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

WIPO Case No. D2022-0790

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Universal Services of America, LP d/b/a Allied Universal v. Super Privacy
Service LTD c/o Dynadot / Hao Zhang

Case No. D2022-0790

1. The Parties

The Complainant is Universal Services of America, LP d/b/a Allied Universal, United States of America

(“United States” or “US”), represented by Cozen O'Connor, United States.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Hao Zhang, China.

2. The Domain Name and Registrar

The disputed domain name <allieduniversalbenefits.org> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2022. connection with the disputed domain name. On March 8, 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 March 15, 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 March 16, 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 March 23, 2022. In accordance with the Rules,
paragraph 5, the due date for Response was April 12, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 14, 2022.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on May 10, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is UNIVERSAL SERVICES OF AMERICA, LP, dba ALLIED UNIVERSAL, a well-known securities company incorporated under the laws of the US State of California and headquartered in the same state. The Complainant is the largest security services company in the US, with over 150,000 employees. The Complainant renders other services, including employment and employee services, offered by several different divisions of the Complainant. Details on the presence of the Complainant in the market is displayed in Annex 7 of the Complaint.

The Complainant owns prior rights over the ALLIED UNIVERSAL trademark, notably U.S. Registration No. 5,136,006 for the mark ALLIED UNIVERSAL, registered on February 7, 2017, in International Classes No. 37, 41, 42, and 45, as well as US Registration No. 5,965,576 for the mark ALLIED UNIVERSAL EVENT

SERVICES, granted on January 21, 2020, in International Classes No. 35, 42 and 45. Copies of these registrations were presented as Annexes 4 and 5 of the Complaint.

The Complainant has established rights over the mark ALLIED UNIVERSAL, and its fame and renown is inevitably linked to the Complainant.

The disputed domain name was registered on December 2, 2021. The disputed domain name resolves to a website bearing not only the mark ALLIED UNIVERSAL but also displaying links such as “employee benefits”, “employee health insurance” etc. (Annex 8 of the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <allieduniversalbenefits.org> is confusingly similar to the Complainant’s mark registered and used worldwide. In fact, the disputed domain name is composed by the mark “ALLIED UNVERSAL”, which is identical to the Complainant’s registered mark, together with the word “benefits”.

The expression chosen by the Respondent to compose the disputed domain name together with “ALLIED UNIVERSAL” is “benefits”, which is directly related to the Complainant’s main activities. The descriptive terms do not negate the confusing similarity between the disputed domain name and the Complainant’s trademark. On the contrary, they lead to confusion, given the presence of the Complainant’s mark.

The Complainant owns several registrations for the trademark ALLIED UNIVERSAL, as evidenced by
Annexes 4 and 5 to the Complaint.

The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark associated with a descriptive expression – shows a clear intention of misleading Internet users, as it links to a website that bears reference to several services rendered by the Complainant, as shown in Annex

8. The Complainant underlines that the disputed domain name gives the impression that it is in all ways

associated with the Complainant.

B. Respondent

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

page 3

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

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 to the disputed domain name; and

iii.        the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark ALLIED UNIVERSAL, which is registered and clearly used regularly throughout the world.

Further, the Panel finds that the disputed domain name is confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the disputed domain name registered by the Respondent with the addition of descriptive term “benefits”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, 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. Further, it is well established that “.org”, as a generic Top Level Domain, may be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s mark (section 1.11.1 of the WIPO Overview 3.0).

Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute.

B. Rights or Legitimate Interests

The Panel understands that the mark ALLIED UNIVERSAL is naturally associated with the Complainant, since it is not only registered as a mark in its name, but also has been used to identify the services rendered by the Complainant for several years.

Further, the Complainant provided evidence of the renown of the mark ALLIED UNIVERSAL and the full
range of securities, employment and employee services rendered under this name to its clients. Hence, the
Panel considers that the Respondent, in all likelihood, could not be unaware of the mark ALLIED
UNIVERSAL, and its direct relation to the Complainant.

In fact, the Complainant presented evidence that the disputed domain name has been used to link to a website bearing not only the mark ALLIED UNIVERSAL but links to “employee benefits”, “employee health insurance” etc.

The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain
name. For this reason, the Panel believes that the Complainant has satisfied the second element of the
Policy.

page 4

C. Registered and Used in Bad Faith

It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.

The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the term “benefits”. Further, the additional term can surely be considered an allusion to the Complainant’s core business, a fact from which the Respondent may well profit by giving Internet users the impression that the disputed domain name belongs to the Complainant.

The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name may be intended for illegitimate purposes.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved 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 name <allieduniversalbenefits.org> be transferred to the Complainant.

/Alvaro Loureiro Oliveira/
Alvaro Loureiro Oliveira
Sole Panelist
Date: May 24, 2022