A cease and desist letter dated September 19 2007 was sent by the Complainant to the Respondent which was responded to on September 26, 2007. In its response the Respondent offered to transfer the domain names to the Complainant for US$1,250.

5. Parties’ Contentions

A. Complainant

The Complainant contends

(a) that each of the disputed domain names is identical or confusingly similar to its trademarks;

(b) that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names; and

(c) that each of the disputed domain names has been registered and is being used by the Respondent¹ in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <assurionprotectionservices.com>, being a combination of the word ‘assurion’ together with the generic words ‘protection’ and ‘services’, only differs from one of the registered domain names under which the Complainant operates part of its business, namely <asurionprotectionservices.com>, by the addition of a further letter ‘s’ in the trademark word. The mark ASURION is a word which has been devised for the purpose of representing the products marketed by the Complainant. When spoken it would sound the same whether it had a single or double ‘s’. The alteration does not make the name different in any substantive way; indeed it serves to highlight the fact that the name with a double ‘s’ is confusingly similar to the Complainant’s mark and its legitimate domain name. Deliberate misspelling of the Complainant’s mark does not render the Respondent’s name other than confusingly similar: see Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO Case No. D2000-0928; Geobra Brandstatter GmbH & Co KG v. Only Kids Inc, WIPO Case No. D2001-0841; and AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.

The three remaining disputed domain names, <asurionclaim.com>, <asurionprotectionservise.com> and <asurionprotectionservises.com> each incorporate the Complainant’s mark without misspelling it. Whilst <asurionclaim.com> is not a domain or business name registered by the Complainant, it seeks to convey the meaning of an activity or concept, namely that of a claim, which is an inherent part of the Complainant’s business, namely the provision of insurance to its customers. The usual description given to the action of a customer which calls upon an insurer to make good a loss suffered is the making of a claim. For this reason the Respondent’s domain name consisting of the Complainant’s mark with a word which conveys a fundamental activity of the Claimant’s customers should they suffer the misfortune of a loss is, in the opinion of the Panel, the use of a domain name which is confusingly similar to the Complainant’s mark.

Further, the domain names <asurionprotectionservise.com> and <asurionprotectionservises.com> seek to take advantage of common misspellings of the words ‘service’ and ‘services’. Such misspellings do not thereby achieve any differentiation of the domain names from the domain name used by the Complainant to advance its commercial interests using a name closely linked to its mark, namely <asurionprotectionservices.com>. The alteration of the Complainant’s domain name by changing the ‘c’ in ‘services’ to an ‘s’ does not remove any confusing similarity; nor does the deletion of the final ‘s’. It merely seeks to take advantage of the fact that a proportion of Internet users will misspell the name and will then be redirected, unbeknown to them, to the Respondent’s website: see the panel decisions referred to above.

The Panel is satisfied that the Complainant has sufficiently established that which it is required to establish under UDRP Paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has established to the satisfaction of the Panel that it holds the rights to the registered mark ASURION and that with about 50 million customers, the mark is a valuable and well-known one. The Respondent is not a licensee or franchisee of the Complainant and has been given no entitlement to the use of the mark; nor does it claim any such rights. Indeed the absence of response entitles the Panel to find against the Respondent as to the legitimacy of its use. According to the evidence submitted by the Complainant the disputed domain names resolve to links to various third party sites, some of which directly compete with the Complainant. No legitimate interests are derived from such use: see Menard, Inc. v Domain Park Ltd, NAF Case No. FA0707001045120. The Respondent is also seeking to take advantage of common misspellings by Internet users thereby gaining commercial advantage and depriving the Complainant of making contact with the potential customer. The Panel concludes that the Respondent has no rights or legitimate interests in any of the disputed domain names, contrary to UDRP 4(a)(ii).

C. Registered and Used in Bad Faith

The trademark ASURION is a created word which has acquired its international reputation through the commercial efforts of the Complainant. The acts of the Respondent seek to take advantage of the commercial reputation attaching to the trademark held by the Complainant. Further the Respondent seeks to take advantage of Internet users making understandable typing errors in their attempts to access the Complainant’s sites and to undertake business with the Complainant.

The registration of the disputed names by the Respondent in circumstances where it is shown to be seeking to derive commercial and illegitimate advantage by misleading potential internet customers by diverting them from the Complainant’s websites and leading them, unwittingly, into the hands of other parties undertaking business similar to the Complainant’s business is evidence of registration and use in bad faith under UDRP Paragraph 4(b)(iv). It is not plausible to conclude that the commercial advantage to be achieved by the use of the mark or a word confusingly similar to the mark was unknown to the Respondent when it registered the four disputed domain names within the space of a few weeks. It is to be presumed that the Respondent benefits commercially from the diversion of Internet users through its domain names sites; it refused to cease such use when requested to do so. Its continued use is plainly an activity undertaken in bad faith.

Further the Complainant relies upon the evidence of bad faith use and registration when the Respondent offered the sites for sale generally through an on-line service located at “sedo.com”, as the Complainant has shown was the situation when it first detected the sites, and by its response to the cease and desist letter from the Complainant whereby it offered to sell the disputed names to the Complainant for US$1,250, a price not shown to be limited to its out-of-pocket costs. Such events are evidence of bad faith use pursuant to UDRP Paragraph 4(b)(i).

The Panel concludes that in breach of the UDRP Policy paragraph 4(a)(iii), the Respondent has registered and used the disputed domain names in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the domain names <assurionprotectionservices.com>, <asurionclaim.com>, <asurionprotectionservise.com> and <asurionprotectionservises.com> be transferred to the Complainant.

David Levin Q.C.
Sole Panelist

Date: December 18, 2007

¹ In paragraph [12] of its Complaint the Complainant actually states that the relevant names have been registered and used ‘by Complainant in bad faith’. I treat this as a typographical error; it is plain that the Complainant intends here to mean that the Respondent has registered and is using the domain names in bad faith.

Источник информации: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2007/d2007-1633.html

На правах рекламы: