WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MeisterLabs GmbH v. Wang Xiaobing, Shenzhen Edraw Software Co., Ltd., and Wondershare Technology Co. Ltd.
Case No. DIO2021-0008
1. The Parties
The Complainant is MeisterLabs GmbH, Germany, represented HGF Europe LLP, Germany.
The Respondents are Wang Xiaobing, Shenzhen Edraw Software Co., Ltd., and Wondershare Technology Co. Ltd., China, internally represented.
2. The Domain Name and Registrar
The disputed domain name <mindmaster.io> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 21, 2021, 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 .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Response was filed with the Center on June 15, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 18, 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.
4. Factual Background
The Complainant is a German company developing web apps that are intended to help teams of all sizes and industries to implement and realize their projects. One item of software and one of the apps offered is a mind mapping app called “Mindmeister”. With this tool the Complainant offers a mind mapping solution first launched in 2007 and now said to be used by more than 15 million people globally. “Mind mapping” is a process which aims to allow ideas and thought processes to be set out in a visual form.
The Complainant owns various trademarks for the word “Mindmeister” the earliest of which appears to be German trademark No. 307467422 registered on October 29, 2007. These trademarks are referred to as the “MINDMEISTER trademark” in this decision. The Complaint markets is Mindmeister software via a website (the “Complainant’s Website”) linked to the domain name <mindmeister.com>.
The Complainant identifies the Respondent in the following way: “The Respondent in this administrative proceeding is ‘Edrawsoft’ which refers to the company Shenzhen Edraw Software Co., Ltd. owned by Wondershare Technology Co. Ltd.” The Response is filed by Shenzhen Edraw Software Co., Ltd. The Panel proceeds on the basis that Shenzhen Edraw Software Co., Ltd is the Respondent.
The Disputed Domain Name was registered by the Respondent on June 28, 2019. It is linked by redirection to a website (the “Respondent’s Website”) at the domain name <edrawsoft.com> which offers mind mapping software for download. This is offered under a heading which reads “EdrawMind (Formerly MindMaster) for Mind Mapping”. A logo at the top of the landing page contains text which says “edraw by wondershare”.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Complainant says the Disputed Domain Name is confusingly similar to the MINDMEISTER trademark. It says as far as their visual impression is concerned, the Disputed Domain Name only differs in the letter “a” instead of “ei” in the second part of the mark. The first five letters are identical as well as the last four letters of both words. This is in line with the similar aural impression, as both signs consist of three syllables. It also says the term “Meister” is commonly known among the English-speaking public, and the Disputed Domain Name is simply an English variation of the Complainant’s German trademark.
The Complainant says the Respondent has no rights or legitimate interests in the term “Mindmeister”. The Complainant has not granted any license or authorization for the Respondent to use the MINDMEISTER trademark or any confusingly similar sign. The Respondent is not affiliated with the Complainant in any way. The Respondent does not use the Disputed Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a page in English with “a full-featured collaborative mind mapping and brainstorming tool” which tries to imitate the software of the Complainant and does not provide the Respondent with rights or legitimate interests.
In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It says given the fame of the MINDMEISTER trademark and the nature of the Disputed Domain Name, being almost identical to the MINDMEISTER trademark, there are no plausible circumstances under which the Respondent could legitimately use the Disputed Domain Name other than in bad faith. In such circumstances, the Respondent’s use of the Disputed Domain Name for a website offering a highly similar mind mapping software amounts to use of the Disputed Domain Name in bad faith. The Complainant says in these circumstances, the Respondent’s conduct in registering the Disputed Domain Name when it must have been aware of the Complainant’s rights and when it lacked rights or legitimate interests of its own amounts to registration in bad faith. It says the Respondent’s Website offers a subscription to access its mind mapping software in return for a subscription fee, so that the Respondent undoubtedly receives some commercial gain. It says the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the MINDMEISTER trademark as to the source of products or services offered on the Respondent’s Website. As such, the Disputed Domain Name is being used in bad faith.
The Respondent says it is a legitimate company that has been in business since 2004. It says it has invested significant time and resources in developing its own “Mindmaster” software and in marketing and protecting its intellectual property rights. It provides evidence showing it owns several registered trademarks for the word “Mindmaster” in China, the United States of America, and the European Union including for example United States of America trademark 5745040 registered on May 7, 2019 and claiming a first use in commerce date of June 25, 2017. These trademarks are referred to in this decision as the “MINDMASTER trademark”. It also owns several registered copyrights for its software but the Panel has not found it necessary to consider these in any detail.
The Respondent denies that the Disputed Domain Name and the MINDMEISTER trademark are confusingly similar relying on the fact they are in different languages. The Respondent also says that product reviews show that there is no confusion. In support of this argument it provides links to a number of Spanish, German and Italian website articles. The Panel is unclear why it has chosen websites in other languages when the language of this proceeding is English. The Panel discounts this evidence. The Respondent also provides links to some reviews of its products in English. The Panel is not sure whether these reviews are genuinely independent and does not attach significant weight to them.
The Respondent describes its software as follows: “a versatile, user-friendly, and professional mind mapping tool. Available on multiple platforms (Windows, macOS, Linux, Google Chrome, iOS, Android), including PC, tablet, mobile, and web, it allows the users to create mind maps and access them from each platform. With this excellent collaborative mind mapping tool, working with teammates has never been easier.” It says its offering of this software establishes a legitimate interest and denies acting in bad faith.
6. Discussion and Findings
Preliminary issue - Nature of the Policy
So far as the Policy is concerned the Panel notes that it is substantially similar to (though not identical to) the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) as adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The Panel will where appropriate apply principles that have been established in relation to the UDRP in determining this dispute.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that each of the following apply:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the MINDMEISTER trademark. The Panel considers the Disputed Domain Name is confusingly similar to this trademark – it is aurally and visually similar and the Panel considers that a significant number of persons would recognise “meister” as the German equivalent of “master”. Further as the Complainant notes the two terms differ only by the change from an “a” to an “ei” within the body of the word.
It is also well established that the Top-Level Domain (“TLD”), in this case “.io”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 the respondent has acquired no trademark 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 or to tarnish the trademark or service mark at issue.
The Respondent has clearly been offering its mind mapping software under the name MINDMASTER (which is a name corresponding to the Disputed Domain Name) since before the Complainant brought the present complaint. The precise date this offering commenced is not clear to the Panel but the Respondent’s United States of America MINDMASTER trademark claimed a first use in commerce date of June 25, 2017 and absent any evidence to the contrary the Panel accepts such use commenced on or about that date. Clearly in these circumstances paragraph 4(c)(i) is potentially applicable. The only issue then is as to the meaning of “bona fide”. It seems to the Panel that paragraph 4(c)(i) cannot simply apply if a business exists which has deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all cases in which a respondent was operating a business, which is clearly not its intention. The words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the “bona fide” requirement is not met.
Is this such a case? The Panel has found resolving this issue to be difficult given the facts of this case. The term “Mindmaster” does not seem to the Panel to be so unusual as a name for mind mapping software as to rule out the possibility of independent derivation. However, the Respondent has not explained how it came to decide upon the name “Mindmaster” for its software, or whether it did any searches on the name and if so with what result and specifically whether it identified or was aware of the Complainant or its software. Neither party has explained to the Panel what (if any) other users there are of the term “mindmaster” so for example the Panel has no knowledge of how (if at all) the domain name <mindmaster.com> is being used and by whom. Conceivably even had the Respondent identified the Complainant or its software when it decided to use the name “mindmaster” it may have formed the view the Complainant’s name indicated a Germanic product and that its adoption of an English version of the name was legitimate. In considering this issue the Panel has noted the Complainant accuses the Respondent of selling software which tries to imitate the Complainant’s software. The Panel is not clear exactly what the Complainant means here. It seems clear that both software products are directed at the same type of functionality, namely a product which enables the visual representation of thought processes and ideas. There is no evidence however that the Respondent’s product is anything more than a competing product aimed at a similar market and the Panel does not consider there is anything wrong with that. The Complainant has not produced any evidence that the Respondent’s software targets any other rights the Complainant may own. Further, as matter of visual observation the Respondent’s Website is significantly different to the Complainant’s Website. In any event it now indicates the Respondent’s software has been rebranded (see above) although curiously the Respondent has not explained why it is rebranding its software and now refers to it as EdrawMind (formerly MindMaster) or when it introduced this change.
The Panel is conscious that proceedings under the Policy are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corroborative or third party evidence. Is this such a case?
The Panel has not found it easy to reach a conclusion on this issue. The Respondent’s evidence does seem incomplete and a much fuller explanation of how and why the Respondent adopted the name “Mindmaster” for its software would have been appropriate. However, it seems clear the Respondent has been offering its Mindmaster software for several years and it says it has millions of users of that software. The Complainant has never so far as the Panel is aware sought to claim any rights in the term “mindmaster” as opposed to “mindmeister” and that, to the Panel’s mind, leaves open a question as to whether the Respondent transgressed upon the Complainant’s rights in adopting the name Mindmaster? The Panel is not convinced that the Complaint has discharged its burden in showing that the Respondent lacked a legitimate interest so far as the Policy is concerned. Whether the Respondent’s action in adopting the name targeted any other applicable rights the Complainant may have is an issue which would need to be resolved in a court of law, where procedures such as disclosure, oral testimony and cross-examination are likely to be available. So far as the Policy is concerned the Panel has concluded that it would not be safe to consider this is a case which is so clear-cut that the Respondent’s claim to a legitimate interest can be rejected.
The Panel is reinforced in this view by virtue of the fact that the Respondent has obtained its own registered trademarks for the term MINDMASTER. The Respondent says with some force that this itself establishes a right or legitimate interest. The Panel agrees and considers that a finding to the contrary by the Panel would in effect be to deprive the Respondent of the benefit of its trademarks. That is a matter which better lends itself to being dealt with by court(s) of appropriate jurisdiction. See in particular - Hansgrohe AG. v. Kaiping Aosgrohe Hardware Factory / Wang Libin, WIPO Case No. D2010-0954 where the panel stated:
“The Panel notes that in effect the Complainant is requesting the Panel to rule that a registered right owner has no legitimate interest in its registered mark under the Policy. It is commonly agreed that ‘UDRP panels are not equipped to resolve complex disputes – such disputes are better dealt with by the courts' (Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608). The Panel concurs and finds that this present matter is better suited to the appropriate court.”
See also BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298, which contains a useful and detailed analysis of the relevant principles. In particular the panel stated:
“7.26 From these decisions, it is perhaps possible to draw the following guidance:
(i) When considering the question of 'rights or legitimate interests’ under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is ‘legitimate.’
7.27 This Panel would add one further observation. Trademark rights are territorial in nature. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction. This is particularly so where the name in question is quasi generic in nature. These factors may also be relevant to the question of whether an application for a trademark registration should be treated as being sought merely to bolster a domain name registration.
7.28 Neither in Euro 2000 or Madonna was the relevant trademark applied for prior to the date of the domain name, but if a panel were convinced that a trademark was sought merely to bolster a subsequent domain name registration this Panel sees no reason why this should make any difference. Of course, it may be difficult for the complainant to prove that this was the purpose of the registration, but this is an issue of evidence rather than principle.
7.29 However, it is one thing to disregard a trademark registration when that registration is a device to bolster a registration. It is quite another to disregard a trademark registration where it is claimed that this registration is for some other reason not bona fide and/or it is claimed that the registration is invalid. To do so would involve making a decision on matters that impinge on the field of competence of national courts or trademark registries.”
It seems to the present Panel this is a case where a determination that the Respondent lacked a legitimate interest is one which would in substance impinge upon the competence of the courts with jurisdiction as to the Respondent’s registered trademarks.
The Panel therefore concludes that on balance, so far as the Policy is concerned, the Complainant has not discharged its burden of establishing that the Respondent lacks rights or a legitimate interest in the Disputed Domain Name.
C. Registered or Used in Bad Faith
In the light of the Panel’s finding above as to legitimate interests the Panel does not need to address this issue.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: July 2, 2021