Decision for dispute CAC-UDRP-107318

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Second Complainant owns the United Kingdom national trade mark HAILUO, registration number UK00004116722, first registered on 25 January 2025 in international classes 9, 35, 38, 41, 42, 45.  The aforementioned trade mark registration of the Second Complainant postdates the registration of the disputed domain names.  However, the fact that the disputed domain names were registered before the Second Complainant acquired registered trade mark rights in the name HAILUO does not in itself preclude the Second Complainant’s standing to file a UDRP case since the right was in existence at the time when the complaint was filed.  The Complainants further assert that they have both acquired common law rights in the name HAILUO AI.  For the reasons given below, there is insufficient evidence for the Panel to make a finding that the First Complainant has acquired any common law rights and for that reason the First Complainant lacks standing in this proceeding.  However, the Panel accepts that the Second Complainant has acquired such common law rights in the name HAILUO AI which predate the registration of the disputed domain names.

The Complainants have not referred to any domain names used by them which consist of and incorporate the names HAILUO or HAILUO AI, and which are connected to the Complainants’ official websites through which they inform Internet users and customers about their products and services.

Shanghai Xiyu Jizhi Technology Co., Ltd., the First Complainant, was established in 2021 and is a general artificial intelligence technology company based in Shanghai.  Nanonoble PTE. LTD., the Second Complainant, was established in 2024 and is based in Singapore.  The Second Complainant is mainly responsible for the operations of the Hailuo AI and MiniMax brands in countries outside of China. 

Hailuo AI is an innovative product developed by the First Complainant based on artificial intelligence technology and officially launched in China in April 2024. The product is based on the First Complainant's self-developed trillion-parameter MoE large language model abab-6.5 and combines deep learning, generative adversarial networks (GANs) and multimodal AI technologies. It has multimodal interaction capabilities and can provide a variety of functions, including text analysis, text writing and recognition, and AI music and video creation.  

The disputed domain name <hailuoai.net> was registered on 15 September 2024.  The disputed domain name resolves to an active online website branded with the name Hailuo AI, which offers access to the First Complainant’s video generation tool.   At the very bottom of homepage, the website includes the following disclaimer: “HAILUOAI.NET is not affiliated with or endorsed by MiniMax. HAILUOAI.NET is an independent website that provides an interface to access Hailuo AI's video generation capabilities”.

The disputed domain name <hailuoaifree.com> was registered on 3 December 2024.  The disputed domain name resolves to an active online website branded with the name Hailuo AI Free, which offers access to the First Complainant’s text to video generator. This website, too, contains a disclaimer at the bottom of the home page, which states: “HailuoAIFree.com is not affiliated with MiniMax. HailuoAIFree.com is an independent website that converts text and images into videos using Hailuo AI's technology”.

The Complainants contend that all three elements of the UDRP have been fulfilled and they therefore request the transfer of the disputed domain names to the First Complainant.

No administratively compliant response has been filed.

The Second Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Second Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Second Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Second Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Complainants request that their complaints against the Respondent be consolidated into one proceeding.  Paragraph 10(e) of the UDRP Rules grants the Panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. UDRP panels have looked to a variety of factors in determining whether multiple domain names are, in fact, of common ownership (see WIPO Overview 3.0 at section 4.11.2). Such factors include similarities in the Whois information and similar website resolution; they may lead to the conclusion that domain names with different registrant names are, nevertheless, owned by a single entity.  While in the present case the registrant names for the disputed domain names differ slightly, the registrants for the disputed domain names use the same e-mail address and the disputed domain names resolve to similar active websites. The Panel therefore finds that there is sufficient evidence to conclude that the disputed domain names were in fact registered by the same entity.  The Panel finds that it would therefore be equitable and procedurally efficient to permit the consolidation of the disputed domain names into this single proceeding.

By procedural order dated 31 March 2025, made pursuant to paragraph 11(b) of the UDRP Rules, amongst other directions, the Panel invited the Complainants to submit any evidence on which they sought to rely in support of their Amended Complaint, including any information included in the Annexes to the Amended Complaint, in the English language (this being the language of the proceeding), and to provide English translations where the original language of a document was not English. This was to include documents or information accessed via links to third-party sites.  No response was received from any party to the directions in the procedural order. 

The Panel is satisfied that all other procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Panel has reviewed the evidence submitted by the Complainants in support of their assertion of common law rights in the name HAILUO AI.  According to section 1.3 of WIPO Overview 3.0, “to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. (Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services). Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”

With regard to the present case, the Panel notes that many of the press reviews of the Hailuo AI service produced by the Complainants in evidence are in the Chinese language. In its procedural order, the Panel had invited the Complainants to submit translations of the evidence relied upon, which the Complainants unfortunately failed to do.  The Panel therefore had to disregard any evidence that was not in English, the language of this proceeding.  The limited press reviews that are available in English are effectively reviews of the service’s functionality and many refer predominantly to the Minimax brand, rather than to Hailuo or Hailuo AI. Against this background, there is no evidence before the Panel of the type identified in section 1.3 of WIPO Overview 3.0, including as to the number of users of Hailuo AI in China; as to the amount of sales under the mark; the nature and extent of advertising using the mark; and only limited and unquantified evidence as to the degree of actual public recognition of the names Hailuo and Hailuo AI.  There is therefore insufficient evidence for the Panel to make a finding that the First Complainant has acquired common law rights in the name HAILUO AI. 

With regard to the assertion that the Second Complainant acquired common law rights in the name HAILUO AI outside of China, the Second Complainant adduces evidence showing that, within a month of launch of the its video model in Hailuo AI, the number of visits reached 4.97 million in September 2024, and 11.73 million by October 2024, when Hailuo AI topped the October AI product list and the global growth ranking.  The report (dated 15 November 2024) continues to state that: “Since MiniMax launched its video model and applied it to Hailuo AI at the end of August this year, the popularity of video creation on Hailuo AI has continued to soar. Statistics show that the visit growth rate for Hailuo AI's web version exceeded eight times in September, with overseas users actively sharing their experiences on social platforms, generally considering Hailuo AI to be one of the best AI video generation tools available on the market” and that “Currently, AI creators, filmmakers, and screenwriters from over 180 countries and regions are creating videos on Hailuo AI, and the model's capabilities are being tested by overseas ecological partners. Guosheng Securities' research report indicates that MiniMax is performing excellently abroad, with rapid commercialization progress among domestic large models, likely achieving self-sufficiency and profitability in a relatively short period”.  As of December 2024, the number of visits to the Hailuo AI webpage reached 27 million.  Against this background, the Panel takes into consideration that the world of AI is developing that a very rapid pace, with new products and services being fast adopted and assimilated by users.  The Panel further accepts the Second Complainant’s submission that, due to the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the Second Complainant from establishing trademark rights.  The Panel accepts that the Second Complainant has adduced just enough evidence to establish common law rights in the name HAILUO AI.  Finally, the fact that the Respondent has been targeting the Second Complainant’s mark further supports the Second Complainant’s assertion that the name Hailuo AI has achieved significance as a source identifier. 

With regard to the first UDRP element, the Panel finds that the disputed domain name <hailuoai.net> is identical with the Second Complainant's trade mark HAILUO AI. Indeed, the disputed domain name incorporates the Second Complainant's trade mark in its entirety without any alteration. The Panel follows in this respect the view established by numerous other decisions that a domain name which wholly incorporates a Complainant's registered trade mark is sufficient to establish confusing similarity for the purposes of the UDRP (see, for example, WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin <porsche-autoparts.com>).

The Panel further finds that the disputed domain name <hailuoaifree.com> is confusingly similar to the Second Complainant's trade mark HAILUO AI. Indeed, the disputed domain name incorporates the Second Complainant's trade mark in its entirety but adds the generic term "free” as a suffix to the Second Complainant's trade mark. The Panel follows in this respect the view established by numerous other decisions that a domain name which wholly incorporates a complainant's registered trade mark may be sufficient to establish confusing similarity for the purposes of the UDRP (see, for example, WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin <porsche-autoparts.com>). The Panel further considers it to be well established that the addition of a generic or descriptive term does not allow a domain name to avoid confusing similarity with a trade mark (see, for example, WIPO Case No. D2019-2294, Qantas Airways Limited v. Quality Ads <qantaslink.com>; and CAC Case No. 102137, Novartis AG v. Black Roses <novartiscorp.com>). Other panels have previously found that “[W]here the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element” (see WIPO Overview 3.0, section 1.8; and, for example, WIPO Case No. D2023-2542, Merryvale Limited v. tao tao <wwbetway.com>; and WIPO Case No. D2020-0528, Philip Morris Products S.A. v. Rich Ardtea <global-iqos.com>). Against this background, the Panel finds that the addition of the generic term "free” is not sufficient to alter the overall impression of the designations as being connected with the Second Complainant's trade mark and does not prevent a likelihood of confusion between the disputed domain name and the Second Complainant and its trade mark. To the contrary, the disputed domain name rather adds to the likelihood of confusion because the addition of the generic term "free”, in conjunction with the Complainant's trade mark HAILUO AI, and the resolution of the disputed domain name to an active webpage branded Hailuo AI Free, suggests that the disputed domain name links to an official website of the Second Complainant, and implies that it is linked to the Second Complainant and its business. 

With regard to the second UDRP element, there is no evidence before the Panel to suggest that the Respondent has made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The Panel notes that the disputed domain names resolve to active websites under the branding HAILUO AI and HAILUO AI FREE, offering access to the Second Complainant’s video generator tool, as well as other related services. The Panel further notes that the websites accessed through the disputed domain names carry a high risk of affiliation with the Second Complainant and with the Hailuo AI service, suggesting that it is at least endorsed by or affiliated with the Second Complainant, where this is not the case. Indeed, the websites accessed through the disputed domain names do not identify who owns and operates it and do not clearly and prominently identify the registrant’s relationship with the Second Complainant (see further below as to the Respondent’s use of disclaimers). The Respondent’s websites accessed through the disputed domain names effectively impersonate the official HAILUO AI website. The Panel follows in this regard the view established by numerous other decisions that a respondent’s use of a complainant’s trade mark to redirect users to a competing site does not support a claim for legitimate interest. The Panel also accepts the Second Complainant’s submissions that the Respondent is not affiliated with or related to the Second Complainant in any way, and is neither licensed nor otherwise authorised to make any use of the Complainant’s trade mark, or to apply for or use the disputed domain name. Furthermore, the Whois information does not suggest that the Respondent is commonly known by the disputed domain names <hailuoai.net> and <hailuoaiferee.com>. Past panels have held that a respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name, as is equally not the case here (see, for example, Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)). Neither is there any indication that the Respondent is making any legitimate non-commercial or fair use of the disputed domain name. Against this background, and absent any response from the Respondent, or any other information indicating the contrary, the Panel concludes that the Respondent has no rights or legitimate interest in the disputed domain names.

With regard to the third UDRP element, it is reasonable to infer that the Respondent knew that the disputed domain names would be confusingly similar to the Second Complainant's trade mark, and that he registered the disputed domain names in full knowledge of the Second Complainant's trade mark. Indeed, the Respondent targeted the Second Complainant and its trade mark by creating an interface specifically for accessing the Second Complainant’s video generation tools. It is likely that the disputed domain names would not have been registered if it were not for the Second Complainant's trade mark (see, for example, WIPO Case No D2004-0673 Ferrari Spa -v- American Entertainment Group Inc). The Panel notes that the Respondent seeks to attract Internet users to his own websites for commercial gain, based on the Second Complainant’s trade mark, which constitutes further evidence of bad faith (see, for example, WIPO Case No D2018-0497, StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC (“In that circumstance, whether the commercial gain from misled Internet users is gained by the Respondent or by the Registrar (or by another third party), it remains that the Respondent controls and cannot (absent some special circumstance) disclaim responsibility for, the content appearing on the website to which the disputed domain name resolve […] so the Panel presumes that the Respondent has allowed the disputed domain name to be used with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, affiliation, or endorsement of the Respondent's website to which the disputed domain name resolves. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.”)). Given that the overall circumstances of the case point to the Respondent’s bad faith, the incorporation of disclaimers on the Respondent’s websites cannot cure such bad faith. Rather, the Panel considers the Respondent’s use of disclaimers as an admission by the Respondent that users may be confused. For the foregoing reasons, and absent any response from the Respondent, or any other information indicating the contrary, the Panel therefore also accepts that the Respondent has registered and is using the disputed domain names in bad faith.