The Complainant is Verisure Sàrl, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Monjur Ahmed, Verisuresolutions, United Kingdom (“UK”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 2, 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 the Complainant on November 4, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, someone using the email address taken up in the registrant contact information provided by the Registrar sent email communications to the Center asking for further information and stating that he/she does not have “a domain” and did not register anything. He/she also requested the Center to “cancel anything and leave me alone”. The Complainant sent a settlement request to this email address on November 8, 2021, which remained unanswered. The Complainant filed an amended Complaint on November 29, 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 the Respondent of the Complaint, and the proceedings commenced on December 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2021. The Respondent did not submit any formal response. Accordingly, on December 27, 2021, the Center informed the Parties that it would proceed with the panel appointment process.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 7, 2022. 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, Verisure Sàrl, is a provider of professionally monitored security solutions and one of the largest home alarm providers in the world. The Swiss based company has more than 3.6 million customers in 16 countries and employs more than 20,000 people.
The Complainant owns numerous word and figurative trademark registrations for VERISURE, such as but not limited to:
- VERISURE, UK word mark No. UK00801052667, registered on September 20, 2011 in classes 6, 9, 35, 36, 37, 38, 39, 41, 42 and 45;
- VERISURE, European Union word mark No. 006674915, registered on March 26, 2010 in classes 9, 38, 44 and 45.
The Complainant owns and uses the domain names
The Disputed Domain Name has been registered on August 31, 2021, and does not resolve to an active website. According to the Complainant’s evidence, the email function linked to the Disputed Domain Name is active.
5. Parties’ Contentions A. ComplainantThe Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Also, according to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, it is inconceivable that the Respondent was unaware of the existence of the Complainant when it registered the Disputed Domain Name. The Complainant claims that the Respondent likely registered the Disputed Domain Name incorporating the trademark VERISURE intentionally in order to take advantage of the reputation of the trademark and the Complainant’s goodwill, free-riding on the Complainant’s reputation.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. In two emails of November 4, 2021 addressed to the Center, an unidentified person using the email address taken up in the registrant contact information provided by the Registrar asked for further information and stated that he/she does not have “a domain” and did not register anything. He/she also requested the Center to “cancel anything and leave me alone”.
6. Discussion and FindingsParagraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly SimilarTo prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s VERISURE trademarks have been registered and used in various countries in connection to the Complainant’s security solutions business.
The Disputed Domain Name incorporates the Complainant’s VERISURE trademark in its entirety, simply adding the term “services”. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s VERISURE trademark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Monjur Ahmed” from the organization “Verisuresolutions” which is apparently based in the UK. However, according to the evidence provided by the Complainant, there is no company bearing the name “Verisuresolutions” or “Verisure solutions” based in the UK. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant.
Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s VERISURE trademark and adds the word “services”, which can obviously be linked to the Complainant’s services. In addition, it appears from the Complainant’s evidence that the Complainant has a subsidiary operating in the UK under the name “Verisure Services UK Ltd.”. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant and cannot constitute fair use.
Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, including the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).
The Panel finds no signs of a legitimate noncommercial or fair use of the Disputed Domain Name, as it appears to be inactive.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. The Panel observes that an unidentified person using the email address taken up in the registrant contact information provided by the Registrar asked for further information and stated that he/she does not have “a domain” and did not register anything. He/she also requested the Center to “cancel anything and leave me alone”. In the Panel’s view, this may indicate that the Respondent provided false contact details. In any event, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad FaithThe Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd,
WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.
In the present case, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant and its trademark rights when it registered the Disputed Domain Name:
- the Disputed Domain Name includes the Complainant’s distinctive trademark in its entirety;
- the Complainant provides evidence of its online presence and of various trademarks including one registered since 2011 in the UK, where the Respondent seems to be located;
- the Disputed Domain Name is nearly identical the Complainant’s subsidiary based in the UK.
In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,
WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel,
WIPO Case No. D2006-0007).
Previous UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (seesection 3.1.4 of the WIPO Overview 3.0).
The Panel observes that the Disputed Domain Name is inactive. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski,
WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,
WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use (see section 3.3 of WIPO Overview 3.0).
In the present case, the Panel finds that the Complainant has sufficiently proven the reputation of its VERISURE trademark. The combination of the VERISURE mark with a term linked to the Complainant’s business makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent, especially since this combination is nearly identical to the company name of one of the Complainant’s subsidiaries.
Moreover, the Complainant provides evidence showing that the email function of the Disputed Domain Name was enabled. In the circumstances of this case, the Panel finds that the use of the Disputed Domain Name for fraudulent activity cannot be excluded, e.g. by profiting of the likelihood of confusion with the Complainant’s trademark for phishing activities through the sending of emails.
By failing to respond to the Complainant’s contentions, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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
Flip Jan Claude Petillion
Sole Panelist
Date: January 21, 2022