WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verisure Sàrl v. Domain Admin Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante

Case No. D2021-3604

1. The Parties

The Complainant is Verisure Sàrl, Switzerland, represented by BrandIT GmbH, Switzerland.

The Respondent is Domain Admin Whois protection, this company does not own this domain name s.r.o., Czech Republic / Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <verisure-smartalarms.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2021, 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. The Center sent an email communication to the Complainant on November 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 5, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.

The Center appointed Petra Pecar as the sole panelist in this matter on December 3, 2021. 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 provider of professionally monitored security solutions and home alarm solutions, and is operating worldwide. The Complainant has millions of customers and approximately 20,000 employees across the world. The Complainant is the owner of trademarks for VERISURE including the following registrations:

- United States Registration No. 5510447, registered on July 10, 2018;

- European Union Trade Mark Registration No. 006674915, registered on March 26, 2010;

- International trademark registration No. 1052667, registered on December 17, 2009.

The Complainant and its affiliate companies also own domain names containing the trademark VERISURE, including <verisure.com>, registered on November 5, 1998, which is in use for the Complainant’s official website; <verisure.co.uk>, registered on June 10, 2008; <verisure.eu> registered on September 21, 2006; and, <verisure.net> registered on September 6, 2009.

The disputed domain name was registered on April 21, 2021. According to the evidence provided by the Complainant, at the time of the submission of the Complaint, the disputed domain name resolved to a pay-per-click website with relevant terms to the Complainant’s business activities, and some of the links resolve to a website displaying the offer of products and services by other producers which are identical or similar to products and services of the Complainant.

The Complainant has sent a cease-and-desist letter addressed to the Respondent on August 13, 2021 via the email address indicated in the WhoIs records, but the Respondent did not respond to the communication. In the absence of any response, reminders were sent in August and September 2021, but no response was received.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s VERISURE trademark, as the disputed domain name incorporates entirely the Complainant’s registered trademark VERISURE, hyphens along with the terms “smart” and “alarms”, closely connected to the Complainant’s business and activities as well as the generic Top-Level Domain (“gTLD”) “.com”. Further, the applicable generic Top-Level Domain (“gTLD”) “.com” does not prevent a finding of confusing similarity with trademark in question and the Complainant refers as a supporting argument to the UDRP decision in International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee, affiliated to the Complainant, or in any other way authorized to use the Complainant’s trademark VERISURE. The Complainant further argues that there is no evidence that the Respondent is commonly known by the disputed domain name nor that he registered the trademark that includes any element of the disputed domain name. In addition, the Complainant demonstrates that at the time of filing of the Complaint, the disputed domain name resolved to a pay-per-click website with relevant terms to the Complainant’s business activities.

Furthermore, the Complainant argues that the Respondent has registered and used the disputed domain name in bad faith. According to the Complainant, the Respondent has registered the disputed domain name, which includes the entirety of the Complainant’s preexisting trademark VERISURE in combination with descriptive terms which refer to the Complainant’s business, with knowledge of the Complainant and its trademark.

The Complainant provided evidence that the disputed domain name resolved to a pay-per-click website, that the Respondent has apparently provided false contact information in the WhoIs records, and that the disputed domain name has active MX records. Finally, the Complainant points out that the Respondent has not responded to the cease-and-desist letter or any follow up reminders. Given the above, the Complainant argues that the disputed domain name is clearly registered and used in bad faith.

B. Respondent

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

6. Discussion and Findings

Even if the Respondent did not file a Response to the Complainant contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements in order to succeed in its Complaint:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

In the case at hand, the Complainant has provided evidence of its VERISURE rights on the basis of its multiple trademark registrations in several jurisdictions throughout the world. All of these VERISURE trademarks were duly registered long before the Respondent registered the disputed domain name on April 21, 2021.

The disputed domain name consists of the Complainant’s trademark VERISURE, together with the terms “smart” and “alarms”, a hyphen in the between the terms and Complainant’s trademark, and the applicable gTLD “.com”. Because the Complainant’s VERISURE trademark is recognizable within the disputed domain name, the inclusion of the additional elements does not prevent a finding of confusing similarity. Numerous UDRP panels have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the case Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0.

It is well accepted by UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

Therefore, the Panel holds that the combination of the Complainant’s trademark VERISURE and terms “smart” and “alarms”, together with a hyphen in between the terms and mark, and the applicable gTLD “.com” all together does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

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

From the evidence provided by the Complainant this Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name resolves to a pay-per-click website and such use in a manner that capitalizes on the reputation and goodwill of the Complainant’s mark, which cannot represent the bona fide offering of goods and services. In this particular case, the disputed domain name contains several links, some of which lead to the offer of goods and services by other service providers which are the Complainant’s direct competitors. This cannot amount in the Panel’s view to a bona fide offering of goods or services nor the existence of the legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraphs 4(c)(i) and (iii) of the Policy.

Further, the Complainant claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including the registration of domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “verisure”. The Complainant provided evidence that the Google search of the terms “verisure” or “verisuresmartalarms” leads to the Complainant and its business. Additionally, the Complainant provided evidence that the Respondent does not have any trademarks corresponding to the term “verisure-smartalarms”. The Panel finds that there is no indication that the Respondent is commonly known by the disputed domain name, also taking into the consideration that the Respondent is an individual with no apparent connection with the Complainant’s trademark.

In addition, the nature of the dispute domain name, incorporating the Complainant’s trademark with additional terms related to the Complainant’s area of business, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

In a conclusion, the Panel has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to come forward with any explanation to show that it has rights or legitimate interests in the disputed domain name and has not refuted the prima facie case made by the Complainant. Therefore, the requirement of in accordance with paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The disputed domain name contains the Complainant’s VERISURE trademark and additional words which describe the products in question (i.e. “smartalarms”) and as such, are closely linked to the Complainant’s products and services. The use of these terms that closely correspond to the Complainant’s field of activity can increase the risk of confusion by Internet users. Having in mind the global presence of the Complainant’s business activities and the VERISURE trademark, and the chosen combination of words within the disputed domain name, it seems rather unlikely that the Respondent was not aware of the Complainant’s trademark rights at the time of registration of the disputed domain name. Also, given the fact that the disputed domain name resolves to a webpage with pay-per-click links, including some links which offer the Complainant’s competitors’ products and services, as well as the fact that the identification data provided by the Respondent in the WhoIs records appears to be false (post code, street, phone number), all this indicates that the disputed domain name was in fact registered in bad faith.

The Panel observes that the Complainant has provided evidence demonstrating that the disputed domain name has active MX records, enabling its use for email, which could be perceived as an intent to use the disputed domain name in connection with phishing activities and further supports a finding of bad faith use (see Novartis AG v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-2149, and Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org /Yogesh Bhardwaj, WIPO Case No. D2017-1225). Although no evidence of phishing activities has been provided by the Complainant, the Panel deems that the presence of such MX records represents a severe risk of phishing or other fraudulent and abusive activities and together with other evidence, supports an inference of bad faith on the Respondent’s side. Given the confusing similarity of the disputed domain name to the Complainant’s VERISURE trademark, it is difficult to imagine any good faith use of the mail server attached to such a domain name (see in particular Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Basikta James, WIPO Case No. D2020-2955).

Finally, the Panel notes that the use of the confusingly similar disputed domain name to resolve to pay-per-click links which compete with and capitalize on the reputation of the Complainant’s trademark supports a finding of bad faith in this case.

Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name was registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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 disputed domain name, <verisure-smartalarms.com>, be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: December 17, 2021