Coinbase, Inc. v. Carolina Rodrigues/Fundacion Comercio Electronico/ Ernest Smith/asd
Claim Number: FA2108001959170
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Carolina Rodrigues/Fundacion Comercio Electronico / Ernest Smith / asd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coinsbase.com> and <comcoinbase.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 11, 2021; the Forum received payment on August 11, 2021.
On August 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coinsbase.com> and <comcoinbase.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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@coinsbase.com, postmaster@comcoinbase.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 10, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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.”
Complainant contends that the registration and use of the <coinsbase.com> and <comcoinbase.com> domain names indicates that they are owned by the same entity and/or under common control. Specifically, the disputed domain names are (a) constructed in the same manner, namely, close variations of Complainant’s COINBASE mark, (b) registered through the same registrar, and (c) offered for sale on GoDaddy’s and Afternic’s domain marketplace websites. Further, the registrants’ contact information is fake, incorrect, incomplete, and/or highly misleading. Finally, the registrant “Carolina Rodrigues/Fundacion Comercio Electronico” has been one of several respondents in prior adverse UDRP decisions involving use of multiple aliases and domain names.
The Panel finds from Complainant’s uncontested evidence and allegations that the domain names are commonly controlled by a single Respondent who is using multiple aliases. In this decision, the Respondents will be collectively referred to as “Respondent.”
A. Complainant
Complainant is a leading provider of end-to-end financial infrastructure and technology for the cryptoeconomy. Complainant has rights in the COINBASE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,567,878, registered Jul. 15, 2014). Respondent’s <coinsbase.com> and <comcoinbase.com> domain names are confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark and adds the “.com” generic top level domain (“gTLD”) for the <coinsbase.com> domain name and adds a generic term and the “.com” gTLD to Complainant’s mark for the <comcoinbase.com> domain name.
Respondent has no rights or legitimate interests in the <coinsbase.com> and <comcoinbase.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent offers the disputed domain names for sale. Furthermore, Respondent’s <coinsbase.com> domain name is typosquatting Complainant’s mark and is currently passively held. Finally, Respondent’s <comcoinbase.com> domain name redirects Internet users to Complainant’s website.
Respondent registered and uses the <coinsbase.com> and <comcoinbase.com> domain names in bad faith. Specifically, Respondent is attempting to sell the disputed domain names. Next, Respondent has an established pattern of bad faith registrations. Moreover, Respondent is attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. Additionally, Respondent is typosquatting with the <coinsbase.com> domain name. Furthermore, Respondent is passing off as Complainant with the <comcoinbase.com> domain name. Also, Respondent is passively holding the <coinsbase.com> domain name. Finally, Respondent had actual or constructive knowledge of Complainant’s mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <coinsbase.com> and <comcoinbase.com> domain names.
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 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 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 claims rights in the COINBASE mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,567,878, registered Jul. 15, 2014). Registration with the USPTO is sufficient to demonstrate rights in a mark under 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).”). The Panel finds that Complainant has rights in the COINBASE mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <coinsbase.com> and <comcoinbase.com> domain names are confusingly similar to Complainant’s mark. Specifically, Respondent merely misspells Complainant’s mark and adds the “.com” generic top level domain (“gTLD”) for the <coinsbase.com> domain name, and adds a generic term and the “.com” gTLD to Complainant’s mark for the <comcoinbase.com> domain name. Misspelling a complainant’s mark by adding a letter and adding a gTLD does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”). Additionally, adding a generic term and a gTLD to a complainant’s mark does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Respondent adds the letter “s” and the “.com” gTLD to form the <coinsbase.com> domain name and the generic term “com” and the “.com” gTLD to form the <comcoinbase.com> domain name. The Panel finds that Respondent’s <coinsbase.com> and <comcoinbase.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <coinsbase.com> and <comcoinbase.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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 lacks rights or legitimate interest in a 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 of record identifies the Respondent as “Carolina Rodrigues/Fundacion Comercio Electronico/Ernest Smith/asd” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent has no rights or legitimate interests in the <coinsbase.com> and <comcoinbase.com> domain names as Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <coinsbase.com> and <comcoinbase.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent offers the disputed domain names for sale. Attempting to sell a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides screenshots from m GoDaddy’s and Afternic’s domain marketplaces showing Respondent’s offers to sell the <coinsbase.com> and <comcoinbase.com> domain names. The Panel finds that Respondent fails to use the <coinsbase.com> and <comcoinbase.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent lacks rights and legitimate interest in the disputed domain names as Respondent’s <coinsbase.com> domain name is typosquatting Complainant’s mark and is currently passively held. Acts of typosquatting can be further evidence of a lack of rights or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (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).”). Furthermore, inactively holding a disputed domain name may suggest a respondent lacks rights and legitimate interest in the disputed domain name, under Policy ¶ 4(a)(ii). 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).”). Complainant argues that Respondent engaged in an intentional misspelling of Complainant’s mark to take advantage of common errors and provides screenshots of the inactive resolving webpage for the <coinsbase.com> domain name. This is evidence that Respondent lacks rights and legitimate interests in respect of the in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant argues Respondent lacks rights and legitimate interest in the disputed domain names as Respondent’s <comcoinbase.com> domain name redirects Internet users to Complainant’s website. Using a disputed domain name to redirect or divert Internet users to a complainant’s website may suggest a respondent lacks rights and legitimate interest in the disputed domain name, under Policy ¶ 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Complainant provides an affidavit attesting that the <comcoinbase.com> domain name redirects Internet users to Complainant’s legitimate website. The Panel finds that Respondent lacks rights and legitimate interests in respect of the disputed domain names under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant argues Respondent registered and uses the <coinsbase.com> and <comcoinbase.com> domain names in bad faith. Specifically, Respondent is attempting to sell the disputed domain names. Registering a disputed domain name for the purpose of offering it for sale in excess of out-of-pocket registration costs may be evidence of bad faith under Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). Complainant provides screenshots from m GoDaddy’s and Afternic’s domain marketplaces showing Respondent’s offers to sell the <coinsbase.com> and <comcoinbase.com> domain names. This is evidence that Respondent registered and uses the <coinsbase.com> and <comcoinbase.com> domain names in bad faith under Policy ¶ 4(b)(i).
Complainant argues Respondent has an established pattern of bad faith registrations. Having a record of past adverse UDRP decisions and having multiple disputed domain names in the current dispute may establish that a respondent has a pattern of bad faith registrations, under Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”). Complainant provides a list of prior UDRP decisions that have involved Respondent. This is evidence that Respondent registered and uses the <coinsbase.com> and <comcoinbase.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant argues Respondent is attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. Registering a confusingly similar domain name in hopes of creating confusion with a complainant mark as the source, affiliation, sponsorship or endorsement of the disputed domain names can be evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Respondent’s uses and the confusing nature of the disputed domain names are evidence of Respondent’s bad faith.
Complainant argues Respondent’s <coinsbase.com> domain name was registered and is being used in bad faith, as Respondent is typosquatting. Capitalizing on Internet users’ mistakes, or typosquatting, may be evidence of bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant argues that Respondent uses a common misspelling of Complainant’s mark and attempts to target Internet users who make typographical errors. This is evidence that Respondent acts in bad faith under Policy ¶ 4(a)(iii).
Complainant argues Respondent’s <comcoinbase.com> domain name was registered and is being used in bad faith, as Respondent is passing off as Complainant with the <comcoinbase.com> domain name. Registering a disputed domain name to deceive Internet users into believing a respondent is connected in so way to a complainant may be evidence of bad faith under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant asserts that Respondent is passing off as Complainant by having the disputed domain name redirect to Complainant’s website. The Panel finds this is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant argues Respondent’s <coinsbase.com> domain name was registered and is being used in bad faith, as Respondent is passively holding <coinsbase.com> domain name. Registering a disputed domain name merely to hold in an inactive state may be evidence of bad faith under Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Complainant provides screenshots of the inactive resolving webpage for the <coinsbase.com> domain name. This is evidence that Respondent’s <coinsbase.com> domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the COINBASE mark at the time of registering the <coinsbase.com> and <comcoinbase.com> domain names. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark and registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coinsbase.com> and <comcoinbase.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
September 17, 2021
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