WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baidu Online Network Technology (Beijing) Corporation Limited v. Pierre-Olivier Brassard
Case No. D2018-0216
1. The Parties
The Complainant is Baidu Online Network Technology (Beijing) Corporation Limited of Beijing, China, represented by Bettinger Rechtsanwälte, Germany.
The Respondent is Pierre-Olivier Brassard, of Saint-Augustin-de-Desmaures, Quebec, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <baidu.bot> is registered with EnCirca, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On February 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 February 6, 2018. Pursuant to the Rules, paragraph 5, the due date for Response was February 26, 2018. On February 26, 2018, the Respondent requested automatic four calendar day extension for response under paragraph 5(b) of the Rules, extending the due date for Response to March 2, 2018. The Response was filed with the Center on March 2, 2018.
On March 12, 2018, the Complainant requested suspension of the proceeding for a period of 7 days for the purpose of engaging in settlement discussions with the Respondent. The Notification of Suspension was sent by the Center on March 12, 2018. On March 21, 2018, the Complainant informed the Center that the Parties were not able to settle the dispute and requested reinstitution of the Proceeding. The Center notified the Parties of Reinstitution of Proceeding on March 21, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 26, 2018. 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
According to the Complainant, it is the proprietor of Baidu, the most popular search engine in China and the fourth most popular in the world, operating from the website “www.baidu.com”. For the purpose it also operates a web crawling robot (“bot”), the “Baidu Bot”, for keeping its search index up to date.
The Complainant also offers a Chinese-language query-based searchable online community platform, a Chinese interactive knowledge-sharing platform, a user-generated Chinese encyclopaedia, maps, image searches, video searches, news searches, and others services. The Complainant also offers advertising and data analysis.
The scale of the Complainant is that its parent Company reported revenues of more than USD 10,000,000,000 in 2015.
The Complainant holds about 66 trademarks comprising or incorporating BAIDU including:
BAIDU (lower case), international trademark, registered on January 4, 2011, registration number 1064506, in classes 38 and 42;
BAIDU, figurative including Chinese characters, international trademark, registered on November 8, 2011, registration number 1098119, in classes 9, 38 and 42;
BAIDU, figurative including Chinese characters, Canadian trademark, registered on December 20, 2012, registration number 838824, in classes 9, 36, 38, 39, 42, 43 and 45.
The Complainant also owns domain names including <baidu.com>, <baidu.com.cn>, <baidu.cn>, <baidu.jp>, <baidu.com.es>, <baidu.mobi>, <baidu.com.hk>, <baidu.net.tw>, <baidu.hk>, and <baidu.asia>.
According to the Respondent, Baidubot is a project created by Canadian young programmers to provide blockchain related services to businesses. The project is in the process of raising CAD 1,000,000 in investment. The word Baidubot derives from the acronym “Blockchain Artificial Intelligence Decentralized Unified bot”. The project harnesses blockchain technologies for shared data security purposes. The disputed domain name was registered by the Respondent on December 5, 2017.
After receiving a cease and desist letter from the Complainant on December 7, 2017, and after further correspondence, the Respondent offered to transfer the disputed domain name to the Complainant for USD 750,000.
5. Parties’ Contentions
The Complainant’s contentions include the following.
Copies of documentation in the language of the proceedings are submitted by the Complainant in order to show that it is the owner of the three trademarks listed in section 4 above.
The Complainant says the disputed domain name, omitting the generic Top-Level Domain (“gTLD”) “.bot”, reproduces and is identical or confusingly similar to its trademark BAIDU. Furthermore the confusion with the Complainant’s trademark is amplified because according to the registry, the gTLD “.bot” is intended for registrants who own, operate or manage web bots.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the registration of which post-dates the Complainant’s trademark registrations. The Complainant says it has not permitted the Respondent to use its trademark and thus makes a prima facie showing under paragraph 4(a)(ii) of the Policy. The Respondent has produced no evidence of demonstrable preparations for use of the disputed domain name in connection with a bona fide offering of goods or services and such services as it may offer in the field of “artificial intelligence blockchain technology” are similar to some for which the Complainant’s trademarks are registered. There is no evidence the Respondent is commonly known by the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is distinctive and arbitrary and means “hundreds of times” in Chinese. The Complainant says and has produced documentation to the effect that it registered the trademark BAIDU with the Trademark Clearinghouse and consequently the Respondent would have been notified of it on registration of the disputed domain name, which was therefore registered in bad faith.
The Complainant reiterates that the Respondent offers services related to artificial intelligence blockchain technology through the disputed domain name that are similar to services for which the Complainant’s trademark is registered. Internet users visiting the Respondent’s website will be likely to assume it is endorsed by the Complainant, constituting bad faith use on the part of the Respondent.
The Complainant has cited a number previous decisions under the Policy that it considers to support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint and says it has been filed in bad faith. The Respondent’s contentions include the following.
The Respondent’s Baidubot is a Canadian project founded by young programmers to provide blockchain related services to businesses and is not related to the Complainant.
The Complainant is not known in Canada because according to the source “SimilarWeb”, produced in evidence, only 0.3% of the Complainant’s traffic is from Canada.
The Respondent says the disputed domain name was not acquired in bad faith and is an acronym for “Blockchain Artificial Intelligence Decentralized Unified bot”.
The Respondent says an investment in it of over CAD 1,000,000 is being concluded. The Respondent’s asking price for the disputed domain name reflects the time it has invested to build the product and its brand, and costs to be incurred in changing its name.
The Respondent says the Baidubot project serves the interests of companies who wish to benefit from blockchain technologies for security purposes for their shared data activities. The Respondent does not believe that the Complainant offers similar services. The Respondent says that the Complainant’s “Baidu Bot” is not being used commercially and could also be called a Crawler or Spider. A search for “Baidubot” through the website of projects for collaborative development, “www.github.com”, found nothing.
The Respondent says it does not use the Complainant’s trademark, which includes two Chinese symbols.
The Respondent says the domain name <baidu.ca> is currently being used by a real estate agent. The Respondent has submitted an article from the website “www.forbes.com” which reports that a Netherlands company named Baidu Europe owns various domain names, including <baidu.tv>.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the documentation produced that the Complainant has rights under paragraph 4(a)(i) of the Policy in the registered trademark BAIDU. The disputed domain name is <baidu.bot>, of which the gTLD “.bot” may be disregarded in the determination of confusing similarity. What remains of the disputed domain name, “baidu”, is identical to the Complainant’s trademark. The possible ownership by other entities of other domain names such as <baidu.ca> and <baidu.tv> does not impinge on that finding. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which was registered on December 5, 2017, some years later than the Complainant’s submitted trademarks registered in 2011 and 2012. The Complainant says it has not authorised the use of its trademark by the Respondent. A prima facie case is therefore made out by the Complainant under paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent asserts in effect that it is using or making demonstrable preparations to use the disputed domain name, in the terms of paragraph 4(c)(i) of the Policy, for purposes related to its development of a “Blockchain Artificial Intelligence Decentralized Unified bot”. An assertion unsupported by evidence is not sufficient. The Respondent has not produced any evidence to support the existence a “Blockchain Artificial Intelligence Decentralized Unified bot” project, or that it or any related entity is working on such a project. The Respondent’s claim to be “presently concluding a round of investment” of CAD 1,000,000 in the project is also not supported with any evidence. The Respondent did not produce a screen capture of the website to which the disputed domain name resolves but a visit to it shows that it is headed “Meet Baidubot The new blockchain chatbot on messenger”, with one-sentence references to “Arbitrage”, “Prediction Trading”, and “Intelligent Reporting”, and an invitation to chat. The website lacks any real substance and appears to be little more than a token placeholder.
The Panel finds that the Respondent has not produced any significant evidence that could support a claim to have made demonstrable preparations to use the disputed domain name for a bona fide purpose, or that the Respondent is commonly known by the disputed domain name, or that there has been a legitimate noncommercial or fair use of it. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant sent a cease and desist letter by email to the Respondent on December 7, 2017. In its reply dated December 11, 2017, the Respondent, after denying that its activities were related to the Complainant’s, said that it could understand that the disputed domain name could be of “some value to such an organization” [as the Complainant] and “I am willing to stay open for discussions and re-evaluate the potential of the project under a different name than Baidubot if Baidu Online Network Technology (Beijing) [Corporation Limited] wishes to acquire this domain”. In a further exchange of correspondence, the Respondent wrote to the Complainant on December 22, 2017 with an asking price of USD 750,000 in consideration for “all the work put in the project and the costs of refactoring an application source code, changing the brand, awareness and time loss”.
In sum, on the evidence and submissions, the Respondent has registered a domain name comprising the entirety of the registered trademark BAIDU, which distinguishes the most popular search engine in China and the fourth most popular globally, offering numerous ancillary information services, having an annual turnover recently in the order of USD 10,000,000,000. The Respondent does not contest these statistics. The Respondent has created a placeholder website but has produced no plausible evidence of any genuine use of the disputed domain name in connection with the alleged “Blockchain Artificial Intelligence Decentralized Unified bot” project, the name of which invites reflection as to whether, on the balance of probabilities, it may have been contrived for the purpose of creating the acronym “BAIDU”.
No evidence has been produced of “all the work put in the project and the costs of refactoring an application source code, changing the brand, awareness and time loss” that could justify an asking price of USD 750,000, and in any case a demand in excess of “documented out-of-pocket costs directly related to the [disputed] domain name”, i.e., a few dollars, would be sufficient to satisfy the relevant requirement of paragraph 4(b)(i) of the Policy. The Respondent’s stance is unconvincing in claiming to have invested so much time, effort and value into the project, while being ready, within days of receiving the Complainant’s cease and desist letter, to indicate a willingness to sell the disputed domain name and to undertake considerable remedial work on its project and brand in consequence.
Having evaluated all the available evidence, the Panel finds it to be more probable than not that the Respondent registered the disputed domain name with the primary intention of selling it for profit. The asking price of USD 750,000, when considered in the light of the resources that may be anticipated to be available to the Complainant, contributes to a conclusion that the Complainant was, more probably than any other entity, the Respondent’s specific sales target in the terms of paragraph 4(b)(i) of the Policy. The Panel further finds on the evidence that the Respondent has used the disputed domain name by dressing it with a token website and by replying to the Complainant’s cease and desist letter with an offer for sale. Accordingly the Panel finds registration and use of the disputed domain name in bad faith by the Respondent under paragraph 4(a)(iii) of the Policy.
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, <baidu.bot> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: April 9, 2018