ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Asurion, LLC v. X Y Case No. D2024-1280 1. The Parties Complainant is Asurion, LLC, United States of America (“United States”), represented by Adams and Reese LLP, United States. Respondent is X Y, United States. 2. The Domain Name and Registrar The disputed domain name
is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2024. On March 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2024, 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 (Redacted for Privacy, Whois Privacy Protection Foundation) and contact information in the Complaint. The Center sent an email communication to Complainant on March 27, 2024, 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 March 29, 2024. 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 April 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2024.
page 2 The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on April 30, 2024. 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 Since at least as early as 1994, Complainant Asurion, LLC has offered 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 available at some of the largest retailers in the United States and elsewhere. Complainant offers its products and services under the ASURION trademark, which has been in use since at least as early 2001. The mark is the subject of registrations in over 30 jurisdictions around the world. Such registrations include United States Trademark Registration No. 2698459, which issued on March 18, 2003; United States Trademark Registration No. 4179272, which issued on July 24, 2012; and United States Trademark Registration No. 4997781, which issued on July 12, 2016. Complainant and its licensees also own many domain names incorporating the ASURION mark, including , , and . The disputed domain name was registered on March 24, 2024. At filing of the Complaint, at the website of the disputed domain name, visitors were prompted to enter their employee login information. The disputed domain name later (at filing of the amended Complaint) resolved to a commercial parking page showing pay-per-click advertising links to websites purportedly offering insurance-related services. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Complainant contends that the disputed domain name is identical or confusingly similar to the ASURION trademark. It points out that the disputed domain name incorporates the ASURION mark in its entirety and asserts that the addition of the abbreviation “corp” and a hyphen do not prevent the disputed domain name from being confusingly similar to the ASURION mark. Complainant next maintains that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent is not commonly known as corp-asurion and is not and has never been licensed or otherwise authorized to register or use Complainant’s ASURION mark or to apply for or use any domain name incorporating the mark. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. Complainant explains that when it first learned of the disputed domain name, it was being used in furtherance of a phishing attack, in which visitors to the website at the disputed domain name (likely Complainant’s employees) were prompted to enter their employee login information in an effort to gain unauthorized access to Complainant’s internal system. The disputed domain name was later directed to a commercial parking page showing pay-per-click advertising links to websites purportedly offering insurance-related services.
page 3 Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant asserts that, given the fame and international reputation of the coined and highly distinctive ASURION mark, “it is not plausible that Respondent could not have been unaware of Complainant at the time of registration.” Complainant finds further support for its “bad faith” claim on the fact that Respondent is using the disputed domain name in furtherance of an unlawful phishing scheme with the intention of gaining access to Complainant’s secure system and to divert Internet users to a commercial parking page with links to services offered by Complainant. Complainant also points to Respondent’s use of false contact information (e.g., listing “X Y” as its name and “City 1” as its city). B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Although the addition of other terms here, “corp,” may bear on assessment of the second and third elements, the Panel finds the addition of such term, as well as the addition of a hyphen and the Top-Level Domain “.com,” do not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity, including phishing, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds that Complainant’s submissions establishes that when Complainant learned of the disputed domain name on March 24, 2024, Respondent was using the disputed domain name in furtherance of a phishing attack against Complainant’s employees. The Panel finds the second element of the Policy has been established. Noting the fraudulent use of the disputed domain name, the Panel does not need to address whether the pay-per-click (PPC) parking page can be a basis for finding for Complainant on this element of the Policy or on the bad faith element. C. Registered and Used in Bad Faith As noted above, panels have held that the use of a domain name for phishing constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Further, as argued by Complainant, given the widespread and longstanding use of its coined and distinctive ASURION mark around the world, including in Respondent’s home country, it is inconceivable that Respondent was not aware of such mark at the time of registration of the disputed domain name. Respondent’s use of false contact information is also supportive of a finding of the requisite bad faith. The Panel finds that Complainant has established the third element of the Policy. 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 disputed domain name be transferred to Complainant. /Jeffrey M. Samuels/ Jeffrey M. Samuels Sole Panelist Date: May 14, 2024
Full & Egal Universal Law Academy