The Complainant is Verisure Sàrl, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.
The Center appointed Petra Pecar as the sole panelist in this matter on December 3, 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 BackgroundThe Complainant is a leading provider of professionally monitored security solutions and the second largest home alarm provider in the world. The Complainant has more than 3.6 million customers in 16 countries and employs 20,000 people across the world. The Complainant enjoys a strong online presence via its official websites and social media accounts.
The Complainant owns an app named VERISURE, for customer use of its services.
The Complainant provided evidence of multiple trademark registrations consisting of the word “verisure”, including the following:
- United States Registration No. 79216255, registered on July 10, 2018, for VERISURE;
- European Union Registration No. 006674915, registered on March 26, 2010, for VERISURE; and
- International Registration No. 1052667, registered on December 17, 2009, for VERISURE.
In addition to using the domain name
The disputed domain name was registered on May 21, 2021, and the Complainant submits that at the date of the Complaint, it resolved to a third-party website. Currently, the dispute domain name resolves to a pay-per-click webpage.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain name is confusingly similar to the Complainant’s VERISURE trademark as the disputed domain name incorporates entirely the Complainant’s registered trademark VERISURE along with the term “app”, closely connected to the Complainant’s business and activities, and the VERISURE trademark is clearly recognizable within the disputed domain name.
The Complainant argues that it has not licensed or authorized the Respondent to use the Complainant’s trademark VERISURE, to register or use the disputed domain name incorporating the VERISURE trademark, nor has the Complainant endorsed or sponsored the Respondent or the Respondent’s website. The Respondent is not affiliated to the Complainant. The Complainant further argues that the Respondent is not commonly known by the disputed domain name.
Furthermore, the Complainant argues that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered the disputed domain name which includes in its entirety the Complainant’s preexisting trademark VERISURE, while by conducting a simple online search regarding the term “verisure”, the Respondent would have inevitably learnt about the Complainant, its trademark and business. The Respondent has been engaged in numerous domain name disputes in the past and has been acting in a similar way regarding the registration and the use of disputed domain names confusingly similar to trademark, redirecting the domain names to third-party website, which is a pattern of conduct that demonstrates the Respondent’s bad faith of registration and use of the disputed domain name.
The Complainant argues that the disputed domain name refers to the Complainant, its trademarks and products, and resolved to a third-party website. The disputed domain name incorporating in its entirety the trademark VERISURE may mislead potential consumers by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation and making the general public believe that the website is actually operated by the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsEven if the Respondent did not file a Response to the Complainant’s contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).
In the present matter, the Complainant has provided evidence of its rights in the VERISURE trademarks on the basis of its multiple trademark registrations in various jurisdictions around the world. All of these trademarks were duly registered before the Respondent registered the disputed domain name on May 21, 2021.
The Panel finds that the Complainant’s VERISURE trademark is integrated in its entirety in the disputed domain name, with the addition of the term “app”. The term “app” is a conventional abbreviation for “application”, used to denote a functional computer program. The term “app” is commonly used to refer to applications that may be downloaded and executed on mobile devices, which is of particular relevance with this case and will be considered in the later elements, since the Complainant indeed does make available a downloadable mobile app for customer use of its services.
The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of another word to such mark. The addition of a term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0”.
It is well accepted by UDRP panels that a generic top-level domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
In light of the foregoing, the Panel finds that the mere addition of the term “app” to the Complainant’s VERISURE mark in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant,WIPO Case No. D2007-0889, and Groupon, Inc. v. C W,WIPO Case No. D2018-2932). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed 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 on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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 Complainant claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Verisure”. Upon investigation, the Panel notes that the disputed domain name was used to redirect to different third-party websites. This cannot amount in the Panel’s view to a bona fide offering of goods or services within the meaning of paragraphs 4(c)(i) of the Policy or to a legitimate noncommercial or fair use of the disputed domain name as provided by article 4(c)(iii) of the Policy.
The Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the disputed domain name. Prior to the notice of the dispute, the Respondent did not demonstrate any use of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. As per the Complainant, the Panel concludes that the Respondent was not authorized to register the disputed domain name.
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the disputed domain name or to seek the registration of any domain name incorporating the VERISURE trademark or a trademark similar to the VERISURE trademark. There is no evidence that the Respondent is commonly known by the disputed domain name or any similar name.
Furthermore, the nature of the disputed domain name, which consists of a trademark plus the additional term “app”, carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant as the trademark owner. See section 2.5.1 of the WIPO Overview 3.0. The affiliation is reinforced given, as stated above, the Complainant’s use of a downloadable mobile phone app, marketed under the VERSIURE mark, through which users may access its services.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithTo fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when, 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 website or location or of a product or service on the website or location.
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the disputed domain name, the Respondent was or should have been aware of the Complainant’s trademarks, since the Respondent’s registration of the disputed domain name occurred more than ten years after the Complainant’s registration the earliest of its trademarks, and since a trademark register search, or even a simple online search prior to the registration of the disputed domain name would have informed the Respondent of the existence of the oldest trademarks and the Complainant’s extensive use of the VERISURE mark as a source identifier. Moreover, the construction of the disputed domain name itself, namely the combination of the Complainant’s mark the abbreviated term “app”, is such to imply that the Respondent was aware of the Complainant and its services.
The Respondent is using the disputed domain name by exploiting confusion with the VERISURE trademark to attract Internet users and incite them to other commercial links. The unauthorized use and registration of the disputed domain name is intended to attract and redirect Internet users towards unrelated websites. The obvious inference is that this was done for commercial gain, which therefore constitutes both bad faith registration and use.
As an additional factor that supports the finding of bad faith in this case, the Panel observes that the Respondent is concealing its identity in the registration of the disputed domain name through a privacy service and Fundacion Privacy Services LTD in particular (see section 3.6 WIPO Overview 3.0; Pet Plan Ltd v. On behalf of pet-plan-claim-form.com owner, Whois Privacy Service / Vadim Yasinovsky, PDFfiller inc.,WIPO Case No. D2018-1943). In Discover Financial Services v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-1514, the panel stated with respect to Fundacion Privacy Services LTD that “the Respondent has chosen to use a particular register and a particular privacy service that now has an extensive history of refusing to disclose the details of the underlying registrant and where in nearly all such cases the complainant succeeded. As the Panel has already recorded in the context of the Registrar’s conduct, that history strongly suggests that the Registrar together with Fundacion Privacy Services LTD, has adopted a business model of providing registrar and privacy services either to a single or multiple cybersquat[t]ers. If that is so, the use of this particular service arguably now carries with it a presumption of bad faith registration and use”.
Furthermore, the lack of response to the repeated cease and desist letters sent by the Complainant as well as this Complaint is further evidence of bad faith, given all the circumstances of the case (see CCA and B, LLC v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-1531, and Pet Plan Ltd. v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-2514).
Lastly, the Panel observes that the Complainant has provided evidence demonstrating that the disputed domain name has active MX records, enabling its use for email, which could be perceived as an intent to use the disputed domain name in connection with phishing activities and further supports a finding of bad faith use (see Novartis AG v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-2149, and Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org /Yogesh Bhardwaj,WIPO Case No. D2017-1225). Although no evidence of phishing activities has been provided by the Complainant, the Panel deems that the mere presence of such MX records represents a severe risk of phishing or other fraudulent and abusive activities and together with other evidence, contributes to bad faith on the Respondent’s side. Given the confusing similarity of the disputed domain name to the Complainant’s VERISURE trademark, it is difficult to imagine any good faith use of the mail server attached to such a domain name (see in particular Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Basikta James,WIPO Case No. D2020-2955).
Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
Accordingly, the requirement of registration and use of the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy has been fulfilled.
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
Petra Pecar
Sole Panelist
Date: December 17, 2021