Itron, Inc. v Islam Akbar, Slaemweb

WIPO Case No. D2024-0473

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Itron, Inc. v. Islam Akbar, Slaemweb

Case No. D2024-0473

1. The Parties

The Complainant is Itron, Inc., United States of America, represented by Lee & Hayes, PC, United States of

America.

The Respondent is Islam Akbar, Slaemweb, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <itronindonesia.com> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2024. On February 1, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2024, 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 5, the due date for Response was February 26, 2024. On March 1, 2025, the Center sent further email notice to the Respondent at an email address that was not initially included on the Notice of Complaint and Commencement of Proceedings and provided an additional five days for the Respondent to provide comment on the proceedings. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2024.

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The Center appointed Willem J. H. Leppink as the sole panelist in this matter on March 12, 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

The following facts are undisputed.

The Complainant, Itron, Inc., is a technology company that offers energy and water resource management products and services since 1977. The Complainant is particularly known for its metering technology used for electricity, gas, and water utility providers.

The Complainant is the owner of several registered trademarks for its mark ITRON, including Indonesia
trademark registration No. IDM000403472 for the combined mark ITRON with registration date December 9,
2013, for products and services in classes 9, 35, 38 and 42.

The main website of the Complainant can be found at <itron.com>. The domain name <itron.com> was registered on May 25, 1993.

The Complainant’s trademark was registered before the disputed domain name, which was registered on
March 27, 2018.

At the time of filing of the Complaint, the disputed domain name resolved to a website which purportedly claims to be affiliated with the Complainant by e.g., depicting the Complainant’s trademark in its specific stylized form. Currently, the disputed domain name is not in use.

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 the following.

The disputed domain name incorporates the entirety of the Complainants ITRON trademark to which the geographic term “Indonesia” was added. Also, the disputed domain name resolves to a website which was using the Complainant’s ITRON trademarks, in the stylized form in which the Complainant also uses it.

Furthermore, the Complainant contents that there is no indication that the Respondent was previously known by the name ITRON, nor that the Respondent has any license or permission from the Complainant to use its marks. Also, there is no noncommercial or fair use of the disputed domain name since the website it

resolved to impersonates the Complainant.

The Complainant further states that its ITRON trademarks are well-known and distinctive, the Complainant operates globally including in Indonesia, the place where the Respondent is located. The disputed domain name incorporates the entirety of the Complainant’s trademark and is impersonating the Complainant,

therefore it is likely that the Respondent uses the disputed domain name for commercial gain.

B. Respondent

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

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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 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 mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, the word “indonesia”, 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

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, as applicable to this case, impersonation of the Complainant, 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.

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In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s Trademark.

Panels have held that the use of a domain name for illegal activity as applicable to this case, impersonation of the Complainant, constitutes bad faith. WIPO Overview 3.0, section 3.4. This is also reinforced by the fact that the Respondent used incorrect registration details. 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.

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 <itronindonesia.com> be transferred to the Complainant.

/Willem J. H. Leppink/
Willem J. H. Leppink
Sole Panelist
Date: March 25, 2024