The Complainant is Asurion, LLC, United States of America, represented by Adams and Reese LLP, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC / Carolina Rodrigues Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 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 December 11, 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 on December 11, 2019.
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 of the Complaint, and the proceedings commenced on December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on January 21, 2020. 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 BackgroundThe Complainant, Asurion, LLC, offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services. It has been active since 1994 and has used the ASURION mark since 2001.
The Complainant owns trademark registrations for ASURION in 33 countries, including the following:
- United States Trademark Registration No. 2698459, dated March 18, 2003; and
- United States Trademark Registration No.4179272, dated July 24, 2012, among others.
The Complainant advertises and sells its products and services through its
The disputed domain name was registered on October 18, 2019 and relates to a website directing to parking pages showing pay-per-click advertising links to websites offering services similar to those of the Complainant. A report from ANY.RUN LLC alerts to detected “malicious activity” (Annex 4 to the Complaint).
On October 21, 2019, the Complainant’s counsel sent the Respondent, via email to the contact information in the WhoIs record, a cease-and-desist letter requesting that the disputed domain name be transferred to the Complainant, to which there was no reply.
5. Parties’ Contentions A. ComplainantThe Complainant is the exclusive owner of the distinctive and well-known ASURION mark.
The Complainant has served 280 million consumers worldwide, and its services are made available by retailers worldwide. It has 14 locations in North and South America, 2 in Europe and 10 in Asia.
In essence, the Complainant claims that the disputed domain name is identical or confusingly similar to the ASURION mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is used by the Respondent in bad faith.
More specifically, the Complainant claims that the Respondent has never been commonly known as ASURION, and has never been a licensee or franchisee of the Complainant. Furthermore, the Respondent has never been authorized by the Complainant to use the Complainant’s trademark ASURION or to apply for or use any domain name incorporating ASURION.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has proved that it has rights in the trademark ASURION.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case, the disputed domain name
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.
Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark ASURION in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate InterestsAlthough the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant sustains that it has never granted the Respondent with the right to register and use the ASURION trademark as a domain name.
Previous UDRP panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates - NA NA,
WIPO Case No. D2008-0144.
As further discussed under C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather it is using the Complainant’s trademark without consent for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name resolves relates to the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded, and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
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 FaithThe Respondent registered the disputed domain name that contains a third party’s trademark without authorization. The Respondent could not ignore the existence of the ASURION trademark when it registered the disputed domain name on October 18, 2019, because ASURION is the trademark of the Complainant, which was extensively registered and used by the Complainant many years before that date. Therefore, it is difficult to conceive that any use of the disputed domain name would not be related by Internet users to the Complainant and its activities. This assumption is further proved by the fact that the disputed domain name entirely contains the Complainant’s trademark ASURION.
The misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor,
WIPO Case No. D2010-1277; and Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556.
In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating ASURION was very likely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to its own website.
The Panel tends to agree with the Complainant that since the Complainant’s business involves the provision of replacement services for phones and other wireless devices, which the customers must “activate” once received from the Complainant, the addition of the word “activate” in the disputed domain name may even increase the confusing similarity between the disputed domain name and the Complainant’s trademark ASURION and strengthen the idea of an affiliation with the Complainant. Internet consumers seeking ASURION services would be liable to enter the disputed domain name site expecting to contact the Complainant.
It would seem that it is the Respondent’s common practice to select domain names incorporating other’s famous trademarks. As pointed out by the Complainant, Carolina Rodrigues, Fundacion Comercio Electronico has also been respondent in over seventy UDRP proceedings including two involving the Complainant.
In conclusion, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith to confuse Internet users and thereby derive an illegal commercial benefit by taking advantage of the Complainant’s well-known trademark ASURION.
Therefore, Complaint also succeeds on the third prong, the disputed domain name was registered and is being used in bad faith, within the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Miguel B. O’Farrell
Sole Panelist
Date: January 25, 2020