The Complainant is UiPath SRL, Romania, represented by Hogan Lovells, Hong Kong, China.
The Respondent is [email protected], Beijing creditech co.Ltd. Kang zhao., China.
The disputed domain name <uipath.ai> is registered with WHOIS AI Registrar (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2019, 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 and contact information for the disputed domain name.
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 December 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on January 27, 2020. 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 Complainant is an enterprise software company that develops platforms for the automation of robotic and artificial intelligence processes. The Complainant has traded under the name “UiPath” since 2013. It currently operates 53 offices around the world including in China.
The Complainant owns a number of registered trade marks consisting of or incorporating the stylized word “UiPath” including International Trade Mark No. 1395051, registered on September 28, 2017, in classes 9, 35, 38, 41, and 42.
The Complainant operates a website at “www.uipath.com”.
The disputed domain name was registered on December 16, 2017.
It has not been used for an active website.
According to the Complaint, the Respondent owns a number of other “.ai” domain names incorporating the distinctive third party trade marks such as <agnitio.ai> (reflecting the name of Agnitio SL, a voice biometrics technology company) and <linguamatics.ai> (reflecting Linguamatics, a provider of text mining systems).
The Complainant is a leader in artificial intelligence.
The Complainant has extensively promoted its “UiPath” brand since launch in 2013 including via the Internet, trade press, and other media.
The disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
The disputed domain name incorporates the Complainant’s trade mark in its entirety.
Rather than negating confusing similarity, the “.ai” suffix enhances it because the term “ai” is a well-established abbreviation for “artificial intelligence”, which is one of the core businesses of the Complainant.
The Respondent lacks rights and legitimate interests in the disputed domain name.
There is no connection between the disputed domain name and the Respondent’s name. To the best of the Complainant’s knowledge the Respondent does not own any trade marks corresponding to the disputed domain name.
The Complainant has never authorised the Respondent to use its trade mark.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or otherwise made any legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The Respondent must have been aware of the Complainant’s prior rights given the Complainant’s reputation in its trade mark. The Respondent’s use of the suffix “.ai” indicates that the Respondent is blatantly attempting to pass itself off as the Complainant by capitalising on the Complainant’s reputation in the field of artificial intelligence.
The disputed domain name constitutes a passive holding in bad faith.
According to the WhoIs database, the Respondent has provided incorrect or meaningless contact information to register the disputed domain name.
The Respondent has engaged in a pattern of cybersquatting behaviour.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
i. the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the mark UIPATH by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive international use of that name.
The disputed domain name is identical to the Complainant’s unregistered trade mark and confusingly similar to the Complainant’s registered trade marks for the stylized word “UiPath”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
In the Panel’s view, it is appropriate to consider this case in the context of the principles of “passive holding”.
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith:
(1) the distinctive nature and fame of the Complainant’s trade mark including in China where the Respondent is located;
(2) the association of the Complainant with artificial intelligence indicating that the disputed domain name with its “.ai” suffix was targeted at the Complainant;
(3) the Respondent’s failure to provide any evidence of actual or contemplated good faith use;
(4) the implausibility of any good faith use to which the domain name may be put; and
(5) the Respondent’s pattern of ownership of other “.ai” domain names reflecting third party trade marks.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <uipath.ai> be transferred to the Complainant.
Date: February 7, 2020
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