The Complainant is Boston Dynamics, Inc., United States of America (“United States”), represented by Arent Fox LLP, United States.
The Respondent is Jukovskii Roman, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 27, 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 May 28, 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 amended Complaint on May 29, 2020. The Center verified that the Complaint, together with the amended 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Center received two emails communications from the Respondent on June 20 and June 21, 2020, respectively. On June 22, 2020, the Center informed the Complainant that should the Complainant wish to explore settlement options with the Respondent, the Complainant should request a suspension of the proceeding by June 27, 2020, pursuant to paragraph 17 of the Rules. No request for suspension was received by the Center. Accordingly, on June 29, 2020, the Center informed the Parties that it would proceed to panel appointment, pursuant to paragraph 6 of the Rules. The Center appointed Nick J. Gardner as the sole panelist in this matter on July 2, 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 was founded in 1992 at the Massachusetts Institute of Technology. It is an engineering and robotics company that has gained a significant following for its groundbreaking and distinctively designed robots, and today is well known for its advanced robotics. It has recently made available a quadrupedal robot named “Spot” for commercial purchase and leasing by customers which has attracted widespread interest. The Complainant is the owner of various trademarks for the term BOSTON DYNAMICS - for example United States Trademark Registration No. 5,811,310 filed on November 7, 2018, and registered on July 23, 2019. These trademarks are referred to in this decision as the “BOSTON DYNAMICS trademark”. The Disputed Domain Name was registered on June 23, 2019. The filed evidence shows it has been linked to a website (the “Respondent’s Website”) which purports to offer for sale the Complainant’s “Spot” robot and which in substance impersonates the Complainant’s business. The filed evidence shows the Respondent’s Website is being used to fraudulently deceive customers who believe they are dealing with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows. The Disputed Domain Name is identical to its BOSTON DYNAMICS trademark. The Respondent has no rights or legitimate interests in the term “Boston Dynamics”. In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the fraudulent nature of the Respondent’s Website is clear evidence of bad faith. B. Respondent The Respondent did not substantively reply to the Complainant’s contentions. In the Respondent’s email communications of June 20 and 21, 2020, the Respondent asked what amount the Complainant would be willing to pay for the Disputed Domain Name and asked for more time to “study this issue”. The Center informed the Respondent that an automatic extension could be granted under paragraph 4(b) of the Rules, but no reply was received from the Respondent and the Center proceeded with panel appointment on June 29, 2020, having given the Respondent an additional eight days to respond to the Center’s email. 6. Discussion and Findings Preliminary Matters The Panel notes that no substantive Response has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any substantive Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the BOSTON DYNAMICS trademark. Although the Complainant’s earliest registered trademark was not registered until after the date the Disputed Domain Name was registered that does not matter for the purposes of establishing the first element. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.shop”, does not generally affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the BOSTON DYNAMICS trademark. The Complainant has prior rights in the BOSTON DYNAMICS trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455). The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith In the present circumstances the fact that the Disputed Domain Name was linked to the Respondent’s Website which impersonated the Complainant’s own website and which was used to fraudulently deceive customers lead the Panel to conclude the registration and use were in bad faith. The Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark in order to facilitate a scheme where the Respondent’s website impersonated that of the Complainant and was part of a scheme to defraud customers who believed they were dealing with the Complainant. It does not matter that the Complainant’s registration of its trademark only occurred after the Disputed Domain Name was registered – the evidence establishes the Complainant was well known long before the Disputed Domain Name was registered and it is quite clear the Respondent chose the Disputed Domain Name because it was in substance the same as the Complainant’s name. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. In the present case the Panel has no hesitation in concluding that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” (Policy paragraph 4(b)(iv)). In the present case, the Panel concludes that the deliberate use of the Complainant’s BOSTON DYNAMICS trademark as part of the Disputed Domain Name, was intended to enable the Respondent to attract for commercial gain visitors to the website. The fact that the commercial gain in question is associated with some form of dishonest behaviour does not matter – indeed it emphasizes the bad faith involved. Further the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists. Finally, the Panel notes that the Respondent has attempted cyberflight during the present proceeding, having the Disputed Domain Name moved to a new registrar in order to delay or avoid implementation of this Decision. Such action further supports a finding of bad faith in this case. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner
Sole Panelist
Date: July 16, 2020
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