Malvern Panalytical Limited v Naoki Mori

WIPO Case No. D2025-2610

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Malvern Panalytical Limited v. Naoki Mori

Case No. D2025-2610

1. The Parties

The Complainant is Malvern Panalytical Limited, United Kingdom (“UK”), represented by CSC Digital Brand

Services Group AB, Sweden.

The Respondent is Naoki Mori, Japan.

2. The Domain Name and Registrar

The disputed domain name <panalytical.xyz> is registered with GMO Internet, Inc. d/b/a Discount-

Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2025. On July 4, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On July 7, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Whois Privacy Protection Service by onamae.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint in English on July 24, 2025.

On July 16, 2025, the Center informed the Parties in Japanese and English, that the language of the Registration Agreement for the disputed domain name is Japanese. On July 24, 2025, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent in English and Japanese of the Complaint, and the proceedings commenced on July 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on August 15, 2025.

The Center appointed Keiji Kondo as the sole panelist in this matter on August 20, 2025. The Panel f inds 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 Complainant is a subsidiary of Spectris plc, a consortium that is a provider of precision instrumentation and controls and provides its global customers through its high-tech instruments and test equipment, augmented by its software. Spectris plc has approximately 7,500 employees globally and is listed on the London Stock Exchange.

In 2017, Malvern Instruments merged with PANalytical to form Malvern Panalytical. Malvern Panalytical provides advanced sensors and instruments used to measure, analyze and characterize materials, as well as monitor ultra-clean manufacturing environments. The Complainant’s instruments allow industries and researchers to understand the world with absolute precision. The Complainant’s technologies enable the measurement of parameters such as particle size, shape and zeta potential, biomolecular interactions and stability, rheological properties, elemental concentrations, and crystallographic structure. The Complainant, together with its associated entities and their subsidiaries, employs more than 2,500 people across 20 countries and supports a global client base in both the private sector and academia.

The Complainant is the owner of trademark registrations for PANALYTICAL across various jurisdictions including the following registrations:

Trademark: PANALYTICAL;
Jurisdiction: Benelux;
Registration No.: 696587;
Registration Date: February 1, 2002; and

Goods and Services: Class 9

Trademark: PANALYTICAL;
Jurisdiction: United States of America (“U.S.”);
Registration No.: 3029656;
Registration Date: December 13, 2005; and
Goods and Services: Class 9.

The disputed domain name was registered on July 30, 2024. The disputed domain name was initially used to direct Internet users to a pay-per-click (“PPC”) website featuring links to third-party websites relating to scientif ic apparatuses. Currently, the disputed domain name is not actively used.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Complainant has trademark registrations for PANALYTICAL in many jurisdictions. It is standard practice when comparing a disputed domain name to a complainant’s trademark, not to take the extension into account. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO

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Overview 3.0”) at section 1.11.1 (“The 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 f irst element confusing similarity test.”). The Second Level Domain of the disputed domain name consists solely of Complainant’s trademark, resulting in a domain name that is identical to the Complainant’s trademark and thus meeting the requirements under paragraph 4(a)(i) of the Policy.

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

The Respondent is not sponsored by or affiliated with the Complainant in any way. Nor has the Complainant given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Complainant’s trademark.

The Respondent is not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests. In the instant case, the Registrar identified the Registrant as “Naoki Mori”, which does not resemble the disputed domain name in any manner. Furthermore, at the time of filing the Complaint, the Respondent was using a privacy Whois service, which past panels have also found to equate to a lack of legitimate interests.

The Respondent was using the disputed domain name to direct Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. For instance, the website at which the disputed domain name resolved featured multiple third-party links for scientif ic and medical instruments. Presumably, the Respondent received PPC fees f rom the linked websites that were listed at the disputed domain name’s website. Prior UDRP decisions have consistently held that respondents that monetize domain names using PPC links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, the Respondent was not using the disputed domain name to provide a bona fide of fering of goods or services as allowed under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii).

The disputed domain name was registered and is being used in bad faith.

The Complainant and its trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark well before the Respondent’s registration of the disputed domain name on July 30, 2024.

At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark registrations. Registration of a domain name containing a well-known trademark constitutes bad faith per se. In addition to the numerous trademark registrations filed in connection with the Complainant’s business prior to the Respondent’s registration of the disputed domain name on July 30, 2024, the Complainant has received numerous awards including the 2024 Microsof t Intelligent Manufacturing Award for its Smart Return Agriculture technology; the 2024 Good Design Award for the NanoSight Pro; and the 2023 CARS&MRE Recognition Award for Sustainable

Solutions for the Epsilon 1 x-ray analyser. These awards demonstrate the Complainant’s fame. Further, performing searches across a number of Internet search engines for “panalytical” only returns links referencing the Complainant and its business.

The Policy that bad faith can be established by evidence demonstrating that the Respondent has website. By creating this likelihood of confusion between the Complainant’s trademark and the disputed

“intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website…by
creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, af f iliation, or
endorsement of the web site or location of a product or service on [the Respondent’s] website or location.”
Here, the Respondent created a likelihood of confusion with the Complainant and its trademark by
registering a domain that is identical to the Complainant’s trademark, which demonstrates that the
Respondent was using the disputed domain name to confuse unsuspecting Internet users looking for the

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domain name, leading to misperceptions as to the source, sponsorship, af f iliation, or endorsement of the disputed domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademark in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple PPC links previously posted to the Respondent’s website.

The disputed domain name currently resolves to an inactive site and is not being used, though past panels have noted that the word bad faith “use” in the context of paragraph 4(a)(iii) of the Policy does not require a positive act on the part of the Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy, paragraph 4(a)(iii). The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith, with no good faith use possible. More specifically, where the disputed domain name is identical to the Complainant’s trademark, there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name. The only feasible explanation for the Respondent’s

registration of the disputed domain name is that the Respondent intends to cause confusion, mistake and
deception by means of the disputed domain name.

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding

The Complaint was filed in English, while the language of the Registration Agreement is Japanese. In the Complaint, the Complainant requests that English be the language of the proceeding, soliciting the Panel to exercise the authority under paragraph 11(a) of the Rules to determine the language of the proceeding.

Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- the Complaint was f iled in English;

- the Complainant is a company in the UK, and represented by a Swedish f irm;

- the Respondent, notified of the Complaint in both Japanese and English, has not responded either to the Complaint or the Complainant’s request that English be the language of the proceeding; and

- ordering the translation of the Complaint would only result in extra delay of the proceeding and

additional cost for the Complainant.

6.2. Substantive Issues
A. Identical or Confusingly Similar

It is well accepted that the f irst 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 3.0, section 1.7.

The Complainant has trademark registrations for its trademark PANALYTICAL in various jurisdictions including Benelux and U.S. In addition, the entirety of the mark is reproduced within the disputed domain name. The addition of “.xyz” Top-Level Domain, as a standard registration requirement, should be

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disregarded for the purpose of the first element confusing similarity test. Accordingly, the disputed domain

name is identical to the Complainant’s trademark for the purposes of the Policy.

The Panel f inds the f irst 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 dif f icult task of “proving a negative”, requiring information that is of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

The Respondent’s name is Naoki Mori, which is not at all similar to the disputed domain name. Moreover, the Respondent used a privacy WhoIs service, and did not reply to the Complainant’s contentions. Accordingly, there is no evidence on record showing that the Respondent has been commonly known by the disputed domain name.

As will be discussed below with respect to the third element of the Policy, the Respondent’s use of the disputed domain name cannot be regarded as use of a bona f ide of fering of goods or services, nor a legitimate noncommercial or fair use.

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.

The Panel f inds 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 Complainant’s trademark registration predates the Respondent’s registration of the disputed domain name by more than 20 years. The Panel f inds that the Complainant’s trademark PANALYTICAL is not a dictionary word. Noting the Complainant’s long use and registration of its trademark and in the absence of a response f rom the Respondent, the Panel f inds on balance that the Respondent knew or should have known of the Complainant’s trademark when registering the disputed domain name, and intended to cause confusion between the Complainant and the Respondent.

The disputed domain name was previously used to direct Internet users to a website having multiple PPC links. Therefore, the Panel concludes that the Respondent registered the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, af f iliation, or endorsement of the Respondent’s website. Accordingly, the Panel finds that the disputed domain name was used in bad faith.

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Currently, the disputed domain name is not used in an active manner. However, the non-use of the disputed domain name would not prevent a finding of use in bad faith under the well-accepted doctrine of passive holding. WIPO Overview 3.0, section 3.3. In the present case, the Panel notes the distinctiveness or reputation of the Complainant’s trademark; the disputed domain name was initially used for commercial gain by causing a likelihood of confusion; the Respondent concealed its identity by using a privacy WhoIs service, and did not reply to the Complainant’s contentions; and the composition of the disputed domain name targets the Complainant. Considering these circumstances, the Panel concludes that the current non- use of the disputed domain name does not change the Panel’s finding of the Respondent’s use in bad faith.

The Panel f inds 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 <panalytical.xyz> be transferred to the Complainant.

/Keiji Kondo/ Keiji Kondo Sole Panelist Date: September 3, 2025