FIRST ACTION SECURITY TEAM, INC. v. Ryan G Foo / PPA Media Services
Claim Number: FA1403001550307
Complainant is FIRST ACTION SECURITY TEAM, INC. (“Complainant”), Maryland, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dynamarksecurity.com>, registered with Internet.bs Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2014; the National Arbitration Forum received payment on March 24, 2014.
On March 26, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <dynamarksecurity.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2014 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@dynamarksecurity.com. Also on March 31, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) 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
1. Complainant has rights in the DYNAMARK mark and provides evidence of its multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 1,579,938 registered January 30, 1990;Reg. No. 4,117,330 registered March 27, 2012).
2. Complainant’s business was established over 30 years ago to help independent alarm dealers sell security systems, maximize recurring monthly revenue, and add value to their business. Complainant’s brand is well recognized by its consumers, industry peers, and the global community.
3. Respondent’s <dynamarksecurity.com> domain name is confusingly similar to complainant’s DYNAMARK mark.
4. Respondent uses Complainant’s DYNAMARK mark in its entirety with the mere addition of the descriptive word “security.”
5. Complainant states that using the term “security” is even more notable because Complainant’s business has been in the security system industry for over 30 years.
6. Respondent has no rights or legitimate interests in the <dynamarksecurity.com> domain name.
7. Respondent is not commonly known by the disputed domain name.
8. The WHOIS information for the disputed domain name suggests that Respondent is known as an entity other than the trademark associated with complainant, namely, “Ryan G Foo.”
9. Complainant has not licensed, authorized, or permitted Respondent to register the domain name incorporating Complainant’s mark.
10. Respondent created the <dynamarksecurity.com> domain name on September 27, 2012, which is significantly after Complainant’s first registration date for the DYNAMARK mark.
11. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
12. Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
13. Respondent presumably receives pay-per-click fees from these linked websites.
14. Respondent registered and is using the <dynamarksecurity.com> domain name in bad faith.
15. Respondent registered the disputed domain name with the intent to sell, rent or otherwise transfer the domain name for valuable consideration.
16. Respondent is currently offering to sell the disputed domain name on Sedo.com. Complainant contends that the minimum bid for the disputed domain name is currently $500.
17. Respondent’s use of the disputed domain name disrupts Complainant’s business.
18. Respondent is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation with Respondent’s resolving website.
19. Respondent offers credit reports from the website resolving from the disputed domain name.
20. Respondent had knowledge of Complainant and Complainant’s DYNAMARK at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, FIRST ACTION SECURITY TEAM, INC., has rights in the DYNAMARK mark and provides evidence of its multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 1,579,938 registered January 30, 1990; Reg. No. 4,117,330 registered March 27, 2012). Complainant’s business was established over 30 years ago to help independent alarm dealers sell security systems, maximize recurring monthly revenue, and add value to their business.
Respondent, Ryan G Foo / PPA Media Services, registered the <dynamarksecurity.com> domain name on October 5, 2004. Respondent
uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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."
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.
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.”).
Complainant has rights in the DYNAMARK mark under Policy ¶ 4(a)(i) through trademark registrations with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Panels have found that it is irrelevant whether a complainant registers a mark in the location of respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant claims that Respondent’s <dynamarksecurity.com> domain name is confusingly similar to Complainant’s DYNAMARK mark. Respondent uses Complainant’s DYNAMARK mark in its entirety with the mere addition of the descriptive word “security.” Complainant states that using the term “security” is even more notable because Complainant’s business has been in the security system industry for over 30 years. Respondent also adds the generic top-level domain (“gTLD”) “.com.” Adding a descriptive word and a gTLD does not distinguish a disputed domain name sufficiently to avoid a finding of confusingly similar under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005)(finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds that Respondent’s <dynamarksecurity.com> domain name is confusingly similar to Complainant’s DYNAMARK mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant asserts that Respondent has no rights or legitimate interests in the <dynamarksecurity.com> domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name shows that Respondent is known as an entity other than the trademark associated with Complainant, namely, “Ryan G Foo.” Complainant has not licensed, authorized, or permitted Respondent to register the domain name incorporating Complainant’s mark. Complainant further states that Respondent created the <dynamarksecurity.com> domain name on September 27, 2012, which is significantly after Complainant’s first registration date for the DYNAMARK mark. The Panel finds that Respondent has no rights or legitimate interests in the <dynamarksecurity.com> domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (a respondent is not commonly known by a disputed domain name where the respondent is not given permission by complainant to use the registered mark, complainant’s registration for the mark predates respondent’s registration, and there is no indication anywhere else in the record indicating that respondent is commonly known by the disputed domain name).
Complainant further claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <dynamarksecurity.com> domain name. Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from these third-party links. Some of the links include “Dynamark Security Systems,” “Wireless Home Security Alarm,” “In Home Security Systems,” “Wireless Burglar Alarm Systems,” “Residential Home Security,” and “West Wireless Security System.” All of the links featured on Respondent’s resolving website refer to “alarm” or “security” systems. Using a confusingly similar domain name to display links that compete with a complainant does not confer rights or legitimate interests on a respondent. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent has no rights or legitimate interests in the <dynamarksecurity.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant contends that Respondent registered and is using the <dynamarksecurity.com> domain name in bad faith. Respondent registered the disputed domain name with the intent to sell, rent or otherwise transfer the domain name for valuable consideration. Respondent is currently offering to sell the disputed domain name on Sedo.com. Offering to sell a disputed domain name for an excessive price indicates bad faith use and registration. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). The Panel finds that Respondent is acting in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007)(it is bad faith to disrupt a complainant’s business by using a confusingly similar domain name to redirect Internet users to a website featuring content that competes with complainant’s business). The Panel finds that Respondent’s use of the disputed domain name competes with Complainant and thereby disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant further contends that Respondent is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation with Respondent’s resolving website. Complainant asserts that Respondent has demonstrated its intent to capitalize on the fame of Complainant’s mark in order to increase the number of Internet users that visit Respondent’s resolving website Respondent uses a domain name that features Complainant’s entire mark to resolve to a website that displays links that compete with Complainant’s business. Panels have previously found bad faith use and registration under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to attract Internet users to its resolving website that offers pay-per-click links that compete with Complainant’s business. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel finds that Respondent registered and is using the <dynamarksecurity.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further asserts that Respondent had knowledge of Complainant and Complainant’s DYNAMARK at the time Respondent registered the disputed domain name. Complainant states that it has marketed and sold services using the DYNAMARK mark since 1979. Complainant further points out that Respondent’s registration of a domain name displaying the entirety of Complainant’s registered mark indicates that Respondent had knowledge of Complainant when Respondent registered the disputed domain name. The Panel finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dynamarksecurity.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 6, 2014
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