The Complainant is Formlabs Inc. of Somerville, Massachusetts, United States of America ("United States"), represented by Lewis & Lin, LLC, United States.
The Respondent is Eduard de Boer, Wezacon of Deventer, the Netherlands, self-represented. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with eNom, Inc. The disputed domain name is registered with Sitebytes BV (the "Registrar").
Hereafter collectively referred to as the "Disputed Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2018, 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 Complainant requested that English be the language of the proceeding on July 16, 2018.
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 July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. The Center received various email communications from the Parties between July 12, and August 5, 2018. A first communication from the Respondent, dated July 12, 2018, contained a brief statement of facts and a reference to a webpage providing legal information about the Disputed Domain Names and the Respondent's trademark rights. On July 16, 2018, the Respondent sent a communication setting out arguments in its defense. Other communications by the Complainant on July 16, 2018 and by the Respondent on July 17, 2018 contained arguments related to the language of the proceedings, where the Complainant requested the language of the Proceedings to be in English and the Respondent requested the language of the Proceedings to be in Dutch. On July 23, 2018, following the notification of the Complaint, the Center received another communication by the Respondent in Dutch containing arguments related to the evidence provided by the Complainant in its Complaint. After the Center requested the Respondent to confirm that his latest communication was to be regarded as his complete Response, the Respondent filed a final Response with the Center on August 8, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 14, 2018. 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, Formlabs Inc., is a 3D printing technology developer and manufacturer based in the United States. The Complainant's business was founded in 2011 by students of the Massachusetts Institute of Technology. The Complainant has raised investments of more than USD 85 million to develop and manufacture desktop 3D printers and related software and consumer goods. On September 26, 2012, the Complainant launched a Kickstarter campaign to fund the development and commercialization of its "Form 1" 3D printer. The campaign met its USD 100,000 goal within 2.5 hours and went on to raise almost USD 3 million.
The Complainant is the holder of several trademark registrations across various jurisdictions throughout the world for the mark FORMLABS, which it uses in connection with its 3D printing business. The Complainant's trademark portfolio includes, inter alia, the following trade- and service mark registrations:
- FORMLABS, word mark registered with the United States Patent and Trademark Office ("USPTO") under No. 4432238 on November 12, 2013, with a date of first use on November 22, 2011, and first use in commerce on April 1, 2013 in international class 9;
- FORMLABS, international word mark registered with the World Intellectual Property Organization ("WIPO") under No. 1221634 on June 30, 2014, in international classes 1 and 9 in numerous jurisdictions, including the European Union ("EU").
The disputed domain names , , , , and were registered by the Respondent on September 26, 2012. The Disputed Domain Names currently all redirect to , which resolves to a website displaying a picture of person which is presumably the Respondent and providing information related to the manufacturing and sale of jewelry using a combination of 3D printing and casting technology.
According to evidence provided by the Complainant, the Disputed Domain Name was used in 2014 to resolve to a website offering for sale the domain names , , , , , , , , , and . Evidence provided by the Complainant also shows that the Disputed Domain Name was further used in 2015 to resolve to a website displaying an academic text that discusses 3D printing and was later changed in the beginning of 2018 to display a webpage offering for sale the domain names , , , , , , and respectively for an amount of 2500 EUR each.
After the launch of the Complainant's Kickstarter campaign on September 26, 2012, the Respondent commented on the project using his Kickstarter account on September 27, 2012 by stating "A new way to start with 3D printing. Good luck for you all. Thanks for charing [sic] the world!" and again on October 3, 2012, by commenting "Look nice [sic]. Waiting to have one". The Respondent later pledged an amount of USD 2,999 to the campaign on October 26, 2012, in exchange for which he would receive a Form 1 3D printer and consumer goods. Later, on November 26, 2013, the Respondent contacted the Complainant's customer support regarding problems he was experiencing with his Form 1 3D printer. This back and forth communication between the Respondent and the Complainant's customer support continued until July 2, 2014.
One of these communications by the Respondent, dated April 1, 2014, does not relate to the Respondent's customer issue. The communication includes an unsolicited offer by the Respondent to sell several of the Disputed Domain Names and explicitly states: "I have an offer for formlabs. . All domainnames Formlabs can buy for total of 45.000,- euro + two form 1 printers [sic]".
The Complainant's customer service did not respond to this offer but forwarded the mail internally to the Complainant's Chief Product Officer. The Complainant did not initially respond to the Respondent's offer but offered to call the Respondent regarding his offer on August 25, 2014. The Complainant later sent an email to the Respondent offering to buy the previously offered domain names in exchange for a new Form 1+ printer and several additional advantages. In the same email, the Complainant stated that it would have the possibility to acquire the domain names by filing UDRP proceedings considering the Complainant's pre‑dating trademark rights but prefers to find an amicable solution and possibly establish a business relationship.
In an email dated August 28, 2014, the Respondent declined the Complainant's offer and provided that the Complainant could always make him a better offer. On the same day, the Complainant replied by reserving its right to start proceedings to recover the domain names. The Respondent replied to this email by stating: "If you think. It all yours. You can give it a try. To get all Formlabs domainnames away from me. I already checked with an advisor the "word mark" Formlabs by today. There is no change ad all to take it away from me. Becose the word mark claimed later. Also I use the domainnames by my self with a nice website. It's a good experiment what will happen. I'm patient with this. If you get it. I give you a nice wine. Red or white? If not. I let open the doors for new offers from you to me. We will find out our ways. Near future. [sic]".
The Complainant did not respond to this communication. On February 19, 2015 the Respondent sent an email to the Complainant stating: "Long time back talked with you. Everything fine with you? How is all going on [sic]". Again, the Complainant did not respond to this communication.
Three years later, on April 13, 2018, the Complainant's counsel eventually contacted the Respondent to present an offer of "$3,000 for all of the domain names listed on F, or $2,500US for just , , , and ". The Complainant's counsel also indicated in the communication that the Complainant was "aware of potential trademark concerns". On May 21, 2018, the Complainant's counsel made a new offer to purchase the , , , and , , and for USD 5,000. In the same communication, the Complainant's counsel indicated that the Respondent's conduct could constitute actionable conduct under the United States Anti-Cybersquatting Consumer Protection Act. The Complainant's counsel set a deadline until May 25, 2018, to respond to its offer. After not having received a response, the Complainant's counsel reiterated the offer together with a more substantiated notice of infringement on June 5, 2018. Finally, on June 12, 2018, the Respondent replied to the Complainant's offer and notice letter by indicating that he had already registered FORMLABS as a figurative Benelux trademark. The Respondent continued that this registration would preclude the Complainant from recovering the domain names at question and would not allow the use of the FORMLABS mark in the Benelux by another party. The Respondent concluded by stating that the Complainant "can make a proposal. To take over the domain names and the official trademark. The written prices offered have now expired. I will look at this carefully [sic]".
On August 27, 2014, the Respondent had filed a Benelux trademark application for the following figurative mark:
- , figurative mark registered with the Benelux Office for Intellectual Property ("BOIP") under No. 0970195 on April 27, 2015, in class 14.
Until recently, the Disputed Domain Names were used in connection with websites indicating that the Disputed Domain Names were for sale or displaying a standard academic article on 3D printing. The Disputed Domain Names are currently being used to refer to a website providing information related to the manufacturing and sale of jewelry using a combination of 3D printing and casting technology. 5. Parties' Contentions A. Complainant
The Complainant considers the Disputed Domain Names to be identical and confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainant, the Respondent has not used the Disputed Domain Names in connection with a legitimate use and was not licensed by the Complainant to register the Disputed Domain Names. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Names and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Names were registered and are being used in bad faith. The Complainant contends that the Respondent clearly knew of the existence of the Complainant's business and its trademark. The Complainant further claims that the Respondent has registered the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Names and that the Respondent has filed a fraudulent Benelux trademark application to prevent the Complainant's exercise of its rights.
The Complainant considers that the language of the proceedings should be English as there is sufficient evidence to show that the Respondent can understand the English language, that the language of the registration agreements of four out of the five Disputed Domain Names is English, and that it would be unduly prejudicial to the Complainant if it had to translate the Complaint into Dutch. B. Respondent
The Respondent claims to have rights and legitimate interests in respect of the Disputed Domain Names. The Respondent contends that at the time of the registration of the Disputed Domain Names, the Complainant had no trademark rights in the term "formlabs" and the Respondent was therefore free to register the Disputed Domain Names. The Respondent further contends that by not taking effective action over the course of six years against both the Respondent's Benelux trademark and the Disputed Domain Names, instead trying to negotiate the transfer of the Disputed Domain Names in exchange for varying amounts of money, the Complainant has effectively acquiesced in the Respondent's use of the FORMLABS mark and that it is no longer possible for the Complainant to take any action against the Respondent. The Respondent claims that his Benelux trademark registration predates the Complainant's EU trademark registration resulting from the international filing through the Madrid protocol and that the Respondent therefore was first to establish rights in the FORMLABS trademark and the Disputed Domain Names on "Euopean territory". Lastly, the Respondent asserts to have always declined the offers of the Complaint to purchase the Disputed Domain Names as these offers were not reasonable and did not correspond to the costs incurred by the Respondent for registering and renewing the Disputed Domain Names.
The Respondent considers that the language of the Proceedings should be Dutch as his command of the English language is not sufficient to understand the arguments of the Complainant and the rationale of the decision. The Respondent contends that, as he is residing in the Netherlands and does not sufficiently understand English, the costs of legal support and translation would be unduly prejudicial. The Respondent claims that he needed to use Google Translate to translate the website connected to the Disputed Domain Names to English and in his communication to the Complainant and to the Center. 6. Discussion and Findings 6.1. Language of the Proceedings
As the Complaint was not filed in the language of the Registration Agreement (Dutch) of one of the five Disputed Domain Names, namely , and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on this matter, having regard to the circumstances of the case. Indeed, paragraph 11(a) of the Rules reads: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding".
In cases where the use of the English language in the proceedings would not be prejudicial to the interests of a respondent, whereas it would be a disadvantage for a complainant to be forced to translate the complaint, panels may decide for the English language to be accepted as the language of proceedings (see e.g., The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, where a respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement).
This can for instance be the case where a respondent understands English, but is not proficient in writing. In such cases and in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their arguments, and that both parties be equally treated the administrative proceedings, panels may agree to receive and consider all documents and written submissions filed in other languages than the language of the proceedings (see Red Nacional de Ferrocarriles Españoles v. Jesús Hidalgo Álvarez,WIPO Case No. D2000-1025).
In the present case, the Respondent has shown in his previous communications with the Complainant and with the Center that he is proficient in understanding English. After receiving the registrar verification, all communications by the Center to the Parties were transmitted in both English and Dutch. As the Respondent had the opportunity to communicate and respond in Dutch, the rights of the Respondent to defend himself and the right to equal treatment are respected. In his Response, the Respondent has also shown to have understood the argumentation of the Complainant. Most importantly, for four out of the five Disputed Domain Names, the Respondent has entered into an English registration agreement, rendering his "argument" moot. In such circumstances, the Panel finds that it would be a disadvantage for the Complainant to be forced to translate the Complaint. In any event, the Panel is fluent in both English and Dutch and properly reviewed the contentions of both parties in the respective languages.
For these reasons, the Panel determines that the language of the proceedings is English. 6.2. Substantive Elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the 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.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Names. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark 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 Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights.
The Disputed Domain Names , , , , and reproduce the Complainant's FORMLABS trademark in its entirety. It is well established that the applicable Top Level Domain ("TLD") in domain names are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test (see section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
Therefore, the Disputed Domain Names are identical to the Complainant's FORMLABS trademark.
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Names and that the Respondent's use and registration of the Disputed Domain Names was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed other than the Respondent putting USD 2,999 in the Complainant's Kickstarter account.
However, the Respondent seems to have acquired trademark rights on April 27, 2015, following a Benelux trademark registration for a figurative mark containing the term "formlabs". The Respondent argues that he was first to establish rights in such mark on "European territory", precluding the Complainant from taking any action against him, especially considering the fact that the Disputed Domain Names were already registered six years ago, and the Benelux trademark was filed four years ago.
However, the registration of a trademark which corresponds to a disputed domain name does not automatically or necessarily establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the Complainant's exercise of its rights (see section 2.12.2 of WIPO Overview 3.0). As a result, such trademark rights should be recognized only if the overall circumstances in the case show that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered and not obtained merely to circumvent the application of the Policy (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450, , and ; Aukro Ukraine LLC v. PrivacyY, Igor Spodin,WIPO Case No. D2013-1568, ; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M", WIPO Case No. D2000-0847, ; Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379, et al.; British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817, ).
In the case at hand, the Respondent applied for trademark registration in the Benelux for its figurative mark containing the sign "formlabs" on August 27, 2014, and the trademark was registered on April 27, 2015. The Complainant's FORMLABS trademark was already applied for in the United States with the USPTO on April 1, 2013, and was registered on November 12, 2013; the date of first use of the mark was established as November 22, 2011. The registration date of the Complainant's international FORMLABS trademark, which includes registration in the European Union, is June 25, 2014. Both these registrations thus pre-date the Respondent's filing. The Respondent's argument that the Complainant's international registration was only accepted on September 9, 2015, is not relevant as the date of protection is based on the priority date related to the Complainant's earlier trademark registration with the USPTO.
Based on the evidence in this case, the Respondent was clearly aware of the Complainant and its trademark rights when he registered the Disputed Domain Names and when he applied for the registration of the Benelux trademark. The Disputed Domain Names were registered on the day the Complainant publicly launched its Kickstarter campaign for its 3D printer product. The Respondent was clearly aware of and interested in this project as he had commented on the project page and had pledged approximately USD 3,000 to the campaign. Before applying for the Benelux trademark, the Respondent had been in numerous conversations with the Complainant, both regarding the Complainant's product and the sale/transfer of the Disputed Domain Names. It was the Respondent who first engaged the Complainant with an unsolicited offer to sell several of the Disputed Domain Names together with other domain names incorporating the FORMLABS trademark for USD 45,000. The Respondent only applied for the Benelux trademark after the Complainant had sent a notice of infringement together with an offer to purchase the Disputed Domain Names.
Moreover, the Respondent has provided no evidence whatsoever of "use in commerce" or any preparations for the use in commerce in the Netherlands or elsewhere of the trademark FORMLABS, except from a very recent website providing information related to the manufacturing and sale of jewelry using a combination of 3D printing and casting technology. Before, the Disputed Domain Names were used in connection to websites indicating that the Disputed Domain Names were for sale or displaying a standard academic article on 3D printing.
The Panel determines that the circumstances indicate that the Respondent has likely applied for and has registered its Benelux trademark in an attempt to secure to himself trademark rights in the term "formlabs" and thus to try to legitimize its ownership of the Disputed Domain Names, prevent the exercise of the Complainant's rights and circumvent the application of the UDRP, while being well aware of the Complainant, its goodwill in its trademark and its established position in the market.
The Respondent's registration of his figurative Benelux trademark containing the sign "formlabs" does not establish that the Respondent was known by the Disputed Domain Names within the meaning of paragraph 4(c)(ii) of the Policy, nor does it otherwise establish that the Respondent has rights or legitimate interests in the Disputed Domain Names.
In addition, the Panel is of the opinion that the Respondent is not "making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" (Policy, paragraph 4(c)(iii)).
In view of the foregoing, the Panel considers that the Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the acquisition of a domain name 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.
Normally, when a domain name is registered before the Complainant's relied-upon right is shown to have been first established, the registration of the domain name is not in bad faith because the registrant could not have contemplated the Complainant's then non-existent right. As a result, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent (see section 3.8.1 of the WIPO Overview 3.0). However, bad faith could still be found in specific limited circumstances where the facts of the case establish that the Respondent's intent in registering the domain name was to capitalize unfairly on the Complainant's nascent trademark rights (see section 3.8.2 of the WIPO Overview 3.0).
As already established by the Panel, the Respondent was clearly aware of the Complainant and its business following its Kickstarter campaign on September 26, 2012. That same day, the Respondent proceeded to register the Disputed Domain Names, while he clearly could have contemplated the Complainant's emerging rights. The Panel finds that the Respondent's awareness of the Complainant and its (nascent) trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, supra; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007).
The Respondent first contacted the Complainant regarding the Disputed Domain Names with an unsolicited offer to acquire several of the Disputed Domain Names, together with other domain names registered with different country code Top-Level Domains ("ccTLDs") containing the FORMLABS mark, for a price of USD 45,000. Such an amount clearly exceeds the Respondent's out-of-pocket costs directly related to the Disputed Domain Names, indicating that the Respondent registered or acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names to the Complainant who is the owner of the trademark or service mark for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Names. After this initial offer, the Parties have repeatedly entered into negotiations regarding the acquisition of the Disputed Domain Names and related domain names with different ccTLDs. The Respondent has always requested a better offer from the Complainant to transfer the Disputed Domain Names and/or his Benelux trademark.
The Panel does not consider the fact that the Complainant has made repeated offers to acquire the Disputed Domain Names over the course of several years to demonstrate that the Complainant has in any way accepted or acquiesced in the Respondent's conduct. While he was clearly aware of the Complainant and its rights, the Respondent has only waited until very recently to actively use the Disputed Domain Names in connection to a website providing information related to the manufacturing and sale of jewelry using a combination of 3D printing and casting technology. Before, the website connected to the Disputed Domain Names had long displayed an offer that the Disputed Domain Names were for sale. This further indicates the Respondent's bad faith intention to sell the Disputed Domain Names to the Complainant.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith. 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 Names, , , , , and be transferred to the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: August 28, 2018
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