ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION TÜV Markenverbund e.V. v. 杭州商鉴科技有限公司 (TUV InterCert GmbH) Case No. D2025-1892 1. The Parties The Complainant is TÜV Markenverbund e.V., Germany, internally represented. The Respondent is 杭州商鉴科技有限公司 (TUV InterCert GmbH), internally represented, China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2025. On May 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2025, 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 (TUV lntercert GmbH) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2025, 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 amendment to the Complaint in English on May 16, 2025. On May 15, 2025, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On May 16, 2025, the Complainant requested English to be the language of the proceeding. In its email in Chinese to the Center of May 22, 2025, the Respondent essentially requested Chinese to be the language of the proceeding. 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 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on May 20, 2025. In accordance with the
page 2 Rules, paragraph 5, the due date for Response was June 9, 2025. The Respondent did not submit any formal response. However, the Technical/Administrative/Biling contact of the Respondent, a third party, and the Respondent have sent email communications on May 20, 2025, May 21, 2025, and May 22, 2025. Accordingly, the Center notified the Commencement of Panel Appointment Process on June 17, 2025. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 23, 2025. 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. On June 26, 2025, the Panel issued the Procedural Order No. 1 (“Procedural Order”), essentially inviting the Respondent to: 1) provide evidence (if any), demonstrating that it has any rights or legitimate interests in the name “TUV InterCert”, on or before July 1, 2025; and 2) clarify with supporting documents whether there is any relationship between TUV InterCert GmbH and杭州商鉴科技有限公司, on or before July 1, 2025. The same Procedural Order also invited the Complainant to comment on the Respondent’s submission (if any), on or before July 6, 2025. Neither of the Parties responded to the Procedural Order. 4. Factual Background The Complainant is an association founded to exercise on behalf of the TÜV companies the rights of their trademarks containing the sign TÜV. To this end, the Complainant (TÜV Markenverbund) holds the TÜV brands in trust for all TÜV companies. The original TÜV companies are independent testing and verification service providers. The TÜV companies have been founded as associations by German steam engine and boiler owners in the 1860s, in order to self-administer the inspection of steam boilers. Each TÜV association was responsible for a particular geographical area. Today there are the following six TÜV companies left: TÜV SÜD, TÜV Rheinland, TÜV NORD, TÜV Austria, TÜV Saarland, and TÜV Thüringen. Today, all six TÜV companies are well-known technical and verification service providers and the sign TÜV is used intensively. The Complainant owns numerous registered trademarks for the TÜV mark and its variation TÜV CERT, in several jurisdictions, including: German trademark TÜV CERT, No. 1175200, registered in classes 41, 42, and 44 registered since April 19,1991; and European Union registered trademark number 005825781 for the TÜV word mark, registered since June 19, 2008. The disputed domain name was registered on September 29, 2020 and directed to a website in English offering certification and testing services to the public and prominently displaying a TÜV INTERCERT SAAR logo, with reference to the Complainant and TÜV companies on the “About Us” page.1 The Panel also notes that on the date of the Decision, the disputed domain name directs to an inactive website. Lastly, the Center received an email from a third party on May 21, 2025, in which the third party stated that it has received the Center’s Written Notice which was sent by courier service to the Respondent’s physical address in English as confirmed by the Registrar. The third party clarified that “[w]e have nothing to do with the mentioned domain tuv-intercert.group, neither with any person/company with such name, and we never had.” 1The Panel notes that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8). The Complainant did not provide relevant evidence relating thereto. The Panel has visited Web Archive (https://web.archive.org/web/20250317021834/https:/www.tuv-intercert.group/) to assess the use of the disputed domain name.
page 3 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name differs from the trademark TÜV CERT only as follows: in leaving out the two dots over the letter “u” in “tuv” - the word “intercert” instead of “cert”, in the hyphen between “tuv” and “intercert”; and in comparison to the trademark TÜV it differs additionally in adding the descriptive word “intercert” for international certification. The Complainant argues that consequently the disputed domain name reproduces the Complainant’s trademarks in their entirety, with only minor descriptive or technical modifications. Therefore, the Complainant argues that the disputed domain name is confusingly similar to its marks. Further, the Complainant contends that the Respondent has no rights or legitimate interests because they do not own a valid trademark corresponding to the disputed domain name and that, instead, the valid European Union trademark TÜV INTERCERT SAAR No 018328591 belongs to one of the members of the Complainant and that the owner of the trademarks TÜV CERT and TÜV have never granted to the Respondent a right of utilization of its trademarks. The Complainant also contends that there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also argues that the website hosted under the disputed domain name indicates a company named “TÜV lntercert Saar” with the address in Germany as the owner, however, such a company no longer exists under this name. The Complainant states that the Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name, because the website is only for commercial gain. The Complainant essentially argues that its marks are well-known and that the Respondent targeted them in bad faith by registering the disputed domain name. The Complainant also states that the Respondent has intentionally chosen the disputed domain name, to attract, for commercial gain, Internet users to its website or other online location, by faking a connection with the TÜV CERT and TÜV brands and the original TÜV companies and therefore creating a likelihood of confusion with the Complainant’s mark. The Complainant claims that the Respondents registration and use of the disputed domain name in the abovementioned circumstances means that the Respondent has no rights or legitimate interests in the disputed domain name and has acted in bad faith in registering and using the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions and did not reply to the Procedural Order. However, the Respondent and its affiliated individuals sent informal email communications on May 20, 2025, and May 22, 2025. In its email in English of May 20, 2025, the Respondent essentially stated that they have the right to launch their own website, that all the information on it is true and suggesting the Complainant to block the disputed domain name in the Complainant’s country. Additionally, in its email in Chinese to the Center of May 22, 2025, the Respondent essentially requested Chinese to be the language of the proceeding and offered the disputed domain name for sale to the Complainant at the price of USD 2,000. The Respondent did not reply to the Procedural Order. 6.1 Preliminary Issue: Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the allegation that in the present case, it can be assumed that the Respondent understands English because both the disputed domain name and the whole content of the
page 4 website at the disputed domain name are in English; that the Respondent pirated the English version of the homepage of the German company TUV InterCert GmbH and that it was therefore the intention of the Respondent to make an English-language offer to international interested parties; that the Complainant, on the other hand, has no knowledge of the Chinese language; that it would be unnecessarily costly and unjustified for the Complainant to resubmit the Complaint and all supporting documents in Chinese; that this would also unnecessarily delay the proceedings; and that neither Party will be disadvantaged in presenting their arguments in this case. In its email of May 22, 2025, the Respondent requested Chinese to be the language of the proceeding essentially arguing that they are not proficient in English. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview 3.0, section 4.5.1). Having considered all relevant circumstances, and placing particular weight on the fact that the website to which the disputed domain name resolves was in English, as well as the Respondent’s email communication with the Center dated May 20, 2025, which was also in English, the Panel determines pursuant to paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Findings on the Merits A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the TÜV mark is reproduced within the disputed domain name (save for the two dots over the letter “u”), and the TÜV CERT mark is recognizable in the disputed domain name. Accordingly, the disputed domain name is confusingly similar for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here - depending on which of the marks it is compared to-, “-intercert” or “-inter”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant
page 5 evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise, and the Respondent has limited itself to informally stating that they have the rights to launch their own website and that all the information on it is true. According to the Complainant, the Respondent has never been authorized to use TÜV and TÜV CERT marks, to which the Respondent has not contested. In the Registrar’s verification response, the Respondent’s name and contact details are in Chinese and English, and the English version does not correspond to the Chinese version (i.e. 杭州商鉴科技有限公司 with an address in China, and TUV InterCert GmbH with an address in Germany). In Respondent’s email dated May 22, 2025, the Respondent identified itself as 杭州商鉴科技有限公司 (which may be translated as Hangzhou Shangjian Technology Co., Ltd.). The Panel notes that, on the balance of probabilities, the Respondent has no rights or interests, as a company name or otherwise, in the name “TUV InterCert GmbH” which it, apparently falsely, listed in its contact information. In this regard, the Panel relies on the email from the third party, who received the Written Notice sent by the Center to the Respondent’s contact details in English, on May 21, 2025, in which the third party stated “[w]e have nothing to do with the mentioned domain tuv-intercert.group, neither with any person/company with such name, and we never had.” Furthermore, when invited to clarify the situation pursuant to the Procedural Order, the Respondent did not respond or provide any documents. The Panel therefore concludes that the Respondent is not commonly known by the disputed domain name and potentially acted without proper authorization in using certain registration information for the disputed domain name. Further, given the contents of the disputed domain name before it was taken down, the Panel also concludes that the Respondent was not using the disputed domain name (or did not have demonstrable plans for such use) with a bona fide offering and was not making any legitimate noncommercial or fair use. To the contrary, the Respondent was using it to host a commercial website prominently displaying the Complainant’s affiliate’s TÜV INTERCERT SAAR logo in the banner and impersonating the Complainant and its group companies. Panels have held that the use of a domain name for illegitimate activity here, claimed, impersonation can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. In summary, the Respondent’s use of the company name TUV InterCert GmbH when registering the disputed domain name does not confer any rights or legitimate interests on the Respondent under the circumstances of this case, and the Respondent has failed to rebut the Complainant’s prima facie case. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has registered a domain name which is confusingly similar to the Complainant’s well-known trademarks, see in this regard also previous decisions under the Policy which have recognized that the Complainant’s marks are well-known, such as TÜV NORD AG v. Saefullah Ahmad, Asri Utama, WIPO Case No. D2025-0459. Therefore, the Panel finds that by registering the disputed domain name, the Respondent deliberately and consciously targeted the well-known trademarks for TÜV and its variation TÜV CERT. This finding is incidentally further confirmed by the fact that the Respondent apparently attempted to offer identical services through the website at the disputed domain
page 6 name while prominently displaying the Complainant’s affiliate’s TÜV INTERCERT SAAR logo and therefore impersonating the Complainant or at least suggesting some sort of connection. The Panel finds that this creates a presumption of bad faith. The Panel also notes that the Complainant’s trademarks in this case predate the registration date of the disputed domain name by many years, and that the Respondent could not have been reasonably unaware of them. Furthermore, the Panel notes that even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned prior rights in its trademarks for TÜV and its variation TÜV CERT. In the Panel’s view, the above elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. As to use of the disputed domain name in bad faith, the Panel finds that the disputed domain name previously directed to an active website which showed a clear intent on the part of the Respondent to misleadingly pass it off as the Complainant’s (or one of its affiliates’) website. The Panel concludes from these facts that the Respondent was intentionally attracting Internet users for commercial gain to such website, by creating a likelihood of consumer confusion between the website associated with the disputed domain name and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. Additionally, the Panel also notes that in its email of May 22, 2025, the Respondent offered the disputed domain name for sale to the Complainant at the price of USD 2,000, which the Panel finds demonstrates that the Respondent is attempting to sell the disputed domain name for an amount most likely in excess of the Respondent’s out-of-pocket costs related to the disputed domain name. This leads the Panel to conclude, on balance of the probabilities, that the Respondent is using the disputed domain name to try to sell it to the Complainant, who is the owner of the corresponding trademark for TÜV, or to other parties and to obtain unjustified financial benefits through such sale. The Panel notes that this constitutes direct evidence of bad faith of the Respondent under paragraph 4(b)(i) of the Policy.The Panel therefore finds that it has been demonstrated that the Respondent has used and is using the disputed domain name in bad faith. Finally, the Panel notes that on the date of this Decision, the disputed domain name directs to an inactive or blank website. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and strong reputation of the Complainant’s trademarks, the fact that the Respondent’s presumably provided wrong registration information for the disputed domain name, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Deanna Wong Wai Man/ Deanna Wong Wai Man Sole Panelist Date: July 16, 2025
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