Decision for dispute CAC-UDRP-106003

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 owns EUTM n. 018861588 “MakerWorld” (word). The Complainant’s application for this trademark was filed on 13 April 2023. The trademark was registered on 6 October 2023. It is protected for the following goods and services:

• Class 9: Data processing apparatus; computer software applications, downloadable; Computer printers; 3D scanners; Downloadable 3D printer computer application software, namely, software for managing 3D printers and 3D models; Downloadable 3D printer computer application software, namely, software for processing digital images and digital image files; Downloadable computer software for remote control of 3D printers; Downloadable mobile applications for use in downloading, editing and sharing 3D model designs; Downloadable mobile applications for use in operating and controlling 3D printers; all the above-mentioned goods relating to 3D printing, 3D modeling, 3D scanning and 3D processing.
• Class 35: Advertising services; Marketing services; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Advertisement for others on the Internet; Advertising and marketing; Compiling indexes of information for commercial or advertising purposes; sales promotion for others; marketing the goods and services of others; Providing marketing information via websites; Provision of an on-line marketplace for buyers and sellers of goods and services; all the above-mentioned services relating to 3D printing, 3D modeling, 3D scanning and 3D processing.
• Class 38: Message sending; communications by computer terminals; computer aided transmission of messages and images; teleconferencing services; Transmission of digital files; videoconferencing services; Virtual chatrooms established via text messaging; all the above-mentioned services relating to 3D printing, 3D modeling, 3D scanning and 3D processing.
• Class 42: Electronic data storage; Design and development of software in the field of mobile applications; Updating of smartphone software; Research and development of computer software; Maintenance of computer software; Computer software development; Smartphone software design; Computer software consulting; Updating of computer software; Computer software design; Computer programming; Software as a service [SAAS] services; Computer system design; installation of computer software; all the above-mentioned services relating to 3D printing, 3D modeling, 3D scanning and 3D processing.

The disputed domain name <makerworlds.com> was registered on 29 August 2023, i.e., after the application date of the Complainant’s trademark (13 April 2023) but before the trademark’s registration date (6 October 2023).

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a member of the “Bambu Lab” group of companies, which is a consumer tech company specialized in desktop 3D printers and was established in 2020. In 2022 one of Bambu Lab’s 3D printing products, the “Bambu Lab X1 Series”, was recognized by TIME Magazine the as one of the year's “Best Inventions”.

On 6 August 2023, the Complainant incorporated a subsidiary named MAKERWORLD SINGAPORE PTE. LTD. In Singapore. On 25 August 2023, Bambu Lab officially announced the introduction of "MakerWorld", a public repository for 3D printing projects (i.e., printable files and supplemental tips for slicing, filament presets, printing settings, and related knowledge). Reports about this announcement were published in various media with an interest in the 3D printing industry.

Bambu Lab operates a corresponding website with the “MakerWorld” 3D printing repository under the domain name <makerworld.com> (i.e., singular as opposed to the disputed domain name’s plural form).

The Complainant contends that as of August 2023, the Complainant has become widely recognized as the originator of the term "MakerWorld" and has actively utilized it in the realm of 3D printing. A search on the search engine Google reveals that all results for "MakerWorld" in the context of 3D printing are directly linked to the Complainant and its “MakerWorld” project.

The Respondent has used the disputed domain name to automatically redirect internet users to the website located at www.printables.com, which is also a repository for 3D printing projects operated by a competing manufacturer of 3D printers, Prusa Research. The Complainant has submitted a printout of the Respondent’s LinkedIn profile, in which the Respondent describes himself as a “Product Manager at Prusa Research / Printables.com”.

The Complainant has no business or other relationship with the Respondent. The Complainant has not granted a license (or any other authorization) to the Respondent to use the trademark “MakerWorld”, or to apply for registration of the disputed domain name.

The Complainant contends that because (i) the disputed domain name was registered only four days after the Complainant’s public announcement of its “MakerWorld” project on 25 August 2023, (ii) the Respondent is an employee of a direct competitor of the Complainant, and (iii) the Respondent has used the disputed domain name to automatically redirect internet users to the competing 3D printing repository at www.printables.com, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant's “MakerWorld” project.

The Complainant´s contentions are summarised above.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

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).

The Respondent accessed the online case file and reviewed most documents, nevertheless the Respondent did not file any response nor contacted the CAC.

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

The disputed domain name is confusingly similar to the Complainant’s trademark “MakerWorld”. Merely using the plural form instead of the trademark’s original singular form does not change the overall impression of the designation as being almost identical to the trademark “MakerWorld”.

The Panel further finds that the Complainant successfully submitted prima facie evidence that the Respondent has neither made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name, nor is commonly known under the disputed domain name. This prima facie evidence was not challenged by Respondent.

As to the third element of the Policy, i.e., whether 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), the Panel notes that the Respondent’s use of the disputed domain name to automatically redirect internet users to Prusa Research competing 3D printing repository at www.printables.com falls squarely into the evidence of bad faith that is defined in paragraph 4(b)(vi) of the Policy.

The mere fact that the Respondent has registered the disputed domain name before the Complainant’s trademark registration date on 6 October 2023 (but clearly after the Complainant’s trademark application date on 13 April 2023 and immediately after the Complainant’s public announcement of its “MakerWorld” project on 25 August 2023) does not prevent a finding of bad faith. The Respondent’s evident intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent trademark rights in “MakerWorld”. Section 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Third Edition) explicitly mentions the registration of a domain name “further to significant media attention” and/or “following the Complainant’s filing of a trademark application” as typical scenarios of bad faith. The Panel agrees with this assessment and the corresponding earlier UDRP decisions cited in Section 3.8.2 of the WIPO Jurisprudential Overview.