The Complainant is Capita Plc, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, the United States of America (“United States”).
The disputed domain name <911eye.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on July 10, 2019. 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 Complainant was founded in 1984. It provides customer management, administration, and professional support services to clients in the private and public sectors. Specifically, it offers automation, business transformation, customer management, data and analytics, digital transformation, government, IT and networks, people, and software solutions and services, as well as specialist services, such as intelligent communications, financial, legal, travel and event, start-up development, property and infrastructure, procurement, and translation and interpreting, and workplace technology services.
The Complainant has its headquarters in the United Kingdom. It also operates in Ireland, Northern Europe, the United States, India, South Africa and Dubai. In 2018, the Complainant reported an adjusted revenue of £3,867.6 million. The Complainant has its focus on creating specialized software products. Over the course of 2018, the Complainant piloted the next cloud-based version of its main education software product SIMS8. It also set up a marketing and sales operation in the United States to roll out selected products, including AMTSybex, Retain, Pay360 and 911eye. 911eye was originally developed as a collaboration between the Complainant and West Midlands Fire Service (as 999eye). The 911eye service allows any 911 caller with a smart phone to instantly stream live video or photographs to a communications center, without the need for any application installed on the caller’s device. On September 18, 2018, Critical Response Group, Inc. (CRG) and the Complainant announced their strategic partnership to bring the Complainant’s 911eye emergency video streaming services to the United States.
The Complainant is the owner of the trademark registration no. UK00003315549 for 911EYE in the United Kingdom registered on August 31, 2018, and the applicant for the 911EYE mark in the United States no. 87951226. The Complainant owns the domain name <911eye.net>, which was registered on November 13, 2017 and has been used continuously to promote the Complainant and its products and services.
According to the Complainant, the Domain Name was registered on October 13, 2018. The Registrar states that the Domain Name was transferred to it as registrar on December 24, 2018. At the time of filing the Complaint and at the time of drafting this decision, the Domain Name redirected to a website that offers to sell the Domain Name.
The Complainant has registered trademark rights in 911EYE. The Complainant submits that the Domain Name is identical to the Complainant’s trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks. Since its registration, the Respondent has been using the Domain Name to redirect Internet users to a third-party marketplace site. The redirect page only contains an offer to sell the Domain Name. In doing its due diligence, the Complainant did note that another third party filed a trademark in Canada with some of the same elements as in the Complainant’s trademark included. This trademark is not filed by the Respondent.
The Complainant argues that the Respondent had knowledge of the Complainant at the time of registration of the Domain Name, as the Respondent registered the Domain Name on October 13, 2018, which is only a few months after Complainant filed for registration for its 911EYE trademark in the United States and launch in the United States. It was also after the Complainant’s registration of its <911eye.net> domain name on November 13, 2017. Regardless of the Respondent’s actual knowledge, it would not be possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant and its brand. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service. Moreover, offering for sale a domain name that is identical to a trademark, is evidence of bad faith under Policy. The use of a privacy protection service to hide the Respondent’s identity, and the lack of reply to the cease and desist letter and the Complaint, also indicates bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established rights in the trademark 911EYE. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is indeed identical to the Complainant’s trademark, as it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The Panel agrees with the Complainant, the redirection to a website that offers the Domain Name for sale does not indicate a legitimate use.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
Taking into account the Respondent’s use of the Domain Name, the timing of the registration of the Domain Name and the fact that the Domain Name is identical to the Complainant’s trademark, the Panel concludes that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Name. The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Moreover, the Respondent has offered the Domain Name for sale. It is evidence of bad faith under Policy. The use of a privacy protection service to hide the Respondent’s identity and the lack of reply to the Complainant’s contentions, further underlines the bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <911eye.com>, be transferred to the Complainant.
Date: July 12, 2019
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