WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asurion, LLC v. Colours Ltd.
Case No. D2013-0388
1. The Parties
The Complainant is Asurion, LLC of Nashville, Tennessee, United States of America (“US”), represented by Adams and Reese LLP, US.
The Respondent is Colours Ltd. of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <asurioninsuranceservices.com> (the “Domain Name”) is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2013.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 15, 2013. 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
The following facts are undisputed.
The Complainant is Asurion LLC, and advertises and sells its insurance services through its website <asurion.com> and related websites, as well as through print media and other advertising and promotional campaigns. The Complainant owns more than 25 websites, such as <asurion.com>, <asurioninsurance.com> and <asurionphoneinsurance.com>.
The Complainant currently serves over 90 million wireless subscribers worldwide from 6 locations in the United States, 1 location in Canada, 3 locations in Europe, 2 locations in Australia, and 6 locations in Asia.
The Complainant uses the ASURION trademark since 2001 in connection with insurance and warranty services for mobile phones, and it owns registrations for the mark on the Principal Register of the United States Patent and Trademark Office, with registration numbers 2698459 and 3019708 and in numerous other jurisdictions throughout the world.
The Domain Name was created on June 9, 2010.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Complainant is the exclusive owner of the ASURION mark.
The Domain Name is identical or confusingly similar to the Complainant’s trademark. The dominant element of the Domain Name is the Complainant’s exact trademark and the addition of the term “insuranceservices” describes an aspect of the Complainant’s business.
The Complainant contends that the Respondent is not affiliated with the Complainant in any way. To the Complainant’s knowledge, ASURION is not the Respondent’s name. The Respondent is not, and has never been, commonly known as ASURION. The Respondent is not, and has never been, a licensee of franchisee of the Complainant and it has never asked, and has never been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the marks.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. The Domain Name resolves to a web site purporting to offer various services. Above this, links are provided to various third party web sites. It is well established that no rights or legitimate interests derive from this type of use of another’s trademark
The Complainant has sent a cease-and-desist letter to the Respondent, but has not received any reply.
The Respondent has registered and using the Domain Name in bath faith. The Respondent has registered and is using the Domain Name for the sole purpose of redirecting internet users, and particularly customers and potential customers of Complainant, from the Complainant’s web sites to the web site of other insurance and related companies which may compete with the Complainant.
The Respondent does not have any legitimate rights or interests in the Domain Name. The Respondent is using the Complainant’s trademark in combination with a word describing the Complainant’s business intentionally to attract, for commercial gain, Internet users to its website, thereby creating a likelihood of confusion with the Complainant mark as to source, sponsorship, affiliation, or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name registered by the Respondent 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 Domain Name; and
(iii) the Domain Name registered by the Respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the trademark.
The most dominant part of the trademark is the word element ASURION and the Domain Name incorporates this element ASURION in its entirety; the only difference is the mere adjunction of the term “insuranceservices”. The addition of merely descriptive wording to a domain name is insufficient in itself to avoid a finding of confusing similarity. In Asurion Corporation v. SQB, WIPO Case No. D2009-0165, the Panel found that “adding the generic term ‘insurance’ to the mark fails to give to the disputed domain name any distinctiveness, but instead aggravates the risk of confusion…” and decided that the <asurion-insurance.com> was confusingly similar with the trademark ASURION.
The Panel believes that people considering the Domain Name without awareness of its content may believe that the Domain Name is in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
Finally, with regards to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
For all the foregoing reasons, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Complainant does not seem to be affiliated with the Complainant in any way. There is no evidence that ASURION is the Respondent’s name or that Respondent is commonly known as ASURION. There is also no evidence that Respondent is, and has ever been, a licensee of franchisee of Complainant and that Respondent has ever asked, and has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the marks.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services as the Respondent is using the Domain Name for the sole purpose of redirecting internet users.
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s trademarks and activities are well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name. This is emphasized by the fact that the landing page to which the Domain Name resolves, includes links to services that compete with the Complainant’s services.
This behavior of the Respondent fits the example as paragraph 4(b)(iv) of the UDRP, i.e. that 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 Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
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 <asurioninsuranceservices.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: April 23, 2013