WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ninebot (Tianjin) Tech Co., Ltd. v. Thomas Ducrot/Ducrot Thomas, Big Robots
Case No. D2018-1078
1. The Parties
The Complainant is Ninebot (Tianjin) Tech Co., Ltd. of Tianjin, China, represented by AnJie Law Firm, China.
The Respondent is Thomas Ducrot/Ducrot Thomas, Big Robots of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <segway-ninebot.com> (the "Domain name") is registered with OVH (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 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. On May 18, 2018, the Center sent an email in English and French to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 22, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and French of the Complaint, and the proceedings commenced on May 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2018.
The Center appointed Thomas Legler as the sole panelist in this matter on June 25, 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
The Complainant is a Chinese company who filed an international trademark registration for NINEBOT in November 25, 2014 (International Registration No. 1235414) relating to class 12 and designating many jurisdictions.
Segway Inc. is a company incorporated in the United States of America who holds multiple registrations for the trademark SEGWAY, including with the European Union Trademark Office (Trademarks no. 002545762 of August 20, 2004 for classes 12, 16, 25, 35, 36, 39, 41; no. 002957587 of March 30, 2005 for classes 9, 35, 39; and no. 013665807 of July 15, 2015 for classes 7, 12, 42).
Segway Inc. was purchased by the Complainant in 2015. In 2018, Segway Inc. and the Complainant signed a letter of authorization by which the former authorizes the latter to, among other, file complaints regarding domain names containing SEGWAY trademarks solely or in combination with NINEBOT trademarks.
The Respondent is Thomas Ducrot/Ducrot Thomas, Big Robots of France. The Respondent was a distributor of the Complainant's products between July 18, 2016 and July 31, 2017.
The disputed Domain name <segway-ninebot.com> has been registered by the Respondent on September 16, 2016. The Domain Name is not used.
5. Parties' Contentions
The Complainant contends that the Domain Name is constituted of both the trademarks SEGWAY and NINEBOT. The trademark NINEBOT is owned by the Complainant and the trademark SEGWAY is owned by a company that the Complainant has recently acquired. The trademark NINEBOT is recognizable within the Domain Name and the combination of "segway", "-" and "ninebot" does not prevent the Domain Name from being considered as confusingly similar to the Complainant's trademarks.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent and the Complainant entered in a distribution agreement between July 18, 2016 and July 31, 2017, according to which the Respondent was not allowed to register a domain name that includes any of the trademarks of the Complainant. In addition, the Respondent has not actively used the Domain Name, as there is no evidence that the Domain Name is used or is planned to be used in connection with a bona fide offering of goods or services. On top of that, the Respondent has no trademark on the terms used in the Domain Name. Both names used in the Domain Name are trademarks belonging either to the Complainant or its affiliate company.
Finally, the Complainant asserts that the Domain Name was registered and is being used in bad faith. The Domain Name was registered on September 16, 2016, i.e. during the effectivity period of the distribution agreement between the Complainant and the Respondent, and even though the distribution agreement expressly prohibited the registration of a domain name including the trademark NINEBOT. The Respondent registered the Domain Name without the knowledge or consent of the Complainant. The lack of use of the Domain Name does not prevent a finding of bad faith registration and use.
The Respondent did not file any Response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Complainant filed the Complaint in English mistakenly assuming that the registration agreement is in English, whereas the registration agreement is in French. It provided no evidence of an agreement between the Parties to the effect of the proceedings being in English.
The Complainant submitted a request for English to be the language of the administrative proceedings. In order to corroborate its request, the Complainant states that the previous distribution agreement between the Parties is in English, which demonstrates that the Respondent is fully capable of understanding English. In addition, the Complainant argues that the Domain Name consists of two English marks identical to those of the Complainant or its affiliated company. Finally, the Complainant mentions that it does not understand French and that translation fees may impose an undue burden and cause unwarranted delays.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. However, the Panel can determine otherwise.
In the present case, the Panel is satisfied with the reasons put forward by the Complainant. Certainly, the English name of a domain name is neither a proof of a proficiency in English nor does it weigh in the assessment of a request for a specific language of the administrative proceedings. The use of English words, or a name composed of English words is widespread, even outside English speaking countries. However, it seems that the Respondent is fully able to understand English as he had signed a distribution agreement in English with the Complainant. The translation of the Complaint would therefore amount to unnecessary costs. The Respondent did not submit any comments on the Complainant's request concerning the language of the proceedings. It did therefore not submit any argument discarding the position and the assertions of the Complainant nor did it state any reasons why the proceedings should not be held in English.
Accordingly, and since both Parties seem to understand English, the Panel decides that English is the procedural language.
6.2 Substantive Elements of the Policy
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark NINEBOT.
The company Segway Inc. is the owner of the trademark SEGWAY.
The two companies are linked as the Complainant acquired Segway Inc. in 2015. In addition, the Complainant filed for the present case an agreement between itself and Segway inc. concerning explicitly the possibility for the Complainant to file a complaint for domain name related issues.
Accordingly and for the purpose of these proceedings, both terms "segway" and "ninebot" have to be considered as trademarks under the responsibility of the Complainant.
The terms used in the Domain Name registered by the Respondent are exactly the same as the trademarks of the Complainant. The presence of a hyphen ("-") between the two trademarks and the generic Top-Level Domain ("gTLD") ".com" does not prevent a confusing similarity with the Complainant's trademarks.
Therefore, the Domain Name <segway-ninebot.com> registered by the Respondent is practically identical or at least confusingly similar with the trademarks of the Complainant.
B. Rights or Legitimate Interests
In order to assess rights or legitimate interests in a domain name, the panel must look for the following elements; (i) that the respondent uses or plans to use the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name.
In the present case, the Respondent does not seem to ever have used the Domain Name, or to plan to use it in connection with a bona fide offering of goods or services. The Respondent has not filed a Response and therefore not taken the opportunity to submit evidence in this respect.
Under certain circumstances, it has been recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related exclusively to the complainant's goods or services and disclosing their relationship with the Complainant's trademark may be making a bona fide offering of goods and services and thus may have a legitimate interest in such domain name.
However, the use of a domain name containing a trademark by a distributor or the like cannot be legitimate, if there is a prior agreement, express or otherwise, between the parties expressly prohibiting the registration or use of domain names incorporating the complainant's trademark.
The distribution agreement between the Complainant and the Respondent (which has been filed by the Complainant as an exhibit) provided that "Distributor is NOT AUTHORIZED to register a domain name that includes any of the Trademarks".
It is therefore not conceivable that the Respondent could legitimately use the Domain Name for any bona fide use of the goods for which he acts or acted as a distributor.
Furthermore, the trade name of the Respondent as a distributor was under the distribution agreement "Ninebot France". However, the Domain Name is <segway-ninebot.com> and not <ninebot-france.com> as contemplated as the distributor's proposed domain name in the distribution agreement (for the duration of the distribution agreement).
In addition, there is no evidence that the Respondent is known by the Domain Name.
Finally, there is no indication let alone an allegation of the Respondent that it is making a legitimate noncommercial or fair use of the Domain Name.
Accordingly, the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Bad faith is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark.
The non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. In order to determine if a case of passive holding constitutes a bad faith holding, all the circumstances of the case have to be taken into consideration, especially (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, or (iii) the implausibility of any good faith use to which the domain name may be put.
In the present case, there is currently no use of the Domain name (see section 6.B).
In addition, the Respondent did not submit any response (see section 3 and 5.B).
In addition the mark SEGWAY is quite well-known and has a great degree of distinctiveness as it is widely known to be related to self-balancing personal transporters.
As follows from the distribution agreement and the fact that the Respondent used the trade name "Ninebot France" during the duration of the distribution agreement, the Respondent was fully aware of the existence and value of the trademark NINEBOT.
More importantly, the Respondent breached the distribution agreement it had with the Complainant by registering a domain name containing the trademarks of the Complainant. The fact that the Respondent has never informed the Complainant of nor asked permission for the registration of the Domain Name corroborates the finding of bad faith.
Consequently, the Panel is of the opinion that the Domain Name <segway-ninebot.com> was registered in bad faith and that the passive holding of the Domain Name <segway-ninebot.com> constitutes a bad faith use.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <segway-ninebot.com> be transferred to the Complainant.
Thomas M. Legler
Date: July 9, 2018