Malvern Panalytical Limited v Ubillus Arce, Ubillus LLC

WIPO Case No. D2025-1912

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Malvern Panalytical Limited v. Ubillus Arce, Ubillus LLC

Case No. D2025-1912

1. The Parties

The Complainant is Malvern Panalytical Limited, United Kingdom, represented by CSC Digital Brand

Services AB, Sweden.

The Respondent is Ubillus Arce, Ubillus LLC, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <malvernpanalyticals.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2025. On May 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 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 (Domain Administrator See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 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 amended Complaint on May 19, 2025.

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 May 19, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2025.

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The Center appointed Edward C. Chiasson K.C. as the sole panelist in this matter on June 16, 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. Factual Background

In 2017, Malvern Instruments merged with PANalytical to form Malvern Panalytical. Malvern Panalytical is a leader in advanced sensors and instruments used to measure, analyze, and characterize materials, as well as monitor ultra-clean manufacturing environments. Malvern Panalytical’s instruments combine cutting edge

engineering with the latest developments in data analytics and Artificial Intelligence – allowing industries and
researchers to understand the world with absolute precision.

Malvern Panalytical has developed an impressive number of patents and innovative technologies since 2017. Today, Malvern Panalytical, together with its associated entities and their subsidiaries, employs more than 2,500 people across twenty countries and supports a global client base both in the private sector and academia.

Malvern Panalytical has received numerous awards including the 2024 Microsoft Intelligent Manufacturing
Award for its Smart Return Agriculture technology; the 2024 Good Design Award for the NanoSight Pro, the
2023 CARS&MRE Recognition Award for Sustainable Solutions for the Epsilon 1 X-Ray analyzer. Malvern

Panalytical has developed an impressive number of patents and innovative technologies since 2017.

The trademarks relevant to this instant matter are:

JURISDICTION/TM REGISTRATION REGISTRATION

TRADEMARK IC CLASS

OFFICE NUMBER DATE

MALVERN

EUIPO 017025354 November 24, 2017 42

PANALYTICAL

MALVERN

UKIPO 00917025354 November 24, 2017 42

PANALYTICAL

1, 7, 8, 9, 11,

MALVERN UKIPO 00003298785 35, 37, 41,

PANALYTICAL July 6, 2018 42
1, 7, 8, 9, 11,

MALVERN WIPO 1449502 35, 37, 41,

PANALYTICAL	October 29, 2018	42
MALVERN	1, 35, 37, 7,

PANALYTICAL CIPO TMA1191375 8, 9, 41, 42, 11

July 25, 2023

March 12, 2004

MALVERN UKIPO 00002364672 9

April 30, 2010

MALVERN WIPO 1062769 9

Malvern Panalytical has a strong Internet presence with more than 150 registered domain names containing its MALVERN trademark.

The disputed domain name is <malvernpanalyticals.com>. It was registered on July 9, 2024.

The Respondent appears to be located in the United States of America.

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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 Complaint asserts that the disputed domain name is confusingly similar to a trademark in which the

Complainant has rights.

The Complainant is the owner of the MALVERN PANALYTICAL trademark.

The disputed domain name varies from the Complainant’s trademark by just the addition of one letter. The domain name.

Respondent has merely added the letter “s” to the end of the Complainant’s MALVERN PANALYTICAL
trademark. The disputed domain name is confusingly similar to the Complainant’s trademark.

The Respondent is not sponsored by or affiliated with the Complainant in any way and has not been given permission to use the Complainant’s trademarks in any manner. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.

The Respondent is not commonly known by the disputed domain name. This evidences a lack of rights or legitimate interests.

At the time of filing the Complaint, the Respondent was using a privacy WhoIs service. (See Jackson
National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No.
D2011-1855).

The Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services. The Respondent has set up the email address “[…]@malvernpanalyticals.com” to impersonate an employee of the Complainant’s and send phishing emails to unsuspecting jobseekers, attempting to trick them into believing they are being offered job opportunities with the Complainant. This guise is used to solicit personal and sensitive information. To support this impression, the Respondent has included the address of Malvern Panalytical Inc., United States subsidiary of Malvern Panalytical, along with the Complainant’s logotype. The Respondent prepared a PDF document with falsified information, which was attached to the phishing email.

The Respondent was attempting to impersonate the Complainant as part of a fraudulent email phishing scheme. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) at section 2.13.1). Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account

access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests
on a respondent.

Following a takedown performed by the Complainant, the disputed domain name now resolves to a blank page that lacks content. The Respondent has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evidences a lack of rights or legitimate interests in them, as confirmed by

numerous past Panels.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered on July 9, 2024, which is significantly after the Complainant filed for registration of its MALVERN PANALYTICAL trademark with the EUIPO, UKIPO, WIPO and CIPO and

significantly after the Complainant’s first use in commerce of its trademark in 2017. The registration of the

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disputed domain name also was significantly after the Complainant’s registration of its
<malvernpanalytical.com> domain name. \

At the time of the initial filing of the complaint, the Respondent used a privacy service to hide its identity, which past panels have held serves as further evidence of bad faith registration and use.

The disputed domain name simply pluralizes the Complainant’s MALVERN PANALYTICAL trademark. This demonstrates a knowledge of and familiarity with the Complainant’s brand and business.

The disputed domain name comprises a one letter misspelling of the Complainant’s MALVERN PANALYTICAL trademark and was used for phishing purposes. “It defies common sense to believe that the Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 .

The Respondent is attempting to capitalize on typing errors committed by the Complainant’s customers in trying to locate the Complainant on the Internet. This has been described as “typosquatting” and has been taken as evidence of bad faith registration and use by past panels.

The disputed domain name currently resolves to an inactive site and is not being used. Past panels have noted that 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. Passively holding a domain name can be a factor in finding bad faith registration and use.

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 a complainant’s trademark and a disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview

3.0, section 1.2.1.

The entirety of the Complainant’s mark is reproduced within the disputed domain name with merely the
addition of the letter “s”. The disputed domain name is confusingly similar to the mark for the purposes of the

Policy. WIPO Overview 3.0, sections 1.7 and 1.9.

[The Panel finds the Complainant’s mark is recognizable within the disputed domain name. The disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section

1.7 and 1.9.

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.

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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 illegitimate and fraudulent activity, here use of fraudulent emails, 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, will be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent was well aware of the Complainant as evidenced by its use of the Complainant’s trademark with only the addition of the letter “s”. In addition, the disputed domain name was registered well after the Complainant’s trademarks were registered.

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.

The disputed domain name resolves to an inactive website.

Panels have held that the use of a domain name for illegitimate or fraudulent activity, here fraudulent emails,
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.

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 <malvernpanalyticals.com> be transferred to the Complainant.

/Edward C. Chiasson K.C./
Edward C. Chiasson K.C.
Sole Panelist
Date: July 2, 2025