ASSSA.com is a twenty year old domain, that is also a palindrome: It reads the same from left to right and right to left.
Registered in 2001, this domain was the subject of a UDRP filed by a Spanish company, Agrupación Sanitaria Seguros S.A.
There is no doubt that the acronym of the Complainant’s company name spells like the domain, but is this enough in order to usurp a domain via the UDRP process?
The Complainant is the owner of the Spanish Trademark No. 2552246 ASSSA SEGUROS SANITARIOS, mixed, registered on April 15, 2004, in class 36. It’s clear that the domain’s registration predates that of the trademark registration, so what went wrong?
Apparently, ASSSA.com is parked with a zero click lander, that appears to hijack the visitor’s session to random destinations, some of which can be seedy or even dangerous.
Just how bad can that content be? According to the UDRP’s details:
“The domain name in dispute has never been used in good faith, but has remained inactive, offering its sale, and, at specific times since its registration, has been used to damage the image of the Claimant, linking it to web pages with erotic content. “
One can imagine that the “ASS” part of ASSSA can trigger the display of some pretty eye-popping content.
There was no response from the Respondent. Final decision: transfer the domain name ASSSA.com to the Complainant. Details in English follow, translated by Google from the Spanish original:
WIPO Arbitration and Mediation Center
DECISION OF THE ADMINISTRATIVE PANEL
Agrupación Sanitaria Seguros SA c. Eager Biz SL
Case No. D2020-30591. The Parties
The Claimant is Agrupación Sanitaria Seguros SA, Spain, represented internally.
The Respondent is Eager Biz SL, Spain.
2. The Domain Name and the Registrar
The Lawsuit concerns the disputed domain name <asssa.com>.
The Registrar of said domain name is GoDaddy Online Services Cayman Islands Ltd (“the Registrar Agent”).
3. Procedural Iter
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 17, 2020, the Center sent the Registrar Agent by email a request for registration verification in relation to the domain name in dispute. On November 18, 2020, the Registrar Agent sent the Center, by email, its response confirming that the Respondent is the person listed as the registrant, in turn providing the contact details of the administrative, technical and billing contact.
The Center verified that the Complaint met the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Regulation of the Uniform Domain Name Dispute Resolution Policy (the “Policy”). Regulation “), and the Additional Regulation of the uniform Policy for the resolution of controversies in matters of domain names (the” Additional Regulation “).
The Center sent a communication to the Parties on December 3, 2020 in relation to the language of the proceedings while the Complaint had been filed in Spanish while the language of the registry agreement was English. The Claimant submitted a request for the language of the proceedings to be Spanish on December 3, 2020. The Respondent did not submit any communication regarding the language of the proceedings.
In accordance with paragraphs 2 and 4 of the Rules, the Center formally notified the Complaint to the Respondent, commencing the proceedings on January 13, 2021. In accordance with paragraph 5 of the Rules, the deadline for answering the Complaint was set to on February 2, 2021. On February 4, 2021, the Center received an electronic communication from the Respondent indicating that due to the health situation it had not been able to reply to the Complaint but that it could do so within 5 days. The Respondent did not formally reply to the Complaint. Consequently, on February 12, 2021, the Center notified the Respondent that it would proceed with the Appointment of the Expert.
The Center appointed Reyes Campello Estebaranz as the sole member of the Administrative Group of Experts on February 19, 2021. The Expert considers that his appointment is in accordance with the rules of procedure. The Expert has presented the Declaration of Acceptance and of Impartiality and Independence, as requested by the Center in accordance with paragraph 7 of the Regulations.
4. Factual Background
The Claimant is a Spanish company, founded in 1935 and registered in the Official Registry of Insurance Entities of the Spanish General Directorate of Insurance and Pension Funds, which operates in the insurance sector, carrying out and marketing health insurance, including the branches of accidents, illness, health care and dependency. The Claimant operates under the ASSSA brand, which coincides with the acronym of its corporate name.
The Claimant is the owner of the Spanish Trademark No. 2552246 ASSSA SEGUROS SANITARIOS, mixed, registered on April 15, 2004, in class 36, (hereinafter the “ASSSA trademark”).
The Claimant is also the owner of several domain names that correspond to the ASSSA brand, related to its corporate website, including <asssa.es> (registered on September 17, 2002), <asssaseguros.es> (registered on September 15, 2002). January 2020), <asssa.org> (registered on January 15, 2020), <asssaseguros.com> (registered on January 15, 2020), <asssaseguros.net> (registered on January 15, 2020) and <asssaseguros.org> (registered on January 15, 2020).
The disputed domain name was registered on May 31, 2001 and is linked to a web page that includes promotional links to various third-party web pages (“PPC”) within the health insurance sector, including links to competing companies of the Claimant. The same page linked to the domain name in dispute includes in its heading a legend in English that offers its possible acquisition including a link to the Respondent’s website (www.eagerbiz.com), which identifies itself as a company dedicated to the transfer of domain names, indicating that the domain name in dispute is reserved. According to the Claimant, the domain name in dispute has also been linked to a web page with erotic content.
5. Arguments of the Parties
A. Claimant
The Claimant maintains in the Complaint:
The domain name in dispute is identical to the point of creating confusion regarding the trademark and trade name used by the Claimant, without the generic top-level domain (“gTLDs”) “.com” contributing character distinctive or avoid confusion.
The Respondent has no rights or legitimate interests regarding the domain name in dispute, as there is no evidence that it is commonly known by the term “asssa”, it does not use, it has not used in the past, nor are there any indications that it will use in the future, the disputed domain name in connection with a good faith offer of products or services. The Respondent takes advantage of the confusion generated by the disputed domain name with the ASSSA brand, to attract Internet users to the website for the sale of domain names that constitutes the Respondent’s activity, and has a speculative intention regarding the domain name in dispute, as evidenced by its offer to sell to the Claimant on February 6, 2020, for a price much higher than its renewal.A copy of the correspondence between the parties regarding this offer of sale is provided.
The disputed domain name has been registered and is being used in bad faith. The domain name in dispute has never been used in good faith, but has remained inactive, offering its sale, and, at specific times since its registration, has been used to damage the image of the Claimant, linking it to web pages with erotic content. In 2015, the Claimant warned the Respondent of this circumstance, without the latter having proceeded to use the disputed domain name in good faith, proceeding with its successive renewals despite keeping it inactive. The Respondent acts in bad faith by pursuing an economic benefit at the expense of the prestige and notoriety of the ASSSA trademark and preventing the Claimant from holding the trademark it owns as a domain name.
The Claimant requests the transfer of the disputed domain name.
B. Respondent
The Respondent has not replied to the Claimant’s allegations.
6. Discussion and conclusions
The Claimant has made the relevant allegations required by the Policy and the dispute is within the scope of the Policy. The Expert has the authority to decide the dispute by examining the three elements established in paragraph 4 (a) of the Policy, taking into consideration all relevant evidence, the material provided and the allegations of the Parties, conducting a limited independent investigation under the powers General of the Expert, articulated, inter alia , in paragraph 10 of the Regulations.
A. Language of the proceedings
Under paragraph 11 (a) of the Regulation, the Expert determines that the language of the procedure is Spanish, in view of the circumstances of the case and to guarantee the speed of the process, given that both parties are companies domiciled in Spain, it has been maintained Correspondence between the parties in Spanish and the Respondent has not objected to the Claimant’s request that the proceeding be conducted in Spanish.
B. Identity or similarity to the point of causing confusion
Regarding the analysis of the concurrence of the first budget or element of the Policy, it is important to note that in cases in which the relevant brand is fully incorporated or at least one preponderant element of it is recognizable in the domain name, it is usually considers that the domain name is identical or confusingly similar to said relevant brand, for the purposes of the Policy. It has also been noted that the gTLD, due to its technical nature, generally lacks relevance in the analysis of the first element, and is not normally taken into account when analyzing the concurrence of the first element of the Policy. See in this regard sections 1.7 , 1.8 and 1.11 of the Synopsis prepared by WIPO 3.0 .
In relation to this point, it is appropriate to specify that the Policy covers both registered and unregistered trademarks, being indifferent, for the purposes of the analysis of the first element, if the acquisition of trademark rights by the Claimant took place previously. or after the registration of the domain name in dispute. See in this regard section 1.1 of the Synopsis prepared by WIPO 3.0 .
The Expert considers that the Claimant holds rights over the ASSSA trademark for the purposes of the Policy, both as a result of its trademark registration, and through the continued use of this trademark in the national market for a long period of time, for more than 85 years (since 1935).
The distinctive coincident with the acronym of the Claimant’s company name, used as a trademark to identify itself in the market, market its insurance products and disseminate its services for more than 85 years, is reproduced identically and in full in the domain name in dispute, the ASSSA brand being directly recognizable in the disputed domain name. The domain name in dispute only adds the gTLD “.com”, which due to its technical nature is generally irrelevant in the analysis of the first budget of the Policy.
Therefore, in light of the circumstances of the case, the Expert considers that the domain name in dispute is confusingly similar to the Claimant’s trademark, meeting the first requirement required by paragraph 4 (a) (i) of the Policy.
C. Legitimate rights or interests
The analysis of whether the Respondent has legitimate rights or interests over the disputed domain name must be based on the allegations and evidence presented by both parties, with the Claimant being the one who has the burden of proving that the Respondent lacks legitimate rights or interests. . However, given the difficulty of this negative proof, it constitutes a consolidated principle in relation to the proof of this requirement, that it is enough for the Claimant to prove prima facie the inexistence of legitimate rights or interests, since the Respondent will have the opportunity to prove otherwise with the relevant evidence. This has been indicated by numerous decisions adopted within the framework of the Policy. See in this regard section 2.1 of theSynopsis produced by WIPO 3.0 .
In the present case, the evidence presented by the Claimant proves prima facie the absence of rights or legitimate interests on the domain name in dispute by the Respondent, since it is not commonly known by the term in which the name of Domain in dispute, it is not authorized to use nor does it hold any rights in relation to the ASSSA brand, it has not used or appears to have made preparations for the use of the domain name in relation to a good faith offer of products or services.
The Respondent has not replied to the Complaint, not having made any allegations or provided any evidence to refute the allegations and prima facie evidence presented by the Claimant.
The Expert notes that the name of the disputed domain name (“asssa”) is not included in the dictionary, but rather is the acronym related to the Claimant’s business name.
In order to understand that the owner of a domain name composed of an acronym may have legitimate rights or interests regarding it, the circumstances and evidence of the case must support that the registration and any use of the aforementioned domain name has occurred in a manner legitimate and independent, which does not capitalize on the plaintiff’s trademark rights. See in this regard section 2.10 of the Synopsis prepared by WIPO 3.0 .
The Expert notes that the Respondent is a company that operates in the market for the sale of domain names, with a portfolio of domain names (more than 2000), which it classifies on its corporate website in various categories, basically related to their language (Spanish or “other languages”), their composition (“3-letter” or “4-letter”), or relative to the area to which they refer according to the genuine meaning in the dictionary of the denominations that compose them (from “Travel and tourism”, “sports”, “places”, “games”, “technology”, “countries”, “business”, etc.). The Expert, within the general powers conferred by the Regulations, has consulted the Respondent’s corporate website (www.eagerbiz.com).
While the above decisions under the Policy do not have the status of precedent, similar cases are generally decided in a similar manner and it is commonly accepted that in the absence of factors to the contrary in a particular dispute, domain name trading is an activity. legitimate that has grown into a substantial market over the years. The acquisition and offer for the sale of a domain name in particular ceases to be considered in good faith in the event that, from the evidence carried by the plaintiff and other circumstances of the case, it appears that the plaintiff and its brand have been specific objective of the defendant, which would be a matter of bad faith.
Therefore, the Expert will proceed to determine if he considers that the domain name in dispute has been registered and used in bad faith, examining the second element or requirement together with the third element of the Policy.
D. Registration and use of the domain name in bad faith
The third requirement that must be met in order to estimate the Claim in accordance with paragraph 4 (a) of the Policy is that the domain name in dispute has been registered and is being used in bad faith.
The applicable standard of proof in relation to this third element or requirement of the Policy is the “balance of probabilities” or “preponderance of the evidence”, the Expert being prepared to draw certain inferences in light of the facts and particular circumstances of the case. concrete. See sections 3.3 and 4.2 of the WIPO Synopsis 3.0 .
The Expert has been able to verify, making use of the powers conferred by the Policy, through Internet searches and an analysis of the content of the Claimant’s corporate website (linked to the domain name <asssa.es>), that, although The Claimant registered its trademark on a date after the registration of the disputed domain name, it has used the ASSSA trademark much earlier, developing its activity in Spain for more than 85 years, under the trademark formed by the acronym of its corporate name .
The Expert considers that given the Claimant’s long history and the restricted nature of the market in which it operates, as an insurance company subject to regulations and special advertising, where only a small number of companies operate, the ASSSA brand enjoys a certain notoriety in the Spanish national insurance market.
A relevant factor to assess is also the complete identity between the acronym of the Claimant’s corporate name, used as a trademark to identify itself in the market, and the name of the disputed domain name.
The Expert also observes that the Claimant operates and has branches, as indicated on its corporate website, among other Spanish cities, in the same locality where the Respondent is domiciled according to the domain name registration data in dispute, Las Palmas de Gran Canaria.
The Expert also notes that, despite the fact that the Respondent operates within the domain name transfer sector, counting, as indicated, with a certain portfolio that includes domain names related to various categories whose sale it offers on its website. corporate domain name, the disputed domain name is not included in the stockthat appears on the Respondent’s website, nor does it respond to any of the aforementioned categories. The Expert has carried out a search on the Respondent’s website, without obtaining any reference to the domain name in dispute. Furthermore, the Expert observes that no category of domain names relating to 5-letter names, such as the disputed domain name, is included on the Respondent’s website, but only categories relating to 3 or 4 letters. It is not stated on the Respondent’s website that it has proceeded, within its commercial activity related to domain names, to the registration of any other domain names related to acronyms composed of 5 letters.
The Expert also notes that the domain name in dispute is associated with a web page that includes promotional PPC links to third party pages within the same sector in which the Claimant operates, including promotional links to web pages of competing companies of the Claimant within the health insurance sector.
The Expert also considers it noteworthy that, as established by the Claimant, the content of the website linked to the domain name in dispute (including promotional links to the websites of third-party companies competing with the Claimant operating in the same insurance sector ), was not modified despite Claimant’s request in 2015.
The Respondent’s attitude towards this procedure is also noteworthy, not having answered the allegations and evidence presented by the Claimant in relation to the registration and use of the domain name in dispute in bad faith, nor alleging any type of right or legitimate interests about it.
The Expert has also been able to verify that the Respondent has been involved in other previous proceedings under the Policy, relating to other domain names that were transferred to the plaintiffs 1 . Although these previous decisions are not applicable or extrapolated to the case at hand, they can be one more circumstance to assess, which may point to the Respondent’s bad faith on a balance of probabilities.
All these circumstances show, in the Expert’s opinion, that in the balance of probabilities it is probable that the Respondent knew of the existence of the Claimant’s trademark, proceeding to register and use the disputed domain name in bad faith, pointing to the trademark. ASSSA, trying to take advantage of the notoriety of this brand within the health insurance sector to increase the traffic of its website with PPC promotional links related to this same sector, and also trying to obtain an economic profit derived from the sale of the name domain in dispute, to the Claimant or one of its competitors, for a price much higher than its registration costs. Furthermore, given the identity of the disputed domain name with the Claimant’s brand,the registration and use by the Respondent of the disputed domain name hinders the Claimant’s business activity, as well as the possible registration of its trademark as a domain name.
Thus, despite being the trade in domain names, an activity, in itself, qualifiable as legitimate, the circumstances of the specific case reveal, in the opinion of the Expert, on a balance of probabilities, that the Claimant and its brand ASSSA have been the specific target of the Respondent. Therefore, in short, all the cumulative circumstances of the case allow, in the Expert’s opinion, to conclude that the Respondent does not have rights or legitimate interests in the domain name in dispute and has acted in bad faith for the purposes of the Policy. Regarding the same, considering the second and third requirements required by paragraphs 4 (a) (ii) and (iii) of the Policy have been met.
7. Decision
For the reasons stated, in accordance with paragraphs 4.i) of the Policy and 15 of the Regulations, the Expert orders that the domain name in dispute <asssa.com> be transferred to the Claimant.
Reyes Campello Estebaranz
Unique Expert
Date: February 25, 20211 See COBEGA, SA v. EAGERBIZ, SL ., WIPO Case No. D2003-0375 and the Construction Labor Foundation of the Principality of Asturias v. Eagerbiz SL, WIPO Case No. D2005-0519 .
