ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Beijing Roborock Technology Co., Ltd. v. TechPunt Case No. DNL2024-0029 1. The Parties The Complainant is Beijing Roborock Technology Co., Ltd., China, represented by Chofn Intellectual Property, China. The registrant of the disputed domain name is TechPunt, Netherlands (Kingdom of the) (“The Netherlands”), represented internally (the “Respondent”). 2. The Disputed Domain Name and Registrar The disputed domain name is registered with SIDN through team.blue nl B.V. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2024. On June 21, 2024, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On June 24, 2024, SIDN 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 June 27, 2024, providing the information disclosed by SIDN, and inviting the Complainant to amend the Complaint in this light. The Complainant filed an amended Complaint on June 27, 2024. The Center verified that the Complaint as amended satisfies the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 2, 2024. In accordance with the Regulations, article 7.1, the due date for Response was July 22, 2024. On July 23, 2024 the Respondent asked for a extension, which was exceptionally granted on July 25, 2024. The new due date for Response was July 29, 2024. The Response was filed with the Center on July 29, 2024.
page 2 On August 7, 2024, the Center received from the Complaint a supplemental filing. On August 8, 2024 the Center received a supplemental filing from the Respondent. On August 5, 2024 SIDN commenced the mediation process. On August 8, 2024 SIDN informed parties that the dispute had not been solved in the mediation process. The Center appointed Willem J. H. Leppink as the panelist in this matter on August 14, 2024. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background The following facts are undisputed. The Complainant was founded in July 2014 and focuses on the research, development and production of intelligent cleaning robots and other intelligent electrical appliances, including intelligent cleaning and sweeping robots. In February 2020, it was listed on the Science and Technology Board of the Shanghai Stock Exchange. The Complainant’s products are distributed in more than 170 countries and regions around the world. The Complainant has won a number of industry awards. In The Netherlands, the Complainants’ products are mainly sold on the platform Amazon and at the same time the Complainant also cooperates with e-commerce businesses in The Netherlands, such as Beslist.nl, coolblue.nl, and conrad.nl. The Complaint has set up a local entity in The Netherlands with the name Roborock International B.V. in 2019. The Complainant is the owner of several trademark registrations for ROBOROCK, including, but not limited to the following European Union trademark registrations: - ROBOROCK (stylized), with registration number 018638288, registered on May 18, 2022 for goods and services in class 3; and - ROBOROCK, with registration number 017298035, registered on January 24, 2018 for good and services in classes 7, 9, and 35. The Complainant is also the owner of an International Registration for the trademark ROBOROCK: - ROBOROCK (stylized), with registration number 1580853, registered on December 21, 2020 for goods and services in class 37, designating inter alia the European Union and the United Kingdom. All of these registrations, which will also be referred to in singular as the “Trademark”, predate the registration of the disputed domain name in 2023. The Respondent, formerly , focused on the sale of XIAOMI branded products as from 2016. The Respondent has been selling the Complainant’s products since 2019. The disputed domain name was registered on December 30, 2023. At the time of this decision the disputed domain name resolves to a parked page (“Website”), mentioning that the disputed domain name is reserved.
page 3 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Regulations for a transfer of the disputed domain name. Notably, the Complainant contends the following. The disputed domain name is identical to the Trademark as it incorporates the Trademark in its entirety. The Respondent has no rights or legitimate interests in the disputed domain name. Since the registration of the disputed domain name, the Respondent has not made use of it, and thus has not made a bona fide offer of goods or services, nor has the use of the disputed domain name become widely known. A trademark search revealed that only the Complainant owns the rights to the Trademark. The Complainant searched for trademarks in the name of the Respondent and was unable to find any trademark rights in the Respondent’s name in the European Union. The Respondent sells the Complainant’s products on the Respondent’s website . The Respondent had sought to cooperate with the Complainant, but the negotiations were not successful. The Respondent is not the Complainant’s distributor or partner, and the Complainant has never directly or indirectly authorized the Respondent to use the Trademark and the disputed domain name in any form. The Complainant has become the world's number one shipper in the sweeping robot industry and the Respondent applied for the disputed domain name with malicious intent. B. Respondent The Respondent has submitted an extensive Response. Notably, the Respondent contends the following. The Respondent sourced its ROBOROCK products from various distributors and resellers of the Complainant since 2019 and has been selling these products. The Respondent had several discussions with employees of the Complainant and visited the headquarters of the Complainant. During one of the meetings, it presented the Complainant with its plans to create a brand-dedicated website to which the disputed domain name resolves. The Respondent has started the development of this website and plans to launch this in the last months of 2024. The Complainant was aware of this. It has created similar brand-dedicated websites in the past. The Respondent, as a retailer, is entitled to use the Trademark. It is unfair that the Complainant wishes to take over the disputed domain name as the Complainant would then ride on the coattails of the Respondent’s efforts. The Respondent refers to the requirements as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“OKI DATA requirement”) and states that it will comply with these requirements.
page 4 6. Discussion and Findings 6.1. Preliminary Matter Before entering into the merits of the case, the Panel addresses the matter of the unsolicited supplemental filings. Article 11.2 of the Regulations stipulates that the Panel shall the determine the admissibility of unsolicited filings. Both the Complainant and the Respondent submitted unsolicited supplemental filings which is generally discouraged, as is described in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 1 However, when the Complainant proves that the supplemental filing is of utmost importance to the case and it could not have provided the information within its prior complaint panels may find it justified to accept an unsolicited supplemental filing. The Respondent will then be allowed to respond the Complainant’s unsolicited filing. The Panel is not satisfied that such exceptional circumstances exist and, therefore, decides that the unsolicited supplemental filing by the Complainant will not be admitted. As a general principle, a complainant has “one bite at the apple” in such proceedings. As the Panel does not admit this filing by the Complainant, the Respondent’s unsolicited filing will also not be admitted. 6.2. Substantive Matter Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements: a) the disputed domain name is identical or confusingly similar to: I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and b) the Respondent has no rights to or legitimate interests in the disputed domain name; and c) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7 The Complainant has shown that it has rights in the Trademark, which is also protected under Dutch law. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Complainant has thus established the first element of article 2.1 of the Regulations. 1In view of the fact that the Regulations are in large part based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).
page 5 B. Rights or Legitimate Interests Consistent with earlier decisions under the Regulations, the Complainant must prima facie demonstrate that the Respondent has no rights to or legitimate interests in the disputed domain name. If the Complainant succeeds in making out this prima facie case, the burden of production shifts to the Respondent, who will then have to come forward with appropriate allegations or evidence demonstrating a right to or legitimate interests in the disputed domain name (see Auto 5 v. E. Shiripour, WIPO Case No. DNL2008-0027). The Respondent may demonstrate such rights or legitimate interests inter alia through any of the following circumstances based on article 3.1 of the Regulations: a) before having any notice of the dispute, the Respondent made 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 b) the Respondent as an individual, business or other organization is commonly known by the disputed domain name; or c) the Respondent is making a legitimate noncommercial use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands. The Respondent has replied to the Complainants contentions. Despite the fact that there may have been discussions or negotiations by parties to collaborate, this has not resulted in a collaboration, let alone consent from the Complainant for the Respondent to use the Trademark in the disputed domain name. The Respondent has alleged that the Complainant was aware of the Respondent’s plans, but has not provided any evidence of consent by the Complainant. It is undisputed that the Respondent is not commonly known by the disputed domain name, nor that the Respondent would be making a legitimate noncommercial use of the disputed domain name. The Website is a parked page which mentions that the disputed domain name is reserved. The Respondent alleged that it has started the development of a website using disputed domain name and that it plans to launch this website in the last months of 2024. However, the Respondent has failed to provide evidence of such preparations. As such – and putting aside for the moment the fact that the disputed domain name is an exact reproduction of the Complainant’s marks – the Respondent does not meet the requirement of “demonstrable preparations” as referred to in article 3.1 (a) of the Regulations and as such does not prove its alleged legitimate interest. The Respondent also alleged that it will comply with the OKI DATA requirements; this does not assist the Respondent given the very clear – and seemingly intended – risk of confusion that the disputed domain name is that of (i.e., impersonates) the Complaint. Moreover, and in either event, as there are no demonstrable preparations for setting up the website, let alone any active website, the Panel cannot review any intended compliance with these OKI DATA requirements. The Complainant has thus established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith In light of its considerations under Section 6.B, the facts presented by the Complainant and the fact that the disputed domain name does not lead to an active website, the Panel finds that the disputed domain name has been registered and is used in bad faith.
page 6 It is clear and undisputed that when registering the disputed domain name – which is identical to the relevant mark, the Respondent had the Complainant and the Trademark in mind as the Complainant admitted that it had intentions to sell the products under the Trademark through a website to which the disputed domain name resolves; to do so in such circumstances would be to misappropriate the Complaint’s mark in a way that under no reasonable interpretation could be considered a fair use. In conclusion, the Panel is satisfied that the third element of article 2.1 of the Regulations has been met and that the disputed domain name was registered and is being used in bad faith. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name be transferred to the Complainant. /Willem J. H. Leppink/ Willem J. H. Leppink Panelist Date: August 27, 2024
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