Westmore · UDRP DecisionUltiusconsultant.com
The Panel ordered transfer of <ultiusconsultant.com>. It found the domain confusingly similar to Complainant’s registered ULTIUS mark because it incorporated ULTIUS in its entirety with the additional word “consultant.” Complainant established a prima facie case that Respondent lacked rights or legitimate interests, which Respondent did not rebut through a formal response. Bad faith was found because Respondent used the domain commercially for services similar to Complainant’s and registered it only three days after Complainant’s stated first use of the mark in commerce.
The timeline behind ultiusconsultant.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates how a domain combining an entire distinctive mark with a term related to the parties’ services can satisfy confusing similarity and support a commercial-confusion finding when used for similar services. It also shows that a very short interval between stated first use and domain registration may reinforce bad faith when considered alongside the domain’s content and the absence of respondent rights.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ultius, Inc. v. Ultius Consultant Case No. D2018-1017 1. The Parties Complainant is Ultius, Inc. of Wilmington, Delaware, United States of America (“United States” or “U.S.”), represented by Kuehn Law, United States. Respondent is Ultius Consultant of Park Ridge, Illinois, United States. 2. The Domain Name and Registrar The disputed domain name <ultiusconsultant.com> (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 May 9, 2018. On May 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 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 May 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. On May 22, 2018, and May 30, 2018, the Center received email communications from Respondent. On June 12, 2018, the Center notified the Parties that it would commence the panel appointment process. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 13, 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 A screenshot of Complainant’s website provided by Complainant states that Complainant offers “a simple, convenient, and reliable way to connect with a highly-qualified writer”. A “Company History” page from the same website, also provided by Complainant, implies that Complainant was founded in 2010 and “has grown into a global brand and platform used by tens of thousands of people around the world”. Complainant states that it is the owner of U.S. Reg. No. 5,338,445 for the word mark ULTIUS, for use in connection with, inter alia , “[p]roviding a web site featuring temporary use of non-downloadable software for connecting consumers and contracted freelance writers” (first used in commerce on January 1, 2017; registered on November 21, 2017); and 5,338,446 for a design mark that prominently features the text ULTIUS, for use in connection with, inter alia , “[p]roviding a web site featuring temporary use of non-downloadable software for connecting consumers and contracted freelance writers” (first used in commerce on January 1, 2017; registered on November 21, 2017). These trademarks are hereafter referred to collectively as the “ULTIUS Trademark”. The Disputed Domain Name was created on January 4, 2017, and is being used in connection with a website that, as shown in a screenshot provided by Complainant, appears to offer a “writing & editing service” with “a subject specific consultant who researches on your topic to make sure it incorporates quality content”. 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the ULTIUS Trademark because it “incorporates the entirety of the ULTIUS trademark and only adds the generic term ‘CONSULTANT’”. - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia ,“Respondent has not been commonly known by the disputed domain name, nor has Respondent acquired trademark or service mark rights”; “Complainant also never authorized Respondent to use its mark”; and “Respondent’s website at the Disputed Domain is unabashedly commercial” and “competes with Complainant’s website in a directly commercial manner”. - The Disputed Domain Name was registered and is being used in bad faith because, inter alia , “Complainant’s mark is inherently distinctive and it does not correspond to a dictionary term, nor is it otherwise inherently attractive as a domain name” so “[t]herefore, it is reasonable to infer that Respondent knew or should have known that its registration would be identical or confusingly similar to Complainant’s mark”; and Respondent has “published confusingly similar content to offer services substantially similar to Complainant’s” so “therefore [it is] evident that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark”. B. Respondent Respondent did not formally reply to Complainant’s contentions. However, in an email to the Center, Respondent stated, “As i already respond to the ultius.com that i am ready to sell this domain so they can pay me what ever my expenses are there for”. In a second email to the Center, Respondent stated, “Why dont you call me and resolve the matter”. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ULTIUS Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the ULTIUS Trademark, the relevant comparison to be made is generally with the second-level portion of the Disputed Domain Name only ( i.e. , “ultiusconsultant”) because “[t]he applicable Top Level Domain (“TLD”) in a domain name ( e.g ., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1 . It is obvious that the Disputed Domain Name contains the ULTIUS Trademark in its entirety and simply adds the word “consultant”. As stated in WIPO Overview 3.0 , section 1.7 , “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Previous panels have found that the word “consultant” (or “consultants”) does nothing to eliminate confusing similarity. See, e .g., Accenture Global Services Limited v. Stexpress, Stex Logistics , WIPO Case No. D2015-0899 (finding <accentureconsultantus.com> confusingly similar to ACCENTURE); and Research In Motion Limited v. Nigel Hull , WIPO Case No. D2009-1126 (finding <blackberryconsultant.com> confusingly similar to BLACKBERRY). Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia ,“Respondent has not been commonly known by the disputed domain name, nor has Respondent acquired trademark or service mark rights”; “Complainant also never authorized Respondent to use its mark”; and “Respondent’s website at the Disputed Domain is unabashedly commercial” and “competes with Complainant’s website in a directly commercial manner”. WIPO Overview 3.0 , section 2.1 , states: “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 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.” The Panel finds that Complainant has established its prima facie case and that Respondent has not provided a formal Response containing anything to the contrary. Accordingly, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). Here, it is apparent that Respondent in using the Disputed Domain Name to offer services that are similar to those offered by Complainant on its own website and under the ULTIUS Trademark. Numerous panels have found that such actions create a “likelihood of confusion” and, therefore, bad faith pursuant to paragraph 4(b)(iv) of the Policy. Indeed, WIPO Overview 3.0 , section 3.1.4 says that the following factors, which are present here, are “evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark”: “the lack of a respondent’s own rights to or legitimate interests in a domain name” and “redirecting the domain name to the complainant’s (or a competitor’s) website”. Further evidence of bad faith is the fact that Respondent registered the Disputed Domain Name only three days after Complainant first began using the ULTIUS Trademark. See, e.g., Comerica Bank v. Domain Administrator, See PrivacyGuardian.org / Sena Yilmaz , WIPO Case No. D2018-0812 (finding bad faith where Respondent registered the disputed domain name “just four days after the Complainant applied to register [its trademark] as a United States trademark”); and Sanofi and Genzyme Corporation v. Kerry Yao , WIPO Case No. D2016-1799 (finding bad faith where “Respondent registered… the Domain Name… shortly after Complainant filed its trademark applications”). Accordingly, the Panel finds that Complainant has proven 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 <ultiusconsultant.com> be transferred to Complainant. Douglas M. Isenberg Sole Panelist Date: June 27, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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