Assurant, Inc. v Don Joe

WIPO Case No. D2025-0946

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Assurant, Inc. v. Don Joe

Case No. D2025-0946

1. The Parties

The Complainant is Assurant, Inc., United States of America (“United States”), represented by The GigaLaw

Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is Don Joe, United States.

2. The Domain Name and Registrar

The disputed domain name <assurantcareer.com> (the “Disputed Domain Name”) is registered with

NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2025.
On March 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On March 7, 2025, 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 (Domain Administrator / See PrivacyGuardian.org) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 10,
2025, 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 amendment to the

Complaint on March 10, 2025.

The Center verified that the Complaint together with the amendment to 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 March 13, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 2, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 4, 2025.

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The Center appointed Lynda M. Braun as the sole panelist in this matter on April 14, 2025. 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, a Delaware, United States corporation, is a global provider of comprehensive risk management solutions for the auto, lifestyle and housing protection sectors. The Complainant helps businesses manage the risks of property damage, liability and financial loss, theft and natural disasters. A

publicly traded company on the New York Stock Exchange, the Complainant supports more than 300 million

customers worldwide with about 13,000 employees in 21 countries worldwide.

The Complainant owns the following registered trademarks, including, but not limited to: ASSURANT, United
States Registration No. 2,543,367, registered on February 26, 2002, in International Classes 35 and 36;
ASSURANT, Canada Registration No. TMA594423, registered on November 12, 2003, in International
Classes 35, 36, and 41; and ASSURANT, European Union Registration No. 004379079, registered on
November 20, 2006, in International Classes 35 and 36 (hereinafter collectively referred to as the
“ASSURANT Mark”).

The Complainant is the owner of the domain name <assurant.com>, registered on May 21, 1999, and which resolves to its official website at “

The Disputed Domain Name was registered on March 3, 2025 – almost 24 years after the Complainant’s oldest registration for the ASSURANT Mark. The Disputed Domain Name was not used in connection with an active website, although the Respondent configured mail exchanger (“MX”) records for the Disputed Domain Name. The Complainant has provided an email sent by a third party indicating that he has been contacted by the Respondent using an email address related to the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant contends that:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark because the Disputed by the generic Top-Level Domain (“gTLD”) “.com,” and thus does not prevent a finding of confusing similarity;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because,
among other things, the Complainant has not authorized the Respondent to register a domain name
containing the ASSURANT Mark, and the Respondent is using the Disputed Domain Name as part of an
email-based phishing scheme in which the Respondent sent fraudulent to unsuspecting job applicants of the

Complainant; and

- the Disputed Domain Name was registered and is being used in bad faith because, among other things, the
Respondent had actual knowledge of the ASSURANT Mark when it registered the Disputed Domain Name
and created MX records to impersonate the Complainant purportedly to send fraudulent emails to the
Complainant’s job applicants as part of a phishing scheme.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

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B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

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

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

(iii)      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 a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the ASSURANT Mark as explained below.

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

It is uncontroverted that the Complainant has established rights in the ASSURANT Mark based on its years
of use as well as its registered trademarks for the ASSURANT Mark in numerous jurisdictions worldwide.
Thus, the Complainant has shown rights in the ASSURANT Mark for purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Disputed Domain Name consists of the ASSURANT Mark in its entirety followed by the term “career” and then followed by the gTLD “.com”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of WIPO Overview 3.0, “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 under the first element.” Thus, the addition of the term “career” to the Complainant’s ASSURANT Mark in the Disputed Domain Name does not prevent a finding of confusing similarity. See e.g., Cantor Fitzgerald Securities v. Wanda J. Bradley, WIPO Case No. D2020-3051.

Finally, the addition of a gTLD such as “.com” in a domain name is a technical requirement. As such, it is
well established that a gTLD may typically be disregarded when assessing whether a disputed domain name
is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO
Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel finds that the Disputed

Domain Name is confusingly similar to the Complainant’s ASSURANT Mark.

Based on the available record, the Panel finds that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

The Complainant’s prima facie case includes the fact that the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ASSURANT Mark, that the Complainant does not have any type of business relationship with the Respondent, that there is no evidence that the Respondent is

commonly known by the Disputed Domain Name or by any similar name, and that there is no evidence that

the Respondent was making demonstrable preparations to use the Disputed Domain Name.

Further, use of the Disputed Domain Name to impersonate the Complainant and perpetuate a fraudulent have been configured, and a third party reported to the Complainant that he received a fraudulent email impersonating the Complainant from an email address related to the Disputed Domain Name. Therefore, based on the balance of probabilities, the Panel is convinced that the Disputed Domain Name has been used for a phishing scam.

phishing scheme does not confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0,
section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., “...
phishing, ... impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests
on a respondent.”). See also CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the
respondent had no rights or legitimate interests in the disputed domain name, finding that a phishing scam
cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of
the disputed domain name). Although the Complainant has not provided direct evidence of the

In sum, the Panel concludes that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Rather, the Panel finds that the Respondent is using the Disputed Domain Name for commercial gain with the intent to mislead by

potentially defrauding the Complainant’s potential job applicants by incorporating the Disputed Domain Name into fraudulent emails sent by the Respondent to those applicants. Such use cannot conceivably constitute a bona fide offering of a product or service within the meaning of paragraph 4(c)(i) of the Policy.

Based on the available record, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the the Policy.

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad

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faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a
domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

First, the Respondent’s phishing scheme to email job-seeking individuals fraudulent job offers purporting to come from the Complainant, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s ASSURANT Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. Numerous UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the disputed domain name are evidence of bad faith. See, e.g., BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364 (“[T]he use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith.”).

Second, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The

Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s ASSURANT Mark.

Third, the Panel finds that the Respondent had actual knowledge of the Complainant’s ASSURANT Mark
and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the
Respondent’s bad faith. Based on the Respondent’s confusingly similar Disputed Domain Name to the
Complainant’s trademark and domain name, it strains credulity to believe that the Respondent had not
known of the Complainant or its ASSURANT Mark when registering the Disputed Domain Name. The
Respondent’s awareness of the Complainant and its ASSURANT Mark additionally suggests that the
Respondent’s decision to register the Disputed Domain Name was intended to cause confusion with the
Complainant’s ASSURANT Mark and to disrupt the Complainant’s business. Such conduct indicates that the

Respondent registered the Disputed Domain Name in bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <assurantcareer.com> be transferred to the Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: April 25, 2025