The Complainant is Asurion LLC of Nashville, Tennessee, United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is Webmaster of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with INames Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 4, 2011, the Center transmitted by email to INames Co., Ltd. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On November 8, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
On November 8, 2011, the Center notified the parties in both English and Korean, of the Center’s procedural rules relevant to the language of the proceedings. The Center informed the parties that according to the Registrar, the language of the registration agreement is Korean, and that the Complaint was submitted in English. In addition, the Center specifically requested the Complainant to provide at least one of the following: “1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Korean; or . . . 3) submit a request for English to be the language of the administrative proceedings.” To the Respondent, the Center stated, “In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by November 13, 2011.” The Center also instructed the Respondent, “Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials . . . as to why the proceedings should not be conducted in English.”
On November 9, 2011, the Complainant confirmed to the Center by email that it requested English to be the language of the administrative proceedings, as provided in section IV of the Complaint. The Respondent did not make any submission with regard to the language of the proceedings.
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 November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2011.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on December 8, 2011. 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.
The Panel determines that English is the language of the proceeding, as discussed herein. 4. Factual Background
According to its website, the Complainant provides “consumer technology protection services” and offers “technical support to help customers derive optimum benefit from the usage of electronics; mobile security to help ensure content privacy; and rapid replacement of lost, stolen, damaged or malfunctioning device; all in our effort to provide consumers complete peace of mind”. The Complainant has operations in the United States, Canada, Europe, and Asia, including the Republic of Korea (“Korea”).
The Complainant first used the ASURION mark in 2001, and is the owner of the mark’s registrations in the United States Patent and Trademark Office, dated March 18, 2003, and November 29, 2005, both for “cooperative and direct marketing for and with others of services, equipment and programs for repair and replacement of wireless devices to subscribers of wireless communications services”. The Complainant also registered the ASURION mark in Korea, on April 12, 2006.
The Complainant merged with lock\line LLC on January 1, 2006. Shortly thereafter, lock\line LLC changed its name to Asurion Protection Services, LLC, which became a subsidiary of the Complainant. Asurion Protection Services, LLC is the current owner of multiple United States registrations of the LOCK\LINE mark, including one dated November 4, 2003, for “providing customer call center services for customers of telecommunications, insurance and financial institutions”. The original registrant of the mark was lock\line LLC.
The Respondent registered the disputed domain name on January 3, 2006 – the same date that the Complainant announced that its merger with lock\line LLC received approval from agencies of the United States federal government. 5. Parties’ Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. The Panel may also draw appropriate inferences from the Respondent’s default, under paragraph 14(b). 6. Discussion and Findings
Language of Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11 of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, but also permits the panel to determine otherwise, “having regard to the circumstances.”
Here, the Registrar informs that the registration agreement is in Korean. The Complainant submitted its Complaint in English, and requested that English be the language of the proceeding. The Center informed the Respondent, in both Korean and English, that it may object timely to any request that the language of the proceeding be English. The Respondent did not respond, nor did it submit a Response to the Complaint. With the Respondent declining to participate in the proceeding, the Complainant is the only party remaining.
Accordingly, the Panel determines that English is the language of the proceeding.
Turning to the merits, the Complainant must demonstrate the presence of each of the three elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has demonstrated that, on its own and through its subsidiary, it has rights in the marks, ASURION and LOCK\LINE. The disputed domain name results from a combination of the two marks in succession (with only the “\” omitted), plus the Top Level Domain. The Panel determines that the disputed domain name is identical or confusingly similar to the Complainant’s marks.
The first element of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainant has met its initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Thus, the burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances, which, if proven, demonstrate the respondent’s rights or legitimate interests in respect of the domain name. The Panel is unable to ascertain any such rights or interests in this case, as described in paragraph 4(c), or otherwise.
The second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
In order to prevail, the Complainant must also show that the disputed domain name “has been registered and is being used in bad faith,” as set forth in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that indicate bad faith in the registration and use of a domain name.
As of the date of this decision, Internet users who resort to the disputed domain name are taken to a website that includes links for, among others, “Cell Phone”, “Wireless Phone”, “Cellular Phone Service”, and “Auto Insurance”, all of which are related to the Complainant’s services. This is ample evidence that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website . . ., by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website, under paragraph 4(b)(iv) of the Policy.
In addition, the record includes correspondence between the parties, which began with the Complainant’s counsel demanding that the Respondent transfer the disputed domain name to the Complainant, and cease and desist from all use of the Complainant’s marks. The Respondent responded:
“I received an email regarding
If you need this domain I would like to suggest[] to purchase it.
If you like to reso[l]ve this problem at wipo and korean local court. You could go a long journey for more than three-four years.”
Counsel for the Complainant replied that its client was willing to reimburse the registration fee for the domain name but insisted on its previous demands. To this, the Respondent responded that it would transfer the domain name for USD 15,000. These circumstances indicate to the Panel that the Respondent registered or acquired the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark . . . for valuable consideration in excess of [the] documented out-of-pocket costs directly related to the domain name,” under paragraph 4(b)(i) of the Policy.
The third element of paragraph 4(a) of the Policy is present.
The Panel notes that the facts of this case bear a strong resemblance to Neuf Telecom, Cegetel v. Hyun-Jun Shin,WIPO Case No. D2005-1118. There, the respondent had registered the domain name shortly after the merger of the complainants, Neuf Telecom and Cegetel, two French companies. The panel in that case determined that the requisite elements of paragraph 4(a) of the Policy were met, for reasons similar to those seen here. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Ilhyung Lee
Sole Panelist
Dated: December 22, 2011
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