The Complainant is Ninebot (Tianjin) Tech. Co., Ltd., China, represented by Beijing Chofn Intellectual Property Agency Co Ltd, China.
The Respondent is REDACTED FOR PRIVACY, Privacy service provided by Withheld for Privacy ehf, Iceland / Root Butlicker, Denmark.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2021, 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 August 11, 2021, 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 August 13, 2021.
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 September 15, 2021. On September 17, 2021, the Respondent by email to the Center stated: “yeah i did not know any of those things. I am sorry but i cant pay anything but the site is down anyways i am not capable of giving money i dont have any i'm just a kid.”
The Center in an email directed to the parties on September 17, 2021, informed the Parties of the possibility to suspend the proceeding in order for the Parties to explore settlement options. On September 18, 2021, the Complainant responded as follows: “The complainant will never settle with the respondent. Please proceed with the procedure. Please go on. Thank u.”
In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2021. The Respondent did not submit a response. The Center appointed William R. Towns as the sole panelist in this matter on October 21, 2021. The Panel finds 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 BackgroundThe Complainant is a privately held company organized in Beijing, China in 2013. The Complainant operates in the field of short-distance transportation and service robots, trading under the “Ninebot” name, and has obtained trademark registrations for its NINEBOT mark in China on March 24, 2020.
The Respondent registered the disputed domain name on June 21, 2021. The Respondent then directed the disputed domain name to a website at “www.ninebot.cc”, on which the Respondent appears to be promoting the “Features of Bot” as a software product, stating “It’s time to use Bot in your server” and displaying on the Respondent’s website the copyright legend “NineBot©-2021”. A “bot” (or “robot”) is an automated software application programmed to perform certain tasks.
The Respondent presently is not using the disputed domain name with an active website.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the disputed domain name
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant observes that its NINEBOT mark was registered and used in commerce long before the Respondent registered the disputed domain name, and further contends that the Respondent’s use of the disputed domain name with a website displaying “NineBot ©” cannot be considered a “good faith use” of the NINEBOT mark.
The Complainant maintains that the disputed domain name has been registered and used in bad faith. The Complainant asserts that the NINEBOT mark is widely known, and maintains it would be impossible for the Respondent to have registered the disputed domain name without an awareness of the Complainant and the Complainant’s NINEBOT mark. The Complainant asserts that the disputed domain name has been “maliciously registered” and directed to a website displaying the copyright legend “NineBot©-2021” without content describing a “bot” product. The Complainant concludes that the Complainant’s use of the disputed domain name
The Complainant contends that the Respondent registered and has used the disputed domain name to attract for commercial gain Internet users the Respondent’s website in order to create a likelihood of confusion to with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. The Complainant also submits that the Respondent has engaged in a pattern of “passively using” the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name.
B. RespondentThe Respondent did not reply formally to the Complainant’s contentions. On September 16, 2021, the Respondent contacted the Center, expressing his willingness to settle. The Complainant did not accept Respondent’s offer to settle.
6. Discussion and Findings A. Scope of the PolicyThe Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000‑0270.
The Panel finds that the disputed domain name
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsAs noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s NINEBOT mark. Regardless, the Respondent registered the disputed domain name, wholly incorporating the Complainant’s NINEBOT mark, and then directing the disputed domain name to a website on which the Respondent appears to be promoting “Bot” as a software product.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainant and had the Complainant’s NINEBOT mark in mind when registering the disputed domain name, which as previously noted is identical to the Complainant’s mark. The record is convincing that the Respondent registered the disputed domain name with the intention of exploiting and profiting from the Complainant’s mark.
To the extent the Respondent might claim to be making a fair use of the disputed domain name, any reliance by the Respondent on decisions such as Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 (hereinafter “Oki Data”) would be misplaced. Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. In that context, prior UDRP panels generally have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,
WIPO Case No. D2014‑1359; Project Management Institute v. CMN.com,
WIPO Case No. D2013-2035.
The Respondent registered the disputed domain name, which is identical to the Complainant’s NINEBOT mark, and then used the disputed domain name in an attempt to exploit and profit from the Complainant and its distinctive NINEBOT mark. The Respondent insofar as the record reflects has made no effort to accurately disclose its relationship, if any exists, with the Complainant. The Panel considers it likely that Internet users anticipating the Complainant’s website but arriving instead at the Respondent’s website more likely than not would anticipate that the website they have arrived at is affiliated with, endorsed or otherwise sponsored by the Complainant. See Levantur, S.A. v. Media Insight,
WIPO Case No. D2008‑0774.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. See Autodesk, Inc. v. Brian Byrne, meshIP, LLC,
WIPO Case No. D2017-0191. The Panel holds that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. The Respondent has not been authorized to use the Complainant’s NINEBOT mark, and the Panel has found no indication in the record that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004‑0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. The record is convincing that the Respondent had the Complainant’s NINEBOT mark firmly in mind when registering the disputed domain name.
The Respondent’s registration and use of the disputed domain name as set forth above is clearly demonstrative of bad faith. The Respondent opportunistically sought to capitalize on the Complainant’s trademark rights, more likely than not with the intention of creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website.
7. DecisionFor 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
William R. Towns
Sole Panelist
Date: November 4, 2021
1 See WIPO Overview 3.0, section 1.7.
2 Id.
3 Id.
4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.