Complainant is Asurion, LLC, United States of America (“United States”), represented by Adams and Reese LLP, United States.
Respondent is Desantis Rozier, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2021, 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 Complainant on September 27, 2021, 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 September 27, 2021.
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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2021.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 12, 2021. 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 is a well-known owner and proprietor of the famous registered ASURION Trademark, offering insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services since as early as 1994, using the ASURION Trademark since as early as 2001. See, e.g., United States Registration Numbers 2698459 (March 18, 2003); 4179272 (July 24, 2012); 4314110 (April 2, 2013); 4997781 (July 12, 2016); 6010609 (March 17, 2020)
Sales and advertising occur through its “asurion.com” website and related websites, including “asurionsetup.com”, print media and multiple advertising and promotional campaigns. Complainant has served and serves over 280 million consumers worldwide. Its services are made available to retailers worldwide with 26 locations scanning the globe.
Complainant has promoted the mark extensively and continuously since 2001 with a cost of millions of dollars. Since 2001, the ASURION trademark has become famous as a source identifier for Complainant’s products and services. Complainant’s website receives over 7.9 million visits annually and its related website, “phoneclaim.com”, which prominently displays the ASURION Trademark, receives approximately 40 Million visitors a year.
Complainant’s related domain names include:
Complainant and its licensees own the following domain names using the ASURION Trademark, among other domain names:
The Domain Name was registered on January 29, 2021. At the time of filing the Complaint, the Domain Name resolved to a commercial parking page showing pay-per-click (“PPC”) advertising links to websites purportedly offering services identical or related to Complainant’s business.
5. Parties’ Contentions A. ComplainantThe facts supporting Complainant’s contentions are set forth above as to Complainant’ longstanding and broad rights to the exclusive use of the ASURION Trademark and domain name. The Complainant contends the addition of the word “solutions” to its famous mark creates no rights for Respondent, citing Asurion Corporation v. SOB,
WIPO Case No. D2009-0165, for the proposition well established “…that the addition of a generic and/or descriptive word dos not prevent a domain name from being confusingly similar the trademark”.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Domain Name, stating that Respondent is not known by the Domain Name and has never been licensed by Complainant to use its AUSRION trademark by any means, including in registration of domain names. Further, Complainant argues that the use of the Domain Name is not a noncommercial bona fide use that supports a finding rights or legitimate interests in the Domain Name.
Lastly, Complainant points to its longstanding use and registration for its ASURION trademark as sufficient evidence that Respondent knew of, or should have known, of Complainant and its rights. Complainant argues that Respondent’s registration of the Domain Name is prima facie bad faith and the commercial use of the Domain Name illustrates the bad faith use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarUnder the Policy provisions in paragraph 4(a)(i) and the Rules, paragraphs 3(b)(viii) and 3(b)(ix)(1), there is no doubt that the Domain Name is confusingly similar to Complainant’s ASURION trademark. It is a well‑established principal in UDRP jurisprudence that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. There is no reason to believe that any contrary result should occur here. Accordingly, the addition of “solutions” to Complainant’s AUSRION trademark does not prevent confusing similarity and the Panel finds that Complainant has satisfied the first element.
B. Rights or Legitimate InterestsUnder the Policy provisions in paragraph 4(a)(ii) and the Rules set forth in paragraph 3(b)(ix)(2), Complainant has met the requirements to show a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts onto Respondent. See section 2.1 of the WIPO Overview 3.0.
Respondent has defaulted and elected to present nothing to support any rights to any domain name or trademark using ASURION. Respondent is not and never known to be commonly called “asurion” or “asurion solutions”. Respondent is not a licensee or franchisee of Complainant. Respondent has never been authorized by Complainant to use any trademark or domain name including ASURION. Respondent does not use and has never used the Domain Name in connection with any bona fides offering of goods or services. Rather, the Domain Name is used to resolve to a website featuring PPC links for services in direct competition to Complainant. Prior UDRP panels have found that the use of a domain name to host a parked page comprising PPC 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 section 2.9 of the WIPO Overview 3.0.
Furthermore, the construction of the Domain Name itself, notably the replication of the Complainant’s ASURION trademark in its entirety along with the term “solutions”, carries a risk of implied affiliation that suggests affiliation with Complainant, which cannot constitute faire use. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the second element is met and Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad FaithUnder Policy provisions paragraphs 4(a)(iii) and Rules paragraph 3(b)(ix)(3), this Panel believes there can be no other conclusion than Respondent is using the Domain Name in bad faith and has so registered this Domain Name in bad faith. The record in this case shows global registrations and worldwide use by Complainant of the ASURION Trademark. Numerous domain names are registered to Complainant for uses the Respondent attempts to emulate with its “solutions” generic identifier connected to the fame of Complainant’s ASURION Trademark. Given the reputation of Complainant and the timing of the filing of the Domain Name registration the only plausible reason for Respondent’s actions are for the purpose of misleading and diverting internet traffic from Complainant and its licensees to Respondent. That Respondent was unaware of these consequences is implausible.
The Respondent is using the Domain Name to direct to a parking page showing PPC advertising which links to websites purportedly offering Complainant’s services, such as “Asurion Cell Phone Insurance”. This is an illegitimate utilization by Respondent to capitalize on Complainant’s name, mark, and reputation.
This illegitimate use is evidence of bad faith registration and use. It constitutes evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. Asurion, LLC v. Cindy Willis,
WIPO Case No. D2018-2643. Asurion v. Colours, Ltd.,
WIPO Case No. D2013‑0388. Volvo Trademark Holding AB v .Unasi, Inc.,
WIPO Case No. D2005-0556. Respondent intentionally attempted to attract third parties to the Domain Name by creating a likelihood of confusion with Complainant’s AUSRION trademark, thereby misleading users to believe that the linked sites were legally connected to and associated with Complainant. This was an attempt to illegitimately capitalize on the fame of Complainant and demonstrates Respondent’s bad faith registration and use. Respondent’s actions appear to serve no other purpose.
Accordingly, the Panel finds that the third element is met and the Respondent registered and is using the Domain Name 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 Domain Name
Maxim H. Waldbaum
Sole Panelist
Date: November 26, 2021