WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ulysses GmbH & Co. KG v. Domain Protection Services, Inc. / Catalina DC

Case No. D2020-3240

1. The Parties

The Complainant is Ulysses GmbH & Co. KG, Germany, represented by Newman Du Wors LLP, United States of America.

The Respondent is Domain Protection Services, Inc., United States of America / Catalina DC, Brazil.

2. The Domain Name and Registrar

The disputed domain name <ulysseswindows.com> (the “Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 2020, 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 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. A person named Shen Min sent an email communication to the Center on December 7, 2020. No further response was received by the Center. Accordingly, the Center notified the commencement of the Panel Appointment Process on January 9, 2021.

The Center appointed John Swinson as the sole panelist in this matter on January 21, 2021. 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

The Complainant is Ulysses GmbH & Co. KG, a German limited partnership. The Complainant is the owner and developer of the Ulysses application, a software application available on Apple, Inc.’s macOS and iOS systems that is used for writing (the “Complainant’s App”). According to the Complaint, the Complainant’s App was first released in 2003 and has since been downloaded by “hundreds of thousands” of customers around the world. The Complainant promotes the Complainant’s App in various ways, including via its website and on Apple Inc.’s iOS and Mac app stores.

The term “Ulysses” has been used by the Complainant in relation to the Complainant’s App since 2003. The Complainant is the owner of United States registered trade mark number 5491847 for ULYSSES, which claims a first use in commerce date of July 1, 2003 and which was registered on June 12, 2018 (the “Trade Mark”). The Complainant also owns the domain name <ulysses.app> which incorporates the Trade Mark.

The Respondent is Catalina DC, an individual of Brazil. No formal response was received from the Respondent, so little is known about the Respondent. According to the Complaint, the Respondent’s full name is “Catalina Del Castillo”. The Disputed Domain Name was registered on December 11, 2016. As at the date of this decision, the Disputed Domain Name redirects to a website that sells “Inspire” software, a writing app for the Windows operating system. The Complainant has also provided evidence that the Disputed Domain Name previously resolved to a website selling similar software under the brand “ULYSSES”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

The Complainant owns a registered trade mark for ULYSSES and has used ULYSSES in connection with the Complainant’s App since 2003. The Complainant’s App has long been recognised as the premier plaintext and markdown writing app available for Apple's operating system. The Disputed Domain Name is confusingly similar to ULYSSES.

Rights or legitimate interests

The Disputed Domain Name previously resolved to a website dedicated to an unauthorised version of the Complainant’s App for the Windows operating system (the “Unauthorised App”). This website misappropriated content from the Complainant’s own website. The Complainant submitted a complaint to Microsoft Corporation in relation to the Unauthorised App and the Unauthorised App was then removed from the Windows store. Currently, users who visit the Disputed Domain Name are redirected to <inspire‑writer.com>, which resolves to a website operated by Sunisoft Limited offering writing software designed to compete with the Complainant’s App.

The Complainant has not licensed the Respondent or any third parties to create a Windows version of the Complainant’s App.

Registered and Used in Bad Faith

As outlined above, the Disputed Domain Name was previously used to advertise the Unauthorised App and currently redirects to a website advertising a product designed to compete with the Complainant’s App. In using the Disputed Domain Name in this way, the Respondent is threatening the Complainant’s reputation.

The Complainant has also received customer support requests in relation to the Unauthorised App that was previously offered on the website at the Disputed Domain Name. The Complainant has had to dedicate time and resources to these requests to minimise harm caused by customer confusion.

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 enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s failure to file a Response.

A. Procedural Issues – correct Respondent

On December 7, 2020, a person named Shen Min sent an email communication to the Center stating that he or she did not know much English. The Center invited Shen Min to identify herself or himself, clarify her/his relationship (if any) to the Respondent, and provide information sufficient to establish the legitimacy of the submission in the context of the current proceeding. No further communications were received from this individual.

The Complainant has provided evidence that Shen Min is the registrant of the website to which the Disputed Domain Name now redirects to (at <www.inspire-writer.com>). The Panel does not know what the arrangements are between Shen Min, Sunisoft Limited, and Catalina DC. It may be that the Disputed Domain Name has been sold or leased from Catalina DC to Shen Min or Sunisoft Limited. The Panel has discretion to determine the Respondent against which this case should proceed and the Panel considers the individual Catalina DC (as also confirmed by the Registrar) to be the Respondent in this case and in any event may be working in concert with Shen Min (see section 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel is also satisfied that at least one person connected to the Disputed Domain Name has received notice of the dispute.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “windows”. In the circumstances of this case, the Panel considers that the reference to “windows” in the Disputed Domain Name is likely a reference to Microsoft Corporation’s Windows operating system. WINDOWS is a trade mark owned by Microsoft Corporation (see e.g., United States registered trade mark number 1872264).

Where the complainant’s trade mark is recognisable within a disputed domain name, the addition of other terms including third-party marks is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element (see section 1.12 of WIPO Overview 3.0).

In the Panel’s view, the addition of “windows” to the Disputed Domain Name does not prevent a finding of confusing similarity with the Trade Mark, and is relevant to the second and third elements insofar as it has been used to advertise and promote an unauthorised version of the Complainant’s App for the Windows operating system. Accordingly, the Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark.

The fact that the Complainant’s Trade Mark was registered in 2018, after the registration of the Disputed Domain Name, does not by itself preclude the Complainant’s standing to file a UDRP case, nor this Panel’s finding of identity or confusing similarity (see section 1.1.3 of WIPO Overview 3.0). In any event, as is relevant for the second and third elements, the Complainant has provided evidence demonstrating its use of the Trade Mark since 2003, including that the Complainant’s App has been downloaded by hundreds of thousands of individuals and has been advertised by the Complainant on its website at <ulysses.app> and on Apple’s iOS and Mac app store. The Complainant has also provided convincing evidence that the Respondent has targeted the Complainant and used the Disputed Domain Name to pass off the Respondent’s software product as being affiliated with the Complainant. This supports the Complainant’s contention that it likely acquired common law rights in the Trade Mark as a result of its use in connection with the Complainant’s App well prior to the registration of the Disputed Domain Name.

The Complainant is successful on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

At one time in the past, the Disputed Domain Name was used to advertise and promote the Unauthorised App. The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name, or to use the Trade Mark in connection with the Unauthorised App. The Complainant has provided evidence that large parts of the Complainant’s website and marketing material, as well as the Trade Mark and the Complainant’s other “butterfly” trade mark, have previously been used on the website at the Disputed Domain Name in order to pass off the Unauthorised App as a genuine Windows version of the Complainant’s App. This has led to actual consumer confusion amongst the Complainant’s customers. It can be inferred from this evidence that the Respondent was aware of the Complainant at the time it registered the Disputed Domain Name, and chose the Disputed Domain Name in order to create an impression of association with the Complainant and the Complainant’s App. Such use is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to the Policy.

The Disputed Domain Name currently redirects to a website which offers another piece of writing software for the Windows operating system. Panels have consistently found that use of a trade mark in a domain name for a website that offers competing services to the trade mark owner (in circumstances where there is evidence that the domain name registrant has targeted the trade mark owner) is not a bona fide offering of goods or services (see Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 and the cases cited therein).

The Respondent has not provided any evidence that it is commonly known by the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent had the opportunity to refute the Complainant’s prima facie case but failed to submit a Response.

In light of the above, the Complainant is successful on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

As stated above, the Complainant has provided evidence demonstrating its use of the Trade Mark since 2003, including that the Complainant’s App has been downloaded by hundreds of thousands of individuals and has been advertised by the Complainant on its website at <ulysses.app> and on Apple’s iOS and Mac app store. The Complainant has also provided convincing evidence that the Respondent has targeted the Complainant and used the Disputed Domain Name to pass off the Respondent’s software product as being affiliated with the Complainant.

Further, as discussed in detail above, the Disputed Domain Name has been used by the Respondent firstly to promote an app that the Respondent passed off as being connected to the Complainant, and secondly to redirect to another website promoting a similar app under another name which competes with the Complainant’s App. The Disputed Domain Name reproduces the Trade Mark in its entirety, with the addition of the word “windows”, which arguably corresponds to the Complainant’s natural zone of expansion. The Respondent used a privacy service to register the Disputed Domain Name. The Respondent has also sought to cause confusion by reproducing the Complainant’s other trade marks on the Respondent’s website, and has actually caused confusion amongst consumers. Based on these factors, the Panel considers it more likely than not that the Respondent registered the Disputed Domain Name in bad faith to target the Complainant.

In the Panel’s view, the Complainant has demonstrated that by using and registering the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark. This is evidence of registration and use in bad faith.

In light of the above, the Complaint is successful on the third element of the Policy.

E. Appropriate Remedy

The Complainant has requested that the Disputed Domain Name be transferred to the Complainant. In this case, the Disputed Domain Name also contains the trade mark of a third party, being Microsoft Corporation. The Complainant has not included any evidence of Microsoft Corporation’s consent to file this case or for the Disputed Domain Name to be transferred to the Complainant. This does not prevent the Panel from rendering a decision on the merits (see section 1.12 of WIPO Overview 3.0). However, some panels in these circumstances have considered it appropriate to issue a procedural order to seek assurance from the relevant third party mark owner, or to make any transfer order without prejudice to the concerned third party’s rights (see eg Aldi GmbH & Co. KG, Aldi Stores Limited v. Ronan Barrett, WIPO Case No. D2016-2219 and Philip Morris USA Inc. v. Whoisguard Protected, Whoisguard, Inc. / MARK JAYSON DAVID, WIPO Case No. D2016-2194). Some panels have also elected to cancel the disputed domain name (Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020), although the consensus among panelists seems to be that such an order should only be made in exceptional circumstances (see section 1.12 of WIPO Overview 3.0).

This Panel adopts the consensus view that there is no basis for denying the Complainant the remedy of transfer merely because the Disputed Domain Name contains, in addition to the Complainant’s Trade Mark, a trade mark owned by a third party (in this case, Microsoft Corporation). This transfer does not preclude Microsoft Corporation from bringing an action under the Policy or relevant law against the Complainant, if Microsoft Corporation considers the Complainant’s holding of the Disputed Domain Name to be in violation of the Policy or applicable law (see WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, WIPO Case No. D2012-0674).

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 <ulysseswindows.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: February 5, 2021