The Complainant is Blue Prism Limited, United Kingdom (“UK”), represented by Arnold & Porter Kaye Scholer (UK) LLP, UK.
The Respondent is 张浩 (Web Master), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 October 30, 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 in English on November 2, 2020. On October 30, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 2, 2020. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 30, 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 is a UK company active in the software and artificial intelligence (the “AI”) industry. It was created in 2001 and has traded under the BLUE PRISM name and trademark since then. The Complainant’s product, Robotic Process Automation (the “RPA”) is a software that can execute business tasks via a software robot, or Digital Worker, which claims to execute and initiate systems-based tasks like a human. In November 2018, the Complainant launched an online marketplace under the brand name “Blue Prism Digital Exchange”, which is commonly shortened to and referred to as “Blue Prism DX”. The platform puts RPA and AI capabilities into the hands of business leaders. As such, the Complainant utilizes Blue Prism DX in the course of its online marketplace business and has been using it since November 2018. The Complainant operates its main official website at “www.blueprism.com”, and Blue Prism DX is accessible from it or directly at “www.digitalexchange.blueprism.com”. The Complainant owns several trademark registrations for BLUE PRISM, including, for example, the UK trademark registration number UK00003358091, registered on March 8, 2019; the European Union trademark registration number 018064213, registered on January 17, 2020; and the Chinese trademark registration number 38407113, registered on March 7, 2020. The disputed domain name was created on August 24, 2020. The Complainant submits evidence that the disputed domain name directed to an inaccessible website. On the date of this decision, this website still cannot be reached. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is confusingly similar to its registered trademarks for BLUE PRISM and its brand name Blue Prism DX, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are highly distinctive. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes registration and use in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, 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. The language of the Registration Agreement is Chinese, and the Complaint is filed in English. On October 30, 2020, the Center notified the Parties that the language of the Registration Agreement is Chinese, and invited the Parties to comment on the language of the proceeding. The Complainant confirmed its request that the language of the proceeding be English on November 2, 2020. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits. The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the disputed domain name consists of Latin scripts; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while he had the right to do so in Chinese or English); the fact that the Respondent used the disputed domain name and the email address “[…]@blueprismdx.com” to register an account named “Blue Prism Development & eXplorer Co. Ltd” on the Complainant’s Blue Prism DX platform, which indicates the Respondent can understand and use English; and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical 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; and (iii) the disputed domain name has been registered and is being used in bad faith. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has valid rights in the mark BLUE PRISM based on its use and registration of the same as a trademark globally. Moreover, it owns the online marketplace under the name Blue Prism DX, as a short form for “Blue Prism Digital Exchange”. As to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark BLUE PRISM in its entirety, followed by the letters “dx”. The applicable generic Top-Level Domain (“gTLD”) “.com” in this case is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s registered trademark BLUE PRISM, as its only distinctive feature. It is the Panel’s view that the addition of the letters “dx” after the Complainant’s registered trademark BLUE PRISM does not avert the confusing similarity between the disputed domain name and the trademark BLUE PRISM. Moreover, the Panel notes that the added letters “dx” is related to the Complainant’s Blue Prism DX platform. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark BLUE PRISM. The Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain name. The disputed domain name is inactive. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and prior registration of the Complainant’s trademarks, and composition of the disputed domain name related to the Complainant’s products, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s trademarks, was obtained in bad faith. Moreover, as stated above, the Complainant submits evidence that the Respondent used the disputed domain name and the email address “[…]@blueprismdx.com” to register an account named “Blue Prism Development & eXplorer Co. Ltd” on the Complainant’s Blue Prism DX platform. It shows the Respondent knows the Complainant, its products and its trademarks, and the Respondent intends to mislead consumers using the Complainant’s Blue Prism DX platform that the Respondent is somehow connected, associated with, authorized or endorsed by the Complainant, which is not the case. Furthermore, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns the registered trademarks for BLUE PRISM and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name. As to use of the disputed domain name in bad faith, the disputed domain name resolves to an inactive webpage. UDRP panels have found that this would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The Panel finds so under the circumstances of this case. The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademarks, the distinctiveness of the Complainant’s trademarks, and the fact that the Respondent attempted to register on the Complainant’s Blue Prism DX platform using the disputed domain name. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has registered and is using the disputed domain name in bad faith. Finally, the Respondent failed to provide any response or evidence to establish his good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy. 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 Deanna Wong Wai Man
Sole Panelist
Date: January 20, 2021
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