The Complainant is Ultramatics, Inc. of Oldsmar, Florida, United States of America, internally represented.
The Respondent is Amit De, IFreakz of Kolkata, West Bengal, India. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2011. On February 16, 2011, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On February 17, 2011, N LLC transmitted by email to the Center its response, stating that the registrant is Amit De, IFreakz and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 19, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2011. The Response was filed with the Center on March 18, 2011.
The Center appointed Joan Clark as the sole panelist in this matter on March 30, 2011. 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 asserts ownership of the trademark ULTRAMATICS registered in the United States Patent and Trademark Office on July 8, 2003 for which a copy of the certificate of registration has been produced. The Complainant has also produced copy of the certificate of registration of the mark ULTRAMATICS and design registered on the Trademarks Registry of India on February 23, 2005, in the name of Ultramatics India Private Ltd. The Complainant relies upon use of the trademark ULTRAMATICS in the State of Florida since 2001.
The disputed domain name was registered on September 17, 2009 and is scheduled to expire on September 17, 2011. 5. Parties’ Contentions A. Complainant
The Complainant states it has been engaged in the business of Information Technology Services under the name and style of Ultramatics and is the owner of the trademark ULTRAMATICS. The Complainant was incorporated in Florida on January 19, 2001. It states it has been providing service to its customers across various geographical areas. Its corporate headquarters and regional office are in Florida, United States.
The Complainant also states that it has been providing service as aforesaid to its customers in the United States and the European Union, and that it has a training and development center in India at Chennai and New Delhi. The Complainant maintains that its ULTRAMATICS marks have become famous throughout the world as a result of the Complainant’s longstanding and prominent use of its trademarks in connection with the software industry.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Complainant maintains that the disputed domain name and the services the Respondent offers seem to be implemented and marketed as a knock-off of the Complainant’s services, legacy and market presence.
The Complainant asserts that the Respondent’s use of the ULTRAMATICS mark in the disputed domain name diverts or routes Internet user traffic to the Respondent’s website by leading users to believe that the website is somehow related to or sponsored by the Complainant, which results in initial interest confusion as well as a likelihood of confusion on the part of Internet users. The Complainant argues that the service offered by the Respondent is somewhat similar to that of the Complainant, adding to the confusion.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name which he registered 8 years after the Complainant’s ULTRAMATICS marks achieved worldwide consumer recognition and after the Complainant registered its ULTRAMATICS marks; that there is no relationship between the Respondent and the Complainant and that the Respondent is not licensed by the Complainant nor otherwise authorized to use the Complainant’s trademarks; further that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain and finally that the Respondent clearly has no rights or legitimate interests in respect to the disputed domain name.
The Complainant further maintains that the disputed domain name was registered and is being used in bad faith. The Complainant relies upon the fame of its ULTRAMATICS mark combined with the confusing similarity between its mark and the disputed domain name as well as the fact that the Respondent is located in Kolkata, India and the Complainant has a training and development center in Chennai and New Delhi, India, leading to the presumption that the Respondent had knowledge of the Complainant’s rights when he registered the disputed domain name. The Complainant continues that the Respondent has intentionally misused the term “ultramatics” in the disputed domain name for the Respondent’s commercial gain from which may be deduced that the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant concludes by requesting that the Respondent be restrained from using the disputed domain name and that it be transferred to the Complainant. B. Respondent
On February 18, 2011 the Respondent forwarded a short letter to Protected Domain Services in whose name the disputed domain name was originally held to conceal the identity of the real registrant. In this short communication the Respondent, identifying himself as “Amit”, enquires as to the exact reason for the dispute and states he is not anyhow related to the Complainant Ultramatics, Inc. He further states that he “named his website Ultramatics Solutions” and he “never mention[ed] the word Ultramatics nor Ultramatics Inc.”
A formal Response was filed by the Respondent dated March 18, 2011.
In his Response the Respondent denies all the averments and allegations contained in the Complaint except to the extent expressly admitted in the Response. He even denies that the Complainant holds the trademark ULTRAMATICS and says he is not personally aware of any services offered by the Complainant.
The Respondent maintains he is conducting his business in an entirely different sphere, and is involved in only PHP based web development, programming and also one of the main spheres of his work involves android based mobile application – which areas of work he says are not even remotely connected with the sphere of the work claimed by the Complainant.
The Respondent relies upon the fact that he is working under the name and style “Ultramatics Solutions” with a different logo and a different website layout and design which are in no way identical to the design and logo and trademark of the Complainant.
The Respondent claims it is false to state that he has leveraged Search Engine Optimization to take away main traffic from the Complainant’s website. He notes that a mere search in Google will indicate that the Respondent’s website cannot be found in the top 10 pages of search results if one searches the word “Ultramatics“, and that even if one searches for the Respondent’s operations “Ultramatics Solutions”, only the results for the Complainant’s company are shown. The Respondent concludes that his operations and organizations are not optimized for Google or other search engines. He also claims this proves that he is catering to clients who seek work from the Respondent on a referral basis.
As to rights or legitimate interests in respect of the disputed domain name, the Respondent says he is known for his services under the brand name and style “Ultramatics Solutions”, that he has been doing work under the said name and is known to all his clients and the world at large under the said name.
Finally the Respondent states that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, that it was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, that the Complainant and the Respondent are not competitors and that the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to the disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s trademark ULTRAMATICS. As has been held in numerous UDRP decisions, the addition of a TLD suffix such as “.net“ does not detract from the finding that a domain name is identical to a trademark, for the purposes of the Policy.
The Panel is satisfied that the Complainant has rights in the trademark ULTRAMATICS, registered in the United States Patent and Trademark Office on July 8, 2003.
Therefore the first element required for the Complaint to succeed has been established. B. Rights or Legitimate Interests
The burden of proof in a domain name dispute is upon the complainant, but once the complainant has established a prima facie case that the respondent lacks rights or legitimate interests, the respondent carries the burden to show it has such rights or legitimate interests especially when the facts to rebut this knowledge, if existing, are particularly within the respondent’s knowledge.
The Respondent chose for his domain name the word “ultramatics”, which is a coined word. No explanation has been given by the Respondent for this choice. The Respondent claims he has been or is commonly known by the name “Ultramatics Solutions”, but provides no proof or examples of this. The Respondent states further the Respondent herein is working under the name and style “Ultramatics Solutions” which in itself is entirely different from the trademark and the name of the Complainant which is known as “Ultramatics”. It is clear that the Respondent seeks to differentiate his use of the name and style “Ultramatics Solutions” from the Complainant’s trademark by the appearance of the word “solutions”, yet that word is not part of the disputed domain name. Using the Respondent’s own reasoning, his alleged use of the name “Ultramatics Solutions” does not constitute a use of “Ultramatics” alone in his domain name, and gives no clue as to why the Respondent selected the disputed domain name .
As the Respondent claims that he works under the name and style “Ultramatics Solutions”, and not “Ultramatics” alone, there is no evidence that the Respondent has used a name corresponding to the disputed domain name, i.e., , in connection with a bona fide offering of goods or services, and no evidence that he has made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element required for the Complaint to succeed has been established. C. Registered and Used in Bad Faith
The Complainant had been using its trademark ULTRAMATICS for some eight years before the Respondent registered the disputed domain name. Moreover, the Complainant had established in India a training and development center, and it is unlikely that the Respondent was unaware of these activities. The Respondent has produced Google printouts showing the data that appear when one enters the word “ultramatics“ or the words “ultramatics solutions“. Almost all the data produced show or relate to the Complainant Ultramatics, Inc. and none to the Respondent. Since the Respondent has chosen to produce these Google reports in support of his Response, one may assume that he would have been able to produce them, had he wished to do so, when he chose his domain name. Moreover, paragraph 2 of the Policy provides “by applying to register a domain name … you hereby represent and warrant to us that … (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party … (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”.
Before registering the disputed domain name, the Respondent should have checked to verify that he would not be infringing someone else’s rights. It is to be noted that the Respondent never denied knowledge of the existence of the Complainant’s trademark, although he did state categorically, without explanation, that the Complainant had no rights in the trademark ULTRAMATICS.
The Panel concludes that in view of the registration and use over eight years of the Complainant’s trademark and its use in India where the Respondent is located, coupled with the Respondent’s not denying his knowledge of the Complainant’s trademark and not providing any explanation for the choice of the disputed domain name, in the Panel’s view, it must be assumed that the Respondent adopted the disputed domain name knowingly.
The Panel finds that whatever use the Respondent may have made of the disputed domain name was not in good faith.
The Panel notes in the excerpts from the Google inquiries made by the Respondent that the Complainant’s use of its corporate name and its trademark is frequently in association with the word “solutions”, which the Respondent has also adopted and used along with the disputed domain name, a further indication of his being “inspired” by the Complainant’s trademark and advertising.
For the reasons set forth above the Panel finds that the disputed domain name was not registered and has not been used in good faith. Even though the Respondent claims he is not attempting to lure clients of the Complainant, or to rely upon Google to advertise his wares, and even though he asserts he is relying instead upon word of mouth to spread his reputation, in the Panel’s view, the fact remains he must have known that the existence of the identical domain name is likely to cause confusion among Internet users. The Respondent’s insistence upon his use of “solutions” in conjunction with “ultramatics”, as though this would differentiate the disputed domain name from the Complainant’s trademark, only aggravates the situation since the Complainant uses the word “solutions“ throughout on its website as evidenced in the Google printout.
The third element for the Complaint to succeed has been established. 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 the domain name be transferred to the Complainant.
Joan Clark
Sole Panelist
Dated: April 13, 2011
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