WSA Group, Inc., WSA Security, Inc. and Worldwide Security Associates, Inc. v. Worldwide Security Acquisitions, LLC
Claim Number: FA0806001212499
Complainant is WSA Group, Inc., WSA Security, Inc. and Worldwide
Security Associates, Inc. (“Complainant”), represented by Melanie Howard, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wsasecurity.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
7, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 28, 2008
by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wsasecurity.com> domain name is identical to Complainant’s WSA SECURITY mark.
2. Respondent does not have any rights or legitimate interests in the <wsasecurity.com> domain name.
3. Respondent registered and used the <wsasecurity.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a group of affiliated companies operating in
the field of professional security.
Complainant registered the WSA SECURITY mark with the United States
Patent and Trademark Office (“USPTO”) on
Respondent registered the <wsasecurity.com>
domain name on
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the WSA SECURITY mark dating back to
Complainant contends that
Respondent’s <wsasecurity.com> domain name is identical to its WSA SECURITY mark. The <wsasecurity.com> domain name only differs from Complainant’s mark in that
the space between the words has been removed and the generic top-level domain
(“gTLD”) “.com” has been added. Because
the removal of the space between words does not sufficiently differentiate a
domain name from a mark for the purposes of Policy ¶ 4(a)(i), and because every
domain name must contain a TLD, the Panel finds that Respondent’s disputed
domain name is not sufficiently distinguished from, and is identical to,
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the <wsasecurity.com>
domain name. Under Policy ¶
4(a)(ii), after the complainant makes a prima
facie case against the respondent, the respondent then has the burden of
showing evidence that it does have rights or legitimate interests in the
disputed domain name. The Panel finds
that Complainant has made a prima facie
case under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known
by the <wsasecurity.com>
domain name, nor has it ever been the owner or licensee of the WSA SECURITY
mark. The WHOIS record for the disputed
domain name lists Respondent as “Worldwide
Security Acquisitions, LLC.” However,
because Respondent has not furnished a response in this case, there is no
affirmative evidence that Respondent has ever been commonly known as WSA
SECURITY or any derivation thereof, and therefore, the Panel finds that
Respondent is not commonly known by <wsasecurity.com>
pursuant to Policy ¶ 4(c)(ii).
See Bank of Am. Corp. v. McCall, FA
135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”); see also Brown
v. Sarrault, FA 99584 (Nat. Arb. Forum
The <wsasecurity.com> domain name resolves to a website that advertises services that compete with Complainant’s business. The Panel finds that this use of the <wsasecurity.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is diverting Internet
customers from Complainant’s website to Respondent’s website that resolves from
the disputed domain name. Respondent is
accomplishing this through the confusion caused by the similarity between the WSA
SECURITY mark and the <wsasecurity.com>
domain name. Complainant also contends
that Respondent intended to disrupt Complainant’s business by diverting
confused customers to a website competing with Complainant’s business. The Panel finds that Respondent’s use of the
disputed domain name disrupts Complainant’s business, and is evidence of Respondent’s
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining commercially
because of this diversion through the competing services that are offered at
Respondent’s website that resolves from the disputed domain name. The Panel finds that this is an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this
use is also evidence of Respondent’s registration and use in bad faith. See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp.
v. Carroll, FA 97035 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wsasecurity.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 7, 2008
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