Coinbase, Inc. v. Greg Davidson
Claim Number: FA2109001966288
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Greg Davidson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nftcoinbaseblockchain.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2021; the Forum received payment on September 26, 2021.
On September 27, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nftcoinbaseblockchain.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@nftcoinbaseblockchain.com. Also on September 29, 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 October 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
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”).
Respondent’s <nftcoinbaseblockchain.com> domain name is confusingly similar to Complainant’s COINBASE mark. Respondent incorporates the mark in its entirety and adds the descriptive terms ”NFT” and “blockchain” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <nftcoinbaseblockchain.com> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use the COINBASE mark in any way. Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent offers pay-per-click links that advertise third-parties. Respondent also attempts to sell the disputed domain name.
Respondent registered and used the <nftcoinbaseblockchain.com> domain name in bad faith as Respondent attempts to confuse internet users into thinking Respondent is associated with Complainant only to resolve to a webpage with links to third-parties. Respondent has opportunistically registered the domain name. Respondent attempts to sell the domain name. Respondent had actual knowledge of Complainant’s rights in the COINBASE mark prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the COINBASE trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the COINBASE trademark.
Respondent uses the <nftcoinbaseblockchain.com> domain name to address a webpage with various pay-per-click links.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its COINBASE trademark. Such registration is sufficient to show Complainant’s rights in a mark pursuant to the Policy. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <nftcoinbaseblockchain.com> domain name contains Complainant’s <nftcoinbaseblockchain.com> trademark prefixed with the characters or suggestive term “nft” and followed by the suggestive term “blockchain.” The domain name concludes with a necessary top-level name, here “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <nftcoinbaseblockchain.com> domain name from Complainant’s COINBASE trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <nftcoinbaseblockchain.com> domain name is confusingly similar to Complainant’s trademark See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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 at-issue domain name identifies the domain name’s registrant as “Greg Davidson” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <nftcoinbaseblockchain.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <nftcoinbaseblockchain.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <nftcoinbaseblockchain.com> to address a webpage containing pay-per-click links to third-parties. Respondent’s use of the confusingly similar domain name in this manners indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <nftcoinbaseblockchain.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses its confusingly similar domain name to misdirect internet users seeking Complainant to Respondent’s <nftcoinbaseblockchain.com> webpage. There, Respondent further exploits the goodwill found in Complainant’s trademark by displaying pay-per-click links to third-parties. Respondent’s use of <nftcoinbaseblockchain.com> to feign an affiliation between Complainant and Respondent so that Respondent may commercially benefit demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Respondent’s also unfairly disrupts Complainant’s business by using the domain name to compete with such business for internet traffic. Thereby, Respondent also shows bad faith under Policy ¶ 4(b)(iii). See, trivago v. Limber di Gladio Paolo Ditta Individuale, FA1709001747371 (Forum Oct. 2, 2017) (“The Panel finds Complainant’s argument compelling that Respondent’s diversion of potential customers amounts to competing use and that Respondent has demonstrated Policy ¶ 4(b)(iii) bad faith.”).
Additionally, Respondent registered <nftcoinbaseblockchain.com> knowing that Complainant had trademark rights in the COINBASE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s opportunistic registration of the trademark laden domain name after Complainant’s COINBASE activities received wide publicity. Such opportunistic registration is also a basis, in itself, for finding Respondent in bad faith per Policy ¶ 4(a)(iii). See, Fox Broadcasting Company v. Hussain, FA1208001456947 (Forum Sept. 17, 2012) (holding respondent registered the domain name <animationdominationhd.com> opportunistically in bad faith two days after Fox’s new ANIMATION DOMINATION HD programming was publicized). It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used <nftcoinbaseblockchain.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel notes that Complainant claims Respondent offered to sell that at-issue domain name thereby showing bad faith under Policy ¶ 4(b)(i). In support of such assertion Complainant submits a page from a third party domain registrar’s website which indicates that although the at-issue domain name is not available, the registrar may still be able to get the domain name. While a general offer of sale may support bad faith per Policy ¶ 4(b)(i), the third party registrar’s suggestion that it may be able to facilitate the transfer of the at-issue domain name to an interested party is, even if taken as true, mere speculation on the part of the third party. Without more such conjecture is not indicative of any actual present desire on the part of Respondent to sell its domain name. Therefore, the Panel has no basis to find that Respondent offered the domain for sale pursuant to Policy ¶ 4(b)(i) or otherwise.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nftcoinbaseblockchain.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 21, 2021
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