Optimism PBC v. Joseph Kilkolam / LTDs Company
Claim Number: FA2110001968626
Complainant is Optimism PBC (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Joseph Kilkolam / LTDs Company (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <optinism.net> (“Domain Name”), registered with Web Commerce Communications Limited dba WebNic.cc.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2021; the Forum received payment on October 12, 2021.
On October 13, 2021, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <optinism.net> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 October 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@optinism.net. Also on October 14, 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 November 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, Optimism PBC, is a global leader in helping to enhance fair access to the blockchain and other financial transactions on the Internet. Complainant has rights in the OPTIMISM mark based upon its application with the USPTO, as well as common law rights. Respondent’s <optinism.net> domain name is substantially identical and confusingly similar to Complainant’s OPTIMISM mark because it simply substitutes an “n” for the first “m” in the mark and adds the “.net” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <optinism.net> domain name. Respondent is not commonly known by the Domain Name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to pass off as Complainant by mimicking its webpage for the purpose of fraudulently extorting funds from users.
Respondent registered and uses the <optinism.net> domain name in bad faith. Respondent disrupts Complainant’s business by passing off as Complainant at the Domain Name as part of a scheme to commit fraud. Respondent had actual notice of Complainant’s rights in the OPTIMISM mark at the time the Domain name was registered since the website at the Domain Name (“Respondent’s Website”) is almost identical to Complainant’s official website (“Complainant’s Website”) at www.optimism.io.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the OPTIMISM mark. The Domain Name is confusingly similar to Complainant’s OPTIMISM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 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”).
While Complainant has a trade mark application for the OPTIMISM mark with the USPTO, an application to register a mark with the USPTO is generally not sufficient to establish rights in that mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the OPTIMISM mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant has offered a bitcoin software solution service under the OPTIMISM Mark for approximately 2.5 years. The Complainant makes various assertions about the fame of the OPTIMISM Mark and its role as a brand “signifying the gold standard in open source access to Ethereum” however does not provide any significant documentary support to these assertions. In the Complaint the Complainant refers to its website at www.optimism.io and provides an extract of Complainant’s Website. Given the circumstances, the Panel has reviewed the contents of the Complainant’s website including noting the number of transactions processed through Complainant’s software. See Paragraph 4.8 of WIPO Jurisprudential Overview 3.0 (Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.)
This visit confirmed the Complainant’s use of the OPTIMISM Mark and its significant reputation in the Ethereum bitcoin community. The Panel is satisfied from the evidence on Complainant’s Website as to length and manner of use that Complainant’s use of the OPTIMISM mark to offer computer software and computer software development tools in the bitcoin and blockchain fields is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the OPTIMISM mark for the purposes of Policy ¶ 4(a)(i).
In support of the above conclusion the Panel notes that section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” Such a situation has emphatically occurred in the present case where Respondent seeks to take advantage of people’s familiarity with Complainant and its mark by posing as Complainant.
The Panel finds that the <optinism.net> domain name is confusing similar to Complainant’s OPTIMISM mark as it consists of a minor misspelling of the OPTIMISM mark, substituting an “n” for the first “m” in the mark and then adding the “.net” generic top-level domain (“gTLD”). Misspelling a mark and adding a gTLD is insufficient to negate confusing similarity between a domain name and the mark per Policy ¶ 4(a)(i). See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the OPTIMISM mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Joseph Kilkolam / LTDs Company” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to the Respondent’s Website, which is almost an identical copy of the Complainant’s Website. It would be possible for consumers hoping to use Complainant’s services to visit Respondent’s Website under the misapprehension that they are visiting the Complainant’s Website and provide information regarding their bitcoin holdings to Respondent which could be used to allow Respondent to commit fraud on those consumers. Such conduct is best characterized as “phishing”. Respondent’s use of the Domain Name to impersonate Complainant for the purpose of engaging in a phishing scheme to acquire confidential information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018) (“Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that at the time Respondent registered the Domain Name, October 5, 2021, Respondent had actual knowledge of Complainant’s OPTIMISM mark. There is no obvious reason (and none has been provided) as to why an entity would register the Domain Name consisting of a minor misspelling of the OPTIMISM mark and redirect it to a website which is almost an exact copy of the Complainant’s website other than to deceive Internet users into believing an affiliation exists between Complainant and Respondent. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses or has used the Domain Name to impersonate Complainant in furtherance of a phishing scheme. Use of a disputed domain name to impersonate a complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <optinism.net> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 11, 2021
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