WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asurion, LLC v. Super Privacy Service LTD c/o Dynadot

Case No. D2019-2326

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.

2. The Domain Name and Registrar

The disputed domain name <homebyasurion.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2019. On September 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 26, 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 October 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2019.

The Center appointed Ellen B Shankman as the sole panelist in this matter on October 31, 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 date of the Domain Name registration was confirmed by the Registrar to be June 24, 2019.

The trademark ASURION serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide.

The Complainant provided evidence of multiple trademark registrations for the mark ASURION including, inter alia, United States Registrations No. 76215616 (registered on March 18, 2003) and United States Registration No. 85486099 (registered on July 24, 2012), and United States Registration No. 85486112 (registered on April 2, 2013) and for the trademark both for word marks logos, that predate the date of the Domain Name registration for a variety of IT related goods and services.

On July 9, 2019, the Complainant’s counsel sent the Respondent, via email to the contact information in the WhoIs record, a cease-and-desist letter requesting that the Domain Name be transferred to the Complainant. A copy of the Complainant’s cease-and-desist letter dated July 9, 2019 was provided as evidence. As of the date of this Complaint, the Respondent has not replied to the Complainant’s letter.

The Panel also conducted an independent search to determine that the Domain Name is currently active, and redirects to “https://dan.com/buy-domain/homebyasurion.com?redirected=true&tld=com” which appears to be offering the Domain Name for sale.

5. Parties’ Contentions

A. Complainant

The Complaint sets forth that the Complainant is the owner and proprietor of the registered ASURION and HOME+ BY ASURION trademarks and related marks. 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 been active since 1994 and 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 14 locations in North and South America, two locations in Europe, two locations in Australia, and 10 locations in Asia, including Japan, China, Israel, Malaysia, the Philippines, Singapore, Taiwan, China and Thailand.

The Complainant alleges that since its first use of the ASURION mark in 2001, the Complainant has promoted the mark continuously and extensively. The Complainant spends millions of dollars every year promoting the ASURION mark and the products and services sold under the mark. Over 18 years of extensive marketing, sales and enforcement, it has become famous as a source identifier for the Complainant’s products and services. The Complainant’s website at “www.asurion.com” receives over 7.9 million visits annually, and the Complainant’s website at “www.phoneclaim.com” (which also prominently displays the ASURION mark) receives approximately 40 million visitors per year. The Complainant maintains an active social media presence, with more than one million Facebook “likes” and nearly 27,400 Twitter followers. The Complainant recently launched a new technical support service whereby service contract holders may obtain technical support and protection for common products within their homes. The Complainant is marketing this new service under the mark HOME+ BY ASURION. The Complainant is currently using the subdomain <homeplus.asurion.com> to direct to a website advertising the HOME+ BY ASURION service.

The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s ASURION and HOME+ BY ASURION marks. The Domain Name <homebyasurion.com> incorporates the ASURION mark in its entirety. Further, the Domain Name differs from the Complainant’s HOME+ BY ASURION mark only by its omission of the “+” character. Much like an ampersand symbol, the plus symbol “cannot be used as a part of a domain name,” thus the “deletion of the [symbol] does not materially distinguish the Domain Name from Complainant’s Mark.” According to the WhoIs the Domain Name was created June 24, 2019. At the time the Complainant learned of the Domain Name, as now, the Domain Name was displaying the statement “The domain name homebyasurion.com is for sale!” with a corresponding listed price of USD 988. This amount far exceeds Respondent’s out-of-pocket costs directly related to the Domain Name. The Registrar advertises the cost of a generic Top-Level Domain (“gTLD”) “.com” to be USD 8.99 per year.

On July 9, 2019, the Complainant’s counsel sent the Respondent, via email to the contact information in the WhoIs record, a cease-and-desist letter requesting that the Domain Name be transferred to the Complainant. As of the date of the Complaint, the Respondent had not replied to the Complainant’s letter.

To the Complainant’s knowledge, neither “asurion” nor “home by asurion” is the Respondent’s name, and the Respondent is not and has never been commonly known as “asurion” or “home by asurion.” The Respondent is not and has never been a licensee or franchisee of the Complainant. Furthermore, the Respondent has never been authorized by the Complainant to register or use the Complainant’s ASURION or HOME+ BY ASURION trademarks or to apply for or use any domain name incorporating the marks. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner.

The Respondent’s knowledge of the Complainant and its trademarks is further evidenced by the Respondent’s registration of the Domain Name merely four days after the Complainant submitted its trademark applications for HOME+ BY ASURION with the United States Patent and Trademark Office (USPTO).

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark ASURION house logo, in respect of a broad range of goods and services. The Domain Name is identical or confusingly similar to the Complainant’s ASURION and HOME+ BY ASURION marks. The Domain Name <homebyasurion.com> incorporates the ASURION mark in its entirety. The deletion of the “+” symbol does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for ASURION.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the Domain Name differs from the Complainant’s HOME+ BY ASURION mark only by its omission of the “+” character. Much like an ampersand symbol, the plus symbol “cannot be used as a part of a domain name,” thus the “deletion of the [symbol] does not materially distinguish the Domain Name from Complainant’s Mark.” See Latham & Watkins LLP v. Domain Hostmaster Customer ID: 01528735113163, Whois Privacy Services Pty Ltd / Mike Patterson, WIPO Case No. D2016-2169. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See also Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256 and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant’s trademark and reputation and the timing of the registration, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark ASURION and uses it for the purpose of misleading and diverting Internet traffic.

Additionally, without authorization from the Complainant, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed by the Respondent, as the ASURION mark was well‑known at the time of registration of the Domain Name, due to the Complainant’s extensive use of the mark. This is consistent with the decision of the Panel in Asurion, LLC v. Cindy Willis, WIPO Case No. D2018-2643, (“The Panel first finds it more likely than not the Respondent had Complainant’s inherently distinctive – and well-known – ASURION mark in mind when registering Domain Name”).

The Panel also agrees with the Complainant’s claim that the Respondent’s knowledge of the Complainant and its trademarks is further evidenced by the Respondent’s registration of the Domain Name merely four days after the Complainant submitted its trademark applications for HOME+ BY ASURION with the USPTO. The timing of the registration demonstrates that the Respondent’s selection of the Domain Name was not a coincidence. See John Patrick Davies d/b/a Jigletoes v. Sajima Tan, WIPO Case No. D2019-0207), (“[T]he fact that the Respondent […] registered the very distinctive disputed domain name only three days after the Complainant made its […] trade mark application suggests […] that registration was undertaken with knowledge of the Complainant’s trade mark application and if so, then is more likely than not to have been made with a view to somehow profiting from the disputed domain name in bad faith”).

The Panel finds that by registering the Domain Name merely four days after the Complainant’s trademark applications were filed at the USPTO and subsequently offering the Domain Name for sale at USD 988, the Respondent clearly intended to “register[…] the disputed domain name primarily for the purpose of selling it to the Complainant who is the owner of the […] mark for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.” Comerica Bank v. Chen Ki, WIPO Case No. D2017-0849, (similarly involving registration of a domain name only days after the application of the mark at issue was published by the USPTO). Such activity is evidence of bad faith pursuant to paragraphs 4(b)(i) and 4(b)(ii) of the Policy.

Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant and the refusal to comply with the Complainant’s request for voluntary transfer of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <homebyasurion.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: November 7, 2019