The Complainant is UL LLC, United States of America (“United States”), represented by S.S. Rana & Co., Advocates, India.
The Respondent is Mr. Muthu, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2020. The Center appointed Adam Taylor as the sole panelist in this matter on June 30, 2020. 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 Since the 1930’s, the Complainant and its predecessors have provided safety testing and certification services using the marks UNDERWRITERS LABORATORIES and UL. The Complainant currently operates 170 facilities worldwide, with over 14,000 employees in some 143 countries. The Complainant has operated a website at “www.ul.com” since 1994. The Complainant’s group has provided services in India since 1997. The Complainant owns a number of trade marks for UL including international trade mark no. 1162825, registered on December 20, 2012, in classes 9, 16, 35, 38, 39, 41, and 42. The Complainant uses a number of slogans incorporating the term “trust”, including “Empowering Trust”, “The World Runs on Trust”, and “UL Trust Talks”. The disputed domain name was registered on August 31, 2006. On April 24, 2017, and May 17, 2017, the Complainant sent legal letters addressed to a company called UL Trust Solutions (India) Pvt Ltd (“the Company”) and a Mr Muthuramalingam1 , described as “Director”, objecting to registration and use of the disputed domain name as well as to an application by the Company for an Indian trade mark for ULTRUST ULTIMATE RESOURCE RECOVERY (“the Application”). The letter included a screenshot of a website at the disputed domain name which was branded “ULTrust / Ultimate Resource Recovery” and which offered “Electronic Scrap Recycling” services. On May 25, 2017, the Company replied, stating that it had been incorporated in 2002 and had traded under the name “Ultrust” in connection with chemicals used in waste management since then. The Company said that it had changed its name in 2016 but was continuing to use the brand name “Ultrust”. The Complainant replied to that letter on June 14, 2017, rejecting the Company’s assertions. On August 18, 2017, the Complainant filed an opposition against the Application. On March 8, 2018, the Application was deemed abandoned owing to the failure of the Company to file a counter-statement. The disputed domain name is not currently in use as a website. 5. Parties’ Contentions A. Complainant A summary of the Complainant’s contentions is as follows: The Complainant spends millions of dollars each year promoting its marks. The Complainant’s UL marks are distinctive and famous in India and worldwide. The disputed domain name is identical or confusingly similar to the Complainant’s trade mark. It wholly incorporates the Complainant’s UL mark, which predates the disputed domain name by some 70 years. Incorporation of the word “trust” makes the disputed domain name conceptually similar to the Complainant’s marks given the Complainant’s use of the term “trust” in its slogans. In any event, the additional terms in the disputed domain name are insufficient to negate confusing similarity. The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has not authorised the Respondent to use its marks. The Respondent is not commonly known by the disputed domain name or as “UL Trust Solutions”. The Respondent does not possess any registered trade marks corresponding to the disputed domain name and did not contest the Complainant’s opposition to the Application. The Respondent is not presently making any bona fide use of the disputed domain name. It chose the disputed domain name to create a false association with the Complainant, exacerbated by the fact that the Company is now trading under a different name. The Respondent is not making a legitimate, noncommercial fair use of the disputed domain name. The disputed domain name was registered and is being used in bad faith. In view of the Complainant’s worldwide reputation, including in India, the Respondent was or should have been aware of the Complainant’s marks long before registering the disputed domain name. The Respondent’s knowledge of the Complainant’s marks is evidenced by its use of the word “trust” in conjunction with the Complainant’s mark. The Respondent’s failure to defend the Complainant’s opposition to the Application is evidence that the Application was also filed in bad faith with knowledge of the Complainant’s marks. In light of their use for over 70 years, the Complainant’s marks have no meaning other than as an identifier of the Complainant, which the Respondent had no reason to adopt other than to create a false impression that the Respondent was associated with the Complainant. There is no other plausible explanation for the Respondent to incorporate the Complainant’s mark into the disputed domain name. As the Respondent is not currently using the disputed domain name, it constitutes a passive holding in bad faith and, in those circumstances, the Respondent’s refusal to voluntarily transfer the disputed domain name to the Complainant or to at least negotiate with the Complainant when given the opportunity to do so, further incriminates the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established rights in the mark UL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element. Here, the Complainant’s distinctive trade mark is recognisable within the disputed domain name and, accordingly, the addition of the descriptive terms “trust” and “solutions” are insufficient to avert a finding of confusing similarity. For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name. As to paragraph 4(c)(i) of the Policy, there is no evidence that the disputed domain name is currently being used for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. As explained in section 2.11 of WIPO Overview 3.0 , panels tend to assess rights or legitimate interests with a view to the circumstances prevailing at the time of the filing of the complaint. In any event, the Respondent has not come forward to invoke its past use of the disputed domain name in this context. Similarly, the Respondent could have appeared in this proceeding to argue that it has been commonly known by the disputed domain name for the purposes of paragraph 4(c)(ii) of the Policy and, for example, to explain the reason for the selection of the name of the Company and/or to demonstrate that this was not designed to capitalise on the fame of the Complainant’s marks. However, it has not done so. Nor is there any evidence that paragraph 4(c)(ii) of the Policy applies in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent. The Panel concludes that on balance the Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant has established a substantial and long-standing reputation in its UL mark as well as extensive use of that mark in connection with the word “trust”. In the Panel’s view, the Respondent’s adoption of the terms “UL” and “trust” as the main part of both Company name and the disputed domain name raises at least a serious question as to the Respondent’s bona fides, notwithstanding that the services formerly provided at a website at the disputed domain name do not appear to be directly related to those of the Complainant. As mentioned in section 6B above, it was open to the Respondent to come forward in this proceeding to explain and justify its registration and use of the disputed domain name (and Company name) and it is not inconceivable that the Respondent may have had a plausible explanation. However, for whatever reason, the Respondent has not filed a Response and, as explained in section 4.3 of WIPO Overview 3.0 , the Panel is entitled to draw a negative inference where an explanation by a respondent is called for but is not forthcoming. In those circumstances, the Panel concludes on the balance of probabilities that the Respondent registered and used the disputed domain name in bad faith. The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 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 Adam Taylor 1 The Panel assumes that this is the full name of the Respondent (Mr. Muthu). Given that the Complainant identifies the Respondent as a director of the Company and treats both interchangeably, the Panel hereinafter refers to both the Respondent and the Company as “the Respondent” except where it is necessary to refer to them separately.
Sole Panelist
Date: July 14, 2020
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