Complainant is Asurion, LLC, Nashville, Tennessee, United States of America (“United States”), represented by Adams and Reese LLP, Nashville, Tennessee, United States.
Respondent is Name Redacted.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center requested for confirmation on May 26, 2020, from Complainant regarding the mutual jurisdiction. Complainant submitted its confirmation on the same day.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. On May 30, 2020, the Center received an email communication from Respondent ascertaining the identity theft. On June 2, 2020, the Center sent an email communication to the Parties explaining the latter issue. Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on June 17, 2020.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 26, 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 BackgroundComplainant states that it “offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services under the ASURION mark” (as defined below); that it “has been active since 1994 and has used the mark ASURION since 2001”; that it “advertises and sells its products and services through its
Complainant states that it is the owner of the trademark ASURION in Argentina, Australia, Brazil, Canada, Chile, China, Colombia, Costa Rica, Cuba, Ecuador, El Salvador, the European Union, Guatemala, Honduras, Hong Kong, China, India, Indonesia, Israel, Japan, Malaysia, Mexico, New Zealand, Nicaragua, Panama, Paraguay, Peru, the Philippines, Singapore, Republic of Korea, Taiwan Province of China, Thailand, the United States of America, and Uruguay. Complainant states, and provides evidence to support, that it is the owner of at least five registrations for the ASURION trademark in the United States, including United States Reg. No. 2698459 for ASURION (registered March 18, 2003). These trademarks are referred to herein as the “ASURION Trademark.”
The Disputed Domain Name was created on February 13, 2020. Complainant states, and provides evidence to support, that the Disputed Domain Name has been used by Respondent to send emails impersonating Complainant’s chief financial officer, requesting urgent payment to a vendor.
5. Parties’ Contentions A. ComplainantComplainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the ASURION Trademark because it “incorporates the ASURION mark in its entirety together with a hyphen followed by the letters ‘h’ and ‘q’”; “a domain name’s incorporation of a registered trademark in its entirety is sufficient to establish that the domain is identical or confusingly similar to that mark, particularly where the mark is the dominant element of the domain”; and “[t]he addition of a hyphen followed by the letters ‘h’ and ‘q’ does not distinguish the Domain Name from Complainant’s ASURION mark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]o Complainant’s knowledge, ‘ASURION’ is not Respondent’s name, and Respondent is not and has never been commonly known as ‘ASURION’”; “Respondent has never been authorized by Complainant to register or use Complainant’s ASURION trademark or to apply for or use any domain name incorporating the mark”; “Respondent has used the Domain Name to send emails in an attempt to impersonate one of Complainant’s executives for fraudulent purposes, namely, to solicit employees to send payments to an undisclosed vendor”; and “without authorization from Complainant, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed by Respondent, as the ASURION mark was well-known at the time of registration, due to Complainant’s extensive use of the mark.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[g]iven the global trademark registrations for the ASURION mark, Complainant’s numerous domain names incorporating the ASURION mark, Complainant’s fame and international reputation, and the fact that ASURION is a highly distinctive and famous mark universally associated with Complainant, it is not plausible that Respondent could have been unaware of Complainant at the time of registration”; and “Respondent is using the Domain Name to perpetuate a phishing scheme, whereby the Respondent sends spoof emails posing as one of Complainant’s executives to request payments from Complainant’s employees be made to an undisclosed vendor.”
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Identical or Confusingly SimilarBased upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ASURION Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the ASURION Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “asurion-hq”) because “[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”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the ASURION Trademark in its entirety, adding only a hyphen and the letters “hq”. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, “[w]here 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.” WIPO Overview 3.0, section 1.8. See also, e.g., Teva Pharmaceutical Industries Limited v. Linda Moore,
WIPO Case No. D2019-3159 (in finding domain name
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate InterestsComplainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]o Complainant’s knowledge, ‘ASURION’ is not Respondent’s name, and Respondent is not and has never been commonly known as ‘ASURION’”; “Respondent has never been authorized by Complainant to register or use Complainant’s ASURION trademark or to apply for or use any domain name incorporating the mark”; “Respondent has used the Domain Name to send emails in an attempt to impersonate one of Complainant’s executives for fraudulent purposes, namely, to solicit employees to send payments to an undisclosed vendor”; and “without authorization from Complainant, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed by Respondent, as the ASURION mark was well-known at the time of registration, due to Complainant’s extensive use of the mark.”
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad FaithWhether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
As stated above, Respondent is using the Disputed Domain Name to impersonate Complainant by, among other things, sending emails that appear to be from Complainant as part of an apparent phishing scheme. This clearly creates a “likelihood of confusion” leading to bad faith under paragraph 4(b)(iv) of the Policy. Further, “fraudulently impersonating” a complainant has often been found to constitute bad faith. See, e.g., The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859,
WIPO Case No. D2008-1078. And, sending emails that appear to be from Complainant under the facts of this case is a type of “phishing” that is “manifestly considered evidence of bad faith.” WIPO Overview 3.0, section 3.1.4.
Accordingly, the Panel finds that Complainant has proven the third element 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
Douglas M. Isenberg
Sole Panelist
Date: June 29, 2020
1 It appears that Respondent has engaged in identity theft to register the Disputed Domain Name in the name of an uninvolved person. Accordingly, and because Complainant has asked that Respondent’s name not be published, due to the allegation of identity theft, the Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the named Respondent, and hereby authorizes the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,
WIPO Case No. D2009-1788.