The Complainant is Asurion, LLC of Nashville, Tennessee, United States of America, represented by Adams and Reese LLP, United States of America (“United States”).
The Respondent is ORM Ltd/Contact Privacy Inc. d/b/a ContactP of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2016. On March 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2016, 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2016.
The Center appointed Tan Tee Jim, S.C. as the sole panelist in this matter on May 4, 2016. 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
The Complainant is Asurion, LLC, a corporation whose corporate headquarters is located in Nashville, Tennessee, United States. It is in the business of providing, amongst others, insurance, warranty management, claims processing as well as repair and replacement services for telephones and other wireless devices (the “Services”). It has offices in the United States, Canada, Europe, Australia and Asia (including China, Singapore, Hong Kong, China, Taiwan Province of China and Japan) which serve over 90 million subscribers worldwide. It advertises and sells its services through various means, such as print media and its website bearing the domain name .
The Complainant is the owner of the mark ASURION which it has used since 2001. The mark is registered as a trademark in more than 40 countries, including the United States, the United Kingdom of Great Britain and Northern Ireland, Germany, Australia and Singapore. Aside from the domain name , the Complainant also owns domain names incorporating the ASURION mark such as , as well as domain names containing an additional “s” for the word or mark ASURION mark such as .
The Respondent is the registrant of the Domain Name which was registered on January 17, 2012. Not much else is known about the Respondent other than that it has a post office address in the Cayman Islands and that it has a website at “www.” (the “Website”). 5. Parties’ Contentions A. Complainant
Essentially, the Complainant contends the following.
5.1 It has very strong rights in the ASURION mark by reason of
(a) its use of the ASURION mark since 2001, including in connection with its “www.” website through which it has been advertising and selling the Services;
(b) its trademark registrations for the ASURION mark in several countries; and
(c) its numerous domain name registrations incorporating the ASURION mark or a variant of it (namely, ASSURION).
5.2 The Domain Name is identical or confusingly similar to the ASURION mark. This is because
(a) the dominant element of the Domain Name, “assurion”, is phonetically identical and virtually identical in appearance to the Complainant’s ASURION mark;
(b) the addition of the letter “s” to the ASURION mark in the Domain Name does not make the mark different from the Complainant’s ASURION mark in any substantive way;
(c) the addition of the generic words “phone” and “claim” does not prevent the Domain Name from being confusingly similar to the Complainant’s ASURION mark; and
(d) the addition of the generic words actually serves to increase the confusing similarity, given that the Complainant is also involved in claim processing and repair services for phones.
5.3 The Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:
(a) “Asurion” is not the Respondent’s name, nor has it been commonly known as “Asurion”;
(b) The Respondent is not, and has never been, a licensee or franchisee of the Complainant;
(c) At no time did the Complainant ever authorize or permit the Respondent to register or use the Complainant’s ASURION mark or to apply for use any domain name incorporating the mark;
(d) The Respondent is not using the Domain Name with a bona fide offering of goods or services or in a legitimate noncommercial or fair manner; and
(e) The Website contains sponsored links to websites that purportedly offer goods and services identical with or similar to those of the Complainant.
5.4 The Domain Name was registered and used in bad faith for the following reasons:
(a) Given the Complainant’s global trademark registrations for the ASURION mark, its abundant domain names incorporating the mark as well as its international reputation, it is implausible that the Respondent was unaware of the Complainant’s ASURION mark when it registered the Domain Name;
(b) The Respondent is using the Domain Name to re-direct Internet users, including the Complainant’s customers and potential customers, from the Complainant’s websites to the websites of other wireless device services providers that may compete with the Complainant;
(c) The Respondent is using a misspelling of the Complainant’s ASURION mark to benefit commercially from the goodwill in the mark and the use also creates a likelihood of confusion with the Complainant’s mark in relation to the source, sponsorship, affiliation or endorsement of the Website or of a product or service on the Website; and
(d) The Respondent offered to sell the Domain Name at the sum of USD1,159 which far exceeds its out-of-pocket costs. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in order to succeed:
(1) The Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(2) The 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 accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in absence of exceptional circumstances, decide the dispute based on the Complaint. A. Identical or Confusingly Similar
The Complainant has provided evidence of its trademark registrations for the ASURION mark in several countries. It claims that it has used this mark since 2001 and that it is the owner of several domain names incorporating the mark and a variant thereof (namely, ASSURION) have not been disputed. On the basis of the evidence and the claims, the Panel is satisfied that the Complainant has rights in the ASURION mark.
It is obvious that the Domain Name incorporates the Complainant’s ASURION mark, save for the inclusion of an additional “s” in the Domain Name. This mark dominates the Domain Name and renders the name phonetically identical and visually similar to the Complainant’s ASURION mark. The use of the mark in the Domain Name (even with the additional “s”) is likely to cause confusion amongst the trade and the public regarding the Domain Name and the Website. In particular, they are likely to be misled into thinking that the Domain Name and the Website are the Complainant’s or are related to the Complainant.
The likelihood of confusion is unlikely to be dispelled by the addition of the generic words “phone” and “claim” in the Domain Name. The Panel agrees that the addition in fact accentuates the confusion, given that the Complainant’s business also involves claim processing as well as repair and replacement services for phones and other wireless devices.
Hence, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ASURION mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:
(1) the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(2) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(3) the Respondent is making a legitimate, noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Despite being notified of the Complaint, the Respondent did not take the opportunity to assist the Panel by providing evidence to establish any of the above circumstances. Naturally, an adverse inference may be drawn from such a failure. The failure is also indicative “of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493). In the present case, the Panel would make such an inference.
This aside, the Panel will also consider whether the Respondent has rights or legitimate interests in the Domain Name based not only on the evidence adduced by the Complainant but also the lack of relevant evidence. In the latter regard, there is no relevant evidence that ASURION is the Respondent’s name or that it has been commonly known by that name. Nor is there any evidence indicating that the Respondent has been authorized to use the name or mark ASURION by the Complainant or any other party with a legitimate interest in the name or mark. The filing of the Complaint quite clearly indicates to the contrary insofar as the Complainant is concerned.
The Panel finds that the Respondent does not have any rights or legitimate interests at all in the Domain Name. C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(1) circumstances indicating that the Respondent has registered or has acquired the 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 or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(2) circumstances showing that the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(3) circumstances showing that the Respondent has registered the Domain Name primarily for the purposes of disrupting the business of a competitor; or
(4) the Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant has provided evidence which, in the Panel’s view, establish (1), (2) and (4) above. For instance, the screenshot at Annex 5 of the Complaint indicates an offer to sell the Domain Name. Such an offer casts doubt as regards the legitimacy of the Respondent’s registration of the Domain Name. This doubt is increased by the fact that the Respondent’s Website does not advertise or promote any goods or services of the Respondent but is linked to other websites that offer goods or services which compete with the Complainant’s. These doubts can only lead to the strong inference that the Respondent must have registered the Domain Name in the hope that it would or could sell the name to the Complainant or a third party which provides similar services as the Complainant.
There is undisputed evidence that the Complainant has been using ASURION mark since 2001 through its several offices worldwide. It has also obtained several registrations of the ASURION mark and domain names incorporating that mark. Several of these registrations pre-date the date of creation (January 17, 2012) of the Domain Name. In these circumstances, the Complainant rightly contends that it is implausible that the Respondent was unaware of the Complainant’s mark prior to January 17, 2012. We would add that these circumstances would compel the Respondent to come forward to indicate whether it knew of the Complainant’s ASURION mark and, if so, explain why it registered the Domain Name which is virtually similar to the ASURION mark. Its failure to come forward is not only odd but would also suggest bad faith on the Respondent’s part when it registered the Domain Name. This Panel finds that there is such evidence of bad faith in the present case.
Annex 15 of the Complaint concerns previous decisions adverse to the Respondent. It does appear that the Respondent is indeed a “serial cybersquatter” and uses the domain name registration regime for profit. It undermines the purposes of the regime.
The Panel is therefore satisfied that the Complainant has proven that the Domain Name has been registered and is being used in bad faith by the Respondent. It therefore finds for the Complainant in relation to paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, and 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.
Tan Tee Jim, S.C.
Sole Panelist
Date: May 18, 2016
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