Complainant is Asurion, LLC, United States of America (“United States”), represented by Adams and Reese LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / a b, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 5, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 8, 2020. 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 Respondent of the Complaint, and the proceedings commenced on June 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 30, 2020. The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 10, 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 Background Complainant owns registrations for the ASURION Mark (or “the Mark”) in over 25 countries including the United States (e.g., 2,698,459, registered March 18, 2003, first use/use in commerce March 12, 2001). Under the Mark Complainant offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services. Complainant advertises and sells its products and services through its “www.asurion.com” website and numerous related websites (e.g., “www.asurionservices.com”), as well as through print media and other advertising and promotional campaigns. Complainant has served over 280 million consumers worldwide, and its services are made available by retailers worldwide. Complainant has fourteen locations in North and South America, two locations in Europe, two locations in Australia, and ten locations in Asia. The Domain Names were registered on March 24, 2020. Screenshots of the websites associated with the Domain Names, captured March 30, 2020, April, 17, 2020, and May 6, 2020, show sponsored links to insurance related businesses (e.g., Roadside Assistance Plans, Insurance Quote, Aaa Insurance Quote, Asurion Phone Claim, Asurion, Verizon Wireless Insurance, National Family Life Insurance). On May 6, 2020, Complainant sent Respondent a cease and desist letter pointing out, among other things, Respondent’s use of the Domain Names in connection with parking pages showing pay-per-click advertising links to websites purportedly offering phone insurance and related services. Respondent did not reply to the letter. 5. Parties’ Contentions A. Complainant Since its first use of the ASURION Mark in 2001, Complainant has promoted the Mark continuously and extensively, spending millions of dollars yearly promoting the ASURION mark and the products and services sold under it. It has become famous as a source identifier for Complainant’s products and services. Complainant’s website at “www.asurion.com” receives over 7.9 million visits annually, and its website at “www.phoneclaim.com” (which also prominently displays the ASURION mark) receives approximately 40 million visitors per year. Each Domain Name consists of the ASURION Mark in its entirety, followed by the generic Top-Level Domains (“gTLDs”) “.care” or “.services”. Adding the gTLDs is irrelevant for purposes of examining identity or similarity between the Mark and the Domain Names, as the suffixes are each a necessary component of the Domain Names and have no distinctive meaning. To Complainant’s knowledge, “asurion” is not Respondent’s name, and Respondent is not and has never been commonly known as “asurion”. Respondent is not and has never been a licensee or franchisee of Complainant. Furthermore, Respondent has never been authorized by Complainant to register or use Complainant’s ASURION Mark or to apply for or use any domain name incorporating the Mark. Also, Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. As of the date of the Amended Complaint, the Domain Names do not resolve to active websites. As of May 6, 2020, however, Given 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 of the Domain Names. Also, Respondent has used each Domain Name in bad faith to divert Internet users to commercial parking pages with links related to the services offered under Complainant’s Mark. In using the Domain Names in this manner, Respondent generated unjustified revenues for each click-through of the sponsored links, thereby illegitimately capitalizing on Complainant’s name and reputation. Such activity constitutes evidence of bad faith registration and use of the Domain Names. The fact that the Domain Names do not currently resolve to active websites does not negate Respondent’s bad faith. The consensus view of previous UDRP panels is that such “passive holding” does not prevent a finding of bad faith, and a panel must look at the totality of the circumstances to determine whether a respondent is acting in bad faith. Here, circumstances include the well-known status of Complainant’s ASURION Mark, Respondent’s previous use of both Domain Names to direct to commercial parking pages with links related to the services offered under Complainant’s mark, and Respondent’s use of false contact details (including providing an address of “Sesame Street, Cookie Monster, FL S”) in registering the Domain Names. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the ASURION Mark by virtue of the aforementioned United States trademark registration. The Domain Names incorporate in their entirety Complainant’s ASURION Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082. Adding the gTLDs “.care” and “.services” after the Mark does not prevent a finding of confusing similarity. See Medtronic, Inc. v. Rafael Vargas,WIPO Case No. D2019-0203 (finding For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests On the evidence of record, it is uncontested that Respondent has no rights or legitimate interests in the Domain Names. Complainant maintains: (1) “asurion” is not Respondent’s name and Respondent is not and has never been commonly known as “asurion”; and (2) Respondent is not and has never been a licensee or franchisee of Complainant, nor has Complainant authorized Respondent to register or use the ASURION Mark or to apply for or use any domain name incorporating the Mark. Also, Complainant maintains Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. In support it points out that as of the date of the Amended Complaint, the Domain Names do not resolve to active websites. As of May 6, 2020, however, the Domain Name Where, as here, Complainant has raised a prime facie case of Respondent’s lack of any rights or legitimate interests in the Domain Names, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Respondent registered the Domain Names on March 24, 2020, years after Complainant began using the Mark (in 2001) and obtained the aforementioned trademark registration for the ASURION Mark (March 2003). It is further undisputed: (1) Complainant advertises and sells its products and services through its “www.asurion.com” website and over fifteen related websites, as well as through print media and other advertising and promotional campaigns; (2) Complainant has served over 280 million consumers worldwide and has fourteen locations in North and South America, two locations in Europe, two locations in Australia, and ten locations in Asia; and (3) Complainant maintains an active social media presence. Moreover, on the websites associated with both Domain Names, there were links on each to Asurion-related products and services, for example, “Asurion Phone Claim”, “Asurion”, “Asurion Cell Phone Insurance”, and “Asurion Phone Insurance” evidencing that Respondent was likely aware of Complainant and its Mark. Given this undisputed evidence, the Panel finds it is more likely than not Respondent was aware of the Mark when it registered the Domain Names. Respondent’s bad faith registration is also evidenced by the facts that the Domain Names: (1) were formed by adding the gTLDs “services” and “care” to the ASURION Mark, which relate to Complainant’s business (e.g., offering a variety of insurance services for the care of insureds and their property); (2) are confusingly similar to Complainant’s Mark; and (3) are not being legitimately used by Respondent. Respondent has used each Domain Name in bad faith to divert Internet users to commercial parking pages with links related to the services offered under Complainant’s Mark. By using the Domain Names in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites associated with the Domain Names. See Asurion, LLC v. Cindy Willis, WIPO Case No. D2018-2643(finding bad faith based on Complainant’s plausible allegations that “Respondent derives per-click revenue through the hyperlinks at her website”); Asurion, LLC v. Colours Ltd.,WIPO Case No. D2013-0388 (finding bad faith based on the Respondent’s use of the domain to direct users to a pay-per-click site advertising related services). The fact that the Domain Names do not currently resolve to active websites does not negate Respondent’s bad faith. The consensus view of previous UDRP panels is that such “passive holding” does not prevent a finding of bad faith, and a panel must look at the totality of the circumstances to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3. Such circumstances may include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. Such a finding is appropriate here based on: (1) the well-known status of Complainant’s ASURION Mark; (2) the Respondent’s failure to respond either to Complainant’s cease and desist letter or to submit a response in this proceeding, or to provide any evidence of actual or contemplated good-faith use of the Domain Names; (3) the Respondent’s concealment of its identity (including providing an address of “Sesame Street, Cookie Monster, FL S”); and (4) Respondent’s previous use of both Domain Names to direct Internet users to commercial parking pages with links related to the services offered under Complainant’s Mark. There is no plausible reason for Respondent’s selection of confusingly similar Domain Names in which Respondent has no rights or legitimate interests other than as a deliberate attempt to profit unfairly from confusion with the Mark. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Names Harrie R. Samaras
Sole Panelist
Date: July 21, 2020
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