WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asurion Corporation v. Digi Real Estate Foundation
Case No. D2006-0765
1. The Parties
The Complainant is Asurion Corporation, Nashville, Tennessee, United States of America, represented by Adams and Reese LLP, United States of America.
The Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with Nom Infinitum, Incorporated (an eNom registry credential).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2006. On June 20, 2006, the Center transmitted by email to Nom Infinitum, Incorporated a request for registrar verification in connection with the domain name at issue. On June 26, 2006, eNom, Inc. (acting on behalf of Nom Infinitum, Incorporated) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that 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 June 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�18,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2006.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August�2, 2006. 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
Complainant is a provider of services of insurance and warranty management to protect customers against loss, theft, damage and malfunction of their handset wireless devices. Complainant has been active since 1994, and uses the brand ASURION since 2001. Complainant currently serves over 50 million wireless subscribers and has locations in the United States, Singapore, Republic of Korea, Hong Kong, Taiwan and Japan.
Respondent registered the contested domain name on October 11, 2005.
Complainant actively uses the Internet to advertise and offer services and has several domain registrations, operating its principal website at . Furthermore, Complainant is the owner of the following trademark registrations or applications:
Country
Trademark
Registration No.
Canada
ASURION
TMA 580365
European Union
ASURION
2196939
Hong Kong
ASURION
300368910
Hong Kong
ASURION IN CHINESE
300406890
Japan
ASURION
Pending
Republic of Korea
ASURION
45-0015790
Republic of Korea
ASURION IN KOREAN
Application No. 45-2005-0001580
Mexico
ASURION
753307
Singapore
ASURION
T05/01963D
Singapore
ASURION
T05/01964B
Singapore
ASURION
T05/01965J
Singapore
ASURION
T05/01968E
Taiwan
ASURION
1197307
Taiwan
ASURION IN CHINESE
Application No. 94019081
United States
ASURION
3019708
United States
ASURION
2698459
United States
ASURION EMERGENCY ROADSIDE ASSISTANCE
Application No.
78/311272
United States
ASURION ROADSIDE ASSISTANCE
2937841
Since its first use of the mark in 2001, Complainant has promoted the ASURION mark continuously and extensively. In the year 2005 alone, Complainant spent in excess of $5 million United States dollars promoting the mark and products and services sold under the mark.
Complainant put Respondent on notice of Complainant’s claim by virtue of a demand letter dated March 16, 2006, which was sent via e-mail, facsimile and certified mail. The demand letter was never replied.
5. Parties’ Contentions
A. Complainant
Complainant contends that Respondent is using a domain name that is identical or confusingly similar to the marks owned by Complainant, as the addition of the generic term “insurance” not only fails to give to the domain name any distinctiveness in relation to Complainant’s marks, but also increase the risk of confusion because Complainant is engaged exactly in insurance services, and, thus, the public is likely to assume that “asurion insurance” denotes Complainant’s services.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the domain name, because Respondent has never used the domain name in connection with a bona fide offering of goods or services as it resolves to a directory that comprises links that direct users to sites of other insurance companies.
Finally, Complainant holds that the domain name was registered and is being used in bad faith because Respondent does not conduct any legitimate commercial or noncommercial business or activity on the web site; and, given the many trademark registrations for ASURION, its international reputation, and the fact that ASURION is a fanciful name with no other meaning than Complainant’s name, it is not plausible that Respondent could legitimately use the Domain Name, and it is not plausible that the Respondent could have been unaware of Asurion at the time of registration.
Complainant thus understands that Respondent has registered and is using the Domain Name for the sole purpose of redirecting internet users, and particularly customers and potential customers of Complainant, from Complainant’s website to the website of other insurance companies which may compete with Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is used in bad faith.
A. Identical or Confusingly Similar
It is a well-established principle of trademark law worldwide that a trademark registration protects the registrant against the use of identical or similar marks in the same or akin areas. In the present case, both Complainant and Respondent are clearly using the mark ASURION to identify the same services (namely, insurance services).
Complainant’s assertion is accurate when it says that adding the generic term “insurance” to the mark failed to give to the disputed domain name any distinctiveness, but instead aggravated the risk of confusion because customers shall immediately associate the mark ASURION used in the domain name with the Complainant, as Complainant is traditionally engaged in providing insurance services.
Thus, there is no doubt that the domain name is confusingly similar with the trademark ASURION registered by Complainant.
B. Rights or Legitimate Interests
The Panel understands that under paragraph 4(a)(ii) of the Policy the overall burden of proof is on Complainant. However, once the Complainant presents prima facie evidence that the Respondent lacks rights or legitimate interest the burden shifts to the Respondent. See Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 and Belupo d.d. v. Wachem d.o.o., WIPO Case No. D2004-0110.
Complainant’s registration and use of the trademark ASURION pre-date the Respondent’s registration of the confusingly similar domain name . The Panel agrees that it was indeed likely that the Respondent was aware of the Complainant’s trademarks at the time of registration and subsequent use of the disputed domain name.
In addition, it has been shown that Respondent appears not to run any legitimate business associated with the disputed domain name but only uses it in a web site for the purpose of redirecting internet users to the website of other insurance companies which may compete with Complainant. Accordingly, the use of the domain name is not considered legitimate use in connection with a bona fide offering of goods and services. Accordingly, the Panel finds the Complainant has presented prima facie evidence in relation to the second element of the Policy.
Respondent has not filed any Response to the Complaint and thus has not provided any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication in the evidence it received that any of the circumstances described in Paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Given the circumstances the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As duly noted by Complainant, the Panel cannot overlook the fact that Respondent has conducted its actions as a cybersquatter in the past, as it it has been a Respondent in at least five UDRP proceedings, all of which were decided in favor of the rightful trademark owner. See, e.g. Toyota Motor Credit Corporation v. Digi Real Estate Foundation, WIPO Case No. D2005-1111 (“Respondent’s bad faith is established already by the fact that Respondent was involved in several domain name dispute resolution proceedings as a respondent (see Adidas-Salomon AG v. Digi Real Estate Foundation, WIPO Case No. D2004-1079, and Medco Health Solutions, Inc v. Digi Real Estate Foundation, WIPO Case No. D2005-0216. Moreover, the dispute resolution services provided by Nominet (the United Kingdom domain name registry) have also already decided a case against the Respondent (see Robert Half International Inc. v. Digi Real Estate Foundation, Nominet Dispute No. 2177). In all such cases, the panels found that the domain names should be transferred.
This represents a pattern of conduct in registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name; Caesars World, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0425 (“Complainant has shown that Respondent is conducting a typosquatting practice, i.e., taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.”).
While bad conduct in the past is alone by no means a safe lead to conclude that there is bad faith of the Respondent in the current case, these previous cases clearly show that Respondent apparently does not conduct any legitimate business whatsoever and has as its sole purpose the registration of domain names in order to profit from the diversion of legitimate businesses of third parties.
The fact that the Respondent is operating under the disputed domain name a business competing with the Complainant is also an indication of bad faith. As decided in the case Florists’ Transworld Delivery, Inc. v. BBIKOREA, NAF Case No. FA0204000109572 (NAF), a Respondent does not have legitimate interest in domain name incorporating Complainant’s trademark when using it to compete with Complainant.
In America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, the panel considered an evidence of ”opportunistic bad faith” to offer services in a respondent’s web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business. And in The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474, the Respondent’s use of confusingly similar domain name to sell competing goods was held to be illegitimate and not a bona fide offering of goods.
Accordingly, the Panel determines that Respondent has registered and used the domain name in bad faith within the meaning of Paragraph 4(b)(iii) and (iv) of the Policy.
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 be transferred to the Complainant.
Gabriel F. Leonardos
Sole Panelist
Dated: August 18, 2006
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