Coinbase, Inc. v. Aj Singer / Mariela Hamann
Claim Number: FA2108001958520
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Aj Singer / Mariela Hamann (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coibase.com>, <cioinbase.com>, and <counbase.com>, registered with Above.com Pty Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2021; the Forum received payment on August 6, 2021.
On August 12, 2021, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@coibase.com, postmaster@cioinbase.com, postmaster@counbase.com. Also on August 17, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that, despite the listing of different Registrants in the WHOIS records, the disputed domain names at issue are effectively owned or controlled by the same domain name holder which is operating under several aliases. It then requests that these multiple domain names be consolidated into the present proceeding. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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.” Despite being presented with WHOIS records that name different Registrants, prior Panels have held that consolidation of a case against multiple domain names is appropriate where there are other similarities that indicate a likelihood of common ownership. See, e.g., American Airlines, Inc. v. Ramadhir Singh, WhoisGuard Protected, WhoisGuard, Inc. / Reema Gupta, Ballu Balwant, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lucy Lionel, Lucy99, Red Keep, D2021-0294 (WIPO Mar. 11, 2021) (consolidation upheld based on “the similar content and layout of the websites that were linked to the disputed domain names; the fact that all the disputed domain names target a specific sector and the same trademark within this sector; the similar patterns in the disputed domain names; and the identical reaction of the Respondents to the Complaint, not replying to the Complainant’s contentions.”); Brooks Sports, Inc. v. Shuai Li / Nan Zhang, FA 1932371 (Forum Mar. 18, 2021) (similar website content, use of same registrars and privacy services).
Complainant contends that, despite their respective WHOIS records listing different Registrant names, the disputed domain names are controlled by the same entity because i) all three were registered with the same registrar, ii) the WHOIS records for all the domains list the identical email address, iii) all three domain names use the same IP address; iv) two of the three domain names were registered on the same date, v) all of the domain names consist of minor misspellings of Complainant’s famous trademark, and vi) none of them resolve to any websites.
In light of the above similarities, and in the absence of participation in these proceedings by any party claiming to be a Registrant of these domain names, the Panel determines it is more likely than not that all of the disputed domain names are under common control by the same domain name holder. As such, the present case will proceed against all of the disputed domain names and their holder will be referred to in the singular as “Respondent”.
A. Complainant
Complainant is a leading provider of end-to-end financial infrastructure and technology for the crypto economy. It’s online platform allows users to invest, store, spend, earn, and use crypto assets including Bitcoin (BTC), Bitcoin Cash (BCH), and Ethereum (ETH), among many others. Since May of 2012, Complainant has used the trademark COINBASE and has extensively promoted it such that it has become famous. Complainant has rights in the COINBASE mark through its use in commerce as well as its registration of the mark with the United States Patent and Trademark Office (“USPTO”) on July 15, 2014. Respondent’s <coibase.com>, <cioinbase.com>, and <counbase.com> domain names, registered on April 22, 2013 (the first domain name) and May 10, 2016 (the latter two domain names), are confusingly similar to Complainant’s COINBASE mark as each is comprised of a misspelling and typosquatted version of Complainant’s mark.
Respondent lacks rights or legitimate interests in the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the COINBASE mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent offers them for sale, fails to make active use of them, and has engaged in typosquatting.
Respondent registered and uses the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names in bad faith as Respondent offers the disputed domain names for sale at very high prices and has shown a pattern of bad faith registration. Respondent also fails to make active use of the disputed domain name and has engaged in typosquatting. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COINBASE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the disputed domain names were registered and are being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and submissions pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the COINBASE mark through its registration of the mark with the USPTO and it submits screenshots from the USPTO website evidencing three such registrations. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the COINBASE mark to satisfy that requirement of Policy ¶ 4(a)(i).
Complainant also asserts common law trademark rights in the COINBASE mark through Complainant’s extensive and continuous use and promotion of the mark. Common law rights may be found where a mark has acquired secondary meaning through evidence such as longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant claims that it has common law rights in the COINBASE mark based on Complainant’s substantial and continuous use thereof since at least May of 2012. Complainant states that, by 2013, Complainant had more than 60,000 customers and handled tens of thousands of transactions every month. Complainant also highlights that Complainant has been featured in many media sources, including Forbes, The Huffington Post, TNW The Next Web, Ars Technica, All Things Digital, VentureBeat, and TechCrunch and it submits screenshots of many of these archived news stories dated from June 2012 and onward. It also submits archived screenshots of its own <coinbase.com> website from May 2012 onwards. From this evidence the Panel finds that the COINBASE mark developed at least some level of public reputation and secondary meaning as of May 2012 and that Complainant has thus demonstrated rights in the mark at common law per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <coibase.com>, <cioinbase.com>, and <counbase.com> domain names are confusingly similar to Complainant’s COINBASE mark as each is comprised of a misspelling and typosquatted version of the mark – specifically: <coibase.com> merely omits a single letter (“N”), <cioinbase.com> merely adds a single letter (“I”), and <counbase.com> merely substitutes a single letter (“U” for “I”). Such minor misspellings of a mark typically fail to sufficiently distinguish a disputed domain name from that mark for purposes of the Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”); see also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”) In view of the fact that the disputed domain names differ from Complainant’s mark by only a single letter, the Panel finds that each of them are confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names as Respondent is not commonly known by any of these domain names nor has Complainant authorized or licensed to Respondent any rights in the COINBASE mark. WHOIS records may be instructive when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii), especially in the absence of other evidence that is relevant to this issue. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrants as “Aj Singer / Mariela Hamann,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the COINBASE mark. Respondent has filed no Response or made any other submission in this case and so it does not add to the Panel’s understanding of the matter. Therefore, the Panel finds no evidence upon which to conclude that Respondent is commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names in connection with a bona fide offering of goods or services and that it also does not make a legitimate noncommercial or fair use thereof as Respondent fails to make any use of these domain names. The passive holding of a disputed domain name typically does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing the website error messages associated with the disputed domain names and there is no evidence that the domain names have been actively used by Respondent (e.g., for email).
Complainant further argues that Respondent fails to use the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent offers them for sale and is engaged in typosquatting. A respondent’s general attempt to sell a domain name that appears to be a purposeful misspelling of a well-known mark may evidence a respondent’s lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA 1614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name [enterprize.pw] is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA 1605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”) Here, Complainant provides screenshots showing Respondent’s offers to sell the <coibase.com> and <counbase.com> domain names for $148,146 and $50,000 respectively. It further states that this evidence “strongly suggests that Respondent also intends to sell the third Domain Name for a similarly exorbitant profit”. Complainant also argues that Respondent is engaged in typosquatting as each disputed domain name differs from Complainant’s COINBASE mark by only one letter. The use of such misspellings of a well-known mark can support a finding of no rights or legitimate interests. See Microsoft Corporation v. michal restl c/o Dynadot Privacy, FA 1582219 (Forum Nov. 4, 2014) (finding that the respondent’s addition of a single-character to the complainant’s mark illustrated typosquatting and provided further evidence that the respondent’s lacked rights or legitimate interests in the disputed domain name).
Upon a preponderance of the available evidence, the Panel finds that Complainant has made out a prima facie case that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names per Policy ¶¶ 4(c)(i) or (iii). This has gone unrebutted by Respondent and so the Panel further finds that Respondent lacks rights and legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights to the COINBASE mark prior to registering the disputed domain names based on Respondent’s typosquatting and the fame of Complainant’s mark. A respondent’s typosquatting and the famous nature of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See Cognizant Technology Solutions U.S. Corporation v. badboy zeeeeem / badboyzeeeeem, FA 1959517 (Forum Sept. 13, 2021) (“by replacing the letter ‘g’ with the letter ‘q’ in Complainant’s mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii)..”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) Here, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the COINBASE mark because the disputed domain names are close misspellings of and/or typosquatted versions of the mark and because Complainant’s mark is famous. The Panel notes that two of the disputed domain names were registered on May 10, 2016 (<counbase.com> and <cioinbase.com>). The third, <coibase.com>, was registered on April 22, 2013 but Complainant submits archived WHOIS records to show that this third domain name was owned by a different registrant prior to March of 2018. When considering bad faith, “[t]he operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner).” DIRECTV, Inc. v. Toshi Amori, FA 1394254 (Forum July 28, 2011). Complainant has submitted extensive news stories and archived screenshots of its own <coinbase.com> website from May of 2012 onward and demonstrated that its COINBASE mark is distinctive and quickly became well-known after its launch. Respondent has not participated in this case and so it has provided no further insight into its knowledge of Complainant’s mark at the time it acquired the disputed domain names. As such, the Panel finds it highly likely that Respondent registered the disputed domain names with actual knowledge of Complainant’s well-known mark and in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that Respondent registered and uses the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names in bad faith as Respondent fails to make any active use of them and it has engaged in typosquatting. Failing to make active use of a disputed domain name and typosquatting can each demonstrate bad faith per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”) Here, Complainant provides screenshots showing the website error messages associated with the disputed domain names. Further, Respondent has engaged in typosquatting as each of the disputed domain names differs from Complainant’s COINBASE mark by only one letter. Respondent has not participated in this case and provides no alternate explanation for its actions. Therefore, upon a preponderance of the evidence before it, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered and uses the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names in bad faith as Respondent offers the disputed domain names for sale. A general offer to sell a disputed domain name far in excess of a respondent’s out-of-pocket costs can demonstrate bad faith per Policy ¶ 4(b)(i), particularly where it is confusingly similar to a well-known trademark. See Dewey’s Bakery, Inc. v. Host Master / Transure Enterprise Ltd., FA 1956852 (Forum Aug. 30, 2021) (“The Domain Name has been advertised as ‘maybe for sale’ generally which is additional evidence of bad faith.), citing Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”) Additionally, registering multiple domain names containing a complainant’s mark can demonstrate bad faith per Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, Complainant highlights the fact that Respondent registered three domain names containing misspelled versions of Complainant’s well-known mark and Complainant provides screenshots showing Respondent offers to sell the <coibase.com> and <counbase.com> domain names for $148,146 and $50,000, respectively, amounts far in excess of what one would expect are Respondent’s out-of-pocket registration fees. It also asserts that this evidence “strongly suggests that Respondent also intends to sell the third Domain Name for a similarly exorbitant profit.” Therefore, the Panel finds further support for its conclusion that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(i) and 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coibase.com>, <cioinbase.com>, and <counbase.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 14, 2021
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