ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Universal Services of America, LP d/b/a Allied Universal v. Paul Newman, Allied universal Case No. D2024-0925 1. The Parties Complainant is Universal Services of America, LP d/b/a Allied Universal, United States of America (“United States”), represented by Cozen O'Connor, United States. Respondent is Paul Newman, Allied universal, United States. 2. The Domain Name and Registrar The disputed domain name
is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2024. On March 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2024, 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 (Unknown Registrant or Contact Privacy Inc. Customer 7151571251 as per Annex 1 to the Complaint) and contact information in the Complaint. The Center sent an email communication to Complainant on March 6, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 7, 2024. 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 Respondent of the Complaint, and the proceedings commenced on March 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2024. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2024.
page 2 The Center appointed Scott R. Austin as the sole panelist in this matter on April 18, 2024. 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 following facts appear from the Complaint (as amended) and its attached Annexes, which have not been contested by Respondent, and which provide evidence sufficient to support: Complainant is the world’s largest security services company, providing proactive security services and security related technology under the mark ALLIED UNIVERSAL (“the ALLIED UNIVERSAL Mark”). Complainant operates in at least 90 countries around the world and comprises an USD18 billion company. Complainant is the third largest employer in North America and the seventh largest employer in the world with a workforce of approximately 800,000 employees. Complainant owns numerous registrations protecting the ALLIED UNIVERSAL Mark in the United States and around the world, including: - United States Trademark Registration No. 5,136,006, ALLIED UNIVERSAL, registered with the United States Patent and Trademark Office (“USPTO”) on February 7, 2017, for a range of security related services in International Classes 37, 41, 42, and 45 and claiming a first use date of August 1, 2016. - United States Trademark Registration No. 5,136,112, ALLIED UNIVERSAL SECURITY SERVICES, registered on February 7, 2017, for a range of security related services in International Classes 41 and 45 and claiming a first use date of August 1, 2016. - United Kingdom Trademark Registration No. UK00801379928, ALLIED UNIVERSAL, registered on May 22, 2018, for a range of security related services in International Classes 37, 41, 42, and 45. The WhoIs record shows the disputed domain name was registered on January 31, 2024, and Complainant states that the disputed domain name does not resolve to an active website as of the filing of the Complaint, which nonuse amounts to passive holding by Respondent. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name: that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
page 3 The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of the probabilities that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. Trademark registration evidence has been submitted in the form of electronic copies of valid and subsisting trademark registration documents in the name of Complainant referenced in section 4 above and therefore, Complainant has demonstrated it has rights in the ALLIED UNIVERSAL Mark. Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1; see Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. WIPO Overview 3.0, section 1.8 provides: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” While the addition of the term here, “careers”, may bear on assessment of the second and third elements, the Panel finds the addition of such term within the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. See Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203; see also Citrix Systems, Inc. v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2020-1255. Prior UDRP panels have also found the Top-Level Domains, such as “.com” and “.net”, being viewed as a standard registration requirement, may typically be disregarded under the first element analysis. See WIPO Overview 3.0, section 1.11.1; see also Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; L’Oréal v. Tina Smith, WIPO Case No. D2013-0820. The Panel finds Complainant’s ALLIED UNIVERSAL Mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the ALLIED UNIVERSAL Mark for the purposes of the Policy. The Panel finds the first element of the Policy has been established.
page 4 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. First, Complainant asserts that Respondent is not sponsored by or affiliated with Complainant in any way, nor has Complainant authorized or given Respondent permission or license to use Complainant’s trademarks in any manner, including in domain names. Second, Complainant contends Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests under Policy paragraph 4(c)(ii). Prior UDRP panels have held where no evidence suggests that Respondent is commonly known by the disputed domain name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049. Here, the Panel notes the Whois records indicate “Paul Newman, Allied universal” as the Respondent. However, noting the Panel’s further findings below, the Panel finds the use of “Allied universal” more likely to be an effort on impersonating the Complainant by the Respondent. Third, Complainant’s evidence shows the disputed domain name resolves to an inactive website. Respondent, therefore, is not making a legitimate noncommercial or fair use of the disputed domain name nor using it in connection with a bona fide offering of goods or services to confer a right or legitimate interest within the meaning of Policy paragraphs 4(c)(i) and (iii) because there is no evidence the disputed domain name is being used at all. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075. Moreover, the Panel finds that the disputed domain name is inherently misleading. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. The panel may, therefore, consider the totality of the circumstances when analyzing bad faith under Policy, paragraph 4(a)(iii) and may make a finding of bad faith that is not limited to the enumerated factors in Policy, paragraph 4(b). WIPO Overview 3.0, section 3.2.1. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
page 5 First, Complainant contends that since Complainant has developed a distinctive and widely recognized reputation in the ALLIED UNIVERSAL Mark, Respondent was no doubt aware of the ALLIED UNIVERSAL Mark and intentionally targeted Complainant and its mark in making the decision to configure and register the disputed domain name essentially identical to Complainant’s ALLIED UNIVERSAL Mark except for the addition of the term “career” which enhances the likelihood of confusion with Complainant by adding a descriptive term which implies the disputed domain name is a resource for those seeking to work for Complainant. Given the widespread recognition of Complainant’s ALLIED UNIVERSAL Mark worldwide shown in the evidence noted under Section 4 above, including the United States, where Respondent appears to be located, the many years of registered use of the ALLIED UNIVERSAL Mark prior to Respondent’s assumed registration of the disputed domain name on January 31, 2024, Respondent likely had actual knowledge of Complainant’s rights when it registered the disputed domain name, which shows bad faith registration in the circumstances of this proceeding. See Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287; see also Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Further the facts set forth above make it reasonable for the Panel to conclude it is more likely than not that Respondent targeted Complainant’s trademark to use it to trade on Complainant’s reputation and goodwill, and Respondent is found, therefore, to have registered and used the disputed domain name in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba WhoIs Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that that are present here which have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. See Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246. Having reviewed the record, the Panel notes as it did in 6B above, Respondent is passively holding the disputed domain name based on the browser flag it generates: “This site can’t be reached” which represents either non-use or linking to an inactive website. Complainant contends that the disputed domain name has never resolved to an active page, as it has remained inactive since its registration. Prior UDRP panels have found under the doctrine of passive holding that that the word bad faith “use” in the context of paragraph 4(a)(iii) does not require a positive act on the part of respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii). WIPO Overview 3.0, Section 3.3. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260. Complainant’s ALLIED UNIVERSAL Mark has a strong reputation and is widely known, as evidenced by its substantial use in the United States and 90 countries around the world, in use for many years before the registration of the disputed domain name. Moreover, the composition of the disputed domain name encompasses the ALLIED UNIVERSAL Mark in its entirety. The Panel finds, therefore, that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use of the disputed domain name. Complainant’s ALLIED UNIVERSAL Mark has grown in recognition to the level of worldwide recognition, supporting the implausibility of any good faith use to which the disputed domain name may now be put. The factors present here are well-settled as supporting a finding of bad faith
page 6 use for passive holding or non-use of a disputed domain name that is confusingly similar to a complainant’s mark. See, Instagram, LLC v. Asif Ibrahim, Asif Ibrahim, WIPO Case No. D2020-2552; WIPO Overview 3.0, section 3.3. The Panel finds Complainant’s arguments and evidence persuasive and has received no arguments or evidence from Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) 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 name be transferred to Complainant. /Scott R. Austin/ Scott R. Austin Sole Panelist Date: May 20, 2024
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