Verisure Sàrl v Lucas Real
WIPO Case No. D2024-4603
•18-12-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Verisure Sàrl v. Lucas Real
Case No. D2024-4603
1. The Parties
The Complainant is Verisure Sàrl, Switzerland, represented by Abion GmbH, Switzerland.
The Respondent is Lucas Real, Argentina.
2. The Domain Name and Registrar
The disputed domain name <alarmas-verisure.site> is registered with Network Solutions, LLC (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8,
2024. On November 8, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 8, 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 (PERFECT PRIVACY, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on November 11,
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
November 11, 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 November 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2024.
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The Center appointed Benjamin Fontaine as the sole panelist in this matter on December 9, 2024. 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 European provider of professionally monitored security solutions, and the second largest home alarm provider in the world. The Complainant has been active since 1988 and is based in Switzerland. It has more than 5.1 million customers, in 17 countries, and employs more than 28,000 people across the world.
The Complainant owns numerous trade mark registrations for VERISURE, including the European Union
Trade Mark VERISURE (word) No. 006674915, registered on March 26, 2010;
The Complainant also owns numerous domain names containing the trade mark VERISURE, among which
<verisure.com>, registered on November 4, 1998, which points to its main official website.
In previous UDRP complaints, the distinctive character and reputation of the trade mark VERISURE have
been recognized. See for example Verisure Sàrl v. RYOICHI AOKI, WIPO Case No. D2022-4813, or
Verisure Sàrl v. Audrey NEDJAR, WIPO Case No. D2024-1642.
The disputed domain name was registered on May 21, 2024 and resolves to a website in English that displays the following messages: “Sorry, you've been blocked. You cannot access alarmas-verisure.site”, and “Why have I been blocked? This site uses a security service to protect against online attacks. The action you have just taken has triggered the security solution. Several actions can trigger this blocking, including sending a certain word or phrase, an SQL command or badly formed data. What can I do to resolve this problem? You can send an email to the site owner to inform them that you have been blocked. Please include what you were doing when this page appeared and the Cloudflare Ray ID at the bottom of the page.”
The Complainant attempted to contact the Respondent, by sending a cease and desist letter to the then named Respondent, on August 8, 2024. No response was received.
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 its registered trade mark VERISURE. The trade mark is reproduced in its entirety and clearly recognizable in the second- level portion of the disputed domain name. The addition of the term “alarmas” and a hyphen does not prevent a finding of confusing similarity. Likewise, the addition of the generic Top-Level Domain (“gTLD”) “.site” does not add any distinctiveness to the disputed domain name and may be disregarded when assessing whether the disputed domain name is identical or confusingly similar to the trade mark in which the Complainant has rights, as it is a mere technical requirement.
Then, the Complainant adds that the Respondent has no rights or legitimate interests in respect of the
disputed domain name. The Respondent is not affiliated with the Complainant and the Complainant did not
authorize the Respondent to register or use a disputed domain name incorporating the trade mark
VERISURE, nor has the Complainant endorsed or sponsored the Respondent. There is no evidence that the
Respondent is commonly known by the disputed domain name or owns any registered trade marks including
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the terms “alarmas” and “verisure”. The Complainant provides an annex in which it demonstrates that when entering the disputed domain name terms in a Web search engine – even supplemented by the name of the Respondent – all the returned results point out to the Complainant and its business and do not show a
connection between the Respondent and the trade mark VERISURE. Moreover, the structure of the legitimate interests in the Disputed Domain Name.
disputed domain name – incorporating the trade mark VERISURE along with the relevant term “alarmas”,
i.e., the Spanish word for “alarms” – may falsely lead Internet users to believe that it is directly connected to
the Complainant. Indeed, the term “alarmas” is clearly a reference to the Complainant’s business activity,
and its combination with the Complainant’s trade mark carries a risk of implied affiliation. Also, the disputed
domain name, which resolves to an error page, is not being used in connection with a bona fide offering of
goods or services. Finally, by choosing not to respond to the cease and desist letter sent by the
Finally, the Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith. The registration of the Complainant’s trade marks pre-dates the registration of the disputed domain name. The Complainant enjoys a strong online presence, and any search online on the terms “alarmas” and “verisure” would have inevitably disclosed to the Respondent the Complainant, its trade mark and business. In the disputed domain name, VERISURE is preceded by the word “alarmas”, which proves that the Respondent was fully aware of the Complainant’s rights. It is therefore safe to assume that the Respondent registered the disputed domain name having the Complainant in mind, with the intention of capitalizing on the fame and goodwill of the Complainant’s trade mark. As regards the use, the disputed domain name does not resolve to an active website. From the inception of the UDRP, panelists have consistently found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. The trade mark VERISURE is distinctive and previous UDRP panels have recognized that the Complainant is widely known and has extensively promoted its products under its trade mark VERISURE. Furthermore, the Respondent has concealed his identity – as his name and contact details are covered by a privacy shield in the WhoIs records – which is further evidence of bad faith. Undeniably, the structure of the disputed domain name implies that no use in good faith of the disputed domain name can be contemplated.
For all the above-mentioned reasons, the Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complaint.
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 trade mark 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 trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of this trade mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The addition of the term “alarmas”, which relates to the Complainant’s business, may bear on assessment of the second and third elements. See WIPO Overview 3.0, section 1.8.
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Therefore, 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.
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.
Furthermore, the Panel considers that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. Indeed, it combines the descriptive element “alarmas”, which means “alarms” in English, and the trade mark VERISURE of the Complainant.
Then, 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 disputed domain name reproduces without authorization the Complainant’s trade mark associated with a term that clearly refers to its business of alarm supply. There is no doubt that the disputed domain name was registered in bad faith in order to create an implied affiliation with the Complainant's trade marks.
The non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. search, the Panel notes that:
- The distinctive trade mark VERISURE is present and marketed in Latin America, particularly in Argentina
where the Respondent is located. In this country, the Complainant operates the website
“
- The Complainant’s trade mark is well known, and considering the composition of the disputed domain
name it was clearly targeted by the Respondent;
- The Respondent has attempted to conceal his identity, and has provided incomplete, and even possibly
false, contact details;
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- The Respondent has failed to respond to the initial cease and desist letter of the Complainant, and to the
Complaint;
- In the circumstances of this case, in particular noting the composition of the disputed domain name, the
Panel cannot contemplate a use in good faith of the disputed domain name.
The Panel concludes 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 <alarmas-verisure.site> be transferred to the Complainant.
/Benjamin Fontaine/
Benjamin Fontaine
Sole Panelist
Date: December 18, 2024
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