Vitec Software Group AB v Marv Backman, software

WIPO Case No. D2024-5184

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Vitec Software Group AB v. Marv Backman, software

Case No. D2024-5184

1. The Parties

The Complainant is Vitec Software Group AB, Sweden, represented by Abion AB, Sweden.

The Respondent is Marv Backman, software, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <vitec-software.com> is registered with Realtime Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2024. On December 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 Complaint, and the proceedings commenced on December 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2025.

The Center appointed Archibald Findlay SC as the sole panelist in this matter on January 14, 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.

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4. Factual Background

The following facts and circumstances were found in the Complaint and its Annexures and, in the absence of challenge, have been accepted as background.

The Complainant is a well-known and leading provider of vertical software in Europe. Established in 1985, as of 2023, the Complainant counted 1,570 employees and a revenue of about EUR 140 million. In 2011, the Complainant was listed on the Nasdaq Stockholm Stock Exchange and in 2022 reached the Large Cap list, reflecting a market capitalization exceeding EUR one billion.

Serving over 24,600 customers across 40 business units in 11 countries, the Complainant’s operations span various sectors, including real estate, automotive, education, and healthcare, providing specialized software solutions.

The Complainant’s registered company name is “Vitec Software Group AB” and it is the holder of several trademark registrations encompassing the trademark VITEC, such as:

- International Registration No. 1318049 VITEC in class 42, registered on January 18, 2016;

- Swedish trademark No. 531267 VITEC in class 42, registered on April 17, 2016;

- European Union Trade Mark No. 018607907	in classes 9 and 42, registered on December
12, 2022;
- European Union Trade Mark No. 018607889	in classes 9 and 42, registered on December
12, 2022.

Furthermore, the Complainant is the owner of similar domain names, e.g. their primary domain name
<vitecsoftware.com> (registered on April 18, 2013). The Complainant also holds several similar domain
names, including <vitec-software.biz>, <vitec-software.net>, <vitec-software.info>, <vitec-software.dk>, and
<vitecsoftware.org>. The Complainant has, accordingly, owned rights and used the trademark extensively

before the disputed domain name was registered.

The disputed domain name was registered on August 30, 2024, and consists of Complainant’s entire VITEC
trademark, as well as the word “software”, separated by a hyphen – similar to Complainant’s domain name
<vitecsoftware.com>.

The disputed domain name does not presently resolve to an active website, and it is unclear if it has ever done so. Nevertheless, the Complainant issued a cease and desist order dated November 14, 2024, to which there has been no response.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the owner of registered trademarks for VITEC and highlights the recognition attained by it under that trademark. It asserts that the disputed domain name is confusingly similar to the trademark or service marks owned by the Complainant.

The Complainant avers that the Respondent lacks rights or legitimate interests in the disputed domain name and, to the best of the Complainant’s knowledge, the Respondent does not have any trademark rights to the term “vitec”. Neither has the Respondent received any license from the Complainant to use domain names featuring the VITECT trademark.

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The Complainant submits that the Respondent has not used, nor prepared to use, the disputed domain
name in connection with a bona fide offering of goods or services and neither is the Respondent making a
legitimate noncommercial or fair use of the disputed domain name. The Complainant further asserts that the
Respondent’s failure to address the correspondence sent to him is an additional indicator that the
Respondent has no rights or legitimate interest in respect of the disputed domain name.

Accordingly, the Complainant has set out, in detail, contentions supported by previous UDRP decisions as to why:

(a) the disputed domain name is identical or confusingly similar to the trademark or service marks owned by

the Complainant;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name was registered and is being used in bad faith.

The Complainant submits that it has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy and that the burden of production now shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. Moreover, the Complainant contends that the disputed domain name has been registered and is being used in bad faith for the purposes of 4(a)(iii) of the Policy.

The Complainant further 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

A. Substantive Elements of the Policy

Paragraph 15(a) of the Rules requires that:

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance

with the Policy, the Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a

trademark or a service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.

Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the
Respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii).

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B. Effect of Default

Notwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy. Such default does not, per se, entitle a complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is, nevertheless, not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).

However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with a requirement of the Rules (Allianz, Compaña de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No.

D2009-0942).

In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the
Respondent to submit a Response, particularly in the light of the fact that the Center wrote to the
Respondent when dealing with procedural matters and advising the Respondent of time limits.

From this, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO

Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard
Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v. Above.com Domain Privacy/Host
Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040; Knorr-Bremse AG. v. WhoisGuard

Protected, WhoisGuard, Inc. / Mosco Binzu, WIPO Case No. D2019-0616).

Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence
that the Respondent will be subjected to inferences that flow naturally from the information provided by the
Complainant (Reuters Limited v. Global Net 2000, Inc, supra; RX America, LLC. v. Matthew Smith, WIPO
Case No. D2005-0540; Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, supra; Standard
Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v. Above.com Domain Privacy/Host
Master, Transure Enterprise Ltd., supra; Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412;

Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).

C. 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 shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1 and the issue of “identical or confusingly similar” for the purposes of paragraph 4(a)(i) should be adjudicated upon by utilizing a side-by-side comparison to decide “whether the alphanumeric string comprising the challenged domain name is identical […] or sufficiently approximates [the trademark]”. (See Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.)

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The entirety of the mark is reproduced within the disputed domain name which is sufficient to establish that it
is confusingly similar to the Complainant’s registered mark (Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO
Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694;
Société Des Produits Nestlé SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016;
LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio

Electronico, WIPO Case No. D2021-4146).

Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

The addition of the term “software” and the hyphen between the words does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. (Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 and particularly Carvana, LLC v. Domains By Proxy, LLC. / Fundacion Comercio Electronico,

Carolina Rodrigues, WIPO Case No. D2022-1099).

The generic Top-Level Domain (“gTLD”) “.com” featured in the disputed domain name is viewed as a
standard registration requirement and not an element that generally would be taken into consideration when
evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name
(Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525;
Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis
Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382;
L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry’s Electronics,
Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Kabushiki Kaisha Toshiba d/b/a Toshiba

Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066).

Accordingly, the Panel finds the first element of the Policy has been established.

D. 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 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. (See also, Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Co, supra).

Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is evidenced by the Complainant in order to determine whether or not it has been so established.

The Complainant contends that it is the proprietor of the trademark VITEC and that the Respondent has not
been given any permission to register or use any domain name incorporating the trademark of the
Complainant.

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Apart from there being no authorization on the part of the Complainant, there is no evidence of a relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360).

Having reviewed the available record the Panel finds that, by failing to provide a response to the Complaint, the Respondent has not rebutted the prima facie case made by the Complainant.

The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.

E. 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
(WIPO Overview 3.0, section 3.2.1) 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, namely:

(i) circumstances indicating that [the respondent] has registered or [the respondent] has 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 [the respondent’s] documented out of pocket costs directly related to the

domain name; or

(ii) [the respondent] has 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 [the respondent] has

engaged in a pattern of such conduct; or

(iii) [the respondent] has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or

(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial again, Internet users to [the respondent’s] 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 [the respondent’s]

website or location or of a product or service on [the respondent’s] website or location.

Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

WIPO Overview 3.0, section 3.3. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Bridgestone South Africa Holdings (Pty) Ltd v. Anthony Marcus, Auto Align and Tire CC, and Glen Martin, WIPO Case No. D2023-1359).

The selection of a disputed domain name that is confusingly similar to the Complainant’s trademark and the
Complainant’s domain name <vitecsoftware.com>, particularly in the absence of any explanation, leads to
the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the
Complainant in the market and therefore selected the disputed domain name in circumstances where it was
aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC,
WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No.

D2012-1213).

The Panel is therefore satisfied that the Complainant has established the third element under paragraph
4(a)(iii) of the Policy.

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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 <vitec-software.com> be transferred to the Complainant.

/Archibald Findlay/

Archibald Findlay
Sole Panelist
Date: January 28, 2025