WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asurion, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-0211
1. The Parties
The Complainant is Asurion, LLC of Nashville, Tennessee, United States of America (“United States” or “US”), represented by Adams and Reese LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <asurion-phoneclaim.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 January 28, 2019. On January 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 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 February 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2019.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 13, 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 a US corporation and is the owner and proprietor of the registered ASURION trademark. The Complainant offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services under the ASURION mark. The Complainant has used the mark ASURION since 2001. The Complainant advertises and sells its products and services through its “www.asurion.com” website and related websites, as well as through print media and other advertising and promotional campaigns. The Complainant has served over 280 million consumers worldwide, and its services are made available by retailers worldwide, including some of the largest retailers in the United States. The Complainant has fourteen locations in North and South America, two locations in Europe, two locations in Australia, and ten locations in Asia.
The Complainant has supplied to the Panel details of extensive trademark registrations of its ASURION trademark internationally, including US registration number 2698459 (with a first use in commerce from 2001, and a registration date of March 18, 2003) and Panama, registration number 238550-01.
The disputed domain name was registered on December 31, 2018, and resolves to a website offering pay-per-click access to products competing with those of the Complainant.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its ASURION trademark, containing its ASURION trademark in its entirety, with the mere addition of a descriptive or non-distinctive element.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent is not, to the best of the Complainant’s knowledge, generally known by the disputed domain name, and the Complainant has never granted permission to the Respondent to use its trademark in a domain name, or otherwise.
The Complainant alleges that the disputed domain has been registered in bad faith, and is being used in bad faith in connection with a website offering pay-per-click access to products competing with those of the Complainant. The Complainant also alleges that the disputed domain name is being used as a vehicle for an apparent phishing scam and that the disputed domain name is listed for auction on “sedo.com”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name, and, in the circumstances of the present case, finds the “.com” gTLD indicator to be irrelevant in comparing the trademark to the disputed domain name at issue.
It is well-established in prior decisions under the Policy, with which the Panel agrees, that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights does not avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers the element, “phoneclaim” added to the Complainant’s trademark to be clearly a descriptive element.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when registering the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.
It is well-established in prior decisions under the Policy that the use of a disputed domain in connection with a pay-per-click website offering similar goods or services to those traded in by the complainant constitutes use of the disputed domain name in bad faith. This is clearly the case in the circumstances of the present case, and the Panel accordingly finds that the disputed domain name is being used in bad faith. In addition, the Panel notes that the disputed domain name appears to be connected to a phishing scheme, which is further evidence of bad faith.
Accordingly, the Panel finds that the Complainants have satisfied the dual requirements of paragraph 4(a)(ii) 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 <asurion-phoneclaim.com> be transferred to the Complainant.
George R. F. Souter
Date: March 29, 2019