WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Securitas AB v. Alabert Kiss

Case No. D2019-2699

1. The Parties

The Complainant is Securitas AB, Sweden, represented by AWA Sweden AB, Sweden.

The Respondent is Alabert Kiss, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <securitasgruppe.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. On November 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2019 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 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 November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Marina Perraki as the sole panelist in this matter on December 13, 2019. 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

Complainant, with headquarters in Stockholm, Sweden, was founded in 1972 and has become a major player in security services, operating in 58 countries throughout North America, Europe, Latin America, the Middle East, Asia and Africa. Complainant employs more than 370,000 people and in 2018, total sales amounted to MSEK 101,467.

Complainant owns several trademark registrations throughout the world for the SECURITAS mark, including:

- Swedish trademark registration No. 216784 for SECURITAS (word), filed on March 12, 1986 and registered on May 11, 1990 for goods and services in international classes 1, 2, 3, 4, 6, 9, 11, 13, 15, 16, 17, 18, 19, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40 and 41;

- Hungarian trademark registration No. 133004 for SECURITAS (logo), registered on December 22, 1992 for goods and services in international classes 9, 35 and 42;

- European Union trademark registration No. 000603811 for SECURITAS (logo), filed on July 25, 1997 and registered on October 29, 2001, for goods and services in international classes 1, 6, 9, 16, 18, 35, 36, 37, 38, 39, 40, 41 and 42, and;

- United Arab Emirates registration No. 92899 for SECURITAS (word), registered on January 26, 2009 for services in international class 42.

Complainant owns a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) with the SECURITAS mark, including <securitas.com>, <mysecuritas.com> and <securitas.group>. Complainant uses these domain names to connect to its website at “securitas.com” through which it provides its security services.

The Domain Name <securitasgruppe.org> was registered on October 20, 2016 and resolves to a website at “www.securitasgruppe.org”, prominently displaying Complainant’s SECURITAS mark, and appearing to be offering, inter alia, security services (the “Website”). Furthermore, per Complainant, the Domain Name was imprinted on third party business cards that were brought to the attention of Complainant through its affiliates in Hungary.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s trademark SECURITAS in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The additional word “gruppe” (group) does not avoid a finding of confusing similarity, as Complainant’s trademark is recognizable within the Domain Name (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.org” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the SECURITAS mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, the Domain Name resolves to the Website prominently displaying Complainant’s mark SECURITAS and appearing to offer, inter alia, security services. Furthermore, per Complainant, the Domain Name was imprinted on third party business cards that were brought to the attention of Complainant.

The use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Because the SECURITAS mark had been widely used and registered by Complainant at the time of the disputed domain name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this disputed domain name (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; Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226).

Furthermore, the Website appears to offer, inter alia, security services, namely services in the same field of business as those provided by Complainant. This supports registration in bad faith (see, WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the disputed domain name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).

The above also indicate that Respondent knew of Complainant and chose the disputed domain name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).

Furthermore, Respondent could have conducted a trademark search and should have found Complainant’s prior registration in respect of SECURITAS (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Lastly, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of the SECURITAS mark on the Internet (“www.securitas.com”) (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

As regards bad faith use, per Complaint, the Domain Name was displayed on third party business cards, as reported by Complainant affiliates in Hungary. Furthermore, the Domain Name is used for hosting a Website which appears to offer, inter alia, security services, prominently displaying the SECURITAS mark of Complainant, as an attempt to attract, for commercial gain, Internet users searching for Complainant’s SECURITAS mark, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of the website and this is a clear indication that the Domain Name is being used in bad faith (F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488).

The Panel considers the following factors: (i) the reputation of Complainant’s mark, as repeatedly recognised (Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117; Securitas AB v. Davina Rodrigues / Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2016-0890), (ii) the failure of Respondent to submit a response, (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that the Domain Name was used to host the Website, which prominently displays the SECURITAS mark of Complainant and appears to offer, inter alia, security services and that, as per Complaint, the Domain Name was used on third party business cards.

Under these circumstances and on this record, the Panel finds that Respondent registered and used the disputed domain name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 <securitasgruppe.org> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: December 27, 2019