Complainant is Ultius, Inc. of Wilmington, Delaware, United States of America, represented by Kuehn Law, United States of America.
Respondent is Janis Payton of Albuquerque, New Mexico, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2018. On February 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 February 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 9, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 14, 2018. 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 offers mobile application software for connecting consumers with freelance writers, as well as the exchange of writing and editing services for consumers. Complainant has been using the mark ULTIUS since at least 2011 to identify and distinguish such services.
Complainant registered the mark ULTIUS with the United States Patent and Trademark Office on November 21, 2017 under Registration No. 5,338,445, with a date of first use of December 22, 2010. Since December 2011, Complainant has owned the domain name and has used it for a website offering its ULTIUS writing and editing services.
The Domain Name was registered on November 2, 2016. The Domain Name resolves to a commercial website offering essay writing and editing services. 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark ULTIUS through registration and use, including several years of use prior to the registration of the Domain Name. The Domain Name is identical to the ULTIUS mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making 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.
The Panel concludes on this record that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to identify and explain its bona fides, if any, with respect to the Domain Name. Complainant has alleged that it has never authorized Respondent to use its inherently distinctive ULTIUS mark in a domain name or otherwise. The use to which Respondent is putting the Domain Name does not reflect any legitimate activity or motive; on the contrary, it appears rather clear that Respondent is seeking to pass itself off as Complainant in order to lure unwitting consumers seeking Complainant’s services.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv), quoted above.
The record contains sufficient evidence that Complainant had acquired common law trademark rights in the ULTIUS mark through continuous use since 2011. Given the fact that ULTIUS is a coined term and hence a fanciful trademark, the overlapping services offered by Complainant and Respondent, and Respondent’s failure to deny knowledge of the ULTIUS mark, it appears far more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name. Respondent is clearly operating a commercial website via the Domain Name, and is selling services very similar to those offered by Complainant under the distinctive ULTIUS mark. The Panel concludes that Respondent is seeking to attract consumers via confusion between Complainant’s mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: March 15, 2018
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