The Complainant is Ultius, Inc. of Wilmington, Delaware, United States of America (“United States”), represented by Kuehn Law, United States.
The Respondents are Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States / Yaroslav Baklan of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed 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 April 6, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2018, 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 the Complainant on April 10, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 16, 2018.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 16, 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
The Complainant is a corporation registered in Delaware, United States. It is an online provider of academic writing and editing services.
The Complainant is the owner of trademark registrations for the word mark ULTIUS including United States trademark number 5338445, registered on November 21, 2017 in Classes 9, 35 and 42 for services including connecting consumers and contracted freelance writers, and facilitating the exchange of writing and editing services through an online interface.
The disputed domain name was registered on December 6, 2013.
The disputed domain name has resolved to a website at “www.” which is headed “RUSH MY ESSAY The best custom writing service” and which appears to offer essay writing services. 5. Parties’ Contentions A. Complainant
The Complainant states that it has used the coined name and mark ULTIUS since December 22, 2010 and provides evidence of its registration of the domain name on that date. It provides a timeline of its business activities since that date and a Google Analytics report evidencing activity at the website “www.” since at least 2012. The Complainant also provides evidence of promotional expenditure dating back to February 2012. The Complainant contends that, as a result of these matters, it has enjoyed unregistered or common law rights in the trademark ULTIUS since 2011.
The Complainant submits that the disputed domain names is identical or confusingly similar to its trademark ULTIUS and states that the generic Top-Level Domain (“gTLD”) “.org” should be ignored for the purposes of comparison.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its ULTIUS mark, that the Respondent has not commonly been known by that name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant submits that the Respondent is using the disputed domain name to impersonate the Complainant and to offer essay writing services in direct competition with the Complainant’s business.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant provides evidence that the Respondent registered the domain names and on the same date as the disputed domain name and contends that the Respondent must therefore have had the Complainant’s trademark in mind at the date the disputed domain name was registered. The Complainant says that its trademark ULTIUS in distinctive and does not correspond to any dictionary term, and that its website at “www.” was in operation prior to the Respondent’s registration of the disputed domain name. The Complainant submits that the Respondent is using the disputed domain name to impersonate the Complainant and to offer writing services in direct competition with the Complainant’s business, and adds that there is nothing on the Respondent’s website to indicate that it is not connected with the Complainant. The Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark (paragraph 4(b)(iv) of the Policy).
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Even in a case where no Response has been filed, it is still necessary for the Complainant to establish that each of the above elements is present. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark ULTIUS (it not being material for the purposes of comparison that this mark was registered after the date of registration of the disputed domain name). The disputed domain name is identical to the Complainant’s mark ULTIUS save for the gTLD “.org” which the Complainant rightly says is to be disregarded for the purposes of comparison. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration or use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Furthermore, the Complainant has submitted evidence, which the Respondent has not contradicted, that the Respondent has used the disputed domain name in order to impersonate the Complainant for the purpose of attracting business to its competing website. Such use would not give rise to any rights or legitimate interests and, having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Complainant’s mark ULTIUS is a coined term which the Complainant has used in connection with online essay writing services from at least 2012. Since the disputed domain name is identical to this coined term and has been used for the purpose of a website offering competing essay writing services, the Panel can only reasonably infer that the Respondent must have been aware of the Complainant’s trademark ULTIUS at the date it registered the disputed domain name and did so in order to take unfair advantage of the goodwill attaching to that mark. The Panel further finds on the evidence that the Respondent has used the disputed domain name to impersonate the Complainant, and that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website (paragraph 4(b)(iv) of the Policy). The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith. 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 , be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: May 17, 2018
Full & Egal Universal Law Academy