Uline, Inc. v Juiam Luas

WIPO Case No. D2024-1975

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Uline, Inc. v. Juiam Luas

Case No. D2024-1975

1. The Parties

The Complainant is Uline, Inc., United States of America (“U.S.”), internally represented.

The Respondent is Juiam Luas, U.S.

2. The Domain Name and Registrar

The disputed domain name <ulinecareernavigator.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 10, 2024.

On May 14, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On the same May 14, 2024, 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 (REGISTRATION IS PRIVATE, PrivacyGuardian.org llc)

and contact information in the Complaint.

The Center sent an email communication to the Complainant on May 15, 2024, 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 June 12, 2024.

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 June 13, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was July 3, 2024. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on July 4, 2024.

page 2

The Center appointed Evan D. Brown, Kathryn Lee and Lynda M. Braun as panelists in this matter on

September 19, 2024. The Panel finds that it was properly constituted. Each member of 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 in the business of providing wholesale and retail mail order catalog and telephone order

services in the field of shipping supplies. It owns the mark ULINE for which it enjoys the benefits of

registration (e.g., United States Reg. No. 2165496, registered June 16, 1998).

According to the WhoIs information, the disputed domain name was registered on April 24, 2024.

The Complainant submitted evidence that the Respondent has used the disputed domain name to send

email messages while impersonating the Complainant, in an attempt to deceive would-be job seekers into

thinking they are applying for, and indeed being hired by, the Complainant. On April 25, 2024, a

representative of the Complainant sent a letter to the Registrar and an email address associated with the

disputed domain name, demanding that the unauthorized conduct cease. The record does not show any

indication that the Respondent complied with the demands of the letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the

Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed

domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy

have been satisfied: (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. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 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. Id. This element requires the Panel to consider

two issues: first, whether the complainant has rights in a relevant mark; and second, whether the disputed

domain name is identical or confusingly similar to that mark.

page 3

A registered trademark provides a clear indication that the rights in the mark shown on the trademark

certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde

Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights

because it has shown that it is the owner of valid and subsisting trademark registrations for the mark ULINE

as noted above.

The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or

confusingly similar to the complainant’s registered mark. See Britannia Building Society v. Britannia Fraud

Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the

Complainant’s trademark ULINE in its entirety. The additional words “career” and “navigator” do not prevent

the confusing similarity. See Johnson & Johnson v. Privacy Protected by Withheld for Privacy ehf / Fatih

Dolan, WIPO Case No. D2022-3076.

The Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a

prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain

name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate

interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See

WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

The record establishes the Complainant’s prima facie assertion that the Respondent lacks rights or legitimate

interests in the disputed domain name. For example, there is no indication that the Respondent has used or

has formed demonstrable preparations to use the disputed domain name in connection with a bona fide

offering of goods or services. Instead, it appears very clearly that the Respondent has used the disputed

domain name only to engage in deceptive conduct.

Nothing else in the record tips the balance in favor of the Respondent, who chose not to respond to the

Complainant’s assertions. Accordingly, the Panel finds that the Complainant has established this second

element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires the Complainant to establish that the disputed domain name was registered and is being

used in bad faith. Based on the available record, the Panel finds that the Respondent registered and is using

the disputed domain name in bad faith. Using the disputed domain name to send fraudulent email is a

strong example of bad faith under the Policy. See WIPO Overview 3.0, section 3.4; Aquent LLC v.

Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2019-0689.

The lack of response by the Respondent to this proceeding, and to the cease-and-desist letter sent by the

Complainant, further supports a finding of bad faith in the circumstances of this case. Past UDRP panels

have held that failure to respond to a cease-and-desist letter may be considered a further factor supporting a

finding of bad faith registration and use of a domain name. See LEGO Juris A/S v. Eveline Christiany,

WIPO Case No. D2011-2294.

Accordingly, the Complainant has satisfied this third element of the Policy.

page 4

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 <ulinecareernavigator.com> be transferred to the Complainant.

/Evan D. Brown/

Evan D. Brown

Presiding Panelist

/Kathryn Lee/

Kathryn Lee

Panelist

/Lynda M. Braun/

Lynda M. Braun

Panelist

Date: October 2, 2024