WIPO-UDRP Entscheid D2008-1044

FallnummerD2008-1044
KlägerADT Services AG.
BeklagterDomainsByProxy.com / Domain Works
EntscheiderTan, Richard
Betroffene Domain(s) 1800adtasap.com
StatusGeschlossen
EntscheidungTransfer
Entscheidungsdatum04.09.2008

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ADT Services AG. v. DomainsByProxy.com / Domain Works

Case No. D2008-1044

1. The Parties

The Complainant is ADT Services AG., Schaffhausen, Switzerland, represented by Christopher & Weisberg, P.A., United States of America.

The Respondent is DomainsByProxy.com / Domain Works, Scottsdale, Arizona and Minneapolis, Minnesota, United States of America respectively.

2. The Domain Name and Registrar

The disputed domain name <1800adtasap.com> is/registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 11, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 12, 2008, GoDaddy.com, Inc. 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 July 14, 2008 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 amendment to the Complaint on July 17, 2008 adding the registrant, Domain Works, as a party (hereafter “the Respondent”). The Center verified that the Complaint together with the amendment to the Complaint (collectively “the Complaint”) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on July 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 11, 2008.

The Center appointed Richard Tan as the sole panelist in this matter on August 21, 2008. 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 is a corporation organized under the laws of Switzerland. It sells and offers for sale home security products and services throughout the United States of America (“United States”). Those products and services are sold under various trade marks, including those set out in the following table, which are registered in the United States Patent and Trademark office.

MARK

REG. NO.

1-800-ADT-ASAP

2734955

ADT

0710708

ADT

1034716

ADT

0710507

ADT ALWAYS THERE

2586569

ADT Address Alert and Design

2789471

ADT Monogram

0846966

The Complainant has also registered trade marks bearing or incorporating the mark ADT in other countries throughout the world, including Australia, Bahrain, Canada, The People’s Republic of China, Colombia, Denmark, the European Community, Finland, Hong Kong, SAR of China, Indonesia, Korea, Mexico, New Zealand, the United Kingdom and many other countries. The trade mark ADT was registered as early as 1961 in the United States. It has advertised its products and services bearing the ADT Trademarks widely to the public and to the trade in the United States and internationally though various media including magazines, trade publications, marketing brochures, and websites for a long period of time. It also licenses other companies within the ADT group to use these trademarks in their respective territories.

The Respondent’s domain name appears to have been registered in January 2007. There has been a series of different registrants since the initial registration and before the Respondent became the present registrant.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The domain name <1800adtasap> is identical to the Complainant’s registered trade mark 1-800-ADT-ASAP and is also confusingly similar to the Complainant’s other registered trade marks which include the word mark ADT in the United States and around the world. The Complainant contends that even if not identical, the domain name is confusingly similar to these trade marks, and the inclusion of information beyond the mark does not mean it is not confusingly similar.

The Complainant contends that its trade marks are well-known and famous. Among other things, it has over 7 million customers worldwide. Its products are used in over 50 countries around the world and by 80% of the world’s top 100 retailers.

The Complainant contends that the addition of a generic term to a well-known mark does not alter the fact that the domain name is confusingly similar to the mark. Previous cases under the UDRP have shown that simply adding a common or generic term to a famous mark is not sufficient to give the domain name an individual meaning and prevent the overall impression that the domain name has some sort of connection with the Complainant. The Complainant argues that this reasoning applies equally to the inclusion of an 800 number extension and the term “asap”, or “as soon as possible”, a clear moniker for the delivery of security services and products quickly.

The mere removal of the hyphens to create the disputed domain name continues to result in a domain name that is confusingly similar, and identical, to the Complainant’s registered and famous trade marks.

(b) The Complainant has never granted the Respondent an express or implied license to use its trade marks. The Respondent’s website displays a web page that prominently shows the ADT trade marks. It contains links to other competing products, including alarm systems and monitoring services and information about competitors.

The Complainant contends that the website gives no information regarding the Respondent’s possible rights or legitimate interests in the domain name. The prior respondent had changed his registration information after the Complainant attempted to contact him, in at least two material regards, his email and post addresses. When the Complainant’s lawyers approached one of the prior respondents, one Mr. Kim, this person, according to the Complainant, admitted his discomfort and offered to sell the domain name. He then transferred or otherwise disposed of the domain name to a new “John Doe” registrant and then again to the current privacy registrant. The Complainant contends that these changes occurred when it became evident that the Complainant would not pay to have the domain name transferred to it. The Complainant contends that this is cybersquatting.

The Complainant contends that the Respondent has not been commonly known by the domain name. It contends that the Respondent registered or obtained the domain name recently for the apparent and specific purpose of cybersquatting to sell the domain name or to illegally use the domain name to sell products and services like the Complainant’s but not those of the Complainant.

The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain by misleadingly diverting consumers and tarnishing the ADT trade marks. The website without authority suggests that ADT systems may be purchased or serviced, but the Complainant has not endorsed the way in which the purported sales are made or the qualities of those goods and services, most of which are offered by actual and direct competitors of the Complainant.

The Complainant contends that the Respondent’s website is clearly intended to attract customers and members of the public searching for the Complainant’s website for information about its family of alarm products and services. This creates consumer confusion as to the source of goods and services offered or referred to at the Respondent’s website. Accordingly, and for these reasons, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

(c) The Complainant contends that the disputed domain name was registered and is being used in bad faith. By using the disputed domain name the Respondent is intentionally seeking to obtain commercial gain by the use of the ADT trade marks.

The Complainant contends that the Respondent’s website includes specific references to the Complainant and improperly uses the ADT trade marks, and specific competitive language which implies that the services offered are endorsed by the Complainant. The circumstances indicate that the domain name was registered primarily to confuse consumers.

The prior registrant refused to return the Complainant’s lawyers’ calls or emails, changed his registration information after contact, and during the only time he contacted the Complainant, offered to sell the domain name. The domain name has now been transferred or sold to an unknown proxy registrant, either for purposes of shielding the fact that the “new” registrant is still Mr. Kim, or for purposes of continuing the cybersquatting in order to extract money from the Complainant.

The Respondent’s use of the domain name prevents the Complainant, who owns the ADT trade marks and specifically the 1-800-ADT-ASAP mark, from reflecting that mark and ADT’s other marks in corresponding domain names. The Complainant and its licensees have used the ADT mark in many domain names, including, for example <adt-hk.com>; <adtindia.com>; <adtindonesia.com>; <ndc-tyco.com>; <adt.co.kr>; and <adtmalaysia.com>.

The Complainant contends that the Respondent is aware of ADT’s trade marks, since the marks are specifically used at the Respondent’s website and as part of the domain name itself. Accordingly, the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the Respondent’s domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from that party’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel decides the dispute based on the Complaint and accepts as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.

The Complainant in this case has registered the 1-800-ADT-ASAP trade mark in the United States and has also registered trade marks bearing or incorporating the mark ADT in numerous countries throughout the world. Some of the marks were registered as early as in the 1960s. It has also shown that the mark has been used extensively in advertisements around the world and that the products and services have been used in many countries, and that these marks have come to be associated with the Complainant.

The Panel is satisfied that the Complainant has rights in the trade marks 1-800-ADT-ASAP and ADT and enjoys a substantial goodwill and reputation in those marks.

The disputed domain name is not identical to the Complainant’s trade mark 1-800-ADT-ASAP in that it omits the hyphens. The absence of hyphens does not in this Panel’s view distinguish the domain name from the Complainant’s trade mark 1-800-ADT-ASAP, which is in its entirety distinctive. It is well established that the mere addition of generic and non-distinctive terms would not be enough to prevent a finding of confusing similarity. Moreover, the addition of the common and generic numeric characters “1-800” and the words or letters “ASAP” , which are generally understood to refer to “As Soon As Possible” are similarly insufficient, in this Panel’s view, to distinguish the domain name from the trade mark ADT and to thereby avoid a finding of confusing similarity.

This Panel finds that the disputed domain name is confusingly similar to the trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name.

In the absence of any Response, this Panel accepts the Complainant’s contentions that it has no commercial relationship or association with the Respondent and has not granted the Respondent any express or implied license to use its trade marks. There is no evidence that the Respondent has been commonly known by the disputed domain name. The content of the Respondent’s website did not show that the Respondent was making any legitimate noncommercial or fair use of the domain name.

There was and is no apparent legitimate reason for the Respondent to use the Complainant’s trade marks as part of its domain name. The references on the Respondent’s website to the Complainant’s trade marks were not authorized by the Complainant.

The Panel has accordingly little hesitation based on the evidence before it in finding that the Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel notes that the Respondent’s website includes specific references to the Complainant and the ADT trade marks, the use of which was not authorized by the Complainant. The Panel accepts that the Respondent was aware or must have been aware of the Complainant’s trade marks, since the marks are specifically used at the Respondent’s website and as part of the domain name itself. There are also specific references to competing products, which references are capable of suggesting that the services offered were endorsed by the Complainant, when they were not. The circumstances indicate that the domain name was registered primarily to confuse consumers and disrupt the Complainant’s business. The Panel accepts that by using the disputed domain name, the Respondent was and is intentionally seeking to obtain commercial gain by the improper use of the ADT trade marks and creating a likelihood of confusion.

The Panel also notes the contentions of the Complainant that the prior registrant, Mr. Kim, after initial contact was made, changed his registration information, and during the only time he contacted the Complainant, he offered to sell the domain name. The domain name has now been transferred or sold to registrant who is using a proxy or privacy service. In the absence of a Response, the Panel is prepared to accept the Complainant’s contentions and infer that that the current registrant is still Mr. Kim, or is somehow associated with him, and that the very recent change in registrant was for the purpose of shielding these facts or for purposes of continuing the cybersquatting in order to extract money from the Complainant.

The Respondent’s use of the domain name also prevents the Complainant, who owns the ADT trade marks and specifically the 1-800-ADT-ASAP mark, from reflecting that mark and ADT’s other marks in corresponding domain names.

Accordingly, for all the foregoing reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <1800adtasap.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: September 4, 2008