Complainant is Asurion Corporation, Nashville, Tennessee, United States of America, represented by Adams and Reese LLP, United States of America.
Respondent is SQB, ShenZhen, Guangdong, the People's Republic of China.
The disputed domain name <asurion-insurance.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009. On February 6, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 6, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 5, 2009.
The Center appointed Kristiina Harenko as the sole panelist in this matter on March 16, 2009. 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.
Complainant, the owner and proprietor of the registered trademark ASURION, and its subsidiary, Asurion Insurance Services, Inc., offer handset insurance and warranty management services to protect customers against loss, theft, damage and malfunction of their wireless devices. Complainant has been active since 1994, and has used the mark ASURION since 2001. Complainant advertises and sells its services through its <asurion.com> and <asurionprotectionservices.com> web sites and related web sites, as well as through print media and other advertising and promotional campaigns. Complainant currently serves over 70 million wireless subscribers and its products and services are made available by nearly every major wireless carrier in the United States. Complainant has eight locations in the United States, one location in Canada, and six locations in Asia (Singapore, Republic of Korea, Hong Kong, SAR of China, Taiwan, Province of China, Japan, and China).
Respondent registered the disputed domain name on November 12, 2008.
Complainant owns the following trademark registrations and applications:
United States:
|
Trademark |
Registration No. |
|
ASURION |
3019708 |
|
ASURION |
2698459 |
|
ASURION ROADSIDE ASSISTANCE |
2937841 |
Other countries:
|
Country |
Trademark |
Serial No. |
Registration No. |
|
Canada |
ASURION |
1093105 |
TMA 580365 |
|
European Union |
ASURION |
2196939 |
2196939 |
|
Hong Kong, SAR of China |
ASURION |
300368910 |
300368910 |
|
Hong Kong, SAR of China |
ASURION in Chinese |
300406890 |
300406890 |
|
Japan |
ASURION and ASURION in Japanese |
49052/2004 |
4827130 |
|
Republic of Korea |
ASURION |
45-2005-0001436 |
45-0015790 |
|
Republic of Korea |
ASURION in Korean |
45-2005-0001580 |
Pending |
|
Singapore |
ASURION |
T0501963D |
T0501963D |
|
Singapore |
ASURION |
T0501964B |
T0501964B |
|
Singapore |
ASURION |
T0501965J |
T0501965J |
|
Singapore |
ASURION |
T0501968E |
T0501968E |
|
China |
ASURION |
Application no. 6256931 |
Pending |
|
China |
ASURION |
Application no. 6256932 |
Pending |
|
China |
ASURION |
Application no. 6256933 |
Pending |
|
China |
ASURION |
Application no. 6256965 |
Pending |
|
China |
ASURION |
Application no. 6256966 |
Pending |
|
Taiwan, Province of China |
ASURION |
94006644 |
1197307 |
|
Taiwan, Province of China |
ASURION in Chinese |
95045149 |
Pending |
|
Taiwan, Province of China |
ASURION in Chinese |
95045150 |
1242944 |
Since its first use of the mark in 2001, Complainant has promoted the ASURION mark continuously and extensively. In the year 2008 alone, Complainant spent in excess of $7 million dollars promoting the mark and products and services sold under the mark.
Complainant owns valid and subsisting registrations for the ASURION mark in eight countries and the European Union, all of which predate the record creation date of the disputed domain name. Complainant is also the registrant of many domain names incorporating ASURION.
Complainant has sent cease and desist letter on December 12, 2008. Complainant did not receive any automated message stating that the email was not delivered or not deliverable, and Respondent did not reply.
Complainant contends that Respondent is using a domain name that is identical or confusingly similar to Complainant's core trademark, as the addition of the generic term “insurance” fails to give to the disputed domain name any distinctiveness, but instead aggravates the risk of confusion because customers shall immediately associate the mark ASURION used in the disputed domain name with Complainant, as Complainant is traditionally engaged in providing insurance services. Thus, there is no doubt that the domain name <asurion-insurance.com> is confusingly similar with the trademark ASURION registered by Complainant.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name because to Complainant's knowledge, “Asurion” is not Respondent's name, Respondent is not, and has never been, commonly known as “Asurion.” Respondent is not, and has never been, a licensee or franchisee of Complainant; it has never asked, and has never been permitted in any way by Complainant to register or use Complainant's marks, or to apply for or use any domain name incorporating any of the marks. Respondent is not using the domain name in connection with a bona fide offering of goods or services, or in a legitimate non-commercial or fair manner. The domain name resolves to a web site purporting to cover services offered by Complainant, including “Asurion Phone Insurance,” and “Asurion Cell Phone Insurance.” Links are provided to various third party web sites.
Finally, Complainant holds that the disputed domain name was registered and is being used in bad faith because Respondent does not conduct any legitimate commercial or non-commercial business or activity on the web site; and, given the many trademark registrations for ASURION, its international reputation, and the fact that ASURION is a fanciful mark with no other meaning than Complainant's name, it is not plausible that Respondent could legitimately use the domain name, and it is not plausible that Respondent could have been unaware of ASURION at the time of registration. 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 Complainant's web sites to the web sites of other insurance and related companies which may compete with Complainant. It is evident that Respondent is using Complainant's mark to benefit commercially from the goodwill attached to ASURION. This is made particularly clear by Respondent's coupling of Complainant's core mark with a word describing its services (i.e. “insurance”), which allows for a strong inference that Respondent is well aware of Complainant's valuable ASURION mark. This is evidence that Respondent has registered and is using the domain name in bad faith
Complainant thus understands that Respondent has registered and is using Complainant's exact mark in combination with a word describing Complainant's business intentionally to attract, for commercial gain, Internet users to its web sites or other online locations, by creating a likelihood of confusion with Complainant's ASURION trademark as to the source, sponsorship, affiliation, or endorsement of its web sites.
Respondent did not reply to Complainant's contentions.
Pursuant to paragraph 4(a) of the Policy, Complainant must prove the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
“Asurion” is the dominant element of the domain name in issue, making it confusingly similar to the trademark ASURION. It is a well-established principle of WIPO UDRP panels that the mere addition of a generic and/or descriptive word such as “insurance” does not prevent a domain name from being confusingly similar to the trademark. Complainant's assertion is accurate when it says 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 because customers shall immediately associate the mark ASURION used in the domain name with Complainant because Complainant's business involves the provision of insurance.
Thus, there is no doubt that the domain name <asurion-insurance.com> is confusingly similar to the trademark ASURION registered by Complainant.
In this respect Complainant has, according to paragraph 4 (a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue. However, once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests the burden shifts to Respondent. See Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Complainant's registration and use of the trademark ASURION pre-date Respondent's registration of the confusingly similar domain name <asurion-insurance.com>. The Panel agrees that is was indeed likely that Respondent was aware of Complainant's trademarks at the time of registration and subsequent use of the disputed domain name.
According to the Complaint Respondent is not, and has never been, a licensee or franchisee of Complainant; it has never asked, and has never been permitted in any way by Complainant to register or use Complainant's marks, or to apply for or use any domain name incorporating any of the marks.
In addition, it has been shown that Respondent appears not to run any legitimate business associated with the disputed domain name but only uses it in relation to a web site to intentionally attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant's ASURION trademark as to the source, sponsorship, affiliation, or endorsement of its web site. Accordingly, the use of the domain name <asurion-insurance.com> is not considered legitimate use in connection with a bona fide offering of goods and services. Accordingly, the Panel finds that Complainant has established a prima facie case in relation to the second element of the Policy.
Respondent has not filed any Response to the Complaint and thus has not provided any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication in the evidence it received that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Given the circumstances the Panel finds that Respondent has no rights or legitimate interests in respect of disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
For the purposes of determining if the bad faith element is present, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The circumstances of paragraph 4(b) of the Policy include: (i) selling, renting or otherwise transferring the domain name for valuable consideration in excess of respondent's documented out-of-pocket costs; (ii) preventing the trademark owner from reflecting its trademark in a corresponding domain name provided there is a pattern of such conduct; (iii) disrupting the business of a competitor ; or (iv) attracting Internet users to a web site for commercial gain by creating confusion with the complainant's trademark.
In this case the last of the above bad faith examples is apparent, that is, attracting Internet users to a web site for commercial gain by creating a likelihood of confusion with Complainant's trademark. It is evident that Respondent is using Complainant's mark to benefit commercially from the goodwill attached to ASURION. This is made particularly clear by Respondent's coupling of Complainant's core mark with a word describing its services (i.e. “insurance”), which allows for a strong inference that Respondent is well aware of Complainant's valuable ASURION mark. This is evidence that Respondent has registered and is using the disputed domain name in bad faith.
Finally, the lack of a response to this Complaint infers that Respondent in all likelihood could not demonstrate any good faith use of the disputed domain name.
In view of the evidence provided, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <asurion-insurance.com> be transferred to Complainant.
Kristiina Harenko
Sole Panelist
Dated: March 30, 2009