Complainant is Asurion, LLC, United States of America (“US”), represented by Adams and Reese LLP, US.
Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 December 17, 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 in English on December 17, 2021.
On December 17, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed its request that English be the language of the proceeding on December 17, 2021. Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2022.
The Center appointed Yijun Tian as the sole panelist in this matter on January 21, 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 Background A. ComplainantComplainant, Asurion, LLC, is a company incorporated in the US. Founded in 1994, Complainant is a leading international company that offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services. Complainant has served over 280 million consumers worldwide, and its services are made available by retailers worldwide, including some of the largest retailers in the US. Complainant has 14 locations in North and South America, two locations in Europe, two locations in Australia, and 10 locations in Asia, including China.
Complainant has rights in ASURION marks (hereinafter “ASURION marks”). Complainant is the owner of numerous ASURION marks worldwide, such as an international trademark registration for ASURION registered on January 11, 2012 (International Trademark Registration No. 1118997) which designates China, a Chinese trademark registration for ASURION registered on November 21, 2011 (Chinese Trademark Registration No. 8809459), and the US trademark registration for ASURION registered on March 18, 2003 (the US Trademark Registration No. 2698459) (Annex 7 to the Complaint).
Moreover, Complainant owns and operates domain names, which contain the ASURION marks in their entirety, such as
Respondent is 杨智超 (Zhichao Yang), China.
C. The Disputed Domain NameThe disputed domain name
Complainant contends that the disputed domain name
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent has registered and used the disputed domain name in bad faith.
Complainant also contends that Respondent has engaged in a pattern of cybersquatting, demonstrated by Respondent’s history in other UDRP proceedings.
Complainant requests that the disputed domain name be transferred to Complainant.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingThe language of the Registration Agreement for the disputed domain name
(a) the disputed domain name is in Latin characters, rather than Chinese script;
(b) the disputed domain name incorporates the English words “phone” and “claim”;
(c) the disputed domain name directs to a commercial parking page showing PPC links in English; and
(d) requiring translation of the Complaint and attached annexes from English to Chinese would subject Complainant to disproportionate expense for translation services and would cause undue delay and
inconvenience.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,
WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,
WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,
WIPO Case No. DCC2006-0004). Section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include: (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (See also L’Oreal S.A. v. MUNHYUNJA,
WIPO Case No. D2003-0585).
On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters and English words “phone” and “claim”, rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the disputed domain name is “.com”, so the disputed domain name seems to be prepared for users worldwide, particularly English speaking countries; (c) the website resolved by the disputed domain name is an English website; (d) the Center has notified Respondent in English and Chinese regarding the language of the proceeding, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (e) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese. The Panel would have accepted a Response in Chinese but none was filed.
Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
6.2. Substantial IssuesParagraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Panel finds that Complainant has rights in the ASURION marks. The Panel finds that the disputed domain name incorporates a misspelling of Complainant’s trademark ASURION by replacing the letter “o” with the letter “a”. In addition to this, the disputed domain name only differs from Complainant’s trademark by the suffixes “phone” and “claim”, and the gTLD “.com”. These do not compromise the recognizability of Complainant’s trademark within the disputed domain name, nor prevent a finding of confusing similarity between Complainant’s registered trademark and the disputed domain name (Walgreen Co. v. Lin yanxiao / Linyanxiao,
WIPO Case No. D2016-1605; and Decathlon v. Zheng Jianmeng,
WIPO Case No. D2019-0234).
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662).
Further, in relation to the gTLD, WIPO Overview 3.0 further states: “The 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 3.0, section 1.11.1.)
The Panel, therefore, holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,
WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
The ASURION marks have been registered internationally, including a US registration since 2003 and a Chinese registration since 2011, which long precede Respondent’s registration of the disputed domain name (in 2020). According to the Complaint, Complainant has served over 280 million consumers worldwide, and its services are made available by retailers worldwide, including China.
Moreover, Respondent is not an authorized dealer of Asurion branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and has thereby shifted the burden to Respondent to produce relevant evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,
WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “asurian”, a misspelling of the Complainant’s ASURION trademark, in the disputed domain name (Annex 3 to the Complaint).1 There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ASURION marks or to apply for or use any domain name incorporating the ASURION marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent currently has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2020, long after the ASURION marks became internationally known. The disputed domain name is confusingly similar to the ASURION marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name resolves to a PPC website in English, which contains links for services that compete with Complainant, including links labelled “Insurance Claim”, “Phone Claim”, and “Cell Phone Insurance”. It seems that Respondent is making profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo,
WIPO Case No. D2017-1041; Pet Plan Ltd. v. 权中俊 and 李金梁 (Li Jin Liang),
WIPO Case No. D2020-3358.)
The Panel notes that Respondent has not produced any evidence to rebut Complainant’s prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. The Panel, therefore, holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
(a) Registration in Bad FaithThe Panel finds that the ASURION marks have a widespread reputation as a world-leading company that offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services. As mentioned above, ASURION marks are registered internationally, including a Chinese trademark (since 2011). It currently has business operations worldwide, and 10 locations in Asia, including China. It is not conceivable that Respondent would not have had actual notice of the ASURION marks at the time of the registration of the disputed domain name (in 2020). This has been reinforced by the fact that the disputed domain name incorporates a misspelling of Complainant’s ASURION trademark and adds the terms “phone” and “claim” which directly relate to Complainant’s business.
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,
WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
(b) Use in Bad FaithRespondent has used the website resolved by the disputed domain name for displaying PPC links to third-party commercial websites. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website.
Given the reputation of the ASURION marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has, through the use of a confusingly similar disputed domain name, created a likelihood of confusion with the ASURION marks. Moreover, as mentioned above, Respondent redirects Internet users to third parties’ websites via the PPC links on the website at the disputed domain name, presumably for commercial gain.
The Panel, therefore, concludes that the disputed domain name was registered and is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the ASURION marks, intended to ride on the goodwill of these trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel, therefore, holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
7. DecisionFor all 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
Yijun Tian
Sole Panelist
Dated: February 10, 2022
1 The disputed domain name has been resolved to a website, which contains links labelled “Asurion Cell Phone Insurance” (see Annex 3 to the Complaint).