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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asurion, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-1650

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <asirionsetup.com>, <assurionsetup.com>, <asuionsetup.com>, <asurinsetup.com>, <asuriomsetup.com>, <asuriondetup.com>, <asurionetup.com>, <asurionsertup.com>, <asurionserup.com>, <asurionset.com>, <asurionsetip.com>, <asurionsetp.com>, <asurionsetuo.com>, <asurionsrtup.com>, <asurionsteup.com>, <asuriosetup.com>, <asursionsetup.com> and <wwwasurionsetup.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2019. On July 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2019 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 July 22, 2019.

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 July 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on August 26, 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 <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) and Panama (No. 238550-01 of August 28, 2015), as well as in various other jurisdictions.

The disputed domain names were registered between March 25, 2019 and May 22, 2019. They resolved to either pay-per-click pages, vehicles for potential phishing scams and/or to the website at “www.realtor.com” as evidenced in annex 3 of the Complaint.

Between April and June 2019 the Complainant’s counsel has sent various cease-and-desist letters via email to the contact information in the WhoIs record, requesting that the disputed domain names be transferred to the Complainant. The Respondent has not replied to the Complainant’s letters.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

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 partially reproduced in the disputed domain names <asirionsetup.com>, <assurionsetup.com>, <asuionsetup.com>, <asurinsetup.com>, <asuriomsetup.com>, <asuriondetup.com>, <asurionetup.com>, <asurionsertup.com>, <asurionserup.com>, <asurionset.com>, <asurionsetip.com>, <asurionsetp.com>, <asurionsetuo.com>, <asurionsrtup.com>, <asurionsteup.com>, <asuriosetup.com>, <asursionsetup.com> and <wwwasurionsetup.com>. The disputed domain names differ from the trademark ASURION only by the addition of the term “setup”, by exchanging or interchanging single letters, or the omission of a period after the additional suffix “www”.

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 variation of a single letter. This is a “typosquatting” case where the disputed domain names are 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 insertion of the term “set-up” is an addition of a descriptive term, especially since the word “set-up” relates to a business activity of the Complainant. It is the consensus view of the 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).

The omission of the period after the “www” in <wwwasurionsetup.com> is also insufficient to distinguish the disputed domain name from the Complainant’s trademark. The variation is also trying to take advantage of the fact that potential Internet users might mistype the Complainant’s website under the domain name <asurionsetup.com> by omission of the period. The term “www” and “setup” are insufficient to divert from the fact that the Complainant’s trademark ASURION is being used in its entirety in the disputed domain name <wwwasurionsetup.com>, thereby creating confusing similarity.

All disputed domain names are mere typo-variations of the Complainant’s domain name <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 Complainants have 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 thirteen of the eighteen disputed domain names (<assurionsetup.com>, <asurionserup.com>, <asurionsertup.com>, <asurionetup.com>, <asurionsetp.com>, <asurionsteup.com>, <asuriomsetup.com>, <asuriosetup.com>, <asurinsetup.com>, <asursionsetup.com>, <asuionsetup.com>, <asurionsrtup.com>, and <wwwasurionsetup.com>) have at some time prior to the filing of the Complaint directed to parking pages showing pay-per-click advertising links. Moreover, nine of these thirteen disputed domain names (<assurionsetup.com>, <asurionserup.com>, <asurionsertup.com>, <asurionetup.com>, <asurionsetp.com>, <asurionsteup.com>, <asuriomsetup.com>, <asurionsrtup.com>, and <wwwasurionsetup.com>) have directed to parking pages with advertising links to websites purportedly offering services identical or related to those of the Complainant (see annex 3 of the Complaint). Finally, seven of the eighteen disputed domain names (<assurionsetup.com>, <asurionsetuo.com>, <asurionset.com>, <asuriondetup.com>, <asurionsetip.com>, <asuriosetup.com>, and <asirionsetup.com> have been used at some time prior to the filing of the Complaint as vehicles for an apparent phishing scam (see annex 3 of the Complaint).

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 899 (as the Complainant evidenced in annex 2), an amount that exceeds, 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).

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.

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 names <asirionsetup.com>, <assurionsetup.com>, <asuionsetup.com>, <asurinsetup.com>, <asuriomsetup.com>, <asuriondetup.com>, <asurionetup.com>, <asurionsertup.com>, <asurionserup.com>, <asurionset.com>, <asurionsetip.com>, <asurionsetp.com>, <asurionsetuo.com>, <asurionsrtup.com>, <asurionsteup.com>, <asuriosetup.com>, <asursionsetup.com> and <wwwasurionsetup.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: September 9, 2019

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