TÜv NORD AG v Saefullah Ahmad, Asri Utama

WIPO Case No. D2025-0459

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TÜV NORD AG v. Saefullah Ahmad, Asri Utama

Case No. D2025-0459

1. The Parties

Complainant is TÜV NORD AG, Germany, represented by TÜV Markenverbund e.V., Germany.

Respondent is Saefullah Ahmad, Asri Utama, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <tuv-inspector.com> (the “Domain Name”) is registered with CV. Rumahweb

Indonesia (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2025.
On February 5, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Name. On February 6, 2025, the Registrar transmitted by email to the Center its
verification response disclosing registrant and contact information for the Domain Name which differed from
the named Respondent (Domain Data Guard) and contact information in the Complaint. The Center sent an
email communication to Complainant on February 6, 2025, providing the registrant and contact information
disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.

Complainant filed an amendment to the Complaint on February 7, 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 Respondent of the Complaint, and the proceedings commenced on February 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2025. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on March 4, 2025.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 10, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant is part of a group of TÜV companies, founded as associations by German steam engine and boiler owners in the 1860s, providing regular tests, training courses, and uniform technical standards, which significantly improved system safety. Success in this area was extended and applied to many other systems to include products of all kinds, including vehicles, technical systems, services, and operational processes across a wide range of different industries to minimize hazards and prevent damages. Today, Complainant conducts and provides technical testing, inspection, and certification services to ensure safety, certainty, and reliability. ln addition to testing, inspection, and certification, the TÜV companies' range of services also include providing technical expert opinions, consultation, and training of employees, as well as consultancy and services in the field of occupational health and safety. Such services are provided all around the world including Indonesia, with approximately 71,162 experts working for seven TÜV companies, with an annual revenue in 2023 of € 7,623,029,000.

Complainant owns numerous registered trademarks for the TÜV mark and its variation TUV, in several jurisdictions, including:

- German registered trademark number 1005638, for the TÜV word mark registered on July 28, 1980;

- European Union registered trademark number 005825781 for the TÜV word mark, registered on June

19, 2008; and

- United Kingdom (“UK”) registered trademark number UK00001317937 for the TUV word mark,

registered on March 15, 1991.

These trademarks, which include Complainant’s German trademark TÜV and UK registered trademark TUV, will hereinafter be collectively referred to as Complainant’s “TUV trademarks”.

Complainant also has numerous trademark registrations for the “TÜV NORD” mark, including Indonesian
registered trademark number IDM000139603 for the TÜV NORD word mark, registered on October 10,
2007.

The Domain Name was registered on May 27, 2024 and at the time of filing of the Complaint, resolved to a website that offered technical testing and inspection, which is in the same area of business as Complainant. In particular, the website featured Complainant’s TUV trademarks, claimed to be “TUV inspectors”, and provided contact information that included a phone number of +[…] TUV-MAIL.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.

Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for TUV, and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known TUV products and services.

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Complainant notes that it has no affiliation with Respondent, and that Respondent is using the Domain Name as a tool to exploit Complainant’s reputation for its own commercial gain, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Further, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceedings

The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings.

Complainant submitted its original Complaint in English. In its Complaint and amended Complaint,
Complainant submitted its request that the language of the proceedings should be English. According to the
information received from the Registrar, the language of the Registration Agreement for the Domain Name is
Indonesian. Respondent did not submit any comment on Complainant’s submission.

Complainant submits: that both the Domain Name and content of the website are in English; that result in delay, if Complainant is required to translate the Complaint into Indonesian.

In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel accepts Complainant’s submissions regarding the language of the proceedings. The Panel also notes that the Domain Name does not have any specific meaning in the Indonesian language, and that the Domain Name is formed using Latin characters, contains Complainant’s TUV trademark in its entirety, and the Domain Name directed to a website that provided content that was in English. The Panel further notes that the Center notified the Parties in Indonesian and English of the language of the proceedings as well as notified Respondent in Indonesian and English of the Complaint. Respondent chose not to comment on the language of the proceedings, nor did Respondent choose to file a Response in Indonesian or English.

Having considered all the circumstances of this case, the Panel determines that English be the language of the proceedings.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

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(iii)      the Domain Name was registered and is being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an
admission that the complainant’s claims are true.

Thus, although in this case, Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite
rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1.
Complainant has provided evidence of its rights in the TUV trademarks, as noted above under section 4.
Complainant has therefore proven that it has the requisite rights in the TUV trademarks.

With Complainant’s rights in the TUV trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.

Here, the Domain Name is confusingly similar to Complainant’s TUV trademarks. The TUV trademark is recognizable in the Domain Name.

In particular, the Domain Name’s inclusion of Complainant’s TUV trademark in its entirety, with the letter “Ü” replaced by “U” (in the case of Complainant’s German trademark and noting that there is no such replacement in Complainant’s other registered trademarks such as its UK trademark) and the addition of the term “-inspector”, does not prevent a finding of confusing similarity between the Domain Name and the TUV trademark. See section 1.8 of the WIPO Overview 3.0.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes out such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its TUV trademarks, and does not have any rights or legitimate interests in the Domain Name. In addition, Complainant asserts that Respondent is not authorized to promote Complainant’s services and is not related to Complainant. Respondent is also not known to be associated with the TUV trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Name.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, the Domain Name resolved to a website that offered technical testing and inspection, which is in the same business and industry as Complainant. In particular, the website featured Complainant’s TUV trademarks, claimed to be “TUV inspectors”, and provided contact information that included a phone number of +[…]

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TUV-MAIL.

Such use by Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name.

Moreover, the nature of the Domain Name, incorporating the entirety of Complainant’s trademark TUV with the term “-inspector”, cannot be considered fair use as it may suggest an affiliation with Complainant that does not exist. See WIPO Overview 3.0, section 2.5.1.

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name.

Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain

Name, and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or
service on your website or location.”

The Panel finds that Complainant has provided ample evidence to show that registration and use of the TUV trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s TUV trademarks and related products and services are widely known and recognized. Therefore, the Panel is of the view of that Respondent was aware of the TUV trademarks when it registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property

Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
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Further, the registration of the Domain Name which is similar to Complainant’s TUV trademarks suggests
Respondent’s actual knowledge of Complainant’s rights in the TUV trademarks at the time of registration of
the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain

Name.

Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking
for bona fide and well-known TUV products and services of Complainant or authorized partners of
Complainant.

In particular, the evidence provided by Complainant indicated that at the time of filing of the Complaint, the Domain Name resolved to a website that offered technical testing and inspection, which is in the same area of business as Complainant. In particular, the website featured Complainant’s TUV trademarks, claimed to be “TUV inspectors”, and provided contact information that included a phone number of +[…] TUV-MAIL.

The use of the TUV mark in the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant’s products and services. Therefore, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s TUV mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. All these actions may result in tarnishing Complainant’s reputation and goodwill in the industry.

At the time of the Decision, the Domain Name resolved to an inactive webpage, which does not change the
Panel’s finding of Respondent’s bad faith under the circumstances of this case.

Further, the Panel also notes the failure of Respondent to submit a formal Response, or to provide any evidence of actual or contemplated good-faith use, its use of what appeared to be false contact information.

Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and

Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name <tuv-inspector.com> be transferred to Complainant.

/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: March 17, 2025