WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asurion, LLC v. 石磊 (Lei Shi)

Case No. DCO2020-0057

1. The Parties

The Complainant is Asurion, LLC, United States of America (“United States” or “US”), represented by Adams and Reese LLP, United States.

The Respondent is 石磊 (Lei Shi), China.

2. The Domain Name and Registrar

The disputed domain name <asurionsetup.co> (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2020, 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.

On September 22, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on September 22, 2020. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on September 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on November 5, 2020. 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 a US company which offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation and related products and services under the ASURION trade mark since 2001. The Complainant has locations all over the world and has served over 280 million consumers worldwide.

The ASURION trade mark is registered in numerous countries including China which is where the Respondent is based. The earliest registered trade mark submitted in evidence is US Trade Mark Registration No. 2698459 registered on March 18, 2003 (the “Trade Mark”). The Complainant has a large portfolio of domain names which comprise the Trade Mark. The principal website operated by the Complainant is connected to the domain name <asurion.com>. The Complainant’s domain name at <asurionsetup.com> redirects to a web portal at “https://techcoach.asurion.com/devicesetup/guides/intro” through which the Complainant’s customers may set up replacement devices received from the Complainant.

The Respondent is an individual based in China. The Domain Name was registered on August 16, 2020. The Respondent appears to have used the Domain Name to attempt to either invite Internet users to install a Chrome extension or distribute malware through a fake antivirus scan page that displays false virus scan results. The Complainant’s representatives sent a cease and desist message through the Registrar’s website requesting that the Domain Name be transferred to the Complainant on September 10, 2020. The Respondent did not respond.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

- The Domain Name is in Latin rather than Chinese characters, and a reverse WhoIs search against the Respondent shows that he has numerous other domain names comprising English words which indicates that the Respondent is acquainted with the English language.

- The Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding.

The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case, the Domain Name contains the Complainant’s Trade Mark in its entirety together with the word “set up”, which does not prevent a finding of confusing similarity. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) or in this case the country code Top-Level Domain (“ccTLD”) which is “.co”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. The Complainant is not aware of any evidence which demonstrates that the Respondent is commonly known by a name corresponding to the Domain Name. The Trade Mark has no other significance other than being obviously connected to the Complainant. The Respondent has not made any 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, and is not making any legitimate noncommercial or fair use of the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has failed to respond and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

In addition, the Panel notes the nature of the Domain Name carries a risk of implied affiliation with the Complainant (section 2.5.1 of the WIPO Overview 3.0).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the Trade Mark was registered prior to registration of the Domain Name. Further the Complainant has a domain name which is identical to the second level of the Domain Name “asurionsetup” with the gTLD “.com”. The only difference is therefore the absence of the letter “m” at the end of the TLD of the Domain Name. It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.

The Panel also finds that the actual use of the Domain Name is in bad faith. The website connected to the Domain Name which appears to be either inviting Internet users to install a Chrome extension or distributing malware. It is highly likely that Internet users when typing the Domain Name into their browsers, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark in its entirety in the Domain Name. Moreover, the Domain Name is almost identical to the Complainant’s domain name <asurionsetup.com>.

From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the website is authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

Further, based on the case file, the Respondent has been the named respondent in other UDRP proceedings. See, e.g., Accenture Global Services Limited v. 石磊 (Lei Shi), WIPO Case No. D2020-1568, and 谷歌有限责任公司 (Google LLC) v. 石磊 (Lei Shi), WIPO Case No. DCO2020-0030. Therefore, the Panel finds that the Respondent has also demonstrated a pattern of bad faith conduct (see section 3.1.2 of the WIPO Overview 3.0).

Accordingly, the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.

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 Domain Name <asurionsetup.co> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: November 21, 2020