ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Universal Services of America, LP d/b/a Allied Universal v. Malaysia Perkins Case No. D2024-3050 1. The Parties The 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. The Respondent is Malaysia Perkins, United States. 2. The Domain Name and Registrar The disputed 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 25, 2024. On July 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2024, 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, 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 the Respondent of the Complaint, and the proceedings commenced on August 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2024. The Center appointed William F. Hamilton as the sole panelist in this matter on September 9, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is one of the world’s largest security services companies. The Complainant operates in 90 countries. The Complainant employs approximately 800,000 persons and is the third-largest employer in North America and the seventh-largest employer globally. The Complainant owns United States Patent and Trademark Office Registration No. 2680917 for the trademark ALLIED SECURITY (the “Mark”) with a registration date of January 28, 2003. The Respondent registered the disputed domain name on April 22, 2024. The disputed domain name resolves to a website featuring the Mark and a large image of a security officer. The website solicits Internet visitors to provide an email address to “Subscribe” and “Sign up to be the first to get updates.” 5. Parties’ Contentions A. Complainant The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name consists of the Mark’s words joined by a hyphen. The Complainant contends that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, never operated a business under the disputed domain name, has not advertised the disputed domain name, and never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent knew of the Mark and registered and used the disputed domain name in bad faith to disrupt the Complainant’s business and to phish information from unsuspecting Internet users. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (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 was registered and is being used in bad faith. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in the Mark for the purposes of the Policy by virtue of the Mark’s registration. WIPO Overview 3.0, section 1.2.1.
page 3 The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name consists of the exact words of the Mark separated by a hyphen. Confusing similarity may be established for the purposes of the Policy when a domain name wholly incorporates a complainant’s registered mark or where at least a dominant feature of the relevant mark is recognizable in the domain name. WIPO Overview 3.0, section 1.7. In this case, the Mark is clearly recognizable in the disputed domain name, notwithstanding the addition of the hyphen separating the words of the Mark. The Top-Level Domain of the disputed domain name, in this case “.info”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1 and Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759. The Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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. The Panel finds on the evidence that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has expressly disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Respondent has failed to provide evidence showing rights or legitimate interests in the disputed domain name. The disputed domain name will likely confuse unsuspecting Internet users into believing that the disputed domain name will resolve to a website associated, sponsored, or affiliated with the Complainant. Such association seems to have been the intent of the Respondent given the Respondent’s apparent phishing of email information. Such utilization of a disputed domain name can never establish rights or legitimate interests. Furthermore, the Panel finds that the disputed domain name carries a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
page 4 (ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location. Panels have held that using a domain name for illegal activity, including impersonation and phishing, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitute bad faith under the Policy. It is beyond any reasonable doubt that the Respondent has attempted to confuse Internet users by prominently featuring the Complainant’s Mark in the disputed domain and on its website to create a likelihood that Internet users will believe that the disputed domain name resolves to a website that is sponsored or affiliated with the Complainant. Dm-Drogerie Markt GmbH & Co. KG v. WhoisGuard Protected, WhoisGuard, Inc. / Charlotte Meilleur, WIPO Case No. D2018-1248. The Panel concludes that the Respondent has prominently incorporated the Complainant’s Mark in the disputed domain name and on the Respondent’s website to trick Internet users into providing their email addresses. The Panel finds the third element of the Policy has been established. 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 the Complainant. /William F. Hamilton/ William F. Hamilton Sole Panelist Date: September 23, 2024
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