The Complainant is Securitas AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Lion Global Pty. Ltd. of Sans Souci, New South Wales, Australia, represented by King & Wood Mallesons, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Netfleet (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2018. On the same day, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain name. On February 27, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "auDRP" or the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2018. The Response was filed with the Center on the due date. On April 4, 2018, the Complainant submitted a supplemental filing. On April 9, 2018, the Respondent submitted a supplemental filing.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 18, 2018. 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 Swedish security company registered in 1987 that operates in many jurisdictions around the world. The Complainant holds international trademark registration number 883424 for SECURITAS registered on October 31, 2005, designating several jurisdictions including Australia, where the trademark was granted protection under registration number 1117543, specifying goods and services in classes 6, 9, 14, 35, 36, 37, 39, 41, 42, and 45, including security systems and security services. The Complainant has also obtained Australian trademark registration number 1818526 for SECURITAS and device, registered from September 14, 2006, specifying goods and services in classes 6, 9, 35, 37, 39, 42, and 45. These trademark registrations remain current.
In addition, the Complainant is the owner of United States trademark registration numbers 2712469 and 2714889, both for SECURITAS and device, registered on May 6, 2003 and May 13, 2003, respectively, specifying goods and services in classes 35 and 42. These registrations note that "[t]he English translation of the word SECURITAS in the mark is 'SECURITY'" and they disclaim any exclusive right to use the word SECURITAS apart from the mark as shown. The Complainant is also the owner of United States trademark registration number 4162812 for SECURITAS, registered on June 26, 2012, specifying goods and services in classes 6, 9, 14, 35, 36, 37, 39, 41, 42, and 45 without any disclaimer. These trademark registrations remain current.
The Complainant has also registered various domain names including , which it registered on February 25, 1995 and uses in connection with its official website where it provides information about itself and its security products and services.
The Complainant entered the Australian market in 2017. Prior to that time, an Australian security services company named PSGA Pty. Ltd. provided services to the Complainant's global customers in Australia. On July 3, 2017, the Complainant posted a press release on its website advising that it had entered into an agreement to acquire PSGA Pty. Ltd. The acquisition was completed on August 2, 2017. PSGA Pty. Ltd. is the registrant of the domain name .
The Respondent is an Australian Internet company founded in 2000. Its managing director is named Sean Fogarty. The Respondent owns a portfolio of domain names.
The disputed domain name was created on August 30, 2017. At the time of filing of the Complaint, the disputed domain name was parked at a landing page displaying pay-per-click ("PPC") links to, among other things, security alarms and services. At the top of the landing page a banner read as follows: "The domain may be for sale. Click here to inquire about this domain". Internet users who clicked on this banner were directed to a website where they could submit offers to buy the disputed domain name.
After receiving notice of the Complaint, the use of the disputed domain name changed and certain other actions occurred. On March 10, 2018 the Respondent filed Australian trademark application number 1912612 for SECURITAS and device, specifying cryptocurrency-related goods and services in classes 9, 36, and 42. On the same day, the domain name was registered. The disputed domain name now redirects to a website at that address. Later, the domain names , , , , and were registered. On March 19, 2018 the Respondent registered the business name "Securitas Coin". The Respondent has also applied for cancellation of the Complainant's Australian trademark registrations. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's SECURITAS trademark. The disputed domain name directly and entirely incorporates that trademark. The addition of the country code Top-Level Domain ("ccTLD") suffix does not differentiate the disputed domain name from the Complainant's trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent or its principal has any corresponding rights in the name "Securitas". The Respondent is targeting the Complainant's trademark by displaying sponsored links to, for example, security systems. The PPC links targeting the Complainant's services generate earnings to the Respondent. The Complainant's trademark rights are longstanding, well-established and well-known also in Australia. Due to the Respondent's specialized expertise as a professional domainer and his knowledge of the prior and current use of the disputed domain name for PPC links, the Complainant finds it difficult to believe that the Respondent's due diligence for the disputed domain name would not have identified that to some extent (especially in light of the fact that the Respondent is offering the disputed domain name for sale), the value of the disputed domain name related to the Complainant's mark. Even a cursory investigation by the Respondent (by visiting "www.", a Google search or a simple trademark search) would have disclosed the Complainant's mark especially given the use made of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Complainant's trademark predates significantly the registration of the disputed domain name. Moreover, taking into account the Complainant's business presence worldwide in the last 50 years, it seems unlikely that the Respondent was not aware of the unlawful registration of the disputed domain name. It is likely that the Respondent is profiting from the goodwill associated with the Complainant's trademarks by accruing click-through fees where it has misdirected and confused Internet users. The reasonable expectation of an Internet user seeing the disputed domain name is likely, as a first assumption at least, to be that the disputed domain name would lead to the Complainant's website in the ".au" domain space or to the website of an Australian subsidiary or affiliate of the Complainant. The Respondent's use of the disputed domain name and its failure to clearly differentiate itself from the Complainant amount to further evidence of bad faith intent in the registration of the disputed domain name. The Respondent has also registered the domain name which incorporates the Swedish trademark AXIS and is used in connection with a PPC link site related to products manufactured by Axis AB.
After receiving notice of the Complaint, the Respondent has tried to create a retrospective right in the name "Securitas". When the disputed domain name was parked at a landing page with PPC links, it was the Respondent's active choice to choose which parking provider to use (if any). The Respondent cannot excuse itself by not knowing the content on the website. Given that the Respondent claims to have been working on the project for a long time, it seems unreasonable that it would not have accessed the site during the period of time from August 2017 to February 2018 and noticed that the links were published and that the domain name was listed for sale through the parking provider. The newly established website is a quick fix to circumvent the Policy. The trademark is not generic; one of the Complainant's United States trademark registrations does not disclaim exclusive use. While developing a cryptocurrency project, it would have been reasonable for the landing site to read "website coming soon" rather than listing the disputed domain name for sale and using PPC links related directly to the Complainant and its competitors. The Respondent's trademark, company name and additional domain names were all registered and applied for after being put on notice. The alteration of the website was executed after the Complaint was notified. The timing of the events should clearly show that the Respondent indeed did not plan to develop the site had the Respondent not been put on notice. The invoices and emails raise doubts as they do not specifically mention the disputed domain name. Mere email exchanges cannot be considered as "demonstrable preparations". The Policy requires any "demonstrable preparations" to have been made prior to notification of the dispute. B. Respondent
The Respondent acknowledges the Complainant's rights in the SECURITAS trademark in Australia. However, two United States trademark registrations disclaim exclusive rights to that word and one provides an English translation, which demonstrates that the word "securitas" is generic. The Australian trademark registration is vulnerable to cancelation.
The Respondent has rights and legitimate interests in the disputed domain name. First, the disputed domain name consists of a generic or dictionary word. "Securitas" means "security", "safety" or "freedom from care" in Latin. "Securitas" was also the name of a Roman goddess whose image appeared on ancient coins, which is why the Respondent chose it for a cryptocurrency business. While preparing to launch this business, the Respondent parked the disputed domain name at a page with PPC links based on its generic meaning, which is a legitimate use. The word "securitas" is commonly used by many businesses in security and other industries.
Second, before any notice of the subject matter of the dispute, the Respondent made demonstrable preparations to use the disputed domain name in connection with a legitimate offering of goods or services within the meaning of paragraph 4(c)(i) of the auDRP. The disputed domain name is being used with a new Securitas coin intended to become the next cryptocurrency. The Respondent established a technical specific cryptocurrency website in-house beta development model before it registered the disputed domain name and before going live. Invoices and emails passing between the Respondent and its software developer show that the Respondent has been preparing this new cryptocurrency since at least June 2017. The Respondent had intended to keep this project confidential but, due to this panel proceeding, it has now applied for an Australian trade mark, registered "Securitas Coin" as a business name and launched a website for its cryptocurrency business with a disclaimer to avoid confusion.
Third, the Respondent has not used the disputed domain name to target or trade off the reputation or trademark of the Complainant. Rather, the Respondent is using the disputed domain name for a business in the cryptocurrency industry. The Complainant does not operate in this industry. While carrying out preparations to launch the cryptocurrency, the Respondent temporarily parked the disputed domain name. It is extremely common to monetize domain names while an underlying website or project is still under development. The Respondent's use of a third party automatic PPC parking page is not unlawful and not evidence of a lack of rights or legitimate interests. In this case, the PPC content was not provided by the Respondent and the Respondent had no control over it. There is no evidence that the Complainant notified the third party provider of any issues with the advertising links. The PPC links were intended to be directed at the generic meaning of the word "securitas" and were not intended to trade off the Complainant or its trademark. The Respondent had not heard of the Complainant until it received the Complaint. The PPC links presented to the Complainant related to the Complainant but, most likely, PPC links presented to Australian consumers would relate to the generic meaning of the term. The Complainant has selected a trademark that is highly descriptive of its services and of its industry. The Respondent cannot be punished for using a domain name comprising a generic term in a way which corresponds to its generic meaning.
The Respondent did not register, and has not used, the disputed domain name in bad faith. The Complainant has provided no evidence in support of its assertion that its SECURITAS trademark is well‑known in Australia. The Respondent had not heard of the Complainant until receiving notice of the Complaint. There is no concept of constructive notice in determinations of bad faith under the auDRP. The Respondent is using the disputed domain name to host a website at which, eventually, the public will be able to trade the Respondent's cryptocurrency, Securitas. The Respondent is a highly respected Australian business operating in the digital media space. The Respondent also owns the domain name but "axis" is a generic, dictionary term and is not being used to target its Swedish trademark owner. Although the Respondent's PPC link website briefly contained links to the Complainant and others operating in the security industry, this is because those links were intended to be directed at the generic meaning of the term which is "security". The Respondent only generated 31 cents in click-through revenue during the time that the disputed domain name was parked, most of it probably generated by the Complainant's lawyers.
The Respondent planned to develop a cryptocurrency under the name "securitas" prior to receiving notice of the Complaint. While the disputed domain name was parked at a landing page with PPC links, the Complainant and a number of its competitors were featured in the automatically-generated links because they use a generic term descriptively as a trademark. The notice that the disputed domain name may have been for sale is commonly found on third party landing pages and was computer-generated. The Respondent does not want to, and never had any intention to, sell the disputed domain name to the Complainant or any other person. The newly established website is not a quick fix. 6. Discussion and Findings 6.1 Supplemental Submissions
Each party made an unsolicited supplemental submission after the Response. The Complainant filed a Supplemental Submission due to the material change in use of the disputed domain name and other events that took place after the Respondent was put on notice of the Complaint.
The Respondent requests that the Panel not consider the Complainant's Supplemental Submission because it has not raised any evidence that was not available to the Complainant at the time of the Complaint, or that the Respondent did not raise itself in the Response. However, if the Panel accepts the Complainant's Supplemental Submission, in the interests of procedural fairness, the Respondent requests that the Panel also consider the Respondent's Supplemental Submission that it filed to address alleged misstatements in the Complainant's Supplemental Submission.
The Panel notes that the Rules make no express provision for unsolicited supplemental filings by either party. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings received from either Party.
The Panel observes that a number of circumstances have changed since the commencement of this proceeding, as regards the use of the disputed domain name and the Respondent's claimed rights and legitimate interests in respect of the disputed domain name. Given that the Complainant could not have anticipated these changed circumstances at the time of its Complaint, the Panel is willing to allow it the opportunity to address them. In the interests of equality, the Panel is willing to give the Respondent an opportunity to reply. Both supplemental filings were filed before the Panel was appointed and their admission will not diminish the efficiency of this proceeding.
Therefore, in these exceptional circumstances, the Panel decides to admit both parties' supplemental filings. 6.2 Substantive Issues
Paragraph 4(a) of the auDRP provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(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 or subsequently used in bad faith.
Failure to prove any one of these elements will result in the Complaint being denied. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the SECURITAS trademark.
The Respondent acknowledges that the Complainant holds the two Australian trademark registrations described in Section 4 above but argues that they are vulnerable to cancellation. After this proceeding was commenced, the Respondent filed requests for cancellation of those trademark registrations. However, the Panel notes that those requests are still pending and that the Complainant retains all its rights in the Australian trademark registrations. In any event, the Complainant owns trademark registrations for SECURITAS in other jurisdictions.
The disputed domain name incorporates the SECURITAS wordmark in its entirety with no additional element besides the open Second-Level Domain ("2LD") suffix ".". This 2LD suffix is generally disregarded in an assessment of confusing similarity between a domain name and a trademark for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd,WIPO Case No. DAU2004-0001; Telstra Corporation Limited v. CQ Media Group Pty Ltd,WIPO Case No. DAU2008-0023.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP. B. Rights or Legitimate Interests
Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:
(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent's] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant bears the burden of proof of this second element, as it does all elements in paragraph 4(a) of the auDRP. See L'Oreal Australia Pty v. Namewise Pty Ltd / Nicholas Bolton,WIPO Case No. DAU2013-0009.
The Complainant has conducted a trademark search and found no relevant trademark rights held by the Respondent or its managing director. The disputed domain name (minus the 2LD suffix) is identical to the Complainant's SECURITAS trademark. The Complainant has provided evidence showing that, after the Respondent acquired the disputed domain name, the Respondent parked it at a landing page displaying PPC links. All of the PPC links presented to the Complainant at that landing page were related to security alarms or security services. When the Complainant's lawyers in Sweden clicked on the "securitas" link, they were redirected to advertising for a company related to the Complainant and a Swedish competitor of the Complainant. The Respondent is also the registrant of the domain name which was parked at a landing page with PPC links. The PPC links presented to the Complainant's lawyer at that landing page were related to security cameras produced by another Swedish company that holds rights in a trademark for AXIS. In addition, the landing page where the disputed domain name was parked displayed a banner indicating that it may be for sale. Paragraph 4(c)(i) of the auDRP expressly states that the offering of the disputed domain name for sale does not constitute a bona fide offering of goods or services that would establish a right or legitimate interest for the purposes of the second element. All this indicates that the Respondent's use of the disputed domain name did not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the auDRP.
The Complainant has provided the names of the Respondent, Lion Global Pty. Ltd., and of its managing director, Sean Fogarty, neither of which is "Securitas". There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the auDRP.
The Complainant has shown that the landing page to which the disputed domain name resolved displayed PPC links, which were intended to generate revenue for the Respondent. That is not a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the auDRP.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent's case, the Respondent argues that it has made demonstrable preparations to use the disputed domain name in connection with an offering of goods or services within the meaning of paragraph 4(c)(i) of the auDRP. The Panel notes that this circumstance only refers to preparations that occurred before the Respondent received notice of the subject matter of the dispute which, in the present dispute, was when the Respondent received notice of the Complaint sent by the Center on March 6, 2018. The Panel has disregarded the Respondent's evidence of use of the disputed domain name after that date given its potentially self-serving nature, except insofar as that evidence may be inconsistent with the Respondent's version of events that occurred prior to receipt of notice of the Complaint.
There is some evidence of preparations prior to receipt of notice of the Complaint to use the disputed domain name in a way unrelated to the Complainant. The evidence shows that the Respondent has been preparing a website for use in connection with a proposed cryptocurrency. The Respondent engaged in correspondence (which is partly redacted) with a third party who was developing software for a cryptocurrency website and an in-house beta website for test and development purposes. The evidence includes two invoices to the Respondent dated June 26 and 30, 2017 and a quote for the Respondent dated July 2017, for undisclosed amounts. The correspondence began before the Complainant entered the Australian market.
There is evidence that links these prior preparations to the disputed domain name. An exchange of emails with a third party on December 28 and 29, 2017 referred to its proposed website as the "Securitas" website. The Respondent explains that it chose the word "Securitas" because it is the name of an image that appears on ancient Roman coins and therefore would be suitable for a new currency.
During this time, the disputed domain name remained parked at the landing page with PPC links for approximately six months, until after the Respondent received notice of the Complaint. The Respondent has provided a credible explanation that this delay was due to the time taken to develop software.
As to whether these preparations were bona fide, the Panel notes that the evidence on the record regarding the distinctiveness and reputation of the Complainant's trademark is limited. "Securitas" is registered as an Australian trademark without any disclaimer of the exclusive right to use that word. However, "securitas" is not a coined term but rather a Latin word meaning "security" and a not uncommon part of names used in the security industry and financial services industry in Australia. The word "Securitas" forms part of 19 Australian company names and nine Australian business names currently registered with the Australian Securities & Investments Commission (not including the business name recently registered by the Respondent). Three of these companies have registered domain names that incorporate the word "Securitas" and use them in connection with websites for apparently legitimate businesses in the security services or financial services industry. "Securitas" is also the name of a magazine produced by an Australian insurance company. The Complainant also acknowledged in 1999 that "the word Securitas is included in the name of several completely independent companies in Europe".
There is no evidence on the record that the Complainant's trademark has been used in Australia, where the Respondent is located, nor, more importantly, any evidence that the Respondent has been otherwise exposed to use of the Complainant's trademark. The Respondent does not operate in the same industry as the Complainant and has had no previous dealings with the Complainant. There is no evidence that the Complainant's entry into the Australian market was reported in the press.
On the other hand, the Respondent describes itself in the Response as "a highly respected leader[ ] in various fields, including consulting services, digital media, product development, the Internet and start ups". Given this, one would have expected the Respondent to conduct Internet and trademark searches prior to registration of the disputed domain name. The top result of a Google search for "securitas" refers to the Complainant. The PPC links at the landing page to which the disputed domain name resolved might also have alerted the Respondent to the Complainant during the preparations for its own website, although they would presumably not have included the links presented to the Complainant regarding a related company and a competitor, which neither party alleges conduct business in Australia. The Panel also notes that the Respondent parked another domain name combining a generic word, that is also a trademark, with a 2LD suffix at a landing page with PPC links.
The evidence is finely balanced but, ultimately, the Panel considers that the Respondent has rebutted the Complainant's prima facie case and, therefore, that the Complainant has failed to satisfy the second element in paragraph 4(a) of the auDRP. C. Registered or Subsequently Used in Bad Faith
Given the Panel's finding under the second element of paragraph 4(a) of the auDRP, there is no need to consider the third element. However, the Panel notes that the Complainant would have had difficulty showing bad faith registration on the present record. Given the nature of the Complainant's mark and the Respondent's demonstrable preparations noted above, the Complainant would similarly have had difficulty showing bad faith use on the present record. D. Reverse Domain Name Hijacking
The Respondent requests that the Panel make a finding of reverse domain name hijacking. The Respondent alleges that the Complaint was brought in bad faith in light of the following: (i) failure to contact the Respondent prior to filing the Complaint; (ii) citation of the WIPO Overview rather than the auDRP Overview; (iii) factual omissions regarding the meaning and use of the word "securitas"; (iv) statements allegedly giving the false impression that the Complainant has worldwide monopoly rights to the word "securitas", that its trademark is well-known in Australia and that it has a worldwide reputation in its trademark; (v) allegedly false statements that the Respondent proposed to sell the disputed domain name; (vi) failure to disclose disclaimers in two United States trademark registrations; (vii) an alleged attempt to tarnish the Respondent's reputation by asserting that the Respondent was targeting the Complainant; and (viii) that the Complainant's Supplemental Submission was "nothing more than a delaying tactic".
Paragraph 15(e) of the auDRP Rules provides that, if the panel finds that the complaint "was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder", the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the auDRP Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
Although the Panel has not accepted the Complainant's assertion that its mark is especially well-known in Australia, the Panel does not consider that any assertions in the Complaint were made in bad faith. There is no duty to contact a respondent prior to filing a Complaint. Nor does the Panel consider the filing of the Complainant's Supplemental Submission a delaying tactic; on the contrary, the Panel has admitted that supplemental filing.
Therefore, the Panel does not find that the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding. E. Refiling
Given that the evidence in this case is finely balanced, it may be possible for future behavior by the Respondent to cast a different light on this Panel's assessment of the Respondent's rights or legitimate interests in the disputed domain name. Given the nuance in this case (e.g., regarding the distinctiveness of the trademark), the Complainant's evidence would need to be particularly compelling. 7. Decision
For the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Sole Panelist
Date: April 30, 2018
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