WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asurion, LLC v. Domain Administrator, Fundacion Privacy Services Ltd.
Case No. D2019-1757
1. The Parties
The Complainant is Asurion, LLC, United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd., Panama.
2. The Domain Names and Registrars
The disputed domain names <asuion.com>, <asurionaetup.com>, <asurionssetup.com>, and <asurionswtup.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 3, 2019. 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 Complainant is Asurion, LLC, a limited liability company incorporated in the state of Delaware, with headquarters in Nashville, Tennessee, United States, which offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services. The Complainant advertises and sells its products and services through its “www.asurion.com” website and related websites with domain names consisting of the word “asurion” sometimes followed by another word, including <asurionsetup.com>.
The Complainant owns the ASURION trademark in the United States (e.g. United States registration No. 2698459 registered on March 18, 2003) as well as in various other jurisdictions.
The disputed domain name <asuion.com> was registered on March 16, 2009, <asurionssetup.com> on April 30, 2019, <asurionswtup.com> on May 21, 2019, and <asurionaetup.com> on May 21, 2019. The disputed domain names currently resolve either to a redirect webpage, pay-per-click advertising links or to vehicles for potential phishing scams or malware distribution as evidenced in annex 3 of the Complaint.
Between May and June 2019, the Complainant’s counsel has sent various cease-and-desist letters via email to the Respondent, requesting that the disputed domain names be transferred to the Complainant.
5. Parties’ Contentions
The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has submitted sufficient evidence to demonstrate its registered rights in the trademark ASURION in numerous countries including the United States.
The ASURION trademark is either partially or entirely reproduced in the disputed domain names <asuion.com>, <asurionaetup.com>, <asurionssetup.com>, and <asurionswtup.com>. The disputed domain names differ from the trademark ASURION only by the addition of the term “aetup”, “ssetup” or “swtup” or, in the case of <asuion.com>, by omission of the letter “r”.
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 other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). Therefore, the confusing similarity is not dispelled by the mere omission of the letter “r” as it is the case for <asuion.com>. This is a “typosquatting” case where the disputed domain name is a slight misspelling of a registered trademark to divert Internet traffic (Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043).
The terms “aetup”, “ssetup” or “swtup” are variations and misspellings of the word “set-up” which is also used in the Complainant’s domain name <asurionsetup.com>. The word “set-up” is a descriptive term, relating to the business activities of the Complainant. It is the consensus view of UDPR panels that the addition of descriptive terms does not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8). This is not changed by the fact that the Respondent uses slight misspellings of the descriptive term.
All disputed domain names are variations of the Complainant’s domain names <asurion.com> and <asurionsetup.com>, and are not sufficiently distinguishable from the Complainant’s ASURION trademark. Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain names. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain names.
UDRP panels have found that the use of a domain name to host a parked page comprising (sponsored) pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (WIPO Overview 3.0, section 2.9).
The Complainant has proven that the disputed domain names have at some time prior to the filing of this Complaint been redirected to a third-party webpage at “www.samsung.com” or resolved to parking pages showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant, or have been used as vehicles for apparent phishing scams (see annex 3 of the Complaint). Neither of which are considered to be legitimate interests of the Respondent (WIPO Overview 3.0, section 2.9; FPS Networks, Inc. v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2018-2854; Wacoal Corp. and Wacoal America, Inc. v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2019-0905).
The conclusion that the Respondent lacks any right or legitimate interest in the disputed domain names is also supported by the Respondent’s offer to sell the disputed domain names on “www.sedo.com” for the minimum offer price of USD 500 in the case of <asuion.com> and USD 899 for each of the other disputed domain names (as the Complainant has evidenced in annex 8 of the Complaint), amounts that exceed, without evidence to the contrary, the Respondent’s out-of-pocket expenses for registering the disputed domain names.
Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the circumstances of this case, it can be inferred that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain names.
Particularly with respect to “automatically” generated pay-per-click links, UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the Respondent with any rights or legitimate interests) (see WIPO Overview 3.0, section 3.5).
Furthermore, the Respondent has used the disputed domain names in bad faith by utilizing typographical misspellings of the ASURION trademark or added descriptive terms similar to the term “set-up” to divert Internet users from the Complainant’s websites under <asurion.com> and <asurionsetup.com> to other pages including pay-per-click pages and pages containing potential scam and malicious software contents. Such behavior constitutes bad faith registration and use (Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2018-2527; LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679).
Finally, the fact that the Respondent is offering to sell the disputed domain names for valuable consideration in excess of its out-of-pocket expenses is further evidence of bad faith registration and use of the disputed domain names.
It follows from the above that the Respondent has registered and is using the disputed domain names in bad faith. Accordingly, the Complainant has also fulfilled 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 names <asuion.com>, <asurionaetup.com>, <asurionssetup.com> and <asurionswtup.com> be transferred to the Complainant.
Date: September 17, 2019