Universal Services of America, LP d/b/a Allied Universal v Whois Privacy
WIPO Case No. D2022-1991
•21-07-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Universal Services of America, LP d/b/a Allied Universal v. Whois Privacy,
Private by Design, LLC / Ayaz Hemant, Durmi Islam
Case No. D2022-1991
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 Respondents are Whois Privacy, Private by Design, LLC, United States / Ayaz Hemant and Durmi
Islam, Bangladesh.
2. The Domain Names and Registrar
The disputed domain names <allieduniversalehub.net> and <allieduniversalehub.org> are registered with
Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2022. On June 2, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 2, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 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 June 8, 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 Respondents of the Complaint, and the proceedings commenced on June 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 5, 2022.
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The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 7, 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
The Complainant was established in 1957, currently operating as a security and facility services provider in
90 countries across the globe and employing 800,000.
The Complainant is the owner, amongst others, of the following trademark registrations:
| - | United States trademark registration No. 5,136,006 for ALLIED UNIVERSAL, filed on May 6, 2016, and registered on February 7, 2017, in International classes 37, 41, 42, and 45; and |
| - | United States trademark registration No. 5,136,124 for ALLIED UNIVERSAL and device, filed on May 27, 2016, and registered on February 7, 2017, in International classes 37, 41, 42, and 45. |
The disputed domain names were registered on February 8, 2022 and February 2, 2022, respectively. Both disputed domain names resolve to active webpages with similar content, displaying the Complainant’s logo and providing a “web portal so that its employees can easily access their hours and payments, view
important notification, and update their contact information”.
5. Parties’ Contentions
A. Complainant
The Complainant claims to be a USD 18 billion company, being the largest American-owned security officer services company, the third largest employer in the United States, and the seventh largest employer in the world.
Furthermore, the Complainant asserts that its main corporate website is available at <aus.com>, being “aus” the abbreviation for “Allied Universal Services” and the abbreviation the Complainant uses to house its main corporate website spelled out in its entirety. In addition to that, the Complainant also uses the ALLIED
UNIVERSAL trademark in connection with the eHub portal for clients and employees.
Furthermore, the Complainant claims to provide services by and through its various divisions (including Allied
Universal Security Services, Allied Universal Security Systems, Allied Universal Janitorial Services, and
Allied Universal Staffing Services), having gained significant common law trademark rights in its ALLIED
UNIVERSAL marks through the use, advertisement, and promotion of such marks in connection with the
Complainant’s services.
According to the Complainant, the disputed domain names are under common control given that both disputed domain names (i) were registered within six (6) days; (ii) share the same naming pattern; (iii) through the same Registrar; (iv) indicate physical addresses from Dhaka, Bangladesh which (v) appear to not point to verifiable locations and (vi) are being used in connection with nearly identical infringing webpages requesting visitors to submit personally identifiable information.
Under the Complainant’s view the disputed domain names incorporate the entirety of the Complainant’s ALLIED UNIVERSAL trademark, not being the addition of the term “ehub” sufficient to add any distinctiveness thereto and, in fact, increases the likelihood of confusion as to the source of the disputed domain names.
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As to the absence of rights or legitimate interests, the Complainant argues that:
(i) the Respondent is not affiliated with the Complainant;
(ii) there is no evidence to suggest that the Respondent has registered the disputed domain names to advance legitimate interests or for the bona fide offering of legitimate goods or services; and
(iii) given that the websites available at the disputed domain names include content showing the
Complainant’s registered trademarks and intellectual property, the Respondent (as an individual, business, or other organization) cannot claim to be commonly known by the disputed domain names or similar names related thereto, having the Respondent clearly made an effort to associate itself with the Complainant.
Moreover, the Respondent’s use of the disputed domain names in connection with attempts to fraudulently obtain personally identifiable information from individuals consists willful infringement of the Complainant’s prior rights, having the Respondent attempted to take commercial advantage of the Complainant’s
trademarks and commercial reputation to trade off the Complainant’s goodwill. The Respondent, according to the Complainant, is clearly using the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks.
Lastly, the Complainant argues that a consideration of the totality of factors compared to factors that degree of distinctiveness or reputation of the Complainant’s ALLIED UNIVERSAL trademark, the Respondent concealing its identity, and the implausibility of any good faith to which the Respondent registered or would use the disputed domain names.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names;
| and | |
| (iii) | the disputed domain names have been registered and are being used in bad faith. |
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(a) of the Rules, if the Respondents do not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.
A. Consolidation of Multiple Respondents
The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.
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Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the
consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel
consideration of such a consolidation scenario”.
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the two disputed domain names dealt with at the same procedure, given that all disputed domain names: (a) were registered within six days, (b) through the same registrar and (c) using privacy protection services; (d) share a similar naming pattern; (e) resolve to similar websites that display the Complainant’s logo and requesting visitors to submit personally identifiable information; and (f) no objection was made by the Respondents regarding consolidation.
This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.
B. Identical or Confusingly Similar
The Complainant has established its rights in the trademark ALLIED UNIVERSAL (Annexes 4 and 5 to the Amended Complaint). It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview 3.0, section 1.7).
The Complainant’s mark is entirely reproduced in the disputed domain names and the addition of the term “ehub”, in this Panel’s point of view, does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the
Complainant’s trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the
disputed domain names or a name corresponding to the disputed domain names in connection with a bona
fide offering of goods or services; or
(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, even if they have acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names,
without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
As seen above, the websites to which the disputed domain names resolve to reproduce the Complainant’s trademark logo in an attempt to fraudulently collect personal data. Such conduct cannot characterize a bona fide offering of goods or services.
In addition to that, the Complainant indeed states that the Respondent is not affiliated with the Complainant. While the websites hosted at the disputed domain names both feature footers that disclaim their association to the Complainant, the construction of the disputed domain names and overall content found at the disputed
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domain names suggests affiliation or endorsement by the Complainant and the footers are only found at the
bottom of the impersonating websites.
Furthermore, the absence of any trademarks registered by the Respondents corresponding to the disputed domain names corroborates with the indication of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names
primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the
owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for
valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the
disputed domain names; or
(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain name, provided that the
Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the disputed domain names primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for
commercial gain, Internet users to the Respondents’ website or other location, by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
Respondents’ website or location or of a product or service on the Respondents’ website or location.
The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use of
the disputed domain names;
(ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain names, any good faith use to which the disputed domain names may be put;
along with the potential use in connection with fraudulent purposes, suggests a rather clear indication of the
(iii) the choice to retain a privacy protection service to conceal the Respondents’ true identity; and
(iv) the indication of a false address in the WhoIs data and, consequently, the Center not being able to have
communications fully delivered to the Respondents.
For the reasons stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The third element of the Policy has therefore been established.
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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, <allieduniversalehub.net> and <allieduniversalehub.org>, be transferred to the Complainant.
/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: July 21, 2022
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