The owner of the domain name OpenBots.com registered it in 2003; since then, he has been using it, along with the matching .org domain. The domain is serving as a project related to a code repository and for its owner’s personal presence online.
Meanwhile, OpenBots, Inc. filed a UDRP to usurp this domain. According to the UDRP:
Complainant states that it “is a full-featured robotic process automation (‘RPA’) platform designed to build & orchestrate enterprise automations at a fraction of the price of any platform on the market” and that it “is the first-ever Zero Bot Licensing RPA platform and offers document processing tools for automation enhancement, secure enterprise cloud infrastructure for RPA programs, and platform migration tools.”
The Complainant registered the OPENBOTS trademark in 2021, citing date of first use in 2020. As such, their mark is inferior to the domain’s registration and that’s what the Forum (NAF) panelist pointed out:
As the record makes clear, the Disputed Domain Name was created on September 21, 2003, while Complainant’s OPENBOTS Trademark registration was not issued until July 6, 2021 (claiming a date of first use in commerce of September 1, 2020) – 18 years later. As set forth in section 3.8.1 of WIPO Overview 3.0: “Subject to scenarios” that are not applicable here, “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” That is because a domain name typically cannot be registered in bad faith if, at the time of registration, the relevant trademark rights did not yet exist.
Final decision: Deny transfer of the domain OpenBots.com to the Complainant.
The domain transfer was denied.
OpenBots, Inc. v. Luciano Coelho
Claim Number: FA2206001999065
PARTIES
Complainant is OpenBots, Inc. (“Complainant”), represented by Nicholas Johnson and Amber Orr of the law firm Berenzweig Leonard, LLP, Virginia, USA. Respondent is Luciano Coelho (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is (the “Disputed Domain Name”), registered with NameCheap, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on June 3, 2022; the Forum received payment on June 3, 2022.
On June 6, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@openbots.com. Also on June 9, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 29, 2022.
On July 7, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that it “is a full-featured robotic process automation (‘RPA’) platform designed to build & orchestrate enterprise automations at a fraction of the price of any platform on the market” and that it “is the first-ever Zero Bot Licensing RPA platform and offers document processing tools for automation enhancement, secure enterprise cloud infrastructure for RPA programs, and platform migration tools.”
Complainant further states, and provides evidence in support thereof, that it is the owner of U.S. Reg. No. 6,413,358 for the trademark OPENBOTS (first used in commerce September 1, 2020; registered July 6, 2021) (the “OPENBOTS Trademark”).
Complainant asserts that the Disputed Domain Name is identical to the OPENBOTS Trademark because it “fully incorporates Complainant’s trademark in the disputed domain name and then merely adds the generic top-level domain ‘.com’,” which “does not render Respondent’s domain name distinct from Complainant’s trademark.”
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Complainant is not affiliated or associated with the Respondent in any way”; “Complainant has not authorized or given any license to the Respondent in order to register, use or include their own trademarks in a domain name”; “based on the WHOIS information, there is no evidence that Respondent is commonly known by the domain name”; and “the domain name is inactive.”
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, it “resolve[s] to an inactive webpage”; “the passive and inactive holding of a disputed domain name can constitute bad faith”; “Respondent has taken active steps to conceal its true identity and used a privacy service” (prior to disclosure of the underlying registrant by the Registrar following the filing of the Complaint); and “[d]espite Complainant’s attempt to contact Respondent, Respondent has not come forward with any explanation for the selection of the domain name or its intended use.”
B. Respondent
Respondent states, in full, as follows:
“The domain name in question (openbots.com) was first registered by me (Luciano Roth Coelho) over 20 years ago, with the intent of creating an open platform for the development of chatbots, after a company I was partner on (Interbots Ltda., registered in Brazil) stopped its operations. The idea was to make the code and all our systems opensource for the use of the community at large.
“Since then, I’ve been using the name openbots in connection with my online presence, especially in my email address, [redacted]@openbots.org (and it’s alternate [redacted]@openbots.org), which I have been running and using ever since the domains were registered.
“I have not received the mentioned offer to buy this domain in any form that looked trustworthy to me. I have received a lot of scam attempts in connection with the few domains I have registered on my name, so when I received an ‘offer’ to buy the domain, they were considered spam and disregarded.
“This domain was registered almost 20 years before the claimant registered as a legal company and registered the trademarks and I have been paying for and keeping the domain in use.
“Regardless, I would be willing to sell the domain name to the claimant and settle this dispute in the fastest for [sic] possible.”
FINDINGS
Complainant is the owner of U.S. Reg. No. 6,413,358 for the OPENBOTS Trademark. The Disputed Domain Name was created on September 21, 2003, and is not being used in connection with an active website.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Under the first element of the Policy, para. 4(a)(i), a complainant must establish that it “has rights” in a trademark even before the disputed domain name is compared to the trademark. Here, the only evidence of trademark rights provided by Complainant is its ownership of U.S. Reg. No. 6,413,358 for the OPENBOTS Trademark. Documentation of this registration provided by Complainant makes clear that this registration is on the “Supplemental Register” at the U.S. Patent and Trademark Office (“USPTO”). As set forth in section 1.2.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.” However, other than conclusory, unsupported statements (such as, “Complainant has invested significant time and resources in developing and protecting its name and trademark”), Complainant has shown no such secondary meaning.
Accordingly, the Panel is unable to ascertain on the record whether Complainant “has rights” for purposes of the Policy, and the Panel finds that Complainant has not proven the first element of the Policy.
Rights or Legitimate Interests
Given the Panel’s conclusions set forth above and below, the Panel declines to address the second element of the Policy, as doing so is unnecessary.
Registration and Use in Bad Faith
As the record makes clear, the Disputed Domain Name was created on September 21, 2003, while Complainant’s OPENBOTS Trademark registration was not issued until July 6, 2021 (claiming a date of first use in commerce of September 1, 2020) – 18 years later. As set forth in section 3.8.1 of WIPO Overview 3.0: “Subject to scenarios” that are not applicable here, “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” That is because a domain name typically cannot be registered in bad faith if, at the time of registration, the relevant trademark rights did not yet exist.
Accordingly, the Panel finds that Complainant has not proven the third element of the Policy.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Panelist
Dated: July 13, 2022
