The Complainant is DeepMind Technologies Limited, United Kingdom, represented by Baker & McKenzie, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Ofer Eshed, Youngtek Solutions Limited, Israel, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2020. On March 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2020 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 amendment to the Complaint on March 24, 2020. Prior to the receipt of the amendment to the Complaint, the Center received email communications from the Respondent on March 17 and 23, 2020 notifying its objection to the Complaint. The substance of the objections communicated in these emails was elaborated in the Response. The Center verified that the Complaint together with the amendment to 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 March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The Response was filed with the Center on April 10, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 24, 2020. 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 researches, develops and markets artificial intelligence applications. It was founded in 2010 in the United Kingdom. In 2014, it was acquired by Google and is now a wholly owned subsidiary of Alphabet Inc. In 2016, the Complainant achieved considerable media attention around the world when its AlphaGo program beat the then world champion at Go. Another program, AlphaZero has defeated the most powerful computer programs playing Go, Chess and Shogi. The Complainant is the owner of numerous registered trademarks for DEEPMIND around the world. The registered trademarks include: (a) European Union Trade Mark No. 014527931 for a range of services related to artificial intelligence and computer software development in International Classes 35, 41 and 42 which was filed on September 3, 2015 and registered on December 29, 2015; (b) United States Registered Trademark No. 5,686,469 for a range of services in International Classes 35 and 42, which was filed on September 3, 2015 and registered on February 26, 2019; (c) Japanese Registered Trademark No. 5848221 in respect of a range of goods and services in International Classes 35, 41 and 42, which was filed on September 3, 2015 and registered on May 13, 2016; (d) Canadian registered Trademark No. TMA1026975 for all goods and services in International Classes 35, 41 and 42, which was filed on September 14, 2015 and registered on June 17, 2019. There are also a number of other trademarks for DEEPMIND filed in 2018. The countries in which the Complainant has registered trademarks do not include Israel. The Respondent registered the disputed domain name on May 23, 2016. The disputed domain name resolves to a website which is headed: “Deep Mindy Ask Mindy” adjacent to a digital image of a woman’s head inside a silhouette of the letter “D”. Immediately below the head appears the text: “Computers driving our cars, beating humans at Go. Below that text are “buttons” providing functionality for a user to upload a picture to find similar faces, another to “browse all porn faces”. There is also a “button” labelled “Fap” which takes the user to a number (said to be 100) images ranging from semi-clad persons to quite explicit pornography. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of a number of registered trademarks for DEEPMIND including, in particular, those identified in section 4 above. It is likely that in some circles, particularly those interested in computer programming and especially artificial intelligence and machine learning, the Complainant’s name DEEPMIND is very well-known. The disputed domain name consists of the Complainant’s trademark with the letter “y” added and the generic Top-Level Domain (“gTLD”), ".com". In undertaking the comparison between the Complainant’s trademark and the disputed domain name, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11. Disregarding the “.com” gTLD, the disputed domain name contains the whole of the Complainant’s trademark. The Respondent contends that the disputed domain name consists of the words “deep” and the girl’s name “Mindy” and consequently is not confusingly similar. The Respondent’s argument, however, misunderstands the nature of the inquiry under this requirement of the Policy. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0 , section 1.7 . As the disputed domain name contains the whole of the Complainant’s trademark, therefore, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. The disputed domain name is not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainant further states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. Indeed, having regard to the content of the Respondent’s website, the Complainant contends it would never consent to such use. These factors taken together are typically sufficient to raise the required prima facie case. The Respondent points out that there is no advertising on its website. It says it has not used the disputed domain name for commercial gain. Rather, it is making a legitimate noncommercial use. While the Complainant contends that the use of a confusingly similar domain name for a website directed to pornography tarnishes its trademark and is therefore not a legitimate interest under the Policy, the Respondent points out that there are legitimate uses of pornographic material such as the purchase of pornography by sperm banks and hospitals to assist donors. The Respondent says it has developed a “Face Finder Browser (FFB) based on artificial intelligence algorithms”. This enables users to find faces of (i) porn actors and (ii) other individuals who have facial expressions similar to the facial expressions appearing on photos uploaded by the users. This, says the Respondent, is a completely legitimate application providing regular free of charge entertainment to many people. The content of the Respondent’s website may, or may not, be legal; even the answer to that question may depend on the location where the user is logging into the website from. That is not really the issue. The issue under the Policy is whether the Respondent has rights or legitimate interests in using a domain name confusingly similar to the Complainant’s trademark. The Respondent denies that it has adopted the disputed domain name with an intention for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. According to the Respondent, the disputed domain name consists of the two words “deep” and the woman’s name “Mindy”. The Respondent says it adopted the word “deep” as a reference to the ground-breaking pornographic film “Deep Throat” and chose “Mindy” as it is a woman’s name. According to the Respondent the resemblance (such as it is) to the Complainant’s trademark is purely coincidental. The Panel notes, first, that the Respondent’s contention that pornography is only a limited part of its service is belied by the headline text on its website ending with the declaration that “AI is for porn”. Secondly, the adoption of the word “Deep” may well have been intended as a reference to “Deep Throat”. There is nothing in the Respondent’s explanation to indicate why “Mindy” was the particular woman’s name the Respondent chose to combine with “Deep” in the disputed domain name. Mindy is not (so far as the Wikipedia summary discloses) the name of a significant character in “Deep Throat”. The Respondent has also pointed to a list of famous women named “Mindy” included in Annex 2 to the Response. This is a list extracted from Wikipedia. The list is arranged alphabetically. It does not appear that any of the real or fictional characters included in this list have been associated with the kind of exploits featured in “Deep Throat” or would otherwise attract the attention of those seeking pornography. On the other hand, it is very difficult to credit that people working in the field of artificial intelligence, such as the Respondent and its employees developing an entertainment vehicle using artificial intelligence algorithms, would have been unaware of the Complainant and its trademark. In particular, the Panel notes that the Complainant’s AlphaGo application became the first artificial intelligence to defeat a professional Go player in October 2015 and followed that up in March 2016 by defeating a 9th dan Go player, one of the top ranked players in the world. These events occurring, and attracting significant media attention, shortly before the Respondent registered the disputed domain name. In these circumstances, the Panel is unable to accept the Respondent’s claims that it has adopted the disputed domain name coincidentally. Rather, on the record in this proceeding, it appears much more likely that the Respondent adopted the disputed domain name to trade on its resemblance to the Complainant’s trademark. That conduct does not qualify as a legitimate noncommercial or fair use under the Policy, all the more so as both the Complainant and the Respondent appear to be active in the field of developing and exploiting artificial intelligence applications. In addition, contrary to the Respondent’s assertions, it also appears likely to tarnish the reputation of the Complainant’s trademark. The Respondent also points out that it has been using the disputed domain name undisturbed since 2016. It is well-established under the Policy, however, that delay (if there has been delay) does not bar a complaint under the Policy. See e.g. WIPO Overview 3.0, section 4.17. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. For the reasons the Panel has not been able to accept the Respondent’s claim to rights or legitimate interests in the disputed domain name set out in section 5B above, the Panel finds it is highly likely the Respondent was well aware of the Complainant when the Respondent adopted the disputed domain name. As the Complainant points out, that conclusion is reinforced by the text appearing at the top of the Respondent’s website: “Computers driving our cars, beating humans at Go. This text makes specific reference to functionality for which the Complainant’s products are particularly well-known, especially in the field of artificial intelligence. The Complainant’s successes against professional Go players has already been mentioned. It has also been publicised widely that artificial intelligence and in particular the Complainant’s applications are being used in connection with the development of self-driving cars. As discussed in section 5B above, it appears that the Respondent has adopted the disputed domain name because of its trademark significance. The fact (if it be a fact) that the Respondent does not derive revenue from the website does not exonerate the Respondent. It appears nonetheless to be trading on the Complainant’s trademark without authorisation to develop and expand the user base for its service and its own artificial intelligence application. In these circumstances, noting that the Respondent’s claims to rights or legitimate interests in the disputed domain name have not been accepted, and that the Panel finds on the balance of probabilities that the Respondent was aware of the Complainant and registered the disputed domain name because of its trademark significance, the Panel finds the Respondent has registered and used it in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. As the Complaint was not brought in bad faith, there is no need to consider the Reverse Domain Name Hijacking requested by the Respondent. 6. 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 Warwick A. Rothnie
Nonsense! We all know what they are for A.I. is for PORN!”
Nonsense! We all know what they are for A.I. is for PORN!”
Sole Panelist
Date: May 11, 2020
Full & Egal Universal Law Academy