Universal Services of America, LP d/b/a Allied Universal v Contact Privacy

WIPO Case No. D2022-2581

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Universal Services of America, LP d/b/a Allied Universal v. Contact Privacy
Inc. Customer 7151571251 / Tyree Jenkins, Allied Universal Security

Case No. D2022-2581

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 Contact Privacy Inc. Customer 7151571251, Canada / Tyree Jenkins, Allied Universal

Security, United States.

2. The Domain Name and Registrar

The disputed domain name <allieduniversalsecurityofficer.org> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2022. On July 15, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2022, 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 July 18, 2022 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 19, 2022.

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 July 22, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was August 11, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 12, 2022.

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The Center appointed Lynda M. Braun as the sole panelist in this matter on August 17, 2022. 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

Established in 1957, the Complainant is the largest United States-owned security officer services company. workforce of approximately 800,000 employees.

The Complainant owns, among others, the following trademark registrations with the United States Patent and Trademark Office: ALLIED UNIVERSAL, United States Registration No. 5,136,006, registered on February 7, 2017, with a first date use in commerce of August 1, 2016, in international classes 37, 41, 42, and 45; and ALLIED UNIVERSAL & Design, United States Registration No. 5,136,124, registered on February 7, 2017, with a first date use in commerce of August 1, 2016, in international classes 37, 41, 42, and 45 (hereinafter collectively referred to as the “ALLIED UNIVERSAL Mark”).

The Complainant maintains its official website at “ “aus” being an abbreviation of “Allied
Universal Services”.

The Disputed Domain Name was registered on June 20, 2022, resolving to an inactive landing page with no substantive content.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s ALLIED UNIVERSAL Mark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(i) The Disputed Domain Name is identical or confusingly similar to a 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

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(iii)      The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the ALLIED UNIVERSAL Mark.

It is uncontroverted that the Complainant has established rights in the ALLIED UNIVERSAL Mark based on
its use since 2016, as well as its registered trademarks for the ALLIED UNIVERAL Mark in the United States.
The consensus view is that “registration of a mark is prima facie evidence of validity, which creates a
rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o
Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore
the Panel finds that the Complainant has rights in the ALLIED UNIVERSAL Mark. Moreover, the registration
of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a
UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 1.2.1. Thus, the Panel finds that the Complainant has rights in the ALLIED
UNIVERSAL Mark.

The Disputed Domain Name consists of the ALLIED UNIVERSAL Mark in its entirety followed by the dictionary terms “security” and “officer”, and then followed by the generic Top-Level Domain (“gTLD”) “.org”.

It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. For example, numerous prior panels have held that the addition of other terms to a complainant’s mark does not prevent a finding of confusing similarity. See, e.g., Instagram, LLC v. Registration Private, Domains By Proxy, LLC /Adana adana, adana, WIPO Case No. D2020-3074 (“the clear presence of the Complainant’s trademark in the disputed domain name is ordinarily sufficient for a finding of confusing similarity”). As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See also Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; and Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Finally, the addition of a gTLD such as “.org” in a domain name is technically required. Thus, it is well
established that such element may typically be disregarded when assessing whether a domain name is
identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO
Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the

Disputed Domain Name is confusingly similar to the Complainant’s ALLIED UNIVERSAL Mark.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the

Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the
Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the
Respondent to use the Complainant’s ALLIED UNIVERSAL Mark. The Respondent uses the name “Allied
Universal Security” in its Registrar application, although there is no evidence that it is commonly known by

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the Disputed Domain Name. Further, the Respondent has not made any demonstrable preparations to use
the Disputed Domain Name in connection with a bona fide offering of goods or services.

Moreover, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Name to resolve to an inactive landing page, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.

Finally, the composition of the Disputed Domain Name, comprising the entirety of the ALLIED UNIVERSAL Mark followed by the dictionary terms “security” and “officer”, and the gTLD “.org” cannot constitute fair use here.

The Panel concludes that the Complainant has established an unrebutted prima facie case that the

Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the

Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the
Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).

First, based on the circumstances here, the Panel concludes that the Respondent registered and is using the UNIVERSAL Mark. The Panel notes that, while the Respondent’s affiliation may be “Allied Universal Security” (which is not even proven), there is no explanation for the Respondent’s selection of the terms “security” and “officer” other than the Respondent attempting to pass off as the Complainant, and the Panel finds it likely that the composition of the Disputed Domain Name was selected for its reference to the Complainant’s ALLIED UNIVERSAL Mark. The composition of the Disputed Domain Name indicates that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its ALLIED UNIVERSAL Mark. See

Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or
confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without
any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith.
See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en
1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Third, the Panel finds it likely that the Respondent had actual knowledge of the Complainant’s ALLIED UNIVERSAL Mark and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith. UDRP panels have found that the registration of a disputed domain name that is confusingly similar to a well-known trademark by an unaffiliated entity can create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a disputed domain name that incorporates a well-known or distinctive trademark without a legitimate purpose does not prevent a finding that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation

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Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Specifically, UDRP panels have frequently found that the lack of active use of the disputed domain name (i.e., passive holding) does not prevent a finding of bad faith. See WIPO Overview 3.0,

section 3.3.

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered

relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the
complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of
actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact
details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to
which the domain name may be put.

Based on the above, the Panel has taken into consideration the following factors in arriving at a finding of bad faith registration and use: (i) the Complainant’s trademark is well-known; (ii) the Respondent appears to have taken pains to conceal its identity by using a privacy protection service; and (iii) the Respondent has not submitted a response in the proceeding. The Panel therefore finds that the Disputed Domain Name has been registered and used in bad faith.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the

Complainant.

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 <allieduniversalsecurityofficer.org> be transferred to the

Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: August 26, 2022