Devcon Security Services Corp. v. I.C.U. - I.T. DEPT.
Claim Number: FA1103001377252
Complainant is Devcon Security Services Corp. (“Complainant”), represented by Carl J. Spagnuolo of McHale & Slavin, P.A., Florida, USA. Respondent is I.C.U. - I.T. DEPT. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <devconsecurity.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2011; the National Arbitration Forum received payment on March 10, 2011.
On March 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <devconsecurity.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@devconsecurity.com. Also on March 17, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <devconsecurity.com> domain name is confusingly similar to Complainant’s DEVCON mark.
2. Respondent does not have any rights or legitimate interests in the <devconsecurity.com> domain name.
3. Respondent registered and used the <devconsecurity.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Devcon Security Services Corp., is a provider of security alarm services. Complainant has continuously used the DEVCON mark in conjunction with, and in support of, its security services business since 1974. Further, Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its DEVCON mark (Reg. No. 3,073,527 filed April 6, 2005; issued March 28, 2006).
Respondent, I.C.U. –I.T. Dept., registered the disputed domain name on August 4, 2005, immediately after Complainant had issued a national press release regarding the purchase of a security services company. Respondent’s disputed domain name resolves to a parked site which is under construction.
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.
Complainant has presented evidence to show that it owns a trademark registration with the USPTO for its DEVCON mark (Reg. No. 3,073,527 filed April 6, 2005; issued March 28, 2006). The Panel finds that Complainant has established rights in its mark under Policy ¶ 4(a)(i) dating back to its filing date with the USPTO of April 6, 2005. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also contends that it has established common law rights in the mark via continuous use for many years in conjunction with its business, resulting in the creation of a secondary meaning associated with the DEVCON mark. The Panel finds that Complainant has sufficiently established its rights in the mark under Policy ¶ 4(a)(i) through the long term, since 1974, and continuous use of the mark in support of its security services business. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant also contends that Respondent’s <devconsecurity.com> domain name is confusingly similar to its own DEVCON mark. The disputed domain name includes the entire mark while only adding the term “security,” which would be a descriptive term in this case, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive term and a gTLD fail to sufficiently differentiate the disputed domain name from Complainant’s mark making the two confusingly similar under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has met its burden of proof by making a prima facie case showing Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels have determined that once Complainant has made its prima facie case that the burden then lies with Respondent to prove its rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent in this case has not only failed to rebut Complainant’s prima facie case it has failed to file any kind of response. Based upon that failure to respond, this Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the record in its entirety to make its determination regarding Respondent’s rights in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <devconsecurity.com> domain name. Respondent has offered no evidence to refute this assertion and the WHOIS information identifies registrant as “I.C.U. - I.T. DEPT.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the evidence in the record. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also asserts that Respondent in not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a parked website that is currently not being used for anything. The Panel finds that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
When addressing the issue of bad faith prior panels have determined that, although Policy ¶ 4(b) offers express examples of bad faith registration and use, it is not an exclusive list of what can constitute bad faith registration and use under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Previous panels have determined that even if Respondent is only parking the disputed domain name, it is still responsible for the use of the disputed domain name. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). In this case, there has been no active use of the disputed domain name. Prior panels have determined that failure to make an active use constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <devconsecurity.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 25, 2011
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