The Complainant is Illuminoo BV, Netherlands, represented by Lawfox Advocaten BV, Netherlands.
The Respondent is WhoisGuard, Inc., WhoisGuard Protected, Panama / Don Stanley, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, 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 September 6, 2019, 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 September 13, 2019. 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 September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. On September 17, 2019, the Complainant requested to suspend the proceeding. The Center notified the Parties that the proceeding was suspended until October 17, 2019, and upon the Complainant’s request, the suspension was extended until November 17, 2019. On November 13, 2019, the Complainant requested to reinstitute the proceeding. On November 18, 2019, the Center notified the Parties that the proceeding was reinstituted and the Response due date was December 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2019. The Center appointed Adam Taylor as the sole panelist in this matter on December 18, 2019. 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 operates in the field of artificial intelligence (“AI”). The Complainant’s main website is at “www.illuminoo.com”. According a post on this website dated February 8, 2016, the Complainant had created a new technology called “Noomi”, described as “a new form of self-learning AI, which allows users to gain insights about their own personal behavior, using real-time and multi-sensory behavior modelling, interaction and knowledge sharing”. The Complainant has also promoted this product on a dedicated website at “www.noomi.space”. The Complainant owns Benelux trade mark no. 0997362 for the word “noomi”, filed June 5, 2016, registered August 30, 2016, in class 9. The Complainant also owns European Union trade mark no. 018063096 for the word NOOMI, filed May 10, 2019, registered August 23, 2019, in class 9. The Complainant owned the disputed domain name until December 2, 2017, but failed to renew it. The disputed domain name was registered by a third party on December 16, 2017, and it was thereafter acquired by the Respondent in auction on or about April 1, 2019, for USD 100. On May 17, 2019, the Complainant sent a legal notice to the Respondent including an expression of interest in the buying the disputed domain name. The Respondent did not respond. As of May 19, 2019, the disputed domain name resolved to a registrar parking page with assorted pay per click (“PPC”) links. On the same date, the disputed domain name, described as a “premium” domain name, was listed for sale on the Registrar’s website for USD 23,041.15. At some point thereafter the disputed domain name was switched to a “for sale” page inviting offers of at least USD 10,000. 5. Parties’ Contentions A. Complainant The Complainant actively uses the NOOMI trade mark for all goods and services for which its trade marks are registered, including references on the Complainant’s own website and on the Dutch Innovation Awards website operated by Accenture. The disputed domain name is identical or at least confusingly similar to the Complainant’s trade mark. The Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence of use in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain name. This shown by the fact that the Respondent is hiding his identity behind a privacy service and the lack of any evidence to the contrary. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was registered and is being used in bad faith. It was registered primarily for the purpose of sale to the Complainant or a competitor of the Complainant. The term “Noomi” is used as a trade mark by several well-known high tech companies, not just the Complainant. The “.ai” suffix is popular amongst high tech software companies. The Respondent offered the disputed domain name for sale at a price which was substantially in excess of the purchase price it paid for the disputed domain name. The Respondent’s use of a privacy service shows that it has taken deliberate steps to ensure that its true identity cannot be determined and to prevent communications. This raises a presumption of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established rights in the mark NOOMI by virtue of its registered trade marks for that term. Disregarding the suffix, the disputed domain name is identical to the Complainant’s trade marks. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests As explained in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests and there is no rebuttal by the Respondent. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant argues that the Respondent registered the disputed domain name for sale to the Complainant or a competitor under paragraph 4(b)(i) of the Policy. The Complainant has, however, somewhat muddied the water by exhibiting a trade mark for NOOMI owned by a third party. This was apparently in the mistaken belief that “competitor” in paragraph 4(b)(i) of the Policy refers to an entity in the same industry as the complainant which is legitimately using the same or a similar name to that of the complainant. Whereas, in the Panel’s view, “competitor” in this context denotes a competing entity without a potentially legitimate interest in the domain name and whose most likely motive in acquiring the domain name would be to illicitly target the complainant in some way. This raises the question of whether the Respondent might have registered the disputed domain name for sale to that other party and not the Complainant. However, the Panel notes the following: 1. There is no evidence before the Panel as to the extent of the third party’s reputation in its trade mark as of the date of registration of the disputed domain name – albeit that the Complainant refers to it as “well known”. 2. The Complainant has used the name “Noomi” since at least February 2016, some three years before the Respondent registered the disputed domain name. 3. The Complainant previously owned the disputed domain name, a fact which may well have come to the attention of the Respondent. 4. The suffix “.ai” is particularly pertinent to the Complainant, which operates in the field of “artificial intelligence”. 5. Most importantly, the Respondent has not filed a Response to deny that it was aware of the Complainant on registration of the disputed domain name or that it acted in bad faith vis-à-vis the Complainant. For the above reasons, the Panel concludes on balance that the Respondent’s substantial asking price for the disputed domain name was indeed conceived with the Complainant (or a competitor) in mind and that the Complainant has established registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy. The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of 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 Adam Taylor
Sole Panelist
Date: January 15, 2020
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