Leica Microsystems IR GmbH v Hammad Yousaf, Creatik Code, and

WIPO Case No. D2025-0083

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Leica Microsystems IR GmbH v. Hammad Yousaf, Creatik Code, and
Mohammed Nawaz, Leica Surgical Industry

Case No. D2025-0083

1. The Parties

The Complainant is Leica Microsystems IR GmbH, Germany, represented by Baker McKenzie

Rechtsanwaltsgesellschaft mbH, Germany.

The Respondent is Hammad Yousaf, Creatik Code, Pakistan, and Mohammed Nawaz, Leica Surgical

Industry, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <leicasurgical.com> is registered with Cosmotown, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2025. On January 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 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 (Leica Surgical Industries) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 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 on January 24, 2025.

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 of the 5, the due date for Response was February 16, 2025. The Respondent sent various email communications to the Center on January 24, and February 3, 2025. The Center commenced the panel appointment process on February 20, 2025

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The Center appointed Steven A. Maier as the sole panelist in this matter on February 24, 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. Identity of Respondent

Based on the evidence available to it, the Panel finds that the beneficial holder of the disputed domain name is Mohammed Nawaz, Leica Surgical Industry. The Panel therefore directs that both the Registrar-disclosed registrant and the said beneficial holder are, together, the proper Respondent in this proceeding.

5. Factual Background

The Complainant is a company registered in Germany. It is a manufacturer of optical microscopes, including those for surgical applications.

The Complainant is the owner of various trademark registrations for the mark LEICA, including the following:

- Germany trademark registration number 497299 for the word mark LEICA, registered on November 5,

1937, in International Class 9;

- Pakistan trademark registration number 25457 for the word mark LEICA, registered on April 11, 1956, in

International Class 9; and

- International trademark registration number 572714 for a figurative mark LEICA, registered on June 5,
1991, in a variety of International Classes, for goods and services including “surgical microscopes” in
International Class 10.

The Complainant operates a website at “ which features its products for medical application, including surgical microscopes for microsurgery and neurosurgery.

The disputed domain name was registered on September 1, 2023.

1.

The Complainant exhibits evidence that the disputed domain name has resolved to a website headed appeared to comprise “lorum ipsum” text

“LEICA SURGICAL”, which appeared to offer “Surgical Instruments”, “Dental Instruments”, “Beauty

At the date of this Decision, the disputed domain name resolves to a similar website.

6. Parties’ Contentions

A. Complainant

The Complainant submits that it is well-recognized for its microscopy products and has a significant global presence. It states that it is represented in over 100 countries, with sales and service organizations in 20 countries, and 2,386 employees as of 2024.

1 “Lorum ipsum” text is defined by Wikipedia as “a dummy or placeholder text commonly used in graphic design, publishing, and web

development to fill empty spaces in a layout that does not yet have content.”

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The Complainant submits that it became aware of the Respondent when the Respondent attempted to attend a trade conference in Dublin in June 2024, which caused confusion with the Complainant and its business. The Complainant states that the Respondent then attended another trade conference, in

Indonesia, in August 2024. The Complainant contends that the Respondent’s actions represent an infringement of its trademark rights.

The Complainant submits that the disputed domain name is confusingly similar to its LEICA trademark. It contends that that trademark is a non-generic term, having no meaning other than to refer to the Complainant. It submits that the addition of the term “surgical” in the disputed domain name does not prevent a likelihood of confusion with the Complainant’s trademark. The Complainant also points to actual confusion, specifically in the case of the Dublin trade conference.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no relationship with the Respondent and has never authorized it to use its LEICA trademark, that the Respondent has not commonly been known by the disputed domain name, and

that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of
the disputed domain name.

The Complainant asserts that the Respondent stated in correspondence that the disputed domain name was a “family abbreviation”, which it submits is incomprehensible.

The Complainant exhibits evidence of Google searches against the terms “leicasurgical” and “leicasurgical pakistan”. It submits that, with the exception of the Respondent’s website, all of the first pages of results refer to the Complainant and its products.

The Complainant submits that the disputed domain name was registered and has been used in bad faith. It contends that its LEICA trademark is world-famous and has been exclusively associated with the Complainant for decades, and that it is obvious therefore that the Respondent is seeking to take unfair advantage of that trademark.

The Complainant submits that the registration of a domain name incorporating a well-known trademark in its entirety, without the consent of the trademark owner, raises a presumption of bad faith (e.g., PepsiCo, Inc v. Paul J Swider, WIPO Case No. D2002-0561). The Complainant further contends that it is sufficient for these purposes that the Respondent knew, or ought to have known, of the Complainant’s trademark (e.g.,

Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365).

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Panel determines that the Respondent’s email to the Center dated February 3, 2024 shall stand as the

Response in the proceeding.

The Respondent states that it has been legally registered with the Chamber of Commerce and the Surgical Sialkot Chamber of Commerce and Industry dated March 22, 2024. It also exhibits a Membership Certificate from The Surgical Instruments Manufacturers Association of Pakistan dated November 28, 2023. The Panel notes at this point that the two certificates are based on virtually identical templates.

The Respondent also submits that is it registered with the Government of Pakistan Intellectual Property

Office under registration number 771071 (it provides no documentation in this regard).

The Respondent submits that its name is an abbreviation for “Love Economic Instruments Company &
Organization”, and that its logo is different from that used by the Complainant.

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The Respondent states that it is a Pakistani company selling only instruments, not microscopes, and that “we
are always say to every one we Pakistan instruments company not same because we have different name

LEICA SURGICAL INDUSTRY”.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(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.

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 established that it is the owner of registered trademark rights for the mark LEICA. The disputed domain name incorporates that trademark in full, together with the dictionary term “surgical”, which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the

Complainant has rights.

B. Rights or Legitimate Interests

The Respondent purports to use the disputed domain name for the purposes of a Pakistan-based business named Leica Surgical Industry. While the Complainant claims that such use infringes its LEICA trademark, that assertion is insufficient for the Complainant to prevail under the requirements of the UDRP, which is not a forum for the resolution of trademark disputes between competing businesses. For the Complainant to

succeed in this case, it must establish that the Respondent’s business does not represent a bona fide
commercial venture but has been operated as a sham or pretext for the registration of the disputed domain
name, which was registered in reality to target the Complainant’s trademark rights.

There is some evidence in this case that the Respondent has operated a business of sorts: it appears for example to have sought to participate in two trade fairs, leading to the Complainant’s objections to its activities. On balance, however, the Panel is unconvinced that the Respondent has been operating a legitimate business without intent to capitalize upon the Complainant’s trademark rights. The Panel’s reasons for this conclusion includes the following:

1. While the Respondent claims to have operated a business under the name Leica Surgical Industries since 2015, it exhibits no evidence whatsoever to support that assertion, other than two (highly similar) membership certificates dated 2023 and 2024. The Respondent has produced nothing to evidence its incorporation (noting that the certificates seem to be related to the Respondent’s membership, but not to its

incorporation as an entity itself), its trading (supposedly over a period of nine years), e.g., supplier or
customer invoices, or its financial profile and, according to the Complainant’s evidence, there is no apparent
reference to it on the Internet in response to a Google search, other than its website. Furthermore, even if
the Respondent may have incorporated an entity named Leica Surgical Industries (as the certificates are

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referring to such entity), there is not sufficient evidence to conclude that the Respondent has been commonly
known by such a name or otherwise for a finding of rights or legitimate interests for the Respondent in the
disputed domain name.

2. The Panel finds the Respondent’s website to be implausible. Among other matters, the fact that it still contains (at the date of this Decision) “lorum ipsum” text in the “About Us” section of its homepage is not suggestive of an established business. The Panel also notes that, while the website appears to enable

visitors to add items to a “cart”, no pricing appears to be shown and the “cart” in fact leads to an online

contact form.

3. While the Respondent has offered an explanation for its choice of its business name and the disputed
domain name, the fact that “LEICA” is said to represent “Love Economic Instruments Company &

Organization” does not make sense to the Panel absent further explanation.

4. The Panel also notes the Respondent’s apparent concession in its Response that “we always say to trademark in mind when it registered the disputed domain name.

every one” that they are not the same company as the Complainant. While this is not in itself evidence of the
Respondent’s intent, it strongly supports the risk of a likelihood of confusion due to its similarity with the

The Panel therefore concludes, on balance, that any business that has been operated by the Respondent under the name Leica Surgical Industry, and the registration of the disputed domain name, were actions designed primarily to target the Complainant’s widely-known trademark and to gain an unfair advantage from the substantial commercial goodwill attaching to that trademark. Such matters do not give rise to rights or legitimate interests for the purposes of the Policy.

The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds the Complainant’s mark LEICA to be a coined term and to have gained a high degree of public recognition in connection with products including microscopes for surgical application.

The Panel does not accept the Complainant’s contention that the Respondent’s mere knowledge of the Complainant’s trademark results in the registration of the disputed domain name being in bad faith: on the contrary, it is necessary not only for the Respondent to have known of that trademark, but also to have targeted it, as opposed to having registered the disputed domain name for some other legitimate reason. The Panel does accept, however, that the use for a domain name of a widely-known trademark by a party with no apparent connection with the trademark may raise a presumption of “opportunistic bad faith” (see e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

In this case, for the same reasons as enumerated above, the Panel finds that the Respondent is more likely than not to have been aware of the Complainant’s LEICA trademark when it registered the disputed domain name, and to have done so in order to take unfair advantage of the Complainant’s goodwill attaching to that trademark. If and to the extent that the Respondent may have been operating a business including the name

“Leica” prior to the date of registration of the disputed domain name, the Panel considers that there is not
persuasive evidence of any bona fide concurrent commercial use of that name to support the registration of
the disputed domain name for reasons different to its similarity with the Complainant’s LEICA trademark.

The Panel finds further that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

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The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith.

8. 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 <leicasurgical.com> be transferred to the Complainant.

/Steven A. Maier/
Steven A. Maier
Sole Panelist
Date: March 10, 2025