The Complainant is Securitas AB, Sweden, represented by SILKA AB, Sweden.
The Respondent is Advocaat Peter, Nigeria.
The disputed domain name, <groupsecuritas.com> (the “Domain Name”), is registered with Upperlink Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2020. On August 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 2020, 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 for the Domain Name.
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 August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2020.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 14, 2020. 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 is a Swedish company founded in 1937 and engaged in the provision of goods and services relating to the security industry. It has an international presence.
The Complainant is the registered proprietor of numerous trade mark registrations covering SECURITAS, the trade mark under which it conducts business. One such registration is United States Trademark Registration No. 4162812 registered on June 26, 2012, (application filed April 19, 2010), SECURITAS (standard character mark) for a variety of goods and services in classes 6, 9, 14, 35, 36, 37, 39, 41, 42 and 45.
The Domain Name was registered on October 23, 2019, and is not currently connected to an active website. Prior to the filing of the Complaint, the Domain Name redirected to the Complainant’s official Spanish website at “www.securitas.es”.
The Complainant asserts that its representative wrote to both the Respondent and the Registrar on December 2, 2019, drawing their attention to the Complainant’s trade mark rights, the confusion likely to arise with the Domain Name in the hands of the Respondent and seeking, in the case of the Respondent, transfer of the Domain Name and, in the case of the Registrar, suspension of the Domain Name so as to prevent its further use. The Complainant asserts that no reply was received.
Annex 7 to the Complaint is said to be evidence of that correspondence with the Respondent and the Registrar. However, the correspondence in Annex 7 is undated and the enclosure to the email to the Respondent (presumably the cease and desist letter) was not included. Nonetheless, the omissions appear to the Panel to be an oversight, the Complainant’s representative has signed the certificate as to completeness and accuracy at the end of the Complaint and the Respondent has not challenged the Complainant’s evidence. The Panel accepts as fact that the Respondent was alerted to the existence of the Complainant’s trade mark rights, received a request for transfer of the Domain Name, and elected not to respond.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s SECURITAS registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 Domain Name comprises the word “group”, the term “securitas”, and the generic Top-Level Domain (“gTLD”) “.com”.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s SECURITAS trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The Complainant asserts that it has no connection with the Respondent and has not given the Respondent any authorization to use its SECURITAS trade mark. The Complainant contends that the Respondent was clearly aware of the existence of the Complainant and its trade mark as the Respondent originally redirected the Domain Name to the Complainant’s official Spanish website at “www.securitas.es”. The Complainant further contends that the nature of the Domain Name (one that makes prominent use of the Complainant’s SECURITAS trade mark) and the use to which the Domain Name was originally put are calculated to deceive Internet users into believing that the Domain Name is a domain name of the Complainant. The Complainant contends that the deceptive use of a deceptive domain name cannot give rise to rights or legitimate interests in respect of that domain name.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent. The Respondent has not answered the Complainant’s contentions.
The Panel cannot conceive of any basis upon which the Respondent could be said to have rights or legitimate interests in respect of the Domain Name and concludes on the balance of probabilities that the Respondent elected not to respond to the Complaint, because he had no answer to the Complainant’s contentions.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name
The above findings are to the effect that the Respondent, who is unconnected to the Complainant, registered a domain name without authority, which is confusingly similar to the Complainant’s SECURITAS trade mark and in substance impersonates the Complainant. He then without authority connected it to an official website of the Complainant.
The Complainant has cited in support of its contention under this element of the Policy the decision in the case of Securitas AB v. Davina Rodrigues of Valencia, Spain / Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2016-0890 regarding the domain name, <centralsecuritas.com>, which appears to have similarities to the facts of this case. In that UDRP decision the panel had this to say:
“At the time of filing of the Complaint, the disputed domain name was diverted to the Complainant's official website. This Panel agrees with the majority of the UDRP Panels that such use or nonuse of a disputed domain name is conclusive evidence of bad faith registration and use of that name. See, CSC Holdings, Inc. v. cablevisionlightpath.com Inc., WIPO Case No. D2004-1057 (“The Panel finds that the Respondent was simply trying to avoid the appearance of bad faith when the domain name at issue automatically redirected to Complainant’s website, “www.lightpath.net”. If ownership of the domain name at issue remains with the Respondent, it can obviously be re-directed to another website of Respondent’s choosing. The Panel cannot conclude that bad faith is not present simply because no measurable harm has yet been done.”); De Beers UK Limited v. Scott van Iperen, 14088959380, WIPO Case No. D2016-0167; and Statoil ASA v. Domains By Proxy, LLC / John Brendon, supra.”
The Panel respectfully adopts the reasoning of the learned UDRP panels in the above-cited cases. The Panel finds that the Respondent registered the Domain Name in bad faith for the purpose for which he originally used it, namely to deceive Internet users into believing that the Domain Name is an official domain name of the Complainant. What he now proposes to do with it is not known, but the Panel cannot conceive of any lawful, good faith use that he could make of it in the future. In the hands of the Respondent, the Domain Name represents an unjustifiable bad faith threat hanging over the head of the Complainant and, as such, a continuing bad faith use of the Domain Name.
The Panel finds that the Domain Name has been 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, <groupsecuritas.com>, be transferred to the Complainant.
Date: September 24, 2020
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