WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asurion, LLC v. Asurioncomputers, Eliazer David
Case No. D2014-0897
1. The Parties
The Complainant is Asurion, LLC of Nashville, Tennessee, United States of America ("USA"), represented by Adams and Reese LLP, USA.
The Respondent is Asurioncomputers, Eliazer David of Nagpur, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <asurioncomputers.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2014. On May 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 6, 2014.
On June 5, 2014 the Center received an informal communication from the Respondent.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2014. The Respondent did not submit any further formal response. Accordingly, the Center notified the commencement of the panel appointment process on June 27, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 2, 2014. 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.
On July 7, 2014, the Respondent confirmed to the Center that no further Response would be submitted.
4. Factual Background
According to the Complainant, it has been active since 1994 and offers handset insurance, warranty management and repair services to protect customers against loss, theft, damage or malfunction of computers. It has locations in North America, Europe, Australia and Asia. The Complainant does business through its website which uses the domain name <asurion.com> and many other domain names incorporating the trademark word ASURION alone or in combination. The Complainant currently has over 90 million subscribers worldwide.
The Complainant has used the trademark ASURION since 2001 and holds registrations for that trademark valid in 39 countries. The following trademarks are representative:
ASURION, standard characters, United States Patent and Trademark Office (USPTO), principal register, registration number 2698459, registered March 18, 2003, classes 35, 36, 37;
ASURION, standard characters, USPTO, principal register, registration number 4179272, registered July 24, 2012, classes 9, 42, 45;
ASURION, stylised with an antenna, USPTO, principal register, registration number 4179270, registered July 24, 2012, classes 9, 42, 45.
The disputed domain name was registered by the Respondent on December 12, 2013. According to an email from the Respondent to the Complainant, produced by the Complainant, the Respondent's business is based in Nagpur, Maharashtra, India, and is for the provision of annual maintenance contracts for computers, printers and networking.
5. Parties' Contentions
The Complainant contends that it has rights in trademarks including those referred to in section 4 above. Some trademarks including registration number 2698459, registered March 18, 2003, are registered in the name of Asurion Corporation. The Complainant provides documentation to the effect that it has assumed the ownership of these Asurion Corporation trademarks since Asurion Corporation officially became Asurion, LLC on August 31, 2010. The trademark ASURION is used internationally, including in India.
The Complainant further contends that the disputed domain name <asurioncomputers.com> is confusingly similar to the trademark ASURION. The dominant element of the disputed domain name wholly incorporates the Complainant's trademark, which fact, it is submitted, should be sufficient to establish confusing similarity under the Policy. The next element of the disputed domain name, "computers", is a generic or descriptive word that does not obviate confusingly similarity to the Complainant's trademark and, in the circumstances of the Complainant's area of business, may add to the confusing similarity.
The Complainant submits that despite domain names being unable to include a design element, confusing similarity exists between the disputed domain name and those trademarks of the Complainant that comprise the word "asurion" with a design element.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant says it is the exclusive owner of its trademark ASURION, which is strong and fanciful.
The Complainant states that the Respondent is not and has never been commonly known as "asurion", has not been a licensee or franchisee of the Complainant and has not been permitted to use the Complainant's trademark in a domain name or for any purpose.
The Complainant contends that the Respondent, in reply to a cease, desist and transfer letter dated January 29, 2014, gave the explanation "I love this name asurion because my name is (annu) […]", which is of no effect in establishing a legitimate interest in the disputed domain name. It is submitted that the reply does, however, show the Respondent's knowledge of the existence of the Complainant or its rights in its trademark at the time of registration of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It is reiterated that the Complainant's trademark is a distinctive invented word and that the Respondent must have been aware of it. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website of the disputed domain name, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Respondent's motive is made clear by the appending of the word "computers" to the Complainant's trademark in the disputed domain name. Copies of screenshots of the Respondent's website, made both before and after the cease and desist letter had been sent by the Complainant and replied to by the Respondent, are produced in evidence. The Complainant states that the Respondent is using the website at the disputed domain name to provide "Onsite Computer Repairs" and "Managed IT" services under "Asurion Computers" name.
The Complainant has cited a number of previous decisions and quotations from decisions under the Policy that the Panel is invited to consider as having possible precedent value in the present dispute.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not submit a formal Response.
The Respondent sent an acknowledgement of receipt of the Complaint by email to the Center and to the Complainant dated June 5, 2014, before proceedings formally commenced. It is not clear whether this was in response to the unamended Complaint dated May 28, 2014 or to the amended Complaint dated June 5, 2014, which differed only as to the name of the Respondent. In this email the Respondent informally denied the Complaint and expressed bewilderment at the proceedings, a wish to retain the disputed domain name, and a wish for the proceedings to be discontinued.
The Respondent's informal communication will be taken into account.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identity of the Respondent
Paragraph 1 of the Rules defines a respondent as "the holder of a domain-name registration against which a complaint is initiated". According to the WhoIs information made available by the Registrar at the time the Complaint was filed, Eliazer David was listed as the name of the registrant, administrative and technical contacts, whereas "Asurioncomputers" was listed as the organisation of the registrant, administrative and technical contacts.
In reply to the Center's request for registrar verification, the Registrar replied: "The respondent, Eliazer David, is not considered by GoDaddy to be the registrant of the domain name. When an organization / company is listed, GoDaddy considers that entity as registrant. As such, in this case, we consider "Asurioncomputers" registrant of this domain name."
With respect, whilst there may be logic in the proposition that registration of a domain name by an organisation is necessarily executed by a person, the true "holder of a domain-name registration" may differ according to particular circumstances and local intentions of which the individual registrant is likely to be more aware than the registrar. Where better, i.e., accurate, particulars of a respondent come to light, and particularly where a cooperative respondent has clarified them, it is in the interests of everyone who may consult the records in future for the parties to have been identified as accurately as possible.
In the present instance, Eliazer David in person has adopted the role of the Respondent in handling such communications as have taken place. His email of June 5, 2014 to the Center is in mainly the first person and includes the statement "[...] i am using domain name asurioncomputers.com i have purchased [...]". It appears that, for all practical purposes, Eliazer David is the Respondent and the guiding mind behind an informal entity "Asurioncomputers" that is synonymous with the disputed domain name. The flexibility of the Respondent's corporate identity is exemplified by references on the web pages of the disputed domain name variously to "Asurion Computer Services", "Ashurion Computers Services", "Ashurioan Computers Services" and "Asurions". The Panel determines that Eliazer David will be named as a Respondent but that he also acts/speaks for "Asurioncomputers" and it will generally be convenient to refer to the Respondent personally in the singular.
B. Identical or Confusingly Similar
The Panel is satisfied by the copies of documentary evidence produced that the Complainant has rights in the registered trademark ASURION.
The disputed domain name is <asurioncomputers.com>. This may be read as the two words "asurion" and "computers". The first word reproduces in its entirety and identically the Complainant's distinctive and invented trademark ASURION. The Complainant has stated and has certified that its trademark is known internationally in the field of computer insurance, warranty management and repair services. The incorporation of the generic or descriptive term "computers" into the disputed domain name is found not to be distinguishing, but to have the effect of minimising doubt that the word "asurion" in the disputed domain name is intended to be associated with computers. The Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark and finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant, which has the onus of proof, has asserted that the Respondent has not been licensed or authorised in any way to use the Complainant's trademark, of which the Complainant is the exclusive owner. Since a complainant may not necessarily be in full possession of the facts, paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Respondent offered some explanation for the possession and use of the disputed domain name in an email dated January 31, 2014, produced by the Complainant, in reply to the Complainant's cease and desist letter of January 29, 2014. The Respondent said in reply, inter alia, "I love this name asurion because my name is (annu) [...]", that his business was to offer annual maintenance contracts for computers, printers and networking in India, and that the trademark on his website had been changed.
The Complainant has produced screenshots of the Respondent's website made both before and after the cease and desist letter was sent to the Respondent on January 29, 2014. Screenshots made on December 19, 2013 and January 16, 2014, prior to the cease and desist letter, show a comprehensive website with a prominently displayed exact reproduction of the Complainant's ASURION trademark in its stylised form with the same unusual font and complete with an antenna as exhibited in the Complainant's USPTO trademark registration number 4179270. The website pages make other textual references to the word "Asurion" and "Asurion Computer Services" and to the variants "Ashurion" or "Ashurioan". The website pages offer a variety of computer-related services including "Protect Your PC" and "Security Protection".
A screenshot made on May 27, 2014, showed that the Complainant's trademark, previously positioned at top left, had been replaced with a new device comprising the word "Asurions" with an "s", and with a stylised letter "a", unlike the Complainant's stylisation of its trademark. The Complainant's authentic stylised trademark was reproduced unaltered in the centre of the web page and the word "Asurion" appeared promotionally in the text.
On the evidence presented and on the balance of probabilities, the Panel finds that any offering of goods or services conducted through the disputed domain name has made unauthorised use of the Complainant's registered trademark and was not bona fide in the terms of paragraph 4(c)(i) of the Policy. The Panel further finds there is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, and that the use of the disputed domain name is not noncommercial or fair. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Paragraph 4(b)(iv) of the Policy is pertinent. The Complainant's trademark is an invented and distinctive word. The trademark has been registered as a word in standard characters and also in a stylised form depicting an antenna above the prominent word "asurion". On the evidence, the Respondent has set up a business in computer services including security protection and repairs and is in competition with the Complainant. The Respondent's business evidently depends at least partly on the attraction of clients by way of the Internet. The Respondent has created a disputed domain name that incorporates the Complainant's trademark word and has displayed the Complainant's registered stylised trademark prominently on the website to which it resolves. On the evidence, the Respondent's conduct is found by the Panel to constitute an attempt, for commercial gain, to confuse Internet visitors into believing that the disputed domain name may be associated with or endorsed by the Complainant, constituting use of the disputed domain name in bad faith.
The Panel also finds, on the evidence and on the balance of probabilities, that the disputed domain name was registered or acquired by the Respondent for the bad faith purpose for which it has been used. Accordingly the Panel finds registration and use of the disputed domain name in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 <asurioncomputers.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: July 7, 2014