Decision for dispute CAC-UDRP-107723

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

The Complainant is the owner of various trademark registrations, including the following:

• United States trademark registration no. 6938396 for , registered on January 3, 2023;

• European Union trademark registration No. 018101392 for ECOVACS and design, registered on January 9, 2020;

• International trademark registration No. 1588675 for ECOVACS and design, registered on February 3, 2021;

• Singapore trademark registration No. 40201703875Q for ECOVACS and design, registered on March 9, 2017;

• International trademark registration No. 1079099 for DEEBOT, registered on April 21, 2011;

• International trademark registration No. 1689892 for DEEBOT PRO, registered on July 27, 2022.

 The Complainant owns and operates its primary domain name <ecovacs.com>, registered on August 8, 2006.

The disputed domain name was registered on December 4, 2023, and at the time of filing the Complaint, it resolved to a website displaying the Complainant’s ECOVACS and DEEBOT trademarks, and offering goods for sale which compete with the Complainant’s own offerings.

 The Respondent is Vu Van Tien of 232 Pham Van Dong Str, Co Nhue 1 Ward, Bac Tu Liem District, Hanoi City, Viet Nam, Hanoi, 100000, Viet Nam.

The Complainant is a large manufacturer of cleaning appliances, including the development, manufacture and sales of home service robots. It has one of the world's single most complete line of home service robots, and is a contender to be a global pioneer in the home service robot industry, as well as the industry standard setter. In the first meeting of the International Working Group on Performance Testing and Evaluation Standards for Home Service Robots held in Suzhou, China in 2013, the Complainant, was the convener of the Working Group, and led the formulation of international standards including Germany, the Netherlands, Italy and other member countries, making it the first time in the world to have a complete definition of home robots.

The Complainant is the first company in the industry to obtain accreditation as a laboratory in China and has the world's only and most complete product line of home service robots. The Complainant's main business scope includes the research and development, design, production and sales of intelligent household equipment such as home service robots, cleaning small home appliances and related parts, and its products are mainly ground cleaning robots, air purification robots, automatic window cleaning robots, intelligent home service robots, B2B commercial field commercial service robots and solar panel cleaning robots.

The Complainant has been in the service robot industry for 24 years, and has transformed from a visionary startup into a global corporation with a global market share in key markets. The Complainant’s ECOVACS robotics are now being used in over 145 countries and regions around the world, such as Australia, Japan, Spain, Switzerland, France, Canada, Czech Republic, Poland, Germany, Iran and Malaysia. Since 2015, The Complainant's DEEBOT sweeping robot products have been a market leader in China. According to WSJ- Markets, the Complainant's annual revenue in 2022 was RMB 15,236 million.

On May 28, 2018, the Complainant was listed on the Shanghai Stock Exchange. The Complainant's ECOVACS trademark was recognized as a well-known trademark by a court in China in 2019.

The Complainant argued that: it owns registered ECOVACS and DEEBOT trademarks in multiple jurisdictions, registered long before the disputed domain name was created. The disputed domain name ecovacsdeebot.com fully incorporates both trademarks, making it identical or confusingly similar. That the Respondent is neither authorized nor affiliated, has no trademark rights in ECOVACS or DEEBOT, and is not a distributor. The Respondent was aware of ECOVACS and DEEBOT’s fame, intentionally targeted the brand, created a site relevant to Complainant’s business without disclosing the relationship, and sought to attract customers for commercial gain through confusion.

 The Respondent argues that it operates a legal retail business in Vietnam, selling genuine Ecovacs products purchased from authorized distributors, issuing legal VAT invoices. He removed official logos/images, added a clear disclaimer stating it is not the official Ecovacs site, and clarified status as a local retailer. That he registered the domain for legitimate retail promotion, not to mislead or abuse the trademarks. He was open to further adjustments if requested, and if a transfer is ordered, he requests a 15–30 day transition period. That he should be allowed to keep the domain or provide transition time; emphasizes good faith, legal operations, and compliance with IP laws.

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

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

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

Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Vietnamese. Pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Rules“), paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

 The Complaint was filed in English. The Complainant requested that the language of the proceedings be English as it is a neutral language since the Respondent’s native language is Vietnamese, while the Complainant’s native language is Chinese. Having the proceedings in English, an international common language, is fair to both parties and would not favour either party due to language issues. The Complainant also translated the Complaint and most of the attachments into Vietnamese to facilitate the Respondent. Further, according to the rules of the CAC, all documents, including communications made as part of the proceedings, shall be made in the language of the proceedings or in English.

The Respondent did not make any submissions with respect to the language of the proceeding. 

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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered the circumstances of this case including the neutrality of English as a common language between parties, and the fact that the Complainant has translated the relevant documents into Vietnamese for the Respondent, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. There does not appear to be any reasons which warrant a delay and additional expense in ordering the Complainant to translate the Complaint.

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.

A. Identical or Confusingly Similar

 Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Complainant has provided evidence that it owns registered trademark rights in the ECOVACS and DEEBOT marks.

In this case, the disputed domain name consists of the Complainant’s ECOVACS and DEEBOT trademarks in their entirety with no alterations. Thus, the disputed domain name is identical to the Complainant’s trademarks.

As for the generic Top-Level Domain (“gTLD”) “.com”, it is well established that the gTLD is not relevant to the issue of identity or confusing similarity between the Complainant’s trademarks and the domain name in dispute (see WIPO Overview 3.0, section 1.11.1).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

 Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it has been the registered owner of the ECOVACS and DEEBOT marks long before the date that the disputed domain name was registered and that it has not authorised the Respondent to use the Complainant’s trademarks. There is no evidence that the Respondent is commonly known by the disputed domain name.

 The Respondent submitted that it is a retail business that buys the Complainant’s ECOVACS products from official distributors in Vietnam and resells them to local customers. The Respondent has also submitted that it has changed its website to remove all logos, brand elements, and official images of ECOVACS from its website, and added a clear disclaimer at the bottom of the website, stating “This is NOT the official website of Ecovacs Robotics. We are a local retailer of Ecovacs products in Vietnam through authorized distribution partners. For the official Ecovacs website, please visit ecovacs.com.”

The Respondent submits that no misleading content is presented on its website, and the current version of the website does not impersonate or suggest any formal affiliation or partnership with the Complainant.

Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name.

Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

In cases where a domain name is identical to the complainant’s trademark, past panels have held that a respondent lacks rights or legitimate interests. (WIPO Overview 3.0, 2.5.1)

In this case, the goods offered for sale by the Respondent are being offered for sale at steep discounts. This brings into question the authenticity of the goods. Such steeply discounted goods may indicate that the goods are counterfeit. While the Respondent states it obtained the goods from reputable sources, allegedly from the Complainant’s authorised distributors, no proof was provided in support of this allegation. The first limb of the OKI Data Test therefore, fails.

For the sake of completeness, a short analysis of the remaining limbs of the Oki Data Test is provided.

It is noted that the Respondent, in addition to selling goods under the ECOVACS and DEEBOT trademarks, was also selling goods under the TINECO trademark. This causes the second limb of the Oki Data test to fail.

At the time of filing of this dispute, the Respondent’s website did not contain any disclaimer as to the relationship, or lack thereof, between the Complainant and the Respondent. The third limb also therefore fails.

There has been no submission made in respect of the fourth limb of the Oki Data test, and there is no evidence pertaining to this limb.

As the first three limbs of the Oki Data test have failed, and as the Oki Data test is a cumulative test, the Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

 The Complainant’s trademarks were registered long before the registration of the disputed domain name. In addition, the disputed domain name resolves to a website that displays the Complainant’s trademarks and sells goods that appear to be competing with the offerings of the Complainant. The goods are also being offered for sale at a steep discount. It is the Panel’s view that the Respondent was aware of the Complainant and its trademarks and is targeting the Complainant and its customers.

Given the particular circumstances of this case, and the distinctive nature of the Complainant's trademarks, the Panel is persuaded on the evidence that the Respondent was aware of the Complainant and its ECOVACS and/or DEEBOT trademarks at the time of registering the disputed domain name and specifically targeted the Complainant.

Further, the Panel cannot conceive any plausible good faith use to which the disputed domain name may be put. The Respondent submitted that the disputed domain name was registered in good faith as the Respondent was reselling the Complainant’s ECOVACS products. However, no explanation was put forth by the Respondent as to why a domain name consisting purely of the Complainant’s ECOVACS and DEEBOT trademarks was registered.

The Respondent’s claim that the products offered for sale on its website are genuine ECOVACS and/or DEEBOT products is called into question as they are being sold at steep discounts, which is a sign that the goods offered for sale are counterfeit goods, and no evidence to the contrary. This is also in consideration of the Respondent’s claim that he obtained his goods from official distributors in Vietnam. The Respondent also has not furnished any evidence of such a purchase from official distributors.

Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.