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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verisure Sàrl v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Minh Choi

Case No. D2021-1363

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Minh Choi, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <verisuresecurity.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 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 May 5, 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 May 10, 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 May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on June 11, 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 leading provider of professionally monitored security solutions and the second largest home alarm provider in the world. The Complainant has more than 3.6 million customers in 16 countries and employs 20,000 people across the world. The Complainant enjoys a strong online presence via its official websites and social media accounts.

The Complainant is the exclusive owner of a number of registered trademarks consisting of or including the word “VERISURE”, including International trademark registration No. 1052667 for VERISURE registered on December 17, 2009, European Union Trade Mark Registration No. 006674915, registered on March 26, 2010, and United States trademark registration No. 5510447, registered on July 10, 2018. In addition to other domain names, the Complainant owns since 1998 the domain name <verisure.com> that it uses for its official website.

The disputed domain name was registered on August 28, 2020 and at the date of the Complaint, it resolved to a copycat of the Complainant’s official Norwegian website. At the date of the Decision the disputed domain name does not resolve.

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 along with the term “security”, closely connected to the Complainant’s business and activities and the VERISURE trademark is clearly recognizable within the disputed domain name.

As regards the second element, the Complainant argues that it has not licensed or authorized the Respondent to use the Complainant’s trademark VERISURE, to register or use the disputed domain name incorporating the VERISURE trademark, nor has the Complainant endorsed or sponsored the Respondent or the Respondent’s website. The Respondent is not affiliated to the Complainant. The Complainant further argues that the Respondent is not commonly known by the disputed domain name. In addition, the Complainant shows that at the time of filing of the Complaint, the disputed domain name resolved to an active website which was a “copycat” of the Complainant’s official Norwegian website and that the website at the disputed domain name has had the exact “look and feel” of the website of the Complainant and redirected to the Complainant’s official social media accounts. Also, the disputed domain name might have been used for phishing purposes, as the website at the disputed domain name has also contained various sections where Internet users have been invited to enter personal data.

About the third element, the Complainant argues that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered the disputed domain name which includes in its entirety the Complainant’s preexisting trademark VERISURE. Also, the website at the disputed domain name was a “copycat” version of one of the websites of the Complainant and it redirected to the Complainant’s social media accounts. The Complainant concludes that it is inconceivable that the Respondent was unaware of the existence of the Complainant when he registered the disputed domain name.

As regards the use, the Complainant shows that the disputed domain name resolved to an active website which was the exact reproduction of the Complainant’s Norwegian official website. The disputed domain name incorporating in its entirety the trademark VERISURE may mislead potential consumers by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation and making the general public believe that the website is actually operated by the Complainant and that the goods and services offered on the website originate from the Complainant. The use of a privacy shield is also evidence of bad faith. The fact that the disputed domain name is currently passively held does not prevent a finding of bad faith.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, 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 elements:

(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

The Complainant has proved its rights over the VERISURE trademark. The trademark is reproduced in its entirety in the disputed domain name. The addition of the word “security” does not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a generic top-level domain (“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.

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 non-commercial 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.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

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 in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “verisure”. The disputed domain name was used to resolve to an active website which was a “copycat” of the Complainant’s official Norwegian website. The website displayed the VERISURE trademark and provided no disclaimer as to any lack of authorization from or affiliation with the Complainant. This cannot amount in the Panel’s view to a bona fide offering of goods or services within the meaning of paragraphs 4(c)(i) of the Policy or to a legitimate noncommercial or fair use of the disputed domain name as provided by article 4(c)(iii) of the Policy.

In the present case, the Complainant 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.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a 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.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered many years after the Complainant has obtained registration of its VERISURE trademarks, including in the United States where the Respondent is located. The disputed domain name is confusingly similar with the Complainant’s trademark. Moreover, the VERISURE trademark of the Complainant is displayed on the website at the disputed domain name where the Respondent copied the Complainant’s website. Under these circumstances, there can be little doubt that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Panel finds that the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name.

As regards the use of the disputed domain name, the Panel finds that, according to the unrebutted evidence submitted by the Complainant, the disputed domain name resolved at the date of the Complaint to a copycat version of the Complainant’s website, displaying “VERISURE” with the Complainant’s trademark and logo. This amounts to use in bad faith under the terms of paragraph 4(b)(iv) of the Policy. Furthermore, the Respondent has not replied to the Complainant’s contentions and used a privacy service when registering the disputed domain name. These circumstances are further indications of bad faith. The fact that currently the disputed domain name does not resolve, as it appears to have been removed by the Registrar, does not preclude a finding of bad faith in the circumstances of the 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.

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, <verisuresecurity.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: June 25, 2021

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