The Complainant is Asurion, LLC of Nashville, Tennessee, United States of America (“United States” or “US”), represented by Adams and Reese LLP, United States.
The Respondent is Shi Lei of Hangzhou, China. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with Alibaba Cloud Computing (Beijing) Co., Ltd.; the disputed domain names , , , and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (collectively the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 16, 2018, 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.
On October 24, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 24, 2018. The Respondent did not comment on the language of the proceeding.
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 proceedings commenced on November 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 13, 2018. 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, Asurion, LLC, offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services under the ASURION mark. The Complainant has been active in this business since 1994 and has used the ASURION mark since 2001. The Complainant advertises and sells its products and services through its website and related websites, print media and other advertising and promotional campaigns.
The Complainant has served over 280 million consumers worldwide, and its services are made available by retailers worldwide, including some of the largest retailers in the United States. It has fourteen locations in North and South America, two locations in Europe, two locations in Australia, and ten locations in Asia, including China, Israel, Japan, Malaysia, the Philippines, Singapore, and Thailand.
The Complainant is the owner of numerous trademarks worldwide for the mark, ASURION, including:
- ASURION (Reg No. 8809458) registered in China on December 7, 2011;
- ASURION (Reg No. 8809457) registered in China on December 21, 2011;
- ASURION (Reg No. 8809459) registered in China on November 21, 2011;
- ASURION (Reg No. 1118997) registered internationally on January 11, 2012;
- ASURION (Reg No. 2698459) registered in US on March 18, 2003;
- ASURION (Reg No. 4179272) registered in US on July 24, 2012;
- ASURION (Reg No. 4314110) registered in US on April 2, 2013;
- (Reg No. 4646459) registered in US on November 25, 2014;
- ASURION (Reg No. 4997781) registered in US on July 12, 2016.
The disputed domain names were all registered on November 7, 2017. Several of the domain names resolve to a parking website with a list of links that when clicked, redirect visitors to other websites of a commercial nature; the rest resolve to inactive websites.
The Respondent appears to be an individual living in China. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s registered mark ASURION as the disputed domain names incorporate the ASURION mark in its entirety and only differs from the ASURION mark by the addition of the generic, descriptive terms “life” and “benefit”. The Complainant states that it has rights in the trademark through its numerous trademark registrations and that by the Respondent’s use of the disputed domain names, together with the Top-Level Domain (“TLD”) extension, “.com” and “.xyz”, which should not be taken into account, there is confusing similarity between the disputed domain names and the Complainant’s ASURION mark.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as the Complainant’s numerous registrations of the ASURION mark constitutes prima facie evidence of the validity of the ASURION trademark and of its ownership. The Complainant also contends that the Respondent is not sponsored or affiliated with the Respondent and did not give the Respondent permission to use the ASURION mark in any manner. The Complainant also argues that the Respondent is offering the disputed domain names for in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain names and has requested for payment from the Complainant in exchange of the transfer of the disputed domain names, thereby further showing the Respondent’s lack of rights and legitimate interests.
The Complainant further argues that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the Respondent possessed actual notice and knowledge of its ASURION mark due to its fame and the Respondent had acted in bad faith by registering the disputed domain names. The Complainant also argues 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on [the Respondent’s] website or location,” thereby demonstrating a nefarious intent to capitalize on the Complainant’s fame and goodwill to increase traffic to the disputed domain names’ websites for the Respondent’s gain. The Complainant also argues that the Respondent’s domain names resolve to pay-per-click websites and has been engaging in a pattern of cybersquatting/typosquatting which is further evidence of bad faith registration and use of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain names is Chinese and the default language of the proceeding should be Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent did not file a Response and did not respond to the Complainant’s request that the proceeding be in the English language.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain names consist of Latin letters, rather than Chinese characters;
(ii) The Respondent had corresponded with the Complainant in English in its response to the Complainant’s cease and desist letters and in its attempt to sell the disputed domain names to the Complainant. This indicates that the Respondent understands the English language and would not be unfairly treated by having the proceeding carried out in English;
(iii) To require the Complainant to translate the Complaint and all other supporting documents in Chinese would cause an unnecessary burden to the Complainant and unnecessary delay to the proceeding;
(iv) There are prior cases involving the Respondent that were conducted in the English language.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of its numerous trademark registrations in US and China, where the Respondent is based and registered the disputed domain names.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain names all integrates the Complainant’s ASURION trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345).
It is well established that the insertion of a generic descriptive term does not differentiate a disputed domain name from a complainant’s mark. The insertion of the dictionary terms “life” and “benefit” does not distinguish the disputed domain names from the Complainant’s ASURION mark nor does it avoid confusing similarity. See WIPO Overview 3.0, section 1.8.
It is also widely established that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain names does not avoid confusing similarity (see Accor v. Noldc Inc.WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; L’Oréal v Tina Smith,WIPO Case No. 2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.WIPO Case No. D2009-0877). The addition of the gTLD “.com” and “.xyz” in the disputed domain names is therefore without significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.)
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns various trademark registrations in US and China long before the disputed domain names were registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark. (See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.)
The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name. See WIPO Overview 3.0, section 2.3. Further, the addition of the terms “life” and “benefit” to the disputed domain names is within the Complainant’s field of commerce or indicating services related to the ASURION mark, which likely triggers an inference of affiliation with the Complainant and does not constitute legitimate fair use of the domain name. See WIPO Overview 3.0, section 2.5.1.
Further, in the present case, the Respondent did not submit a Response to the Complainant and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the ASURION trademark since the year 2011. In view of the evidence filed by the Complainant, and the widespread use of the ASURION trademark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain names include the Complainant’s trademark in its entirety with the term “life” and “benefit”. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Several of the disputed domain names resolve to pay-per-click websites. Past UDRP panelists have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
In the present case, the evidence provided by the Complainant demonstrates that the sole purpose of the disputed domain names is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. The links offered on the website under the disputed domain names are connected with the Complainant’s services. Such use demonstrates that the Respondent has used the disputed domain names to obtain a commercial benefit (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258.) The Panel is convinced that the Respondent is using the Complainant’s trademark without authorization for the purpose of attracting visitors which may be confused into believing, at least initially, that the disputed domain names are in some form connected or endorsed by the Complainant, when it is not (see Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.). The Respondent’s behavior is yet another indication of bad faith registration and use of the disputed domain names.
Moreover, the evidence provided by the Complainant shows that the Respondent targeted the Complainant and that the ultimate purpose of purchasing and registering the disputed domain names was to sell the disputed domain names to the Complainant, for an amount exceeding the Complainant out of pocket costs. The Respondent offered to sell the disputed domain names to the Complainant after having targeted the Complainant. Targeting of the Complainant is evidence in this case in view of the fact that the Complainant’s trademark is highly distinctive, the disputed domain names comprises the Complainant’s trademark in its entirety, and the website under the disputed domain names offers pay-per-click links to business which compete with the Complainant.
Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain names and the Complainant’s marks, the Respondent’s use of the disputed domain names, the Respondent’s failure to present any credible rationale for registering the disputed domain names, and the fact that is no plausible good faith use the Respondent can put the disputed domain names to, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith. 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 names , , , , , , , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: December 24, 2018
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