WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Assurant, Inc. v. Abdelhak Akayour

Case No. D2019-0404

1. The Parties

Complainant is Assurant, Inc. of Woodbury, Minnesota, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

Respondent is Abdelhak Akayour of Brighton, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <protectyourbubble.info> is registered on with 1&1 IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2019, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on February 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to Complaint. Complainant filed an amendment to the Complaint on February 26, 2019.

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 Respondent of the Complaint, and the proceedings commenced on March 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2019.

The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on April 12, 2019. 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

Complainant traces its roots back to 1892, and is a global provider of risk management solutions, protecting where consumers live and the goods they buy. Complainant focuses on the housing and lifestyle markets, and is among the market leaders in mobile device protection and related services. Complainant employs more than 14,000 people and has a market presence in 21 countries. Complainant is the registrant of the domain name <protectyourbubble.com>, which was registered on May 27, 2008, and which it uses in connection with a website for services associated with its PROTECT YOUR BUBBLE Trademark (defined below), including ”Gadget Insurance” and “Jewellery Insurance”.

Complainant is the owner of the following trademark registrations that consists of or contains the mark BUBBLE or PROTECT YOUR BUBBLE (the “PROTECT YOUR BUBBLE Trademark”):

- United States trademark registration no. 4,404,848 for PROTECT YOUR BUBBLE, first used in commerce on October 8, 2008, registered on September 17, 2013, for use in connection with, inter alia, insurance underwriting services;

- United States trademark registration no. 4,404,847 for PROTECTYOURBUBBLE.COM, first used in commerce on October 8, 2008; registered on September 17, 2013, for use in connection with, inter alia, insurance underwriting services;

- United States trademark registration no. 4,405,898 for MYBUBBLE, first used in commerce on March 6, 2012; registered on September 24, 2013, for use in connection with, inter alia, insurance underwriting services;

- United Kingdom trade mark registration no. 2,504,390 for PROTECTYOURBUBBLE.COM, filed on December 8, 2008; registered on April 24, 2009, for use in connection with, inter alia, insurance underwriting services;

- European Union trade mark registration no. 1,066,747 for PROTECT YOUR BUBBLE, registered on January 13, 2011, for use in connection with, inter alia, insurance underwriting services;

- European Union trade mark registration no. 10,477,545 for BUBBLE, filed on December 8, 2011; registered on May 11, 2012, for use in connection with, inter alia, insurance underwriting services;

- European Union trade mark registration no. 11,302,866 for MYBUBBLE, filed on October 29, 2012; registered on March 27, 2013, for use in connection with, inter alia, insurance underwriting services;

The disputed domain name was registered on October 4, 2017, nine years after Complainant began using the PROTECT YOUR BUBBLE Trademark.

The disputed domain name diverts to a website that offers services directly competitive with the services offered by Complainant under the PROTECT YOUR BUBBLE Trademark.

5. Parties’ Contentions

A. Complainant

Complainant first argues that the disputed domain name is confusingly similar to the PROTECT YOUR BUBBLE Trademark. The relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., “protectyourbubble”, as it is well-established that the Top-Level Domain (“TLD”) may be disregarded for this purpose. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. Here, the PROTECT YOUR BUBBLE Trademark is clearly recognizable in the disputed domain name.

Complainant affirms that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the PROTECT YOUR BUBBLE Trademark in any manner. Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent is using the disputed domain name in connection with a website that purports to offer insurance services in direct competition with Complainant, effectively impersonating Complainant. Such use of the disputed domain name is not a bona fide offering of goods or services under the Policy.

Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. In addition, given Complainant’s use of the PROTECT YOUR BUBBLE Trademark for many years and Complainant’s numerous trademark registrations for the PROTECT YOUR BUBBLE Trademark, it is practically impossible that Respondent is commonly known by this trademark.

Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. Respondent is using the disputed domain name in connection with a website that, by offering services competitive with those offered by Complainant, appears to be a website for Complainant and, in effect, fraudulently impersonates Complainant. Such use clearly is for commercial gain and therefore not “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent is using the disputed domain name, without permission or consent of Complainant, in connection with a website that falsely appears to be associated with Complainant (given the similarity of services offered, as described and shown above) and offers competitive insurance services in competition with Complainant. By offering these services under Complainant’s trademark, Respondent is clearly disrupting Complainant’s business.

Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the PROTECT YOUR BUBBLE Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent’s website.

In light of this long history of Complainant’s trademarks and Complainant’s significant international presence and brand recognition, it is likely that Respondent knew of Complainant's mark, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

- Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Where Complainant holds nationally and regionally registered service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. Complainant proved that it has rights in the PROTECT YOUR BUBBLE Trademark based on different trademark registrations.

The disputed domain name is confusingly similar to the PROTECT YOUR BUBBLE Trademark. The relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., “protectyourbubble”), as it is well-established that the TLD (i.e., “info”) may be disregarded for this purpose, in these circumstances. In cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The disputed domain name is virtually identical to four of the registrations for the PROTECT YOUR BUBBLE Trademark (United States Reg. No. 4,404,848; United States Reg. No. 4,404,847; United Kingdom Reg. No. 2,504,390; and European Union Reg. No. 1,066,747), and it contains the dominant portion (“BUBBLE”) of all of the registrations for the PROTECT YOUR BUBBLE Trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained their burden under the second element of the UDRP.

Complainant has no relationship whatsoever with Respondent and has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the PROTECT YOUR BUBBLE Trademark in any manner. Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Respondent is using the disputed domain name in connection with a website that purports to offer insurance services in direct competition with Complainant. Such use of the disputed domain name is not a bona fide offering of goods or services under the Policy.

Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. The Panel is of opinion that the Complainant made out prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

The disputed domain name was registered long after Complainant first registered its PROTECT YOUR BUBBLE Trademark. As noted above, Respondent is using the disputed domain name, without permission or consent of Complainant, in connection with a website that falsely appears to be associated with Complainant (as Respondent offers insurance services in competition with Complainant), Respondent intentionally uses the disputed domain name aiming to profit from Complainant’s renowned trademark by attracting Internet users. The confusion created by the disputed domain name encourages potential customers to choose other services than Complainant’s, thus disrupting Complainant’s business.

The evidence on the record provide by Complainant with respect to the extent of use of its PROTECT YOUR BUBBLE Trademark, combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, Respondent most likely knew of Complainant’s PROTECT YOUR BUBBLE trademark, and knew that it had no rights or legitimate interests in the disputed domain name.

Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor and therefore in bad faith.

The evidence on the record provided by Complainant with respect to Respondent’s use of the disputed domain name, that incorporates in its entirety the well-known and well-established PROTECT YOUR BUBBLE Trademark, indicates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the PROTECT YOUR BUBBLE Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a service on Respondent’s website. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of Respondent.

For all these reasons, the Panel is satisfied that the disputed domain name is being used in bad faith.

The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.

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 <protectyourbubble.info> be transferred to Complainant.

Richard C.K. van Oerle
Sole Panelist
Date: April 24, 2019