Asurion, LLC v Mark Waltz

WIPO Case No. D2024-5347

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Asurion, LLC v. Mark Waltz

Case No. D2024-5347

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 Mark Waltz, United States.

2. The Domain Name and Registrar

The disputed domain name <asuriontech.net> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30,
2024. On January 2, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On January 2, 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 (Registration Private, Domains By Proxy, LLC)
and contact information in the Complaint. The Center sent an email communication to the Complainant on
January 6, 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 amended Complaint on

January 8, 2025.

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 January 16, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 5, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 6, 2025.

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The Center appointed Gary Saposnik as the sole panelist in this matter on February 12, 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 is a Nashville, TN, United States, based company that offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services, under the ASURION mark. 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 over seven-hundred locations throughout the United States, as well as other corporate offices, supply chain locations, and customer care and tech support centers throughout the world.

The Complainant has been active since 1994 and has used the ASURION mark since at least as early as 2001. It advertises and sells its products through its “ website and related websites, as well as through print media and other advertising and promotional campaigns. In addition to its domain

name <asurion.com>, the Complainant and its licensees own many other domain names incorporating the
ASURION mark in other generic Top-Level Domains (“gTLDs”) or including additional descriptive terms.

The Complainant is the owner of registrations for the ASURION mark in numerous countries throughout the world, including the following registrations in the United States:

-	ASURION, United States Registration No. 4179272, registered July 24, 2012, in classes 9, 42 and 45;
-	ASURION, United States Registration No. 4997781, registered July 12, 2016, in classes 35, 36, 37
and 42;
-	ASURION, United States Registration No. 6010609, registered March 17, 2020, in classes 9, 36 and
42.

According to contact information provided by the Registrar, the Respondent is an individual based in the United States. The disputed domain name was registered on October 5, 2024. It directs to a website displaying the name ASURION and featuring a background picture of tech devices, as well as a “Contact Us” chat box to collect personal information and an email capture box inviting visitors to “Subscribe” for updates. On the right corner of the website the following is stated: “Powered by GoDaddy Airo”. The disputed domain name also has an active MX record.

Shortly after registration of the disputed domain name, the Complainant’s counsel sent the Respondent, via the contact form linked in the WhoIs records, a cease-and-desist message informing the Respondent that the disputed domain name or content is infringing on the Complainant’s mark. The Respondent has not replied to the Complainant’s message.

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 identical or confusingly similar to a trademark or service mark in which the Complainant has rights. As previously noted, the Complainant has registered trademark rights in ASURION in the United States, and numerous other countries. The first and most prominent element of the disputed domain name is the ASURION mark in its entirety. A domain name

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incorporating a registered trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusing similar to that mark, particularly when the mark is the dominant element of the domain name. Milliman, Inc. v. ICS Inc., WIPO Case No. D2017-0360.

The addition of the generic word “tech” after the ASURION mark does not distinguish the disputed domain
name from the Complainant’s mark, as Panels have held that the mere addition of a generic and/or
descriptive word does not prevent a domain name from being confusingly similar to the trademark. Asurion
Corporation v. SQB, WIPO Case No. D2009-0165. Since the Complainant’s customers call on the
Complainant for technical assistance, and the Complainant’s business involves the provision of technical
support services for mobile phones and other devices, the addition of the generic word “tech” in the disputed
domain name actually serves to increase the confusing similarity rather than to differentiate it from the
Complainant’s ASURION mark. Asurion, LLC v. ORM Ltd./Contact Privacy Inc. d/b/a ContactPrivacy.com,

WIPO Case No. D2016-0578.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the known as “ASURIONTECH”. The Respondent is not and has never been a licensee or franchisee of Complainant. Furthermore, the Respondent has never been authorized by the Complainant to register or use the ASURION mark or to apply for or use any domain name incorporating the mark.

disputed domain name. The Respondent does not satisfy paragraph 4(c) of the Policy for demonstrating a
Respondent’s rights to or legitimate interests in the disputed domain name. “ASURIONTECH” is not the

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate non-commercial or fair use. The Respondent is using the disputed domain name to direct visitors to a website that displays the Complainant’s ASURION mark and features a background picture of tech devices, likely to impersonate Complainant, as the Complainant’s business involves providing technical support services for mobile phones and other devices. The website appears to be advertising technical assistance and also includes a “Contact Us” chat box to collect personal information and an email capture box inviting visitors to “Subscribe” for updates. Such fraudulent use does not constitute a bona fide offer of goods or services and cannot be considered legitimate non-commercial or fair use of the disputed domain name.

The Complainant further alleges that the MX records indicate that the Respondent is using the disputed
domain name for sending and receiving emails, likely for the purposes of misleading email recipients into
believing that the Respondent is an agent or employee of the Complainant. Respondent is presumably using
this email address in furtherance of a phishing campaign, fraud, or other unlawful activity. The direction of
the disputed domain name to a website featuring the Complainant’s ASURION mark lends an air of
legitimacy to this scheme. Use of a domain name in furtherance of unlawful activity, such as a phishing
attack or fraud, cannot confer rights or legitimate interests on a respondent. Swiss Re Ltd. v. Domain

Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-1549.

Additionally, the Complainant argues that without authorization from the Complainant, no actual or
contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the
Respondent, as the ASURION mark was famous at the time of registration, due to the Complainant’s
extensive use and promotion of the mark throughout the world for more than 20 years. Asurion LLC v. Cindy
Willis, WIPO Case No. D2018-2643.

As to the last prong of the Policy, the Complainant avers that the disputed domain name was registered and used in bad faith. At the time of registration of the disputed domain name, the Complainant’s ASURION marks were already widely known, and ASURION is a highly distinctive and famous mark universally associated with the Complainant. As such, it is not plausible that the Respondent could have been unaware of the Complainant at the time of registration. Asurion, LLC v. Nanci Nette, WIPO Case No. D2024-4257. Respondent’s knowledge of the Complainant is further evidenced by the displaying of the ASURION mark and the featuring of a background picture of tech devices, likely to impersonate the Complainant.

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The active MX records associated with the disputed domain name also serve as evidence that the Respondent is likely using the disputed domain name in connection with phishing, fraud, or other unlawful activities. The Respondent uses the appearance of the ASURION mark in the disputed domain name to deceive email recipients into believing that the Respondent is an agent or employee of the Complainant.

Furthermore, the Respondent is using the disputed domain name to redirect Internet users, and particularly potential customers and investors of Complainant, away from the Complainant’s website to the Respondent’s website, which includes a “Contact Us” chat box to collect personal information and an email capture box inviting visitors to “Subscribe”. In doing so, the Respondent passes itself off as the Complainant in order to collect personal information from unwitting visitors.

In view of the above, the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the ASURION mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “tech”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Asurion, LLC v. ricardo dewey, WIPO Case No. D2023-3989 (<techasurion.com>).

The Panel finds 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 the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving 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. WIPO Overview 3.0, section 2.1.

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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 Respondent has not shown that it has any demonstrable plans to use the disputed domain name with a bona fide offering, that it is being commonly known by the domain name, nor that it has a legitimate noncommercial or fair use. The inclusion of the Complainant’s mark on the resolving website, along with images of tech related products that the Complainant services, as well as the “Contact Us” and “Subscribe” forms are indicia that the Respondent is passing themselves off as the Complainant. This is further enhanced by the lack of notice or disclaimer of any association with the Complainant.

The Complainant has also provided evidence that the Respondent has active MX records associated with the disputed domain name, which may serve as evidence that the Respondent is likely using the disputed domain name in connection with phishing, fraud, or other unlawful activities. While there is no evidence of actual phishing activity, it is highly unlikely that the Respondent would be using the email associated with the

disputed domain name for legitimate activity without creating confusion with the Complainant.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

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.

In the present case, the Panel notes that the Respondent registered the disputed domain name many years similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

after the Complainant acquired registered trademark rights in the ASURION mark, including in the United
States, where both parties are located. The Complainant has also shown that its mark is widely known in the
United States, and likely throughout the world. The disputed domain name contains the Complainant’s
ASURION mark in full, along with the descriptive term “tech”, which is related to the Complainant’s business.

The inclusion of the “tech” term in the disputed domain name, as well as “Contact Us” and “Subscribe” on the has the Respondent come forward with any such legitimate or fair use.

resolving website, along with a lack of disclaimer or affiliation with the Complainant, are facts reflecting that
the Respondent was intentionally attempting to attract Internet users by creating a likelihood of confusion
with the Complainant’s mark. The webpage may have been generated by an AI program, however even if
the content was generated using an AI tool, the Respondent cannot disclaim the responsibility over the
website content. Along with the MX records reflecting that the disputed domain name can be used for
sending and receiving emails, creating an impending threat of phishing activities, it is inconceivable that the

In addition, the Respondent did not respond to the message sent by the Complainant’s counsel through the contact information at the Registrar.

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 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.

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Panels have held that the use of a domain name for illegitimate activity, here, claimed as applicable to this case, the prior described activity of impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration

and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 <asuriontech.net> be transferred to the Complainant.

/Gary Saposnik/
Gary Saposnik
Sole Panelist
Date: February 26, 2025