Decision for dispute CAC-UDRP-108381

Both parties referred to the prior decision in WIPO Case No. D2025-4484 (Tüv Nord AG v. Ammar Khan), dated December 30, 2025. That case concerned the same domain name and the same registrant (Respondent), but involved a different complainant (Tüv Nord AG, rather than Tüv Süd AG).  The present Complainant (Tüv Süd AG) submits that it is not affiliated, from a corporate law perspective, with the complainant in the earlier case (Tüv Nord AG).

The Complainant has submitted evidence that it is the proprietor of the following trademarks (hereinafter referred to as the “Trademarks” or the “Complainant’s Trademarks”):

• European Union figurative trademark TÜV SÜD, with application number 003715901, filed on March 17, 2004 and registered on November 16, 2005, duly renewed, covering services in classes 35, 41, and 42;
• German word trademark TÜV SÜD, with registration number 30412680, filed on March 4, 2004 and registered on June 24, 2004, duly renewed, covering services in classes 35, 41, 42, and 44.

The Complainant also submitted certificates which, according to the Complainant, evidence ownership of the following trademark registrations in the United Arab Emirates:

• Word mark TÜV, with application number 46664 and registration number 37758, filed on March 17, 2002 and registered on April 19, 2003, for services in class 41;
• Word mark TÜV, with application number 46665 and registration number 39534, filed on March 17, 2002 and registered on May 10, 2003, for services in class 42.

The renewal certificate relating to the first mark (application number 46664; registration number 37758) states that it was renewed for a ten-year term from March 17, 2012 to March 17, 2022. The certificate relating to the second mark (application number 46665; registration number 39534) refers only to the initial ten-year term of protection from March 17, 2002 and does not contain any indication of renewal.

The Complainant has not provided evidence as to the current status of these marks. The Panel has, on its own initiative, consulted publicly available trademark databases but has not identified any information confirming that these marks remain in force.

Given that the burden of proof in these proceedings rests with the Complainant, the Panel will take into account only the above-mentioned European Union and German trademarks. The Panel will not take into account the alleged, but unsubstantiated, trademark rights in the United Arab Emirates.

The disputed domain name was registered on October 26, 2023, and is currently in active use for a website operated by a company identified as ‘Times United’ or ‘Times United Verifications and Inspections’.

FACTS ASSERTED BY THE COMPLAINANT:

The Complainant is a German company, founded in 1866, which operates in the fields of auditing, inspection, testing and system certification for industry. It has more than 1,000 locations and over 25,000 employees worldwide, including in Saudi Arabia, where it maintains six branches.

The Complainant further states that it is the owner of the Trademarks referred to above and that it owns a trade name and company identifier in Saudi Arabia, where it offers its services under the name TÜV SÜD.

FACTS ASSERTED BY THE RESPONDENT:

The Respondent submits that it operates a genuine Saudi business under the name ‘Times United Verifications and Inspections’ and that the disputed domain name is used in connection with that business. The Respondent states that it is active in the fields of inspection, testing, training and related certification services.

The Respondent further asserts that its business is duly established and registered in Saudi Arabia and refers to an investment licence issued by the Ministry of Investment indicating a capital of SAR 7 million, as well as its registration licence confirming its genuine presence in Riyadh.

THE COMPLAINANT’S CONTENTIONS

As regards the first element, the Complainant argues that the disputed domain name is confusingly similar to its TÜV and TÜV SÜD trademarks because it wholly incorporates the element “TÜV”, with the additional term “insp” merely describing “inspection” services and therefore not dispelling confusion. The omission of the umlaut is a mere technical necessity.

With respect to the second element, the Complainant contends that the Respondent lacks rights or legitimate interests because the domain name does not correspond to the Respondent’s company name “Times United” and was deliberately chosen to evoke the Complainant’s TÜV Trademark rather than any legitimate business identifier. It submits that the Respondent uses the domain to attract customers by creating a false impression of affiliation, which cannot constitute fair use even if confusion is dispelled after access to the website. The Complainant further questions the genuineness of the Respondent’s activities, alleging that the website serves primarily to divert customers and that services are in reality provided by a third party (Intercert), thereby reinforcing the absence of any bona fide offering. The Complainant also claims that the Respondent is using a privacy registration service.

As to the third element, the Complainant submits that the domain name was registered and is used in bad faith because the Respondent must have been aware of the well-known Complainant’s Trademarks, which predate the domain name and enjoy a strong presence, including in Saudi Arabia. It argues that the Respondent intentionally selected a domain name incorporating the Complainant’s Trademark in order to attract Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation. The addition of “insp”, which directly relates to the Complainant’s field of activity, is said to reinforce the misleading association and demonstrate targeting of the Complainant.

THE RESPONDENT’S CONTENTIONS

As regards the first element, the Respondent does not contest that the threshold test of confusing similarity may be met but emphasizes that this element is merely formal and that the decisive issues arise under the second and third elements. It nevertheless maintains that the domain name can plausibly be understood as an abbreviation of its business name ‘Times United Verifications and Inspections’, a view previously accepted in an earlier WIPO decision concerning the same domain name.

Regarding the second element, the Respondent argues that it has rights and legitimate interests because it operates a genuine business in Saudi Arabia under the name ‘Times United Verifications and Inspections’, supported by registrations, accreditations, client documents, and ongoing commercial activity. It submits that the domain name is a credible abbreviation of its business name and has been used in connection with a bona fide offering of services prior to notice of the dispute. The Respondent further contends that the website clearly presents its own branding, does not impersonate the Complainant, and has been recognised as legitimate in a prior WIPO decision, while the Complainant has failed to establish a prima facie case to the contrary.

As to the third element, the Respondent denies any bad faith registration or use of the disputed domain name, arguing that the domain name was chosen to reflect its own business description rather than to target the Complainant. It submits that there is no evidence of intent to impersonate the Complainant, sell the domain, or mislead users, and that the domain is used for an active, legitimate business website rather than for typical cybersquatting purposes. The Respondent also relies on the prior WIPO decision concerning the same domain name, which found no bad faith and recognised the genuineness of its business, and asserts that the present Complaint merely repeats previously rejected allegations.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has not shown the Respondent to lack rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has not shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Confusing similarity

The disputed domain name incorporates the textual element “TUV” of the Complainant’s Trademark (without the umlaut), together with the additional term “INSP” and the generic Top-Level Domain (“gTLD”) “.com”.

For the purposes of the first element of the Policy, it is well established that the assessment of identity or confusing similarity is limited to a comparison between the domain name and the trademark, and does not take into account factors such as the scope of the trademark, its figurative elements, the geographical scope of protection, or the location of the parties.

The addition of the term “INSP”, which may be understood as an abbreviation of “inspection”, does not prevent a finding of confusing similarity. On the contrary, as it relates to the Complainant’s field of activity, it may reinforce an association with the Complainant.

Likewise, the absence of the umlaut in “TUV” does not avoid confusing similarity. It is well established that the omission of diacritical marks, including umlauts, does not prevent a finding of confusing similarity under the first element.

Finally, it is well established that the inclusion of a Top-Level Domain (“TLD”) is a standard technical requirement of domain name registration and is disregarded for the purpose of the comparison.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

Rights or legitimate interests

As regards paragraph 4(a)(ii) of the Policy, while the overall burden of proof rests with the Complainant, panels have recognised that this should not result in the often impossible task of proving a negative. Accordingly, it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Once such a prima facie case is established, the burden of production shifts to the Respondent to put forward relevant evidence demonstrating rights or legitimate interests. If the Respondent fails to do so, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. Conversely, where the Respondent advances evidence of rights or legitimate interests, the Panel must assess all the circumstances of the case, with the overall burden of proof remaining on the Complainant.

In the present case, the Panel finds that the Complainant has not established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy. 

While it is correct that the Complainant’s trademark registrations predate the registration of the disputed domain name, the only trademarks for which the Complainant has provided evidence of current validity are those registered in the European Union and Germany (i.e., the “Trademarks” referred to above). The Complainant did not provide evidence of valid trademark rights in Saudi Arabia, where the Respondent is based and carries on its business. There is no evidence that the Respondent is specifically targeting customers in the European Union or Germany.

The Panel has already explained why it cannot take into account the other alleged trademarks (due to the absence of evidence of renewal). For completeness, the Panel notes that those marks relate to the United Arab Emirates, which is a separate jurisdiction from Saudi Arabia, from where the Respondent appears primarily to conduct its business.

Furthermore, the Complainant’s Trademarks consist of the word elements “TÜV SÜD”, whereas the disputed domain name contains only the element “TUV” and does not include “SÜD” or “SUD”. The Panel is not persuaded that the mere use of the element “TUV” in the domain name necessarily refers to the Complainant. The Complainant’s own materials indicate that “TÜV” may be used more broadly to refer to a category of technical inspection organisations (referred to as “TÜVs” in the Complainant’s own company brochure), rather than exclusively to the Complainant.

Importantly, the Respondent has provided evidence that it operates under the name “Times United Verifications and Inspections”, including use of that name on its website available via the disputed domain name, in email signatures, on audit reports, on company stamps (used on quotations, purchase orders and examination reports), on certificates (including certificates of membership, registration and qualifications), and on training attendance records.

Moreover, the Complainant has not provided evidence demonstrating that its Trademarks enjoy a particular reputation, whether generally or in Saudi Arabia. The Complainant has submitted evidence of a commercial licence relating to its Abu Dhabi Business Centre, involving TÜV SÜD Middle East LLC and a local partner (establishment date: February 24, 2001; licence issued on December 20, 2017; expiry date: December 19, 2018). However, the Complainant has not provided evidence that this commercial licence—relating to Abu Dhabi rather than Saudi Arabia—remains valid nor that it is relevant to the Respondent’s activities in Saudi Arabia.

In this context, the elements “TUV” and “INSP” in the disputed domain name may plausibly be understood as abbreviations referring to the Respondent’s trade name. The Panel does not find any evidence that the Respondent registered or is using the domain name to target the Complainant, to impersonate the Complainant, or to attract Internet users by creating a likelihood of confusion with the Complainant’s Trademarks.

In light of the above, the Panel finds no persuasive basis to conclude that the Respondent targeted the Complainant or its Trademarks, whether at the time of registration of the disputed domain name or thereafter. On the contrary, the Panel considers it plausible that the Respondent registered and is using the disputed domain name in connection with its own business, without reference to the Complainant.

Accordingly, the Panel finds that the Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

Bad faith

In light of the Panel’s finding that the Complainant has failed to establish the second element of paragraph 4(a) of the Policy, the Panel need not address the Complainant’s assertions that the Respondent registered and used the disputed domain name in bad faith. Nevertheless, for the sake of completeness, the Panel sets out its conclusions on the third element of paragraph 4(a) of the Policy.

Based on the screenshots of the website linked to the disputed domain name, submitted by the Respondent, it is apparent that the Respondent refers to itself not only by its company name “Times United Co. Ltd.”, but also by the trade name “Times United Verifications and Inspections”. The Panel notes that the disputed domain name consists of the textual elements “TUV” and “INSP” (or “TUVINSP”), which may reasonably be understood as referring to that trade name.

While the Complainant relies on trademark rights in “TÜV SÜD” in Germany and the European Union (and alleges rights in “TÜV” in the United Arab Emirates, albeit without providing evidence of valid and subsisting registrations), the record suggests that other entities also use the terms “TÜV” or “TUV” in connection with similar services. The Complainant has not provided sufficient information regarding the scope of its Trademarks, nor any convincing explanation as to why the Respondent would be precluded from using the term “TUV” in the disputed domain name.

The Panel finds that the Respondent’s use of these terms in the disputed domain name does not, in itself, establish bad faith. This is particularly so in the absence of evidence that the Complainant’s Trademarks enjoy a particular reputation. Although the Complainant asserts that its Trademarks are well known to the relevant public in Saudi Arabia, it has not provided supporting evidence of reputation, such as sales figures, advertising or marketing activities, or other indicia of market presence in that jurisdiction. Nor has it established that the Complainant’s Trademarks were particularly well known at the time of registration or use of the disputed domain name.

The Complainant has also failed to provide evidence that the Respondent intentionally targeted the Complainant or sought to disrupt its business. On the contrary, the Complainant appears to acknowledge that the Respondent’s website does not create an impression of affiliation with the Complainant, stating in the Complaint that: “The fact that it might be clear to Internet users visiting the respondent’s website that it is not operated by the complainant does not eliminate the trademark infringement, since at that moment the exploitation of the brand's attention and the attracting of customers have already taken place.”

The Complainant has not provided evidence that the Respondent has used the Complainant’s Trademarks (or otherwise referred to the Complainant) on the website to which the disputed domain name resolves, or in any other manner.

In these circumstances, the Panel finds that the Complainant has failed to provide sufficiently persuasive evidence or arguments demonstrating that any of the circumstances set out in paragraph 4(b) of the Policy—or any other indicia of bad faith registration and use—are present in this case.

Accordingly, the Panel concludes that the Complainant has not established that the Respondent registered or used the disputed domain name in bad faith within the meaning of Paragraph 4(a) (iii) of the Policy.

REVERSE DOMAIN NAME HIJACKING

According to Paragraph 15(e) of the Rules, “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Panel notes, in particular, that in the prior WIPO case No. D2025-4484, decided on December 30, 2025, concerning the same domain name and the same registrant (the Respondent), the Respondent had already argued that the domain name refers to its trade name “Times United Verifications and Inspections”, used in commerce in Saudi Arabia.

In that recent prior decision, the panel held, inter alia:

“The Panel finds that the disputed domain name represents a credible choice of domain name to represent the verification and inspection services offered by that business – i.e., using “tuv” to indicate “Times”, “United” and “Verification”, and “insp” to indicate “inspection”. In those circumstances, to rebut the appearance of rights or legitimate interests in the disputed domain name, the Complainant must show that the Respondent’s business and/or website do not represent a bona fide business venture, but are instead a sham or pretext for the bad-faith use of the disputed domain name to target the Complainant’s trademark.”

“The Panel does not find in this case that the Respondent’s business and/or website represent a sham or pretext aimed primarily at bad-faith exploitation of the Complainant’s trademark rights. The Respondent has produced substantial evidence of its trading activities, and the Panel does not consider its website to bear the hallmarks of a deceptive site.”

This prior decision was known to the Complainant, as it is expressly referenced in the Complaint. Notwithstanding this, the Complainant failed to engage with a key factual element, namely the Respondent’s use of the trade name “Times United Verifications and Inspections”. Instead, the Complainant asserted that the disputed domain name <tuvinsp.com> cannot be regarded as corresponding to the Respondent’s company name “Times United”, without addressing the Respondent’s established use of that trade name.

The Panel considers that the Complainant knew, or ought to have known, that the Respondent relied on this trade name, that the prior panel had found the disputed domain name to refer to that name, and that the Respondent was therefore found to have rights or legitimate interests in the disputed domain name. Despite this, the Complainant failed to address this issue in any meaningful way.

Moreover, the prior decision explicitly indicated that a successful complaint would require evidence that the Respondent’s business or website was not a bona fide enterprise but rather a sham or pretext for bad-faith targeting. The Complainant has entirely failed to address this point or to provide any such evidence.

In summary, in a recent case – known to the Complainant - involving the same domain name, the same registrant, and materially similar facts, the reasons for the failure of the complaint under the second and third elements were clearly articulated. Notwithstanding this, the Complainant filed the present Complaint without presenting any credible evidence capable of supporting those elements. In these circumstances, the Panel finds that the Complainant knew or ought to have known that it could not succeed.

Finally, the Panel notes that the Complainant submitted misleading, or at least unsupported, evidence in relation to its alleged trademark rights in the United Arab Emirates and its commercial licence in Abu Dhabi.

In light of the above, the Panel finds that the Complaint constitutes an abuse of the administrative proceeding and amounts to Reverse Domain Name Hijacking.