Universal Services of America, LP d/b/a Allied Universal v Morgan Freeman

WIPO Case No. D2024-3980

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Universal Services of America, LP d/b/a Allied Universal v. Morgan Freeman

Case No. D2024-3980

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 Morgan Freeman, United States.

2. The Domain Names and Registrar

The disputed domain names <theallieduniversal.net> and <theallieduniversal.org> are registered with

GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27,

2024. On September 29, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On September 30, 2024, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain names which differed from the named Respondent (Unknown Registrant) and contact
information in the Complaint. The Center sent an email communication to the Complainant on October 1,
2024, 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

October 3, 2024.

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 paragraph 5, the due date for Response was October 27, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on October 28, 2024.

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The Center appointed Clark W. Lackert as the sole panelist in this matter on November 1, 2024. 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, Complainant is one of the world’s largest security services companies, providing

proactive security services and cutting-edge technology to deliver evolving, tailored solutions. Through its global organization, Complainant operates in at least 90 countries across the globe, providing its clients the benefit of working with a USD 18 billion company with a workforce of approximately 800,000 employees

globally. Complainant is the third largest employer in North America and the seventh largest employer in the
world. Through its various global services, Complainant aims to serve and safeguard customers,

communities, and people.

Complainant has gained common law trademark rights in the mark ALLIED UNIVERSAL and variations

thereof (the “Marks”), through the use, advertisement, and promotion of such marks in connection with

Complainant’s various security services. Complainant has also protected its intellectual property rights by

filing for and obtaining trademark registrations with the United States Patent and Trademark Office and

elsewhere. These registrations include, but are not limited to, the following registrations:

Jurisdiction	Trademark	Registration Number	Registration Date
United States	ALLIED UNIVERSAL	5,136,006	February 7, 2017
United States	ALLIED UNIVERSAL & Design	5,136,124	February 7, 2017
United States	ALLIED UNIVERSAL	5,136,112	February 7, 2017
SECURITY SERVICES

Beyond registering the Marks throughout the world, Complainant has also spent significant resources protecting its Marks from infringement, including favorable decisions in UDRP proceedings, resulting in the transfer to Complainant of other domain names incorporating the Marks. See Universal Services of America, LP d/b/a Allied Universal v. Cybernet Systech Private Limited, WIPO Case No. D2018-1544; Universal

Services of America, LP d/b/a Allied Universal v. Whois Agent, Whois Privacy Protection Service Inc. /

George Washere, WIPO Case No. D2017-0618; and Universal Services of America, LP d/b/a Allied
Universal v. Shilei, WIPO Case No. D2017-0370.

Respondent registered the disputed domain names on July 29, 2024, long after Complainant first used and registered the Marks.

The disputed domain name <theallieduniversal.org> resolves to a landing page with an email subscription

feature and the language “THE ALLIED UNIVERSAL” and “Your Trusted Security Partner”, with a copyright

notice indicating “Copyright © 2024 The Allied Universal - All Rights Reserved”.

The disputed domain name <theallieduniversal.net> resolves to a Registrar parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

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As described above, Complainant owns numerous trademark registrations featuring the Marks.

Nevertheless, in an apparent attempt to trade off of Complainant’s goodwill in its above-referenced Marks,

the disputed domain names are virtually identical to Complainant’s Marks apart from the additional term
“the”, which does nothing to distinguish the disputed domain names from Complainant’s Marks.

Additionally, the disputed domain names’ use of the generic Top-Level Domain (“gTLDs”) “.org” and “.net” does not create a meaningful distinction from Complainant’s Marks. It is well established under the Policy that “the specific top level of a domain name […] does not affect the determination of the identity or

similarity between a domain name and a trade mark”. Automobili Lamborghini Holding S.p.A. v. Unity 4

Humanity, Inc., WIPO Case No. DTV2008-0010; see also Rollerblade, Inc. v. Chris McCrady, WIPO
Case No. D2000-0429.

In light of the foregoing, there is no doubt that the disputed domain names are confusingly similar to registered trademarks in which Complainant has established rights.

The Respondent has no legitimate interests in the disputed domain names. Respondent is not affiliated with Complainant, and there is no evidence to suggest that Respondent has registered the disputed domain names to advance legitimate interests or for the bona fide offering of legitimate goods or services. Respondent has anonymously registered the disputed domain names in an effort to evade the consequences of registering a domain name for which there are no rights or legitimate interests. The use of a privacy or proxy registration service to register a domain name has led numerous panels to take the

registrant’s anonymity into account and draw adverse inferences. See Ustream.TV, Inc. v. Vertical Axis, Inc,

WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647; Fifth Third
Bancorp v. Secure WhoisInformation Service, WIPO Case No. D2006-0696; HSBC Finance Corporation v.

Clear Blue Sky Inc., WIPO Case No. D2007-0062.

Respondent is not commonly known as “allied universal”, there is no evidence connecting Respondent and

the disputed domain names, and Complainant has not authorized, licensed, or endorsed Respondent’s use
of Complainant’s Marks in the disputed domain names. Further, the website located at the

<theallieduniversal.org> disputed domain name is currently accessible and uses THE ALLIED UNIVERSAL trademark in connection with security guard services. However, the website has no option for consumers to purchase and/or inquire about the security guard services and thus the website is not actually offering

security guard services in commerce in connection with the Marks. Additionally, the website located at
<theallieduniversal.net> is currently inaccessible and there is no content posted. Thus, there is no basis to
find that Respondent is commonly known by the disputed domain names under Policy paragraph 4(c)(ii).

See CNU Online Holdings, LLC v. Mardva Logsdon, cashnetusafinance, WIPO Case No. D2017-0732.

The disputed domain names have been registered and are being used in bad faith.

Respondent registered the disputed domain names on July 29, 2024, long after Complainant first began

using and registered the Marks. In fact, Complainant’s United States trademark registrations on the Principal

Register charges Respondent with constructive knowledge of Complainant’s ownership of the Marks.

15 U.S.C. § 1072; Barney's Inc. v. BY Bulletin Board, WIPO Case No. D2000-0059; Trip.com, Inc. v. Daniel
Deamone, WIPO Case No. D2001-1066. Respondent also concealed its true identity by registering the
disputed domain names through a privacy service, which supports the inference that Respondent registered
and uses the disputed domain names in bad faith. See The Saul Zaentz Company v. Eurobox Ltd.,
WIPO Case No. D2008-0156; Medco Health Solutions, Inc. v. Whois Privacy Prot. Serv., Inc.,
WIPO Case No. D2004-0453; Keyes v. Old Barn Studios, Ltd., WIPO Case No. D2002-0687.

Respondent registered the disputed domain names for what appears to be an attempt to siphon the goodwill and reputation of Complainant and its Marks. Such registration and use of the disputed domain names is in and of itself a form of opportunistic bad faith. See, e.g., Scania CV AB (Publ) v. Unaci, Inc., WIPO Case

No. D2005-0585 (use of mark by someone with no connection to mark owner “suggests opportunistic bad

faith”); Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163

(“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”).

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For the foregoing reasons, it is apparent that the Respondent’s registration and use of the disputed domain

names was, and is, in bad faith in contravention of paragraphs 4(a)(iii) of the Policy.

B. Respondent

The Respondent is in default and did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing

(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain
names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the

Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the implied affiliation. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad

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faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a

domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels 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. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness and reputation of the

Complainant’s trademark, and the composition of the disputed domain names, and finds that in the

circumstances of this case the passive holding of the disputed domain names does not prevent a finding of
bad faith under the Policy. Moreover, use of wording on the landing page for the disputed domain name

<theallieduniversal.org> such as “Your Trusted Security Partner” and an apparently false copyright notice (“Copyright © 2024 The Allied Universal. All Rights Reserved”) increase consumer confusion and further

supports a finding of bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain

names constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 names <theallieduniversal.net> and <theallieduniversal.org> be transferred to the Complainant.

/Clark W. Lackert/

Clark W. Lackert

Sole Panelist
Date: November 7, 2024