Celebrus Technologies Plc. v Syed Tariq

WIPO Case No. D2024-0135

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Celebrus Technologies Plc. v. Syed Tariq

Case No. D2024-0135

1. The Parties

The Complainant is Celebrus Technologies Plc., United Kingdom (“UK”), represented by Shakespeare

Martineau LLP., UK.

The Respondent is Syed Tariq, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <celebrustrading.com> 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 January 12, 2024.
On January 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 16, 2024, 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 (Registration Private, Domains by Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 24,
2024, 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

January 29, 2024.

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 January 30, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 19, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 20, 2024.

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The Center appointed Andrew F. Christie as the sole panelist in this matter on February 27, 2024. 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

Exchange. Prior to November 15, 2023, the name of the Complainant was D4T4 Solutions Plc. The Complainant’s change of name to Celebrus Technologies Plc was recorded at the UK Companies House on November 15, 2023. The Complainant has offices in the UK, the United States of America, India, and	The Complainant is a technology company, founded in the UK in 1985, and quoted on the London Stock services, retail, travel, healthcare, and telecommunications markets manage their data.
originally developed in 1999 by Speed-Trap Limited, which became Celebrus Technologies Limited in 2011. In 2015, Celebrus Technologies Limited was acquired by the Complainant and the goodwill which had been built up through use of the CELEBRUS trademark was transferred to the Complainant. The Complainant has extensively marketed its CELEBRUS software through: (i) advertising use and direct trade through the
The Complainant’s flagship data product suite is branded CELEBRUS. The CELEBRUS software was social media) such as LinkedIn and Twitter/X, since at least 2013; (iii) external events; (iv) targeted emails and traditional print marketing material; and (v) internal marketing to existing customers. Over the last five financial years (from April 2018 to March 2023), the Complainant’s expenditure on marketing the CELEBRUS software was in excess of GBP 1.4 million, and its global turnover under the CELEBRUS trademark was in excess of GBP 70 million.
The disputed domain name was registered on October 2, 2023. The Complainant has provided screenshots dated November 7, 2023, which show that the disputed domain name resolved to a website which purported to be the website of “Celebrus”, and which sought to impersonate the Complainant’s website at
“ by mimicking various elements of it. The “Contact Us” page referred to a location, Sharjah in the United Arab Emirates, which is not a location in which the Complainant has an office or is otherwise associated with. As of the date of this decision, the disputed domain name resolves to a website
that appears to be the same as the website shown in the Complainant’s screenshots.
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.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark on the following grounds. The disputed domain name is identical to the Complainant’s CELEBRUS trademark visually, aurally, and conceptually, save for the addition of the descriptive term “trading”. It is well established that where a Respondent adds a descriptive or generic word to a distinctive trademark in which the Complainant has rights, the addition does not alter the fact that the domain name is confusingly similar to the trademark. The Respondent has made no attempt to distinguish the disputed domain name from the distinctive nature of the CELEBRUS trademark. Instead, the disputed domain name incorporates CELEBRUS trademark, which is the distinctive and dominant element of the disputed domain name.

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The Complainant contends that the Respondent does not have any rights or legitimate interests in the
disputed domain name on the following grounds. The Respondent is neither making a legitimate
noncommercial use of the Complainant’s trademark, nor using the disputed domain name in a fair manner.
Instead, the Respondent appears to be possessing the disputed domain name in an attempt to misleadingly
divert visitors or tarnish the Complainant’s trademark. Further, in light of the website content to which the
disputed domain name resolves, it is not clear to Internet users visiting the Respondent’s website that it is
not operated by the Complainant. In the circumstances, the Complainant contends it has satisfied paragraph
4(a)(ii) of the Policy, and the burden having shifted has not been discharged by the Respondent.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith on the following grounds. The disputed domain name was registered primarily for the purpose of diverting potential customers of the Complainant to the Respondent’s website and hence to disrupt the business of the Complainant. The Respondent has sought to reproduce material in which the Complainant owns copyright and the Respondent’s website has been constructed in a way which imitates the Complainant’s website. The Respondent had the Complainant’s trademark in mind when registering the disputed domain name. The Complainant’s trademark is distinctive and well known, and the reputation of the Complainant’s trademark is such that the Respondent in all likelihood knew or should have known of the existence of the Complainant’s trademark at the time when the disputed domain name was registered. The Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of their website, contrary to paragraph 4(b)(iv) of the Policy. The Complainant’s trademark is distinctive and well known, and it is not possible to imagine any plausible future active use of the disputed domain name by the Respondent that would not be illegitimate, such as being an act of passing off, or an act of unfair competition or infringement of consumer protection legislation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel finds the Complainant has established unregistered trademark or service mark rights for the purposes of the Policy. WIPO Overview 3.0, section 1.3. Notably, the Complainant’s CELEBRUS trademark consists of a string which is not a recognized word in the English language. It is, therefore, distinctive. Furthermore, the Complainant or its predecessor in title has engaged in significant marketing of products under the trademark, and has transacted substantial business under the trademark, for more than a decade. The evidence is sufficient to establish that CELEBRUS, while not a registered trademark, is a trademark in which the Complainant has rights.

The entirety of the unregistered word trademark CELEBRUS is reproduced within the disputed domain name. Although the addition of another term (here, “trading”) may bear on assessment of the second and third elements, the Panel finds the addition of such term 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.

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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 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 not rebutted 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.

Panels have held that the use of a domain name for illegal activity (here, impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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 registered the disputed domain name more than a decade after the Complainant or its predecessor in title first used its trademark, and that the disputed domain name incorporates the Complainant’s distinctive trademark in its entirety and merely adds a descriptive term (“trading”). It is clear the Respondent registered the disputed domain name with knowledge of the

Complainant’s trademark.

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.

Panels have held that the use of a domain name for illegal activity (here, impersonation/passing off)
constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <celebrustrading.com> be transferred to the Complainant.

/Andrew F. Christie/
Andrew F. Christie
Sole Panelist
Date: March 12, 2024