The Complainant is AlliedBarton Security Services LLC, King of Prussia, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Maying Joe, Pyongyang, Democratic People's Republic of Korea; PrivacyProtect.org, Queensland, Australia, represented pro se.
The disputed domain name <alliebarton.com> is registered with RegisterMatrix.com Corp. (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2011. On November 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2011, 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 November 30, 2011 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 December 2, 2011. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2011. The Response was filed with the Center on December 7, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 18, 2012. 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.
The Complainant is a Delaware, United States of America (“U.S.”) Limited Liability Company with its principal place of business at King of Prussia, Pennsylvania, U.S. The Complainant is the largest U.S. owned security officer services company and was originally established in 1957. A principal component of the Complainant's business is the provision of security services in connection with a “family” of ALLIEDBARTON registered trademarks. These trademarks include U.S. registered trademark number 3144420 for the stylized word mark ALLIEDBARTON registered on September 19, 2006 in class 45 and U.S. registered trademark number 3144421 for the word mark ALLIEDBARTON registered on September 19, 2006 in class 45. Each of these registered trademarks was filed on February 21, 2005 and the Complainant claims a first use in commerce for each dating from at least as early as September 4, 2004. The Complainant is also the registrant of the domain name <alliedbarton.com> which it registered on December 13, 2004 and at which is located its principal corporate website.
The Respondent appears to be a private individual with an address in the Democratic People’s Republic of Korea. The disputed domain name was registered on October 18, 2005. The website associated with the disputed domain name is a parking page containing sponsored advertising links including inter alia “Security Services”, “Emergency Response” and “Security Patrols”.
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that its “family” of ALLIEDBARTON trademarks is well-known and has achieved significant recognition in the marketplace in connection with the Complainant’s services. The Complainant notes that information about its various security related services is provided on its website at “www.alliedbarton.com”. In addition to its registered trademark rights, the Complainant claims significant common law trademark rights in its family of ALLIEDBARTON marks through their use, advertising and promotion. The Complainant notes that the disputed domain name incorporates the Complainant's registered trademarks, displaying all but one of the identical characters “in the same chronological order”.
The Complainant asserts that the Respondent is not affiliated with the Complainant and that there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services. The Complainant submits that the Respondent anonymously registered the disputed domain name in an effort to evade the consequences of registering a domain name for which it has no rights or legitimate interests.
The Complainant states that the Respondent cannot claim to have been commonly known by the disputed domain name and has made no effort to associate itself with that name. The Complainant asserts that the Respondent has used the disputed domain name in connection with a commercial link service designed to lure Internet users and divert them to other commercial sites which is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the disputed domain name.
The Complainant asserts that the Respondent is well known as a “serial cyber-pirate and typosquatter” who currently owns at least 248 domain names, of which several are confusingly similar to an existing trademark, and are being used in connection with a commercial link service, specifically <gooooooooooooooooooooooooogle.com> (which the Complainant says resolves to a link farm with links including words such as "internet search marketing", a service offered by the well-known Internet search company Google.com); and <myeby.com> (which the Complainant says resolves to a link farm with links to auction websites similar to the well-known Internet auction company eBay.com).
The Complainant notes that the Respondent was named as a respondent in the case of "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Ma Ying Jo/PrivacyProtect.org, WIPO Case No. D2011-0357 in which the respondent is similarly accused of registering a domain name identical or confusingly similar to an existing trademark and that the panel in that case required the respondent’s domain name <docmarten.com> to be transferred to the complainant.
The Complainant asserts that the Respondent’s use of the disputed domain name is in wilful infringement of the Complainant’s prior rights and that the Respondent has attempted to take commercial advantage of the Complainant’s trademarks and commercial reputation, and to trade off the Complainant’s goodwill. The Complainant states that the website associated with the disputed domain name lacks significant content of its own but uses the disputed domain name in connection with links to third party commercial sites including similar services to those offered by the Complainant under its ALLIEDBARTON trademark. The Complainant also submits that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent denies that the disputed domain name was registered in bad faith and states that the Complainant has failed to prove this. The Respondent points out that “Allie” and “Barton” is a person's first and last name and states that a search for "allie barton" in the Google search engine shows over two million results almost all of which are personal pages for the social networking sites “Facebook” and “Twitter”. The Respondent states that a claim that the Complainant should take over all domain names with “alliebarton” in the prefix constitutes reverse domain name hijacking.
With regard to the Complainant’s claim that the website associated with the disputed domain name is a link farm and not a bona fide site, the Respondent states that the page is currently parked pending development. The Respondent adds that the links on the said website are auto-generated by the parking service and that parked pages are not link farms “as anyone who is familiar with domain names knows already”.
The Respondent states that the Complainant’s reference to "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Ma Ying Jo/PrivacyProtect.org, supra is irrelevant. The Respondent submits that <docmarten.com> was “reverse hijacked”. The Respondent likens that case to the present dispute, which it says is a similar attempt to reverse hijack one of its domain names.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights in the trademark ALLIEDBARTON by virtue of the registered trademarks cited in the Factual Background section above. The Respondent does not take issue with the Complainant’s submissions and evidence regarding the Complainant’s trademark portfolio. In comparing the trademark to the disputed domain name, the generic top level domain “.com” is to be disregarded as is customary in cases under the Policy. It can then be seen that the disputed domain name is almost identical to the Complainant’s trademark, the only difference being the removal of the letter “D” in the disputed domain name. The Complainant states that, on such comparison, the disputed domain name is confusingly similar to the Complainant’s trademark. For its part, the Respondent does not directly address the question of identity or confusing similarity. While the Respondent states that “Allie” and “Barton” is a person's first and last name it does not, for example, assert that this means that the disputed domain name could in no way be seen as confusingly similar to the Complainant’s trademark.
The Panel notes that the disputed domain name consists of all the letters in the Complainant’s trademark bar one, in the correct consecutive order. In the Panel’s view the missing letter “D” in the disputed domain name does not serve to distinguish the latter from the Complainant’s trademark. As such, the visual similarity of the two is striking and is in the Panel’s opinion readily capable of confusion.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with sufficient evidence of rights or legitimate interests to rebut that prima facie case.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not commonly known by the disputed domain name, that the Respondent is not affiliated with the Complainant and that there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services. The burden of production accordingly shifts to the Respondent.
The Respondent says that the domain name refers to a personal name, “Allie” being the first or given name and “Barton” being the surname and that there are numerous examples of the use of such a personal name online. This appears to be the beginnings of an apparently credible submission however as far as the Panel is concerned it simply does not go far enough. What the Respondent tellingly does not say is what relationship the Respondent has with a person or group of people having this name. The Respondent does not, for example, explain and demonstrate with evidence that this is the Respondent’s own name or the name of a person closely connected to the Respondent. Nor does the Respondent state what “development” it intends for the presently parked website associated with the disputed domain name. The Respondent does not produce the results of the search it states that it has carried out on the Google search engine.
The Respondent’s brief assertions, had they been fuller and backed by substantive evidence, might have been capable of establishing rights or legitimate interests in the disputed domain name. There are examples in past cases under the Policy where the apparent inclusion of a complainant’s trademark within a domain name has upon investigation and evidence turned out to be the genuine personal name of the respondent, see for example, G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537. Nevertheless, and as discussed in that case, even when a respondent can demonstrate that the domain name in question constitutes the respondent’s personal name, there must be no countervailing evidence that that name has merely been adopted opportunistically by the respondent in order to give a spurious air of legitimacy to an otherwise questionable registration.
In the present case the Panel is presented with what appears to be an obvious parking page associated with the disputed domain name consisting of sponsored advertising links many of which are focused on the goods and services provided by the Complainant and having no reference to or connection with the personal name “Allie Barton”. The use of a domain name which is confusingly similar to a registered trademark in connection with sponsored advertising links is not considered to be a bona fide offering of goods and services in terms of the Policy. As such, the disputed domain name seems to be something of a “questionable registration” itself and one which calls for further explanations from the Respondent. The Respondent explains the current appearance of its website on the basis that this is parked pending development and that the links are auto-generated by the parking service. This again might have constituted a credible submission, however it is accompanied by no evidence of how the Respondent proposes to develop the site, why it has selected the disputed domain name and why or in what way it is focusing its efforts upon individuals having the particular personal name “Allie Barton”.
The Respondent’s limited submissions in the present case must be set against the fact that it effectively admits that it was the respondent in the case of "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Ma Ying Jo/PrivacyProtect.org, supra, in which the panel found that the respondent was using the domain name <docmarten.com> to host a parking website which featured links to advertisements for the sale of footwear and the complainants’ “Dr. Martens” footwear on websites which were not authorized or approved by the complainants as well as on websites which referred to competitors of the complainants. The respondent’s actions in that case were found to be highly suggestive of opportunistic bad faith. The Respondent’s comment in its present submissions that the domain name <docmarten.com> was reverse hijacked is not borne out by the decision of the panel in the relevant case. Furthermore, the Complainant points out the existence of two additional domain names in the name of the Respondent incorporating well-known trademarks and resolving to similar websites containing sponsored advertising links, thus raising the reasonable inference that the Respondent repeatedly engages in such conduct. The Response does not address this submission of the Complainant.
In all of these circumstances, the Panel finds the Respondent’s explanation of its alleged rights or legitimate interests is not credible and is wholly lacking in supportive evidence. The Panel considers that it is more likely than not that the Respondent is intentionally operating the website associated with the disputed domain name as a pay-per-click advertising site targeting the Complainant’s trademarks through the confusing typographical similarity between the disputed domain name and the Complainant’s ALLIEDBARTON trademarks. As noted above, the operation of such a site does not constitute a bona fide offering of goods and services and does not confer rights or legitimate interests upon the Respondent.
Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Complainant’s submission is that the Respondent deliberately intended to target the Complainant’s trademark by registering a likely typographical variant thereof as a domain name, a practice sometimes described as “typosquatting”, and that the Respondent thereafter intentionally used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. For such a submission to be made out, the Panel must be satisfied that the Respondent had knowledge of the Complainant and/or its trademarks at the date of registration of the disputed domain name and that it registered the same with intent to target these.
It should be noted that the registration date of the Complainant’s registered trademarks, being September 19, 2006, post-dates the date of registration of the disputed domain name, being October 18, 2005. Nevertheless, the Complainant claims to have used the ALLIEDBARTON trademark in commerce since 2004, perhaps most notably in connection with its principal corporate website, the associated domain name for which, <alliedbarton.com>, was registered on December 13, 2004. The Complainant also claims that its trademark is well-known and has achieved significant recognition in the relevant marketplace, the implication being that the Respondent would have known of it by the date of registration of the disputed domain name.
It is notable that the Respondent does not dispute any of the Complainant’s submissions as to the first use, nature and quality of its ALLIEDBARTON mark and the Panel considers it to be particularly significant that the Respondent does not deny having knowledge of the Complainant when it registered the disputed domain name. By contrast, the Respondent merely provides an alternative explanation for its selection and subsequent use of the disputed domain name, which on the basis outlined above the Panel finds to be wholly lacking in both substance and credibility. Accordingly, the Panel considers that it is more probable than not that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark in accordance with paragraph 4(b)(iv) of the Policy.
In these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the third element under the Policy has been established.
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides inter alia:
“WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances […]
WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP
In the present case, the Respondent has made a bare allegation of Reverse Domain Name Hijacking without providing any supporting evidence, whether of the kind anticipated by the WIPO Overview 2.0 or otherwise. The Respondent has therefore failed to prove bad faith on the part of the Complainant and furthermore, the Complainant has succeeded in establishing each of the three elements listed in paragraph 4(a) of the Policy. In these circumstances, the Respondent’s request for a finding of Reverse Domain Name Hijacking is denied.
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, <alliebarton.com>, be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: January 31, 2012