Tony Willoughby whacks Complainant with RDNH in Smart-Robotics.com UDRP

Tony Willoughby, sole panelist at the WIPO, ruled over the UDRP case for Smart-Robotics.com.

The domain was registered 9 years before the mark claimed by the case’s Complainant, Dutch company Smart Robotics B.V. The Complainant operates from the matching .nl, dash included.

No response was filed by the Respondent but this alone does not determine the UDRP’s outcome, said the panelist, who pointed out the facts of the case:

In this case the Complainant is represented by a law firm with a reputation in intellectual property and related matters. It is inconceivable to the Panel that the those responsible for the drafting of the Complaint could not have been well aware of the potentially insuperable problems caused by the fact that the Domain Name has a dictionary meaning and was registered years before the Complainant acquired any relevant trade mark rights; yet no attempt was made to address either of those issues. In consequence the Complaint was doomed from the outset.

The domain was thus ordered to remain with the Respondent, and a finding of Reverse Domain Name Hijacking was tagged onto the Complainant.

Smart Robotics B.V. v. Mary Anne Wehland
Case No. D2021-2259
1. The Parties

The Complainant is Smart Robotics B.V., Netherlands, represented by Taylor Wessing N.V., Netherlands.

The Respondent is Mary Anne Wehland, United States of America.
2. The Domain Name and Registrar

The disputed domain name, <smart-robotics.com> (the “Domain Name”), is registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 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 July 23, 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 August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2021.

The Center appointed Tony Willoughby as the sole panelist in this matter on September 3, 2021. 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.

The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amended Complaint names Mary Anne Wehland, the apparent underlying registrant, as the Respondent.
4. Factual Background

The Complainant is a company organized under the laws of the Netherlands. It was founded in 2015 and is engaged in the field of robotics and automation. It is the proprietor of European Trade Mark Registration No. 017712878 registered on June 4, 2018 (application filed January 22, 2018). The trade mark is a figurative mark comprising a stylized device in the shape of an “S” followed by prominent wording in two lines of text. The top line in large upper case grey lettering reads “SMART ROBOTICS”. The line below in smaller blue upper case lettering reads “MASTERS IN FLEXIBLE AUTOMATION”.

logo

The Complainant operates a website at “www.smart-robotics.nl”. The home page features a rotating series of banners headed “Welcome to The Future of Robotics”, “Be flexible, Be efficient Be Smart”, and “Smarter Robots Happy People”. On a page relating to Intelligent Software, the Complainant states: “With our intelligent AI software, we develop smart pick-and-place robot solutions that are easy to deploy, flexible and user-friendly.”

The Domain Name was registered on February 6, 2009 and is connected to a parking page featuring advertising links labelled “Robot Kits”, “Robotic Process Automation Microsoft”, “I Robot Vacuums”, “Robotics”, and “Robotics Engineering”, all of which appear to the Panel to lead to sites matching those labels. The screenshot of the Respondent’s website featuring in the Complaint shows a Dutch language website, the text of which has not been translated, but from the Complainant’s description (“Respondent uses the infringing domain name to link advertisements to websites that offer competing and/or similar products”) appears to the Panel to be of similar effect to the English language webpage visible to the Panel located in the United Kingdom.

On June 11, 2021, a representative of the Complainant emailed the privacy service used by the Respondent stating: “My client has the rights registered on the trade mark Smart Robotics and as a result is interested in the domain name smart-robotics.com. I would like to get in touch with the owner of the domain name to discuss a possible buy / hand-over of this domain name. Can you please provide me the contact details so I can discuss this with the owner?” No reply having been received, the Complainant’s representative sent chasers on June 16, 2021 and June 23, 2021, but without receiving a reply.
5. Parties’ Contentions
A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s SMART ROBOTICS MASTERS IN FLEXIBLE AUTOMATION figurative trade mark, relying upon the fact that the term “Smart Robotics” is the predominant feature of that trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

The essence of the Complainant’s case is that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark and with intent to profit commercially from the confusion resulting from the Respondent’s use of it to connect to a parking page with sponsored links. The Complainant further contends that the Respondent’s use of the Domain Name could also tarnish the Complainant’s good name and respected trade mark.
B. Respondent

The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary issue: Respondent’s Default

The Respondent has not responded to the Complainant’s contentions, but this does not necessarily lead to the conclusion that the Complaint must prevail. While it is open to the Panel to draw inferences adverse to the Respondent from the failure to respond, it is still incumbent upon the Complainant to prove the elements of paragraph 4(a) of the Policy (see 6.B. below). The significance of a respondent’s default is addressed in Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which answers the question: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?”. Section 4.3 reads as follows:

“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.

In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.

Further to paragraph 14(b) of the UDRP Rules however, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent. […]”
B. Substantive Issues

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name: and

(iii) the Domain Name has been registered and is being used in bad faith.

Moreover, in writing the decision, the Panel must have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its Decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

(1) Identical or Confusingly Similar

The trade mark registration upon which the Complainant relies (see Section 4 above) is a figurative mark. Whether or not a figurative mark can form the basis for a complaint under the Policy depends upon the extent to which (if at all) the design elements of the mark “overtake the textual elements in prominence” (Section 1.10, WIPO Overview 3.0).

In this case the textual element (“SMART ROBOTICS MASTERS IN FLEXIBLE AUTOMATION”) is the predominant element of the Complainant’s trade mark and by no means overtaken by the design elements of the mark. Moreover, as can be seen from the illustration of the mark in Section 4 above, the textual element of the mark is itself in two sections, the upper section (“SMART ROBOTICS”) being the more prominent of the two. The Domain Name comprises the expression “smart robotics” in hyphenated form followed by the “.com” generic Top Level Domain identifier.

Section 1.7 of the WIPO Overview 3.0 explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:

“While each case is judged on its own merits, 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.”

Here, the Domain Name does not incorporate the entirety of the Complainant’s trade mark, not even the entirety of the textual element. However, the SMART ROBOTICS section of the text is certainly the dominant feature of the trade mark and is readily recognizable in its entirety in the Domain Name.

The expression “Smart Robotics”, being an acknowledged term to describe the field of intelligent robots, the Panel looked to see if the Complainant’s trade mark registration featured a disclaimer in respect of those words. It does not. Accordingly, on the basis that “a dominant feature of the relevant mark is recognizable in the domain name” the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

At this point it is appropriate to make the following observations:

First, the fact that the Domain Name was registered in 2009, nine years prior to the Complainant’s trade mark registration, is not relevant to the assessment of identity/confusing similarity under paragraph 4(a)(i) of the Policy (Section 1.1.3 of the WIPO Overview 3.0).

Secondly, Section 1.10 of the WIPO Overview 3.0 concludes with a paragraph reading: “To the extent the complainant could nevertheless establish UDRP standing on the basis of a mark with design elements, the existence of such elements (or a disclaimer) would be relevant to the panel’s assessment of the second and third elements, e.g., in considering possible legitimate trademark co-existence or scenarios where the textual elements correspond to a dictionary term.”

The Panel understands this paragraph to be a warning to complainants that if the textual element of the mark upon which the complainant relies is, for example, a dictionary term, this fact might well have an adverse effect on a complainant’s case under the second and third elements of the Policy. It might make it more difficult to prove that the respondent has no rights or legitimate interests in respect of the domain name and/or that the domain name has been registered and is being used in bad faith.

Thirdly, while in certain parts of the Complaint the Complainant appears to be asserting trade mark rights in respect of “Smart Robotics” (solus), it is the SMART ROBOTICS MASTERS IN FLEXIBLE AUTOMATION trade mark as registered (defined in the Complaint as “The Trademark”) upon which the Complainant bases its case. No attempt has been made to demonstrate unregistered trade mark rights in respect of “Smart Robotics”.

(2) Rights or Legitimate Interests

The Complainant asserts that it has no association with the Respondent and has granted the Respondent no permission to use its trade mark. It points out that the Respondent is not known by the Domain Name and contends that the Respondent has acquired no trade mark rights in respect of “Smart Robotics”.

The Complainant bases its case under this element of the Policy on the fact that the Domain Name is connected to a website featuring sponsored links from which the Respondent will be deriving commercial benefit on the back of the Complainant’s reputation and goodwill. The Complainant contends as follows:

“From the website that is accessible via the domain name smart-robotics.com it becomes clear that the Respondent solely registered the domain name to derive commercial benefit from the Trademark and attached goodwill since the website only contains sponsored links[.]

[…]

Respondent is therefore using the infringing domain name to divert internet users to a scam website, a website that is designed to capitalize on confusion between the respective parties’ domain names and trademarks by offering sponsored links. Diversion to a website with only sponsored links is not a legitimate, non-commercial or fair use of the infringing domain name.”

In support, the Complainant cites Rothy’s, Inc. v. Cary Ma, WIPO Case No. DNL2020-0015 concerning the complainant’s figurative mark ROTHY’S and the domain name <rothys.nl>. The decision includes a citation of an extract from Section 2.9 of the WIPO Overview 3.0, the first paragraph of which reads: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”

Significant differences between the Rothy’s case and the case in hand, however, are that (i) the ROTHY’S trade mark is a meaningless made up name, whereas the Complainant’s trade mark has a meaning; it is a series of words in a coherent form in the English language; the predominant element of that trade mark, the expression “Smart Robotics”, has been in use since at least 2009 when the Domain Name was registered;
(ii) the domain name in the Rothy’s case was substantially identical to the complainant’s trade mark, which is not the case here – it might have been different if the Complainant had been able to demonstrate unregistered rights in respect of “Smart Robotics”, but it has made no attempt to do so; (iii) the sponsored links in the Rothy’s case led to links having no association with the “Rothy’s” name, whereas the sponsored links in this case all appear to lead to websites concerned with smart robotics.

In the result, the Rothy’s case is of no assistance to the Complainant and merely highlights the shortcomings in the Complainant’s case.

It is surprising that in relying upon Section 2.9 of the WIPO Overview 3.0, the Complainant seems to have overlooked the third paragraph from that very section reading:

“Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”

Accordingly, the Complainant’s assertion that “Diversion to a website with only sponsored links is not a legitimate, non-commercial or fair use of the infringing domain name” is misconceived.

The only other argument advanced by the Complainant is that the Panel should conclude from the Respondent’s failure to respond to the Complainant’s representative’s emails to the privacy service used by the Respondent (see Section 4 above) that the Respondent can have no rights or legitimate interests in respect of the Domain Name. Domain name holders fail to respond to communications for a variety of reasons, some justifiable, some not. To interpret the Respondent’s failure here as an acknowledgement that she has no rights or legitimate interests would, in the view of the Panel, call for something more than there is here in the surrounding circumstances to justify such a finding.

The Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name.

(3) Registered and Used in Bad Faith

Given the finding under 6.B.(2) above, the Complaint has failed and it is not strictly necessary for the Panel to address this, the third element of the Policy. However, the Panel is moved to do so in light of the finding under 6.B.(4) below.

A fundamental feature of this element, the third element under paragraph 4(a) of the Policy, is that the Complainant must prove both that the Domain Name has been registered in bad faith and that it is being used in bad faith.

The Complainant’s case under this element reads (in full) as follows:

“C. The domain name(s) was/were registered and is/are being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

– By using the domain name smart-robotics.com as described above, being a parking page with sponsored links only, the Respondent is clearly trying [sic]acting [i]n bad faith.

– Respondent clearly had actual knowledge of Complainant’s rights in its name when respondent registered the infringing domain name as:

– Respondent uses the infringing domain name to link via advertisements to websites that offer competing and/or similar products; and

– Respondent had no other reason to register the domain name than to exploit the Trademark.

– Respondent’s lack of response to messages sent by the Complainant is explanatory in this regard.

– The infringing domain name was therefore registered to take advantage of the value and goodwill associated with the Trademark under article 2.1 sub c of the Regulations. Registering domain names for such a purpose constitutes bad faith. Please refer to Fossil Group/Respondent case No. DNL2017-0010 (WIPO 12 May, 2017) in which it was decided that respondent deliberately tries to lure internet users to the website in order to obtain commercial profit, which constitutes bad faith.

– Respondent’s use of a domain name to divert internet traffic and to disrupt a third-party business constitutes bad faith.

– In conclusion: by using the infringing domain name to host the described parking page that offers for sale related products, Respondent creates a likelihood of confusion with the Trademark and it likely obtains revenue from this practice. In these circumstances, it should be concluded that Respondent has targeted Complainant for profit. This constitutes bad faith under the Regulations, see, Coöperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v. Nguyet Dang, ND Dang, WIPO Case No. DNL2010-0074; and Scotch & Soda B.V. v. D-Max Ltd, WIPO Case No. DNL2011-0058.”

While the Complainant asserts that “Respondent clearly had actual knowledge of Complainant’s rights in its name when respondent registered the infringing domain name” and “the infringing domain name was therefore registered to take advantage of the value and goodwill associated with the Trademark”, the Complainant’s own evidence is to the effect that the Domain Name was registered before the Complainant was founded and indeed before the Complainant’s trade mark registration.

The Complainant does not begin to explain how the Respondent could have been aware of the Complainant in 2009 when registering the Domain Name. The Complainant has not asserted (still less demonstrated) that there has been any change of ownership of the Domain Name since 2009.

Even if there had been a change of ownership post-2018, the date of the Complainant’s trade mark registration, another obvious problem for the Complainant is that the textual elements of the Complainant’s trade mark are dictionary expressions. The Complainant’s case stands or falls on “SMART ROBOTICS”, the predominant feature of the trade mark, but there is nothing in the Complaint to indicate why the Complainant should be entitled to exclusive rights in respect of that expression. Furthermore, there is nothing in the Complaint to show that in using the Domain Name the Respondent is targeting the Complainant. Certainly, the Pay-Per-Click (“PPC”) links on the Respondent’s parking page are directed to businesses engaged in “smart robotics”, but unless the Complainant has a monopoly over that expression, as to which there is no evidence, the Respondent’s behaviour is in this context unobjectionable.

The Complainant has failed to satisfy the Panel that the Domain Name has been registered and is being used in bad faith.

(4) Reverse Domain Name Hijacking (“RDNH”)

Section 4.16 of the WIPO Overview 3.0 deals with the circumstances under which panels will issue a finding of RDNH, RDNH being defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Reasons articulated by panels for RDNH findings are set out in Section 4.16. Of those listed, the following appear to the Panel to be relevant: filing a complaint when the complainant knew (or clearly ought to have known) that it could not succeed as to any of the required elements, unreasonably ignoring established Policy precedent notably as captured in WIPO Overview 3.0 and basing a complaint on only the barest of allegations without any supporting evidence. In addition, it is noted that some panels have held that a represented complainant should be held to a higher standard.

In this case the Complainant is represented by a law firm with a reputation in intellectual property and related matters. It is inconceivable to the Panel that the those responsible for the drafting of the Complaint could not have been well aware of the potentially insuperable problems caused by the fact that the Domain Name has a dictionary meaning and was registered years before the Complainant acquired any relevant trade mark rights; yet no attempt was made to address either of those issues. In consequence the Complaint was doomed from the outset.

In support of its case under the third element of the Policy the Complainant cites four cases under the “.nl” variant of the Policy. There are differences between the Policy and the “.nl” policy, but for present purposes nothing of significance. The cases cited make reference to the WIPO Overview 3.0 and properly read must have alerted the Complainant’s representative to the fundamental flaws in the Complainant’s case. The cited cases were: Rothy’s, Inc. v. Cary Ma, WIPO Case No. DNL2020-0015, which is dealt with in 6.B.(2) above, Fossil Group Europe GmbH and Fossil Group, Inc. v. Anke Eisenhower soho, WIPO Case No. DNL2017-0010, Coöperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v.Nguyet Dang, ND Dang, WIPO Case No. DNL2010-0074 and Scotch & Soda B.V. v. D-Max Ltd, WIPO Case No. DNL2011-0058.

In all four cases the complainants’ trade mark rights pre-dated registration of the domain names and in each of those cases the use of the domain names clearly targeted the complainants. Two of the trade marks on which the complaints were based were made-up names and the other two, one a dictionary word and the other a common expression, were in use by both the trade mark owners and the respondents in relation to the same goods, but having no connection with the dictionary word/common expression.

In this case, the mark in which the Complainant claims rights was registered years after registration of the Domain Name and “Smart Robotics”, the predominant element of that mark on which the Complainant relies, seems to the Panel to be a straightforward expression apt to describe the study of smart robots. Moreover, the Respondent’s use of the Domain Name to connect to a PPC parking page leads to links matching the Domain Name, namely websites concerned with smart robotics.

In 6.B.(2) above the Panel has commented on the Complainant’s citation of the Rothy’s case and the failure to note the full extent of Section 2.9 of the WIPO Overview 3.0. Similarly, in citing the Rabobank case, the Complainant appears to have overlooked the paragraph of the decision reading:

“The Panel finds that the disputed domain names resolve to parking pages that offer links to, inter alia, websites on which goods and services of Complainant’s competitors are offered. It is by now well established that parking pages built around a trademark (as contrasted with pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate non-commercial use”

The Complaint is undoubtedly fundamentally flawed, but was it brought in bad faith to attempt to deprive the Respondent of the Domain Name or to harass the Respondent (paragraph 15(e) of the Rules)?

The Complainant is legally represented by a law firm with expertise in the field and clearly knew or ought to have known that the Complaint was doomed to fail on both the second and third elements of the Policy. Extraordinarily, the Complaint made no reference to the dictionary nature of the Domain Name, nor did it begin to explain how a registrant could have been targeting a complainant, which only came into existence several years later. In so doing it unreasonably ignored established Policy precedent as captured in WIPO Overview 3.0 of which, through its representative, it must have been aware.

The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
7. Decision

For the foregoing reasons, the Complaint is denied and the Panel finds that the Complainant has been guilty of RDNH.

Tony Willoughby
Sole Panelist
Date: September 17, 2021

Copyright © 2022 DomainGang.com · All Rights Reserved.

Leave a Reply

Your email address will not be published.

 characters available