Asurion, LLC v Privacy Protection, Privacy Protect

WIPO Case No. D2024-5139

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Asurion, LLC v. Privacy Protection, Privacy Protect

Case No. D2024-5139

1. The Parties

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

Reese LLP, United States.

The Respondent is Privacy Protection, Privacy Protect, United States.

2. The Domain Name and Registrar

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

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13,
2024. On December 13, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Disputed Domain Name. On December 13, 2024, 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 (Redacted for Privacy) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 16,
2024, 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

December 19, 2024.

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 December 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2025.

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The Center appointed Lynda M. Braun as the sole panelist in this matter on January 22, 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 Delaware, United States corporation that offers insurance, technology, mobile phone replacement, configuration, technical support, IT consultation, and related products and services under the ASURION trademark. The Complainant advertises and sells its products and services through its principal 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 over
700 locations throughout the United States, as well as many other corporate offices, supply chain locations,
and customer care and tech support centers throughout North and South America, Europe, Australia, and
Asia.

The Complainant owns the following registered trademarks through the United States Patent and Trademark Office (“USPTO”): ASURION, United States Trademark Registration No. 2,698,459, registered on March 18, 2003, with a date of first use in commerce of March 12, 2001; and ASURION (stylized), United States

Trademark Registration No. 3,019,708, registered on November 29, 2005. In addition, the Complainant owns valid and subsisting registrations for the ASURION trademark in numerous jurisdictions worldwide. The foregoing trademarks will hereinafter collectively be referred to as the “ASURION Mark”.

The Complainant owns the domain name <asurion.com>, as well as many other domain names
incorporating the ASURION Mark. The domain name <asurion.com> resolves to the Complainant’s principal
website at “

The Disputed Domain Name was registered on June 21, 2010, and according to the evidence provided by the Complainant, it resolves to a parking page displaying pay-per-click (“PPC”) advertising links, some of which are related to the Complainant’s business, such as “Insurance Claim”. The Complainant’s counsel sent cease-and-desist letters to the Respondent on October 30, 2015, November 23, 2015, and May 12, 2023, but received no reply.

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 as it incorporates a minor
misspelling of the ASURION Mark, specifically adding an extra letter “s” in the trademark, and then adding
the generic Top-Level Domain (“gTLD”) “.com”, which additions do not prevent a finding of confusing
similarity;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not authorized the Respondent to register a domain name containing the ASURION Mark, the Respondent was not making a bona fide offering of goods or services, and the Respondent has never

been commonly known by the ASURION Mark, or any similar name;

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- the Disputed Domain Name was registered and is being used in bad faith because, among other things, the actual knowledge of the Complainant and its ASURION Mark.

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.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(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 ASURION Mark.

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 ASURION Mark based on its approximately two decades of use as well as its registered trademarks for the ASURION Mark in the United States and other jurisdiction worldwide. The consensus view is that “registration of a mark is prima facie evidence of validity”. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the ASURION Mark.

The Disputed Domain Name consists of the ASURION Mark in its entirety, albeit misspelled with an extra letter “s” in the trademark. Such a minor modification to a disputed domain name is commonly referred to as “typosquatting” and seeks to wrongfully take advantage of errors by a user in typing a domain name into a web browser. The misspelling of “asurion” to “asurions” does not prevent a finding of confusing similarity to the ASURION Mark. See WIPO Overview 3.0, section 1.9: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”; see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; Singapore Press Holdings Limited v. Leong Meng Yew, WIPO Case No. D2009-1080.

Finally, the addition of a gTLD such as “.com” in a domain name is a technical requirement. Thus, it is well established that, as here, such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,

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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 ASURION 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 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 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. WIPO Overview 3.0, section 2.1.

In this case, given the facts as set out above, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ASURION Mark. Nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name, nor any evidence that the Respondent is using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c).

Further, as noted above, the Disputed Domain Name resolves to a parking page displaying PPC links to various third-party services. The Panel infers that the Respondent is seeking to generate click-through revenue from Internet users drawn to the Respondent’s web page due to a perceived association between the Disputed Domain Name and the Complainant’s Mark. Such conduct, where the Respondent is seeking to unfairly capitalize on the goodwill associated with the Complainant’s trademark, does not amount to use of the Disputed Domain Name in connection with a bona fide offering of goods or services. As such, the Respondent’s registration and use of the Disputed Domain Name may be deemed commercially motivated and does not amount to a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) 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 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 faith. 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.

The Panel finds that the Respondent had actual knowledge of the Complainant and its rights in the evidenced by the Respondent’s use of the ASURION Mark in the Disputed Domain Name. Thus, the Panel
ASURION Mark when registering the Disputed Domain Name, emblematic of bad faith registration and use.

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finds that in the present case, the Respondent had the Complainant’s ASURION Mark in mind when
registering and using the Disputed Domain Name.

Further, the Panel concludes that the Respondent’s registration of the Disputed Domain Name was an attempt to disrupt the Complainant’s business for commercial gain. See Newegg Inc. v. Nicole Alex and Alexander Ethan, WIPO Case No. D2019-2740 (registration of disputed domain names was likely to have been made in an attempt to receive commercial gain from their exploitation).

Moreover, the Disputed Domain Name resolves to a parking page displaying PPC links to third-party services and the Panel infers that the Respondent derives click-through revenue from the presence of such links on the website to which the Disputed Domain Name resolves. Regardless of whether the Respondent is generating click-through revenue, it is well established that the use of a domain name to redirect Internet users to websites of competing companies constitutes bad faith registration and use in and of itself. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. The Panel finds that by using the Disputed Domain Name in such a manner, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s ASURION Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

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

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 <asurions.com> be transferred to the Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: February 5, 2025