ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISON United Refrigeration Industries Limited v. Ghazala Mir Case No. D2025-3247 1. The Parties The Complainant is United Refrigeration Industries Limited, Pakistan, represented by Ali & Associates Law firm, Pakistan. The Respondent is Ghazala Mir, United States of America (“United States”), represented by Buchalter, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2025. On August 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 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 originally-named Respondent (Unidentified Respondent) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 14, 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 amended Complaint on August 18, 2025. The Center verified that the Complaint [together with the amendment to the Complaint/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 September 3, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2025. The Respondent requested the 4-day extension to file a Response in accordance with paragraph 5(b) of the Rules. The new due date for Response was September 27, 2025. The Response was filed with the Center on September 23, 2025.
page 2 The Center appointed Warwick A. Rothnie as the sole Panelist in this matter on October 2, 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. 4. Factual Background According to the Complaint, the Complainant is a well-established and reputable company that began operations in 1980 manufacturing and distributing refrigerators in Pakistan under the trademark DAWLANCE1. Since then, it has expanded its range of products to include air-conditioners, microwave ovens, washing machines, water dispensers, and other home and commercial electronic appliances. The Complainant claims that it has a well-established distribution network across Pakistan, consisting of hundreds of authorized dealers and service centers nationwide. In addition, the Complainant has been promoting its products from the website at “www.dawlance.com.pk” for several decades. The Complainant registered this domain name on June 15, 1999. The Complaint includes evidence that the Complainant owns a large number of registered trademarks in Pakistan. These include: - Registered Trademark No 95294, D DAWLANCE and device, which was registered with effect from July 29, 1987, for goods in International Class 9; - Registered Trademark No 129021, D DAWLANCE and device, which was registered on February 28, 1995, for goods in International Class 11. - Registered Trademark No 129022, D DAWLANCE and device, which was registered with effect from February 25, 2005, for goods in International Class 7; and - Registered Trademark No 164398, DAWLANCE, which has been registered with effect from June 29, 2000, in respect of goods in International Class 21. (The Complainant also registered 32 other trademarks in various classes for the D DAWLANCE and device trademark with effect from June 29, 2000.) Apart from Registered Trademarks Nos 129021 and 129022, each of the device marks is in colour consisting of a dark blue or black background with blue lettering and a red “D” device. The device in Registered Trademarks Nos 120021 and 129022 is: , save that the background is grey and the lettering is white. According to the WhoIs report, the disputed domain name was registered on December 8, 1998. The disputed domain name resolves to a website which features a number of television commercials, apparently for the Complainant’s products. 1 The Respondent disputes this and contends that the Complainant took over the business from the original owners at some point when the business was “dying” in the 1980s.
page 3 According to the Response, the Respondent is the wife of Mr. Mir who is a producer of television commercials. According to a declaration by Mr. Mir filed with the Response, in 1986 Mr. Mir was engaged by (what he says were) the former owners of the DAWLANCE business to produce in excess of 12 television commercials. These commercials were subsequently shown on Pakistan’s only television channel at the time, Pakistan Television Network (PTV). Mr. Mir registered the disputed domain name but, when he became busy, transferred administrative responsibility for it to the Respondent. Following his registration of the disputed domain name, two of the commercials Mr. Mir made promoting the DAWLANCE business were uploaded to the website linking through to his YouTube account to showcase his past television projects. Mr. Mir’s YouTube channel, Facebook account, and a website called “The Tariq Factor”, and other platforms display his historical television advertisements also. According to the declarations submitted by Mr. and Mrs. Mir, neither of them has received any economic benefit or generated any profit. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has proven ownership of numerous registered trademarks in Pakistan, one of which is for the plain word mark DAWLANCE and numerous other trademarks are for versions of the device or logo form shown above. In comparing the disputed domain name to the proven trademarks, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.1. On that basis, the disputed domain name is identical to the plain word mark DAWLANCE.
page 4 In addition, it is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. The figurative elements of the Complainant’s trademarks are not so dominating that the verbal element cannot be considered an essential or important part of the trademarks in this case. Accordingly, it is appropriate to apply the usual rule in the present case so that the numerous device marks can be seen as D DAWLANCE. The Panel finds that the disputed domain name is also confusingly similar to these registered trademarks as the “D” can be seen as merely emphasizing the initial of the name DAWLANCE so that the disputed domain name incorporates the whole of the essential identifying feature of those trademarks. The Respondent contends that the Complainant’s rights are limited to Pakistan and claims that the Respondent, or Mr. Mir, has prior rights in the United States through an unregistered trademark arising from the Respondent’s use of the mark there. Accepting that the evidence before the Panel indicates the Complainant’s market focus is Pakistan, the Respondent’s contentions misunderstand the nature of the inquiry at this stage. First, the comparison of the disputed domain name to the Complainant’s trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, section 1.7. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a Respondent can show rights or legitimate interests in a domain name. While 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 often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
page 5 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. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. There is no dispute between the Parties that: (1) The Respondent is not affiliated with the Complainant; (2) The Complainant has not otherwise authorised the Respondent to use the disputed domain name; (3) The disputed domain name are not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. These factors are usually sufficient to establish a prima case that the Respondent does not have rights or legitimate interests in a disputed domain name. While the Respondent, or Mr. Mir, registered the disputed domain name before the Complainant registered its domain name, the disputed domain name was registered after the effective registration dates of the first three of the Complainant’s registered trademarks. The Complainant also contends that the content of the website to which the disputed domain name resolves infringes its copyright. The Respondent, however, disputes this, claiming that Mr. Mir owns the copyright. Neither party has expanded on the conditions applicable under Pakistani law relating to ownership of films such as television commercials produced under a contract or commission. In the circumstances, the Panel is not in a position to resolve this issue, nor is it necessary to do so. In addition to the Respondent’s claims about the limited geographical scope of the Complainant’s rights and the Respondent’s own claims to prior rights in the United States, the Respondent contends that Mr. Mir acquired the domain name and uploaded the commercials as a way of promoting his television and film production services. The Respondent and Mr. Mir contend further that, at that time, Mr. Mir had a legitimate interest in respect of the disputed domain name as the television commercials to be showcased were for DAWLANCE branded products. Accepting that the Complainant’s business is directed to Pakistan, the Respondent’s arguments on geographical limitations disregard the global nature of the Internet. In addition, to the extent that the website to which the disputed domain name resolves is “for nostalgic purposes, to reminder [sic] people of the era of advertisements that they may have grown up with” as claimed in the Response, that belies the Respondent’s claim that there is no cross-over between the Parties’ respective audiences. Disregarding the issue about copyright ownership, the Panel considers the Respondent’s explanation does not rebut the prima facie case established by the Complainant that the Respondent does not have rights or legitimate interests in the disputed domain name. This is because the disputed domain name consists solely of the Complainant’s name and word mark. As a result, it carries a very high risk of implied affiliation with the Complainant. It is true that the TV commercials relate to the Complainant’s, or its predecessors’, products. However, the purpose of the website is not to promote the Complainant’s products but to promote Mr. Mir’s skills and services as a film and television producer. Contrary to the Respondent’s arguments, that is not a legitimate noncommercial or fair use. Rather, it takes advantage of, or undermines the exclusivity of, the Complainant’s trademark. Taking advantage of the Complainant’s trademark in that fashion does not constitute good faith under the Policy. Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case, and therefore the Complainant has established the second requirement under the Policy.
page 6 C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Group One Holdings Pte Ltd v. Steven Hafto WIPO Case No. D2017-0183. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the Respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the Complainant. While the Complainant contends that its advertising and promotional efforts have established its brand as a household name with immense recognition and recall value in the minds of relevant consumers, the Respondent correctly points out these claims are essentially unsupported. In the absence of evidence directed to establishing the reputation of the trademark, the complaint’s claims are mere assertions on which the Panel cannot act – even allowing for the apparent operation of the business over many years. That said, it is plain that the Respondent and Mr. Mir were both well aware of the Complainant’s trademark when registering the disputed domain name. The date on which the Respondent became the registrant is not clear. It is clear, however, that the Respondent’s use of the disputed domain name is merely a continuation of the use initiated by Mr. Mir when he registered the disputed domain name. Accordingly, the Panel will treat the date Mr. Mir registered the disputed domain name as the relevant time for assessing registration in bad faith. As indicated in Section 5B above, both the Respondent and Mr. Mir explained that the disputed domain name was registered to promote Mr. Mir’s skills and services as a film and television producer. For the reasons explained there, that does not constitute good faith conduct under the Policy. Accordingly, the Panel finds that the disputed domain name was registered in bad faith. The continued use of the disputed domain name for that purpose also constitutes use in bad faith. The Response further contends that the disputed domain name is now being used “for nostalgic purposes to reminder [sic] people of the era of advertisements that they may have grown up with” does not constitute good faith under the Policy. It still serves to promote Mr. Mir’s services. It also continues to take advantage of the Complainant’s trademark without its consent or approval. There is nothing about the disputed domain name itself that suggests the claimed historic or nostalgic purpose. Therefore, the Panel does not consider use for that purpose qualifies as good faith use under the Policy either. Accordingly, the Complainant has established all three requirements under 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. /Warwick A. Rothnie/ Warwick A. Rothnie Sole Panelist Date: October 20, 2025
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