Protection One Alarm Monitoring,
Incorporated v. Protection-one a/k/a Securecell
Claim
Number: FA0507000521114
Complainant, Protection One Alarm Monitoring,
Incorporated (“Complainant”), is represented by Bruce E. Samuels of Lewis and Roca LLP, 40 N. Central Avenue, Phoenix, AZ
85004-4429. Respondent is Protection-one a/k/a Securecell (“Respondent”),
General Delivery, Georgetown, Grand Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <protection-one.com> and <securecell.com>,
registered with Addrcreat.
The
undersigned certifies that he she has acted independently and impartially and
to the best of his knowledge has no known conflict in serving as Panelist in
this proceeding.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 25, 2005.
On
July 26, 2005, Addrcreat confirmed by e-mail to the National Arbitration Forum
that the <protection-one.com> and <securecell.com> domain
names are registered with Addrcreat and that Respondent is the current
registrant of the names. Addrcreat has verified that Respondent is bound by the
Addrcreat registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
August 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 23,
2005 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 postmaster@protection-one.com and postmaster@securecell.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 30, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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.”
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <protection-one.com>
domain name is confusingly similar to Complainant’s PROTECTION ONE mark and
Respondent’s <securecell.com> domain name is identical to
Complainant’s SECURECELL mark.
2. Respondent does not have any rights or
legitimate interests in the <protection-one.com> and <securecell.com>
domain names.
3. Respondent registered and used the <protection-one.com>
and <securecell.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1988,
Complainant, Protection One Alarm Monitoring, Incorporated, has used its
PROTECTION ONE mark in connection with its security alarm monitoring goods and
services. Complainant holds numerous
registrations for its PROTECTION ONE mark with the United States Patent and
Trademark Office (“USPTO”) (E.g., Reg. No. 1,541,841 issued May 30,
1989; Reg. No. 1,686,181 issued May 12, 1992) and internationally. Since 2002, Complainant has used its SECURECELL
mark in connection with its cellular security alarm monitoring services. Complainant holds a registration for its
SECURECELL mark with the USPTO (Reg. No. 2,801,215 issued December 30, 2003).
Complainant has
expended considerable time, effort, and money in advertising, promoting, and
selling goods and services in connection with its marks. Complainant also has been operating websites
at <protectionone.com> and <protectionone.net> in connection with
security alarm monitoring goods since 1997.
Respondent
registered the <protection-one.com> domain name on April 3, 2002
and the <securecell.com> domain name on October 4, 2001. Both domain names resolve to websites
containing links and advertisements for companies that sell goods and services
in competition with Complainant.
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’s
registrations for its PROTECTION ONE and SECURECELL marks with the USPTO are
sufficient to establish Complainant’s rights in the marks. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Complainant
argues that the<protection-one.com> domain name is confusingly
similar to its PROTECTION ONE mark, as the disputed domain name replaces the
space in Complainant’s mark with a hyphen.
The Panel holds that the substitution of a hyphen for a space
insufficient to distinguish the disputed domain name from Complainant’s
mark. See Sports Auth. Mich. Inc. v.
Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a
hyphen to Complainant's mark does not create a distinct characteristic capable
of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also
Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1,
2000) (finding <game-boy.com> identical and confusingly similar the
complainant’s GAME BOY mark, even though the domain name is a combination of
two descriptive words divided by a hyphen).
Additionally,
Complainant argues that the <securecell.com> domain name is
identical to Complainant’s SECURECELL mark.
The disputed domain name wholly incorporates Complainant’s mark and
merely adds the top-level domain (gTLD) “.com.” The Panel holds that the addition of a gTLD to Complainant’s mark
is irrelevant for purposes of Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that
Respondent’s <securecell.com> domain name is identical to
Complainant’s SECURECELL mark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name <robohelp.com> is identical to
the complainant’s registered ROBOHELP trademark, and that the “addition of .com
is not a distinguishing difference”).
The Panel
concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<protection-one.com> and <securecell.com> domain
names. Complainant’s assertion
establishes a prima facie case and shifts the burden to Respondent. To meet its burden, Respondent must provide
the Panel with evidence that it does have rights or legitimate interests in the
disputed domain names. Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is not commonly known by the disputed domains. Without a response from Respondent, the
Panel accepts as true Complainant’s allegation that Respondent is not commonly
known by the disputed domain names. See
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). The
Panel concludes that because Respondent is not commonly known by the disputed domain
names, it has not established rights or legitimate interests under Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
Complainant
provides evidence that Respondent benefits from the confusing similarity of the
<protection-one.com> and <securecell.com> domain
names by displaying links to companies that offer goods and services similar to
Complainant and receiving pay-per-click fees from Internet users clicking on
these links. Complainant argues that
Respondent’s links directly compete with Complainant. Because Respondent did not respond, the Panel treats
Complainant’s arguments as true. See
Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004)
(finding that because Respondent failed to submit a Response, “Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”). Thus, the Panel concludes that Respondent is not using the
disputed domain name in connection with a bona fide offering of goods or
services for purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb.
Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding
that the respondent's “use of the domain name (and Complainant’s mark)
to sell products in competition with Complainant demonstrates neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
of the name”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain names to divert Internet
users to websites that features links to Complainant’s competitors’ goods and
services and to profit from diverting such Internet users to various
websites. The Panel holds that
Respondent is creating a likelihood of confusion for its own commercial gain. The Panel concludes that such use is
evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly
similar to the complainant’s mark and the domain name was used to host a
commercial website that offered similar services offered by the complainant
under its mark).
Moreover,
Complainant argues that Respondent had actual and constructive knowledge of
Complainant’s rights in the marks at the time of registration. The Panel infers that Respondent had
constructive knowledge of Complainant’s rights in the PROTECTION ONE mark due
to Complainant’s registrations for its mark with the USPTO. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”). The Panel
concludes that constructive knowledge of Complainant’s rights in the mark at
the time of registration of the disputed domain name is evidence of bad faith
use and registration under Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (holding that “there is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
However, the
Panel finds that the <securecell.com> domain name was registered
prior to Complainant’s acquisition of trademark rights in the SECURECELL
mark. Complainant states that it first
used the SECURECELL mark on June 1, 2002.
However, Respondent registered the <securecell.com> domain
name on October 4, 2001, almost eight months prior to Complainant’s first
use. Thus, the Panel concludes that
Respondent did not register the <securecell.com> domain name in
bad faith. See Interep Nat'l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith
where the respondent registered the domain prior to the complainant’s use of
the mark); see also Open Sys.
Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding
no bad faith where the respondent registered the domain name in question before
application and commencement of use of the trademark by the complainant).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii) as to the <protection-one.com>
domain name, but not as to the <securecell.com> domain name.
Having
established all three elements required under the ICANN Policy as to the <protection-one.com>
domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <protection-one.com> domain name be TRANSFERRED
from Respondent to Complainant.
However, having
failed to establish the third element required under the ICANN Policy, the
Panel concludes that relief shall be DENIED as to the <securecell.com>
domain name.
John
J. Upchurch, Panelist
Dated: September 13, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page