The Complainant is Asurion, LLC, United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is Whois Privacy Protection Service by , Japan / Lee Black, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount‑D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019. On July 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on July 9, 2019.
On July 8, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On July 8, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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, in English and Japanese, of the Complaint, and the proceedings commenced on July 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2019.
The Center appointed Teruo Kato as the sole panelist in this matter on August 14, 2019. 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
According to the Complainant, it offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services, and has been active since 1994. The Complainant has served over 280 million consumers worldwide and has 14 locations in North and South America, 2 locations in Europe, 2 locations in Australia, and 10 locations in Asia, including Japan.
The Complainant owns, inter alia, Japanese trademark ASURION (words) No. 4827130 (registered December 17, 2004) and Japanese trademark ASURION (words) No. 5776303 (registered July 3, 2015), as more particularly set out in section 6.2A below.
The disputed domain name was registered on May 15, 2019.
The disputed domain name redirects to a commercial parking page showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant.
The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the owner of various trademarks including ASURION.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s ASURION trademark and that the generic Top-Level Domain (“gTLD”) “.com” should be disregarded in considering the confusing similarity.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s ASURIION trademark, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide offering of goods or services under the disputed domain name, and that the Respondent does not use the disputed domain name in a legitimate noncommercial or fair manner.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding A. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese.
The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that a) the content of the website at the disputed domain name was in English; and b) if Japanese was made the language of the proceeding, it would subject the Complainant to disproportionate expense for translation services and would cause undue delay and inconvenience.
The Panel notes that information of this proceeding was given to the Respondent both in English and Japanese. The Panel hence notes that the Respondent had the opportunity to raise an objection to the Complainant’s request to proceed in English but the Respondent did not do so.
In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English should be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of ASURION registered trademarks, including inter alia:
- Japanese trademark ASURION (words) No. 4827130 (registered December 17, 2004) covering goods and services in classes 9, 36, 37 and 39, and
- Japanese trademark ASURION (words) No. 5776303 (registered July 3, 2015) covering goods and services in class 42.
As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the Complainant’s trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the gTLD, the disputed domain name incorporate the ASURION mark in its entirety, with the only difference being the inclusion of an additional letter “a” before the ASURION mark in the disputed domain name. The Panel takes a note that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of the WIPO Overview 3.0).
The Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant contends that “Asurion” is not the Respondent’s name, that the Respondent is not and has never been commonly known as “ASURION”, that the Respondent is not and has never been a licensee or franchisee of the Complainant, and that the Respondent has never been authorized by the Complainant to register or use the Complainant’s ASURION mark or to apply for or use any domain name incorporating the mark. The Complainant further contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner.
The Complainant submitted to the Panel documentary materials to support its contentions as above and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 that website or location.
The Panel notes and accepts that the ASURION trademark was registered and extensively used internationally, including in Japan, well before the disputed domain name was registered on May 15, 2019. Accordingly, the Panel holds that the Respondent was most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
As to the use in bad faith, the Complainant contends, among others, that the disputed domain name was redirecting “to a commercial parking page showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant” and “being used as a vehicle for an apparent phishing scam”.
To support such contention, the Complainant submitted screenshots of the website displaying a security message, which were redirected from the disputed domain name, allegedly captured on May 23, 2019, June 26, 2019 and June 27, 2019.
The Respondent was given an opportunity to raise its objection to the contentions made by the Complainant but has not done so.
In the circumstances, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the third requirement of the Policy has been met. 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.
Teruo Kato
Sole Panelist
Date: August 15, 2019
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