WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Future Motion, Inc. v. Nexperian Holding Limited / Duke Chow, Duke
Case No. D2018-1895
1. The Parties
The Complainant is Future Motion, Inc. of Santa Cruz, California, United States of America (“US”), represented by Kolish Hartwell, P.C., US.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Duke Chow, Duke of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <onewheel-hoverboard.com> (the “Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2018. On August 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 22, 2018, 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 August 22, 2018 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 amendment to the Complaint on August 24, 2018.
On August 22, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 22, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 August 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on September 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. On September 25, 2018, the Complainant submitted an unsolicited supplemental filing.
4. Factual Background
The Complainant is an electric board sports company based in the US that sells a line of electric skateboards under the mark ONEWHEEL. Onewheel electric skateboards are sold in retail stores, trade shows and through its online retail store at “www.onewheel.com”. The Complainant has been using its ONEWHEEL mark for its electric skateboards since January 2014. The Complainant’s products are sold in the US and internationally including Australia, Canada, Central America and Europe. The product is a single-wheeled skateboard that uses an electric motor, accelerometers, gyros and microcontrollers to give riders a smooth self-balancing ride. The Complainant won the 2016 ISPO Brandnew award for its Onewheel product for one of the most innovative products in the global sporting goods industry for 2016.
The Complainant’s product came into prominence in January 2014 on “www.kickstarter.com”, a popular platform for funding creative projects when it reached more than USD 630,000 in funding within 21 days. It has also received much publicity in online magazines and blogs since its inception including coverage on “www.wired.com” and “www.techcrunch.com”. Other publications which include mentions of the Complainant’s Onewheel product include “www.cnet.com”, “www.engadget.com”, “www.inc.com”, Popular Mechanics, and TechRadar.
The trade mark ONEWHEEL and ONEWHEEL+XR are registered as trade marks in many countries including the US, Japan, France, Switzerland, China and Israel. The earliest trade mark submitted in evidence for ONEWHEEL is under International Registration No. 1227105 in Class 12 registered on August 26, 2014 (the “Trade Mark”).
The Respondent, who is an individual based in China, registered the Domain Name on April 5, 2016. The Domain Name is connected to a website which claims to be owned by Onewheel Hoverboard Inc (the “Website”). The Website purports to offer lower-priced, inferior-quality products similar to the Complainant’s Onewheel product. One of the products featured in the “Trotter” branded “surfing electric scooter”. This product was the subject of a patent infringement claim brought by the Complainant against parties in the US. The Website also features photo-edited images belonging to the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
a) The Domain Name is in the English language;
b) The Website is entirely in English;
c) The Terms of Service on the Website specifies the State of California as the governing law for the agreement and the county of Los Angeles, California has exclusive jurisdiction for any dispute arising from the terms;
d) The products offered for sale on the Website are offered in USD currency;
e) The Complainant’s residence is in the US;
f) The Complainant is unable to communicate in Chinese, and this disadvantage would delay these proceedings; and
g) The Parties have not otherwise agreed to any particular language to be used for these proceedings.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.2 Complainant’s Supplemental Filing
On September 25, 2018, on the same day that the Panel was appointed, the Complainant requested for permission to amend the Complaint by including in the Complaint an additional Chinese registration for the trade mark ONEWHEEL which was inadvertently left out. Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The purpose of the UDRP is to provide for a quick and inexpensive way to resolve domain name disputes. Each party has one opportunity under the Rules to put forward its entire case. The Complainant being the initiator of the proceedings has an obligation to anticipate the possible arguments that the Respondent may put forward as there may be no other opportunity to file additional evidence. It is only in exceptional circumstances that a Panel will allow additional evidence to be filed. Inadvertence does not qualify as an “exceptional circumstance” to merit the allowing of additional evidence. Hence it is not an appropriate case under the circumstances for additional evidence to be considered. In any event, the inclusion of such evidence would not have affected the outcome of the present proceeding.
6.3 Substantive Matters
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 was registered and being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
The Complainant did not explain what “hoverboard” means except to say that it is a generic term and also produced evidence to show that third parties have used the term “hoverboard” in connection with the Complainant’s product. The Panel notes that Cambridge Dictionary defines “hoverboard” to be a form of transport existing only in films and stories, that a person can stand on and that floats a short distance above the ground. The Panel accepts that the word would be considered descriptive of the Complainant’s product.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety in combination with a hyphen and the word “hoverboard”. The addition of these elements does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. See, N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element.
The Complainant submits that the Respondent is not commonly known by the Domain Name or any name that incorporates the Trade Mark. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Trade Mark or apply for any domain name that incorporates the Trade Mark. From the Terms of Service, the Respondent purports to be Onewheel Hoverboard, Inc which does not appear to exist. The Terms of Service appear to be copied from the clothing websites Fashion Nova and Talons Boutique and suggests that the Website offers fashion clothing and accessories when it does not. The refunds policy also makes reference to CDs, intimate apparel, books and gift cards which are also not sold on the Website.
The Website is purporting to offer for sale products that are potentially infringing the IP rights of the Complainant or are otherwise in competition with the Complainant’s products. They are alleged to be inferior products offered at a lower price point than the Complainant’s goods. The Website also features copyrighted images from the Complainant’s website. All of the above is evidence that the Website does not point towards any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the Domain Name comprising a trade mark which it has no connection to other than purporting to sell products bearing this trade mark which it has not been authorized to by the Complainant. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name especially since it is purporting to offer for sale products that either seek to take unauthorized advantage of the intellectual property rights of the Complainant or compete with its products.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Respondent was clearly seeking to benefit from the Complainant’s reputation and goodwill to attract traffic to its Website for commercial gain. Using the Domain Name to intentionally attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy.
From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element.
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 <onewheel-hoverboard.com> be transferred to the Complainant.
Date: October 29, 2018