The Complainant is AlliedBarton Security Services LLC of King of Prussia,, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Zhichao Yang, Hefei, Anhui, China.
The disputed domain names <alliedburtonedge.com>, <alliedbartan.com> and <alliedbartn.com> are registered with GoDaddy.com, LLC
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2013. On May 14, 2013, the Center transmitted by email to the Registrar of GoDaddy.com a request for registrar verification in connection with the disputed domain names. On May 15, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2013.
The Center appointed Hariram Jayaram as the sole panelist in this matter on July 5, 2013. 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 an American-owned security officer service company established in 1957. The Complainant owns a family of registered ALLIEDBARTON trademarks, which include the ALLIEDBARTON EDGE mark.
The Complainant has registered the following trade marks in the United States:
- Trade Mark Registration No. 3,144,421 ALLIEDBARTON, registered in Class 45 on September 19, 2006
- Trade Mark Registration No. No. 3,728,360 ALLIEDBARTON EDGE , registered in classes 41 and 45 on December 22, 2009
- Trade Mark Registration No. 3,751, 627 ALLIEDBARTON EDGE EDUCATE DEVELOP GROW ENGAGE, registered in Classes 41 and 45 on February 23, 2010
- Trade Mark Registration No. 3,722,330 EDGE, registered in classes 41 and 45 on December 8, 2009.
- Trade Mark Registration No. 3,152, 959 ALLIEDBARTON SECURITY SERVICES, registered in Class 45 on October 10, 2006
- Trade Mark Registration No. 3,223,891 ALLIEDBARTON SECURITY SERVICES & Design registered in Class 45 on April 3, 2004
- Trade Mark Registration No. 3,144,420 ALLIEDBARTON & Design, registered in Class 45 on September 19, 2006
The Complainant has also registered domain names incorporating the word “alliedbarton”. The domain name <alliedbarton.com>, was registered in favour of the Complainant on December 13, 2004 and the domain name <alliedbartonedge.com> was registered in favour of the Complainant on June 25, 2008.
The disputed domain names were registered on February 27, 2013.
The Complainant is the largest American-owned security officer service company established in 1957. One of the main components of the Complainant’s business includes the provision of security services in connection with its family of ALLIEDBARTON marks. The Complainant’s well-known family of ALLIEDBARTON marks, which includes the marks ALLIEDBARTON EDGE and other ALLIEDBARTON EDGE related marks, has achieved significant recognition in the marketplace in connection with the Complainant’s services. The <alliedburtonedge.com> disputed domain name incorporates the Complainant’s federally registered ALLIEDBARTON EDGE mark, in a manner that is confusingly similar to a trade mark in which the Complainant has established rights. The Complainant further owns and operates the website located at the domain name <alliedbartonedge.com>, which was registered in favour of the Complainant on June 25, 2008, was launched in 2009, and offers online training classes for current and prospective customers of the Complainant. With the exception of one letter, the <allieburtonedge.com> disputed domain name displays the identical characters in the exact same chronological order as the Complainant’s federally registered ALLIEDBARTON EDGE mark and the Complainant’s <alliedbartonedge.com> domain name. The disputed domain names incorporate the federally registered ALLIEDBARTON marks in a manner that is confusingly similar to trade marks in which the Complainant has established rights. The Complainant further owns and operates the website located at the domain name <alliedbarton.com>, which is Complainant’s main corporate website, which was registered in favour of the Complainant on December 13, 2004, and which offers information about the Complainant’s various security related services. With the exception of one letter, each of the <alliedbartan.com> and <alliedbartn.com> disputed domain names display the identical characters in the exact same chronological order as the Complainant’s federally registered ALLIEDBARTON marks and the Complainant’s <alliedbarton.com> domain name. While the Complainant has gained trade mark rights in common law and other rights in its family of ALLIEDBARTON marks, including ALLIEDBARTON EDGE and other ALLIEDBARTON EDGE related marks, though their use, advertising and promotion, the Complainant has also protected its family of ALLIEDBARTON marks by filing for and obtaining trade mark registrations with the United States Patent and Trademark Office. The Complainant used its family of ALLIEDBARTON marks, including ALLIEDBARTON EDGE and other ALLIEDBARTON EDGE related marks, in commerce, and obtained the above-referenced trade mark registrations long before the Respondent registered the disputed domain names on February 27, 2013. Given the Complainant’s extensive and exclusive rights in its family of ALLIEDBARTON marks, including the mark ALLIEDBARTON EDGE, there can be little question that the Respondent purchased the disputed domain names with full knowledge of and the intent to trade off the Complainant’s pre-existing rights. The disputed domain names each incorporates the Complainant’s federally-registered ALLIED BARTON and/or ALLIEDBARTON EDGE marks, and with the exception of one letter, display the identical characters in the exact same chronological order. The disputed domain names further incorporate, with the exception of one letter, the whole of the Complainant’s <alliedbarton.com> or <alliedbartonedge.com> domain names. The Complainant clearly has rights in the ALLIED BARTON and ALLIEDBARTON EDGE marks, one or both of which, with the exception of one letter, are fully incorporated into the disputed domain names.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain names to advance legitimate interest for the bona fide offering of legitimate goods or services. The Respondent has not provided any contact information whatsoever on the websites located at “www.alliedburtonedge.com”, “www.alliedbartan.com” and “www.alliedbartn.com” and the Respondent (as an individual, business, or other organization) cannot claim to have been commonly known by the disputed domain names or similar name related thereto. The Respondent has solely used the disputed domain names in connection with a commercial link service, known as a “link farm,” 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 names. Use of domain names in connection with a commercial link service, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant’s trade mark, do not confer a legitimate right to or interest in a domain name.
The Respondent’s adoption and use of the disputed domain names is in bad faith, has continued with full knowledge of the Complainant’s prior rights given the affirmative notice provided by the Complainant, and is willful infringement of the Complainant’s prior rights. The Respondent has attempted to take commercial advantage of the Complainant’s trademarks and commercial reputation and trade off the Complainant’s goodwill. An Internet user that seeks the Complainant’s products or services, and who types in any of the disputed domain names that are registered in favour of the Respondent, is directed to websites that lack any independent content of their own, but rather use the disputed domain names in connection with links to third-party commercial sites grouped under headings such as “Armed Security Guard”, “Unarmed Security Officer” and “Private Security Patrol” that include similar services to those offered by the Complainant under its ALLIEDBARTON and ALLIEDBARTON EDGE marks and on its websites, available at “www.alliedbartonedge.com” and “www.alliedbarton.com”. The Respondent’s use of the disputed domain names is likely to give rise to confusion as to an association, affiliation, or sponsorship between the Complainant and the Respondent. On March 25, 2013, the Complainant sent the Respondent a letter in which it notified the Respondent of the Complainant’s rights and requested that the Respondent transfers the disputed domain names to the Complainant. On April 10, 2013, the Complainant sent the Respondent a follow up letter once again notifying the Respondent of the Complainant’s rights and requesting that the Respondent transfer the disputed domain names to the Complainant. The Respondent has ignored the Complainant’s March 25, 2013 and April 10, 2013 correspondences. 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 trademarks.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements to obtain an order that a domain name should be transferred:
i. the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
ii. the 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.
The Complainant is the registered owner of a family of ALLIEDBARTON trademarks which includes ALLIEDBARTON and ALLIEDBARTON EDGE trademarks. The said trademarks have been used by the Complainant in connection with its business of providing security services. The disputed domain names are <alliedburtonedge.com>, <alliedbartan.com> and <alliedbartn.com>. The only difference between the Complainant’s ALLIEDBARTON trade mark and the <alliedbartan.com> disputed domain name is that the said disputed domain name substitutes the letter “o” with the letter “a.” The only difference between the Complainant’s ALLIEDBARTON trade mark and the <alliedbartn> disputed domain name is that the “o” in the word “barton” is left out. Similarly, the disputed domain name <alliedburtonedge.com> is identical to the Complainant’s ALLIEDBURTON EDGE trade mark with the exception that the letter “a” in the word “barton” is substituted with the letter “u.” These small differences are insufficient to distinguish the disputed domain names from the Complainant’s trademarks. The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.
In The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145, the disputed domain names were <sportsmanguides.com> and <sportsmenguides.com> and the complainant’s trade mark was “THE SPORTSMAN’S GUIDE”. The panel noted as follows:
“The disputed domain names’ similarity with the Mark is obvious. One differs only by deletion of the apostrophe and final letter ‘s’ and the other by those distinctions and substitution of an ‘e’ for an ‘a’. Minor variations such as these do not suffice to distinguish a domain name from a protected mark. Confusion is obviously likely and […] intentional”
This Panel agrees with the observation made in the above decision and finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant has alleged that the Respondent is not affiliated with the Complainant; is not commonly known by the disputed domain names or a related similar name; is not using the disputed domain names in connection with a bona fide offering of goods or services; and the Respondent is using the disputed domain name to mislead Internet users to commercial websites.
The Respondent, who did not file a Response, neither disputed these contentions nor provided information as to the Respondent’s rights or legitimate interests in the disputed domain names. In fact, prior to the commencement of the current proceedings, the Complainant had made attempts to contact the Respondent through correspondence to seek a settlement and provide notice of the Complainant’s rights in the said trademarks. The Respondent remained silent and did not respond to the said correspondences.
On the basis of the Complainant’s submissions and evidence at hand, the use of disputed domain names with only minor spelling variations from the Complainant’s trademarks, and the apparent purposeful use of the disputed domain names in connection with a commercial link service, the Panel finds that the Respondent is not making use of the disputed domain names for a bona fide offering of goods and services, and is not making a legitimate noncommercial or fair use of the disputed domain names.
In MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550, the panel held as follows:
“Use of the domain name in connection with such a commercial link service is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name.”
The Panel therefore agrees with the observations made in the above decision and finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Complainant has alleged that the Respondent has taken unfair advantage of the Complainant’s rights by registering domain names similar to that of the Complainant’s trademarks. The disputed domain names which are misspellings of the Complainant’s trademarks and are used in connection with commercial link services by the Respondent, may lead to consumer confusion. The disputed domain names resolve to websites which feature links to various commercial websites including those related to the services provided by the Complainant. The Respondent has no justified reason to incorporate spelling variations in the disputed domain names. The Panel is of the view that such use of the disputed domain names and the registration of the disputed domain names show that the Respondent is well aware of the business of the Complainant and that the disputed domain names have been created with the intention to reap commercial benefit generated through confusion and customer diversion. The most plausible explanation to such variations seems to be related to the Respondent’s intention to create customer confusion and diversion by misleading Internet users who mistype the proper spelling of the Complainant’s marks.
In Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, the disputed domain names were <amazoh.com>, <qmqzon.com>, and <smszon.com> and the Complainant’s trade mark was AMAZON. The panel held:
“It is well settled under the Policy that the practice of typosquatting, in and of itself, constitutes bad faith registration … and the Respondent’s use of the disputed domain names in an attempt to profit from and exploit the Complainant’s mark is manifest from the record. Such bad faith exploitation includes the Respondent’s use of the disputed domain names in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement or the Respondent’s website.”
The Panel considers further that the failure of the Respondent to respond to the notice given by the Complainant is additional evidence that the disputed domain names were registered and are being used in bad faith.
In Thaigem Global Marketing Limited v. Disaporn Suwannaporn, WIPO Case No. D2002-0333, the panel stated:
“The Respondent's failure to reply to its communication has forced the Complainant to conclude that his conduct is calculated to mislead the trade and public into believing that the said Domain Name is connected with the Complainant and that he is seeking to pass on the said Domain Name for an amount far in excess of his out-of-pocket expenses. Although the documents relating to this administrative proceeding were sent to the e-mail and physical addresses of the Respondent, he has neither acknowledged receipt of them nor filed a response to the complaint to refute the Complainant's statements. The allegations of the Complainant remain unchallenged. It is not possible for the Panel in the circumstances to make a finding that the Respondent's registration of the said Domain Name or his passive use is bona fide.”
As the allegations of the Complainant have not been challenged by the Respondent, this Panel agrees with the observations made in the above decisions. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 names <alliedburtonedge.com>, <alliedbartan.com>, and <alliedbartn.com> be transferred to the Complainant.
Hariram Jayaram
Sole Panelist
Date: July 19, 2013