Complainant is ADT Services AG of Schaffhausen, Switzerland, represented by Porzio, Bromberg & Newman, United States of America.
Respondent is Douglas Sullivan of Thousand Oaks, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <adtcustomhome.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On July 9, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On July 9, 2009, Network Solutions, LLC transmitted by email to the Center its verification response, confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2009. On August 3, 2009, Respondent sent an email to the Center, indicating that the Center's email of July 13, 2009 to notify Respondent of the Complaint did not contain the Complaint and Respondent would submit its Response the next day. On the same day, the Center replied to Respondent, confirming that the Center's email of July 13, 2009, the Notification of Complaint email, did in fact contain the Complaint as an attachment and that it will be at the sole discretion of the panel (when appointed) to consider any late Response. Other than the email communication on August 3, 2009, Respondent did not submit any formal Response. Accordingly, the Center notified Respondent's default on August 5, 2009. On August 6, 2009, Respondent contested the Center's issuance of Respondent default.
The Center appointed Ross Carson as the sole panelist in this matter on August 17, 2009. 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 Panel considered Respondent's contestation of the Center's issuance of Respondent default and Complainant's reply to Respondent's contestation. The Panel found that the Center had properly issued the Notice of Respondent default. The Panel noted that Respondent's request for extension of time to file a Response was made one day after the due date for filing the Response. The Panel reviewed previous UDRP panel decisions relating to requests for extensions of time to file a Response and noted that previous panels had granted an extension of time to Respondents to file a Response when the extension request was made shortly after the original due date for filing the Response. The Panel issued Administrative Panel Procedural Order No.1 on August 24, 2009 extending the time for Respondent to file its Response to the Complaint within ten days from the date of the Procedural Order. The parties were forwarded the Procedural Order by the Center on August 24, 2009. Respondent did not file a Response to the Complaint within the extended time for filing a Response.
4. Factual Background
Complainant sells and offers for sale a large variety of security products and services throughout the United States of America, as well as world wide. Use and sales of such products and services extend to applications for home residences, small businesses, medium and large businesses, as well as governmental entities. Complainant has over 7 million customers worldwide using its products and services sold under its trademarks for or including ADT. Its products are sold in over 50 countries around the world. Complainant owns trademark registrations for or including ADT in the United States and dozens of jurisdictions beyond the United States including Australia, Bahrain, Canada, The People's Republic of China, Colombia, Denmark, The European Community, Finland, Hong Kong, SAR of China, Indonesia, The Republic of Korea, Mexico, New Zealand, and The United Kingdom of Great Britain and Northern Ireland. Complainant licenses the right to use its ADT trademarks to other ADT group companies. Complainant's rights in its trademarks for or including ADT have been recognized in past UDRP decisions such as ADT Services AG v. Direct NavigationAssociates/Moniker Privacy Services, WIPO Case No. D2007-1207; ADT Services AG. v. DomainsByProxy.com / Domain Works,
WIPO Case No. D2008-1044; and ADT Services AG. v. Global Access/Moniker Privacy Services,
WIPO Case No. D2008-0680.
The oldest use and registration of the letters “adt” are exemplified by United States Trademark Registration No. 710,708, registered January 31, 1961 with dates of first use of 1903. Complainant has multiple other registrations with the United States Patent and Trademark Office for variations of its ADT mark or for ADT with a variety of related goods and services. It has been established in previous WIPO administrative panel decisions that Complainant has substantial goodwill and reputation in its ADT trademarks for or including ADT. See Domainsbyproxy.com/Domain Works, supra, and Global Acts/Moniker Privacy Services,supra.
Complainant first registered its rights in the ADT CUSTOM HOME SERVICES & Design trademark on April 22, 2008 under United States Registration No. 3,414,668 with claimed dates of first use of May 31, 2005, in relation to goods including “customized residential security products, namely, electric protection equipment, . . .” and in relation to services including “installation and maintenance services for electrical protection equipment and systems . . .”. It registered a separate version of its ADT CUSTOM HOME SERVICES and Design trademark under United States Registration No. 3,533,400 with claimed dates of first use of June 15, 2007.
Respondent registered the disputed domain name on May 5, 2009, nearly four years after Complainant first began using its ADT CUSTOM HOME SERVICES & Design trademark, and over one year after Complainant first registered that trademark with the United States Patent and Trademark Office. The disputed domain name is currently linked to a generic business profile page that has been generated by the Registrar, Network Solutions. The business profile home page is a “shell” profile, created by Network Solutions and not by Respondent.
5. Parties' Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant states that as found in paragraph 4 above it is the owner of many trademark registrations throughout the world for or including the trademark ADT and ADT CUSTOM HOME SERVICES and Design registered in relation to a large variety of goods and services relating to security of persons and premises. The trademark has been widely used by Complainant or its licensees in many countries throughout the world and is a well-known trademark in relation to the goods for which it is registered and used.
Complainant submits that the disputed domain name is confusingly similar to Complainant's registered trademarks for or including ADT. The domain name consists of Complainant's well-known registered trademark ADT and ADT CUSTOM HOME SERVICES and Design with the absence of the word “services”.
Complainant further submits that previous UDRP panels have held that an addition of a generic term by a respondent is not sufficient to distinguish the domain name from a complainant's mark. ADT Services v. Ivan Valencia,
WIPO Case No. D2007-1213. Complainant submits that the opposite is also true. The removal of the generic term “services” by Respondent is not sufficient to distinguish the disputed domain name from Complainant's trademark ADT CUSTOM HOME SERVICES and Design. The absence of a generic term from a trademark, especially when used as a domain name, would always appear to consumers as an abbreviation of the trademark, and therefore still a representation of the original trademark. Consequently, consumers would still likely believe that any goods or services or any material presented in the website at the disputed domain name would come from, be sponsored by, or approved by Complainant, thereby creating confusing similarity.
Complainant further submits in addition to adopting an abbreviated version of Complainant's ADT CUSTOM HOME SERVICES and Design trademarks, Respondent has also adopted Complainant's famous and well known trademarks for or including ADT. The disputed domain name registered by Respondent is confusingly similar to Complainant's ADT trademark because the phrase “customhome” in no way distinguishes the domain name from Complainant's prior rights in the ADT trademark. Complainant offers a full breadth of security and monitoring services, along with other services and goods, for the home, in addition to other applications. Given the fame and long term registered rights of Complainant's ADT trademark, consumers would automatically view the disputed domain name as being associated with Complainant and its services for the home. Accordingly, Respondent's activities are equally confusingly similar to Complaint's ADT trademarks.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name. The only use of the domain name is a generic business profile page generated by the Registrar, Network Solutions, but without any business information specific to Respondent on the home page whatsoever. It is clear that Respondent has merely “parked” the disputed domain name without any intention to use it in any capacity.
Complainant states that there is no evidence that Respondent has been commonly known by the disputed domain name. Complainant's rights in its ADT Trademarks are so vast in the United States that Respondent could not legitimately or legally use the domain name, because doing so would violate Complainant's rights under the United States Trademark Act (15 U.S.C. Section 1051, et. seq.).
Complainant further submits that Respondent is not making any legitimate noncommercial use or fair use of the disputed domain name. It was clearly acquired in an attempt to pass off goods or services as related to Complainant or to sell it to Complainant, or to sell it to one of Complainant's competitors. So regardless of how long Respondent has owned the domain name, it cannot have any rights or legitimate interests in the disputed domain name.
A.3 Registration in Bad Faith
Complainant states that its trademarks for and including ADT and its ADT CUSTOM HOME SERVICES trademarks, are famous and well-known, and it has had multiple ADT trademark registrations starting over 50 years ago. Complainant states that earlier UDRP panels have consistently held that Complainant has rights in the term ADT. See, Global Access/Moniker Privacy Services, supra; Ivan Valencia, supra; and Direct Navigation Associates/Moniker Privacy Services, supra.
Complainant submits that given Complainant's famous ADT mark and its decades long registration of its trademarks for or including ADT, there can be little doubt that Respondent knew about Complainant's service mark rights in ADT Custom Home Services as well as the other ADT trademarks when it registered the disputed domain name. Consequently, Respondent registered and is holding the disputed domain name in bad faith.
A.4 Used in Bad Faith
Complainant submits that the likelihood of confusion as to source, sponsorship, affiliation, or endorsement over use of the disputed domain name is established by the fact that the domain name is confusingly similar to the trademarks for or including ADT owned by Complainant. Respondent cannot utilize the disputed domain name without violating Complainant's rights under United States Trademark Act (15 U.S.C. 1051 et. seq.) Respondent cannot have any legitimate business interest in personally using the domain name, other than to offer it for resale because Respondent is not authorized or licensed by Complainant to use its trademarks for or including ADT or Complainant's ADT CUSTOM HOME SERVICES trademarks. Respondent has effectively acquired the trademark to be “parked”, or pursue the option of re-selling the disputed domain name to Complainant or one of its Competitors.
Complainant states there is no actual website or activity associated with the disputed domain name. The generic or shell business identifier page linked to the disputed domain name is generated by the Registrar, Network Solutions, with the permission of Respondent, but without any information provided by Respondent. Whether or not Respondent argues that it controls that business profile page, previous UDRP panels have recognized that it is bad faith for a respondent to intend to attract Internet users “for commercial gain” whether the gain is derived by the respondent itself or through a third party advertisement such as provided by the registrar, where placing the business profile under the domain name does identify Network Solutions as the source registrar. Villeroy & Boch AG v. Mario Pingerna,
WIPO Case No. D2007-1912. The business profile is in fact a parking page at the disputed domain name regardless of whether Respondent controls the parking page, or argues that it does not control the parking page. The relationship between a domain name registrant and the registrar does not affect the rights of a complainant under the Policy and such conduct does amount to bad faith. Villeroly & Boch AG, supra.
Complainant states that paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration and use, and previous UDRP panels have held that this is not an exhaustive list. In addition to those circumstances, a panel is able to draw inferences about bad faith registration in light of the facts and circumstances of the case. See TelstraCorporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Complainant states that following the Telstra case, this Panel should take into consideration the fact that regardless of how long Respondent has owned the disputed domain name it registered the domain name despite Complainant's established and famous rights in its ADT trademarks and its prior existing rights in ADT CUSTOM HOME SERVICES trademarks. Respondent has not made any use of the disputed domain name because doing so would violate the trademark rights of Complainant under United States law. Consequently, this Panel is able to infer that Respondent does not have any legitimate commercial or bona fide intended use of the domain name and that it was simply “parked” which does amount to bad faith. Turkcell Iletisim Hizmetleri A.S. v. Tolga Murtezaoglu,
WIPO Case No. D2008-1589. Moreover, previous UDRP panels have concluded that passive holding in a relation to a domain name registration can, in certain circumstances, constitute a domain name use in bad faith. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. Complainant submits that given the fame of Complainant's ADT trademarks and its prior registration and use of the nearly identical mark ADT CUSTOM HOME SERVICES and Design, Respondent's passive holding of the disputed domain name constitutes use in bad faith.
Complainant further states that Respondent registered the disputed domain name under the name Douglas Sullivan, but with all contact information in care of Network Solutions, including administrative and technical contact and emails at “www.networksolutionsprivateregistration.com”. By shielding its true contact information, Respondent is trying to prevent complete identification. It has been recognized by previous UDRP panels that use of a proxy registrant to hide the true owner is a showing of bad faith by encouraging cybersquatting and obstructing the UDRP system. Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov,
WIPO Case No. D2004-0311.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of registered trademarks for and including ADT registered on the Principal Register in the United States in relation to the goods and services described in paragraph 4 above. Complainant is also the owner of United States Trademark Registrations for the trademark ADT CUSTOM HOME SERVICES and Design registered in relation to customized residential security products and a number of services including central station electric services related to protection of individuals and property. Complainant is also the owner of trademark registrations for or including ADT registered in many other countries throughout the world. Complainant's registered trademarks were registered many years prior to the date of registration of the disputed domain name on May 5, 2009.
The disputed domain name is comprised of the words “custom home” forming part of Complainants trademark ADT CUSTOM HOME SERVICES and Design and Complainants' trademark ADT. The absence of the generic term “services” in the disputed domain name <adtcustomhome.com> is not sufficient to distinguish the domain name from Complainant's trademark ADT CUSTOM HOME SERVICES and Design. Previous UDRP panels have found that Complainant has rights in the term “ADT”. Global Access/Moniker Privacy Services, supra; Ivan Valencia, supra; and Direct Navigation Associates/Moniker Privacy Services, supra.The inclusion of Complainant's well-known trademark ADT in the disputed domain name results in the domain name being confusingly similar to Complainant's well-known trademarks for or including ADT as the distinctive feature.
The inclusion of the top level domain descriptor “. com” in the disputed domain name does not affect a finding of confusingly similarity. WIPO administrative panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name comprised of Complainant's trademark ADT in combination with the words “custom home” forming part of Complainant's registered trademark ADT CUSTOM HOME SERVICES and Design and the top level domain descriptor “.com” is confusingly similar to Complainant's trademarks for and including ADT and Complainant's trademark ADT CUSTOM HOMES and Design.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's registered trademark.
Respondent has not made any actual use of the disputed domain name. The disputed domain name is currently linked to a generic “Business Profile” page that has been generated by the Registrar, Network Solutions. According to Network Solutions Respondent chose to display Network Solutions' Business Profile page in association with the disputed domain name but did not provide the required information to personalize the Business Profile page. As a result the Business Profile page that is linked to the disputed domain name is just a “shell” created by the registrar, providing no information relating to Respondent, its purpose or its business if any.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the disputed domain name has been registered and used in bad faith.
C. 1. Registered in Bad Faith
Complainant is the owner of numerous trademark registrations in the United States and throughout the world for trademarks for or including ADT as the distinctive element registered in relation to goods and services in the field of security of persons and property. It has been held in previous UDRP decisions that Complainant has substantial goodwill and reputation in its ADT trademarks. Domainsbyproxy.com/Domain Works, supra; Global Acts/Moniker Privacy Services,supra. Complainant has also established registered trademark rights in ADT CUSTOM HOME SERVICES trademarks. The registration for the ADT trademarks extend back for decades. As a result of extensive advertising and use of the trademarks for or including ADT and the trademark ADT CUSTOM HOME SERVICES and Design in association with goods and services relating to personal and property security for many years, the trademark ADT and ADT CUSTOM HOME SERVICES were well-known trademarks in relation to Complainant's goods and services in the United States prior to registration of the disputed domain name by Respondent on May 5, 2009.
The inclusion of Complainant's well-known trademark ADT in the disputed domain name results in the domain name being confusingly similar to Complainant's well-known trademarks for or including ADT as the distinctive feature.
The disputed domain name is comprised of the words “custom home” forming part of Complainant's trademark ADT CUSTOM HOME SERVICES and Design and Complainant's trademark ADT. The absence of the generic term “services” in the disputed domain name <adtcustomhome.com> is not sufficient to distinguish the domain name from Complainant's trademark ADT CUSTOM HOME SERVICES and Design. It is difficult to conceive how Respondent could have created the disputed domain name without prior knowledge of Complainant's registered trademarks for and including ADT or ADT CUSTOM HOME SERVICES and Design. Respondent was invited to file a Response. Respondent's failure to explain any reason for choosing the disputed domain name strengthens the Panel's inference that Respondent registered the disputed domain name with knowledge of Complainant's trademarks which were well-known in the United States at the date of registration of the disputed domain name on May 5, 2009.
The Panel finds that Respondent registered the disputed domain name in bad faith.
C.2. Domain Name Used in Bad Faith
Paragraph 4(b) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website constitutes evidence of bad faith use of a domain name.
The generic or shell business identifier page linked to the disputed domain name is generated by the Registrar, Network Solutions, with the permission of Respondent, but without any information relating to Respondent, its purpose, business or proposed business if any. Respondent's permitted use of the disputed domain name which is confusingly similar to Complainant's registered and well-known trademarks for or including ADT as a distinctive element enables the Respondent to draw Internet users to the website for profit by misleading Internet users associating the disputed domain name with Complainant. Previous UDRP panels have recognized that it is bad faith for a respondent to intend to attract Internet users “for commercial gain” whether the gain is derived by the respondent itself or a third party advertiser. Villeroly &Boch AG, supra.
Paragraph 4(b) of the Policy provides a number of circumstances that constitute bad faith registration and use. Many UDRP decisions have found that the circumstances referred to in paragraph 4(b) of the Policy are not an exhaustive list. In addition to those circumstances, a panel is able to draw inferences of bad faith registration or use in light of the facts and circumstances of a case. The disputed domain name is being used.
Complainant has established registered trademark rights in the trademark ADT and trademarks in which ADT is the distinct element. Complainant has also established registered trademark rights in ADT CUSTOM HOME SERVICES trademarks. Complainant has established that as a result of extensive use of these trademarks in association with personal and property security services for many years the trademarks are well-known in the United States. The disputed domain name is confusingly similar to Complainants trademarks referred to immediately above. Based on the evidence submitted by Complainant and absence of any evidence submitted by Respondent the Panel infers that Respondent does not have any legitimate commercial or bona fide intended use of the domain name and that it was simply “parked” which amounts to bad faith. Turkcell Iletisim Hizmetleri A.S., supra.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) and paragraph 4(a)(iii) of the Policy, and that Complaint satisfies the requirements under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <adtcustomhome.com> be transferred to Complainant.
Ross Carson Sole Panelist
Dated: September 15, 2009
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