similar to trademarks in which the Complainant has prior rights, the above-mentioned ALLIED UNIVERSAL Trademarks. In addition, it mentions that the Complainant has successfully exercised its rights obtaining victories in ICANN proceedings that resulted in the transfer of domain names incorporating the sign "Allied Universal" or variations thereof. page 3 The Respondent's intent is to trade off the Complainant's goodwill by incorporating the Allied Universal Trademarks in the Domain Name and only adding another "A" to "Allied" and the descriptive term "Benefits". The generic Top-Level Domain ".com" does not either affect the identity or similarity between a domain name and a trademark and, as such, shall not be taken into consideration. Nevertheless, the Complainant argues that it owns and operates the legitimate domain name and, therefore, the Domain Name is not only confusingly similar to ALLIED UNIVERSAL Trademarks but also to such domain name. In fact, consumers will assume that the Domain Name provides jobs, career of benefits information regarding the Complainant when there is no relationship between the Complainant and the Respondent. (b) the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that nothing indicates that the Respondent has been using the Domain Name in any way that would provide rights or legitimate interests, given that: - There is no relationship, endorsement, authorization or affiliation between the Respondent and the Complainant. - The Respondent has registered the Domain Name using a privacy or proxy registration service. - The Respondent, Carolina Rodrigues, Fundacion Comercio Electronico, is not commonly known as "Allied Universal" nor has made an effort to be associated with the Domain Name. (c) the Domain Name was registered and is being used in bad faith. The Complainant asserts that the Domain Name has been registered and used in bad faith for the following reasons: - The Respondent is trying to take commercial advantage of ALLIED UNIVERSAL Trademarks and the Complainant's commercial reputation to trade off the Complainant's goodwill. - The Domain Name was registered long after the Complainant began using and registered the ALLIED UNIVERSAL Trademarks. - The identical use of the ALLIED UNIVERSAL Trademarks in the Domain Name and the fact that it is nearly identical to the Complainant's website could mean that the Respondent plans to use the Domain Name as a website or email extension to obtain personal information from individuals believing that the Domain Name is related to the Complainant. It shall be taken into consideration that Complainant's employees access the website to log in and access their benefits. In addition, it could be a case of targeted phishing attack since users will believe that emails originate from the Complainant and may provide identifying of confidential information. - The Respondent has hidden its identity by registering the Domain Name through a privacy service. - The Respondent's pattern of prior bad faith registration of domain names utilizing well-known trademarks in which the Respondent has no rights or legitimate interests. - Among other cases, the Respondent already targeted the Complainant in 2022 by registering another domain name that conflicted with the Complainant's prior rights. Following a UDPR Complaint, the panel found in favour of the Complainant (Universal Services of America, LP d/b/a Allied Universal v. Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2022-0789). page 4 B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4 of the Policy requires that the Domain Name is speculative or abusive if the following conditions are met: (i) the Domain Name is identical of 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. We now proceed to analyze whether the Complainant has proven that the requirement listed above are met. A. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Domain Name is identical or confusingly similar to its trademark(s). First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights protecting the term ALLIED UNIVERSAL. The ALLIED UNIVERSAL Trademarks include the terms "Allied" and "Universal". Although US trademark registration No. 5136124 contains a particular font style and size, as well as graphic component, the figurative part of a trademark is not capable of representation in a domain name. Therefore, graphic elements will not be taken into account when making a comparison between the Complainant's rights and the Domain Name (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, "WIPO Overview 3.0"). As such, the inclusion of graphical elements in the ALLIED UNIVERSAL Trademarks does not affect the analysis of identity or similarity with the Domain Name which, for these purposes, will be carried out exclusively by taking into consideration the word component of the ALLIED UNIVERSAL Trademarks. Secondly, the Domain Name reproduces the entire word element of the ALLIED UNIVERSAL Trademarks, with the addition of an "a" before the word "Allied" and the suffix "benefits". As the Complainant points out, where a trademark is reproduced in its entirety in the disputed domain name, the incorporation of descriptive, or other terms does not prevent it from being confusingly similar to the Complainant's rights (see section 1.8 of the WIPO Overview 3.0). In the case at hand, the use of an "a" at the beginning of the Domain Name shall be considered a typosquatting. Additionally, the gTLD ".com" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (Section 1.11.1 of WIPO Overview 3.0). See Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269. In the light of the foregoing, there is a confusing similarity between the ALLIED UNIVERSAL Trademarks and the Domain Name, since the Domain Name reproduces in its entirety the word element of the ALLIED UNIVERSAL Trademarks. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed 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 page 5 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 Complainant shall prove that the Respondent has no rights or legitimate interests in the Domain Name. However, this is a negative test that is very difficult to satisfy. Therefore, it is sufficient that the Complainant, using the evidence available to it, provides prima facie evidence that the Respondent had no rights or legitimate interests in the Domain Name at the time of registration. After providing this initial evidence in the Complaint, it would be up to the Respondent to rebut it. In this regard, see previous decisions such as Mölnlycke Health Care AC v. Alejandro Chillón, WIPO Case No. D2020-1326; Ford Motor Company v. Gabriel Guzmán Sánchez, Hosting Titan, S.A. de C.V., WIPO Case No. D2020-1510. The Respondent has failed to respond to the Complaint, so that the Complainant's allegations and evidence have not been rebutted (see Ronaldo de Assis Moreira v. Goldmark - Cd Webb, WIPO Case No. D2004-0827; The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). In other words, while the absence of a Response cannot, per se, establish the absence of rights and legitimate interests, it leaves the Complainant's prima facie case unchallenged. The Complainant has proven ownership over the Allied Universal Trademarks that include the word element "Allied Universal", all of which were applied for prior to the registration of the Domain Name (Annexes 1 and 3 of the Complaint). In addition, it has proven the use of the domain name (Annex 5 of the Complaint). It is established, at least prima facie, that the Respondent does not possess any right, authorization, permission or license over the term "Allied Universal". In addition, this Panel has conducted a Google search of "carolina rodrigues" together with the terms "allied universal" and no relevant results have been obtained. In fact, when searching for the term "aallieduniversalbenefits" the results obtained relate to the Complainant. The Respondent has no legitimate use of the Domain Name in connection with a bona fide offering of goods and services. The website hosted by the Domain Name resolves to links related to third party websites which relate to the Complainant's field of business, regarding jobs or employment information. All the search results offered are: (i) Employee Benefits Administration Software; (ii) Employee Health Insurance; and (iii) Employee Benefit. Therefore, in this Panel's opinion, the Complainant has furnished prima facie evidence that confirms that the Respondent has no rights of legitimate interests over the Domain Name. C. Registered and Used in Bad Faith Finally, it must be assessed whether the Domain Name has been registered and used in bad faith. According to paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent registered and is using the Domain Name in bad faith. As envisaged in paragraph 4(b) of the Policy, the following circumstances, shall be evidence of the registration and use of a domain name in bad faith: (i) Respondent has registered or have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of that Complainant; or (ii) Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or (iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement. page 6 Each one of the four circumstances in paragraph 4(b) of the Policy, if found, would individually be an instance of "registration and use of a domain name in bad faith". In this Panel's opinion, there are several elements which allow to confirm that the Domain Name has been registered and has been used in bad faith: - The prior knowledge of the ALLIED UNIVERSAL Trademarks is a decisive element in assessing the existence of bad faith in the registration of the Domain Name. If the Respondent was aware of the Complainant's prior rights, bad faith may be found in its registration. The Domain Name was registered after the registration of ALLIED UNIVERSAL Trademarks. - In addition, the fact that the Respondent registered the domain name alliduniversal.com which was transferred to the Complainant following a UDPR complaint in 2022 shows that the Respondent is targeting the Complainant, considering that the Domain Name was registered after a decision was rendered in the case Universal Services of America, LP d/b/a Allied Universal v. Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico, Case No. D2022-0789. - As the Complainant points out, there are indications that the Respondent has as a regular practice the registration of domain names identical or similar to trademarks owned by third parties. In this regard, there are multiple decisions cancelling or transferring domain names owned by "Carolina Rodrigues" and which have been cited in the Complaint. See, for instance, Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018; Serena & Lily, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0568; Calvin KleinTrademark Trust and Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3045; LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2834; Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409; Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues Fundacion Comercio Electronico, WIPO Case No. D2019-1109; Société Air France v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, WIPO Case No. D2019-0578; Ford Motor Company v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2787. - The Domain Name resolves to a website with pay-per-click linksthat could lead users to believe that there is an association or relationship between the Respondent and the Complainant, especially considering that the links refer to "employees" and the Complainant manages the employees' benefits website under the domain name allianceuniversalbenefits.com. In addition, the Domain Name could host a service for email addresses that could lead to phishing practices considering that the Domain Name is virtually identical to the Complainant's domain name allianceuniversalbenefits.com (the adding of an "a" before "alliance" will not be perceived by an average consumer) (see Marlink S.A. v. Privacy Service Provided by Withheld for Privacy ehf / Barry Whyt, WIPO Case No. D2021-3878; Fendi, S.r.l. v. Super Privacy Service LTD C/o Dynadot / Wu Yu, WIPO Case No. D2021-2043; AG & Co. KGaA v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / BLACK ROSES, WIPO Case No. D2020-3167; and Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225). - Furthermore, the Respondent has used a privacy service for hiding its identity. The Panel finds this to be an additional indicium that supports a finding of bad faith in the circumstances of this proceeding (Profectus BioSciences, Inc v. Dave Ashley d/b/a NetXMatrix, WIPO Case No. D2014-1173; Glaxo Group Limited v. Analysis and Application Development In, WIPO Case No. D2008-1855). page 7 In the light of the foregoing, this Panel finds that the Complainant has also established the third and final requirement under the Policy: bad faith on the part of the Respondent in the registration and use of the Domain Name. 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 Domain Name, , be transferred to the Complainant. /Carolina Pina-Sánchez/ Carolina Pina-Sánchez Sole Panelist Date: September 12, 2023
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