Pantera Advisors LLC v. Smith Mason
Claim Number: FA2110001970673
Complainant is Pantera Advisors LLC (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is Smith Mason (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <panteracapltal.com>, registered with NameCheap, Inc..
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2021; the Forum received payment on October 27, 2021.
On October 27, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <panteracapltal.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@panteracapltal.com. Also on October 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 November 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Pantera Advisors LLC, is an SEC-registered investment adviser, focused on ventures, tokens, and projects related to blockchain technology, digital currency and crypto assets. Complainant has rights in the PANTERA mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,733,587, registered Apr. 23, 2019). The disputed domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only the misspelled generic word “capital” (misspelled as “capltal”) and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or permitted Respondent to use the PANTERA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent may be conducting a phishing scheme and is using Complainant’s mark, logo, and the disputed domain name to pass off as Complainant via email.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent apparently registered the domain name primarily for the purpose of misleading the public and fraudulently obtaining private personal information and/or payment from Complainant’s investors. Respondent also uses false WHOIS contact information Moreover, Respondent had constructive and/or actual knowledge of Complainant’s rights in the PANTERA mark, as evident by Respondent’s passing itself off as Complainant via email, copying Complainant’s logo, subscription documents, Investment Agreement, and Limited Partnership Agreement, and forging Complainant’s signature.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on August 17, 2020.
2. Complainant has established rights in the PANTERA mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,733,587, registered Apr. 23, 2019).
3. Respondent conducts a phishing scheme by forging Complainant’s mark, logo, email, account name, and signature to pass off as Complainant via email.
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 PANTERA mark through its registration with the USPTO (e.g., Reg. No. 5,733,587, registered Apr. 23, 2019). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <panteracapltal.com> is confusingly similar to Complainant’s PANTERA mark because it incorporates Complainant’s mark in its entirety, adding only the misspelled generic word “capital” (misspelled as “capltal” replacing the “i” with an “l”) and the gTLD “.com.” Adding a generic term, even though misspelled, and the gTLD “.com” to the complainant’s mark does not negate confusing similarity. See Pantera Advisors LLC v. Luggard Aus / Xiaomi company, FA1909001860639 (Forum Oct. 20, 2021) (finding that Respondent’s <panteracapitals.com> domain name is confusingly similar to the PANTERA mark, as the name incorporates the mark in its entirety along with a generic term ‘capitals’); see also Morgan Stanley v. West King, FA2109001964796 (Forum Oct. 20, 2021) (finding that adding a misspelling of the generic/descriptive term “fund services” and the “.com” gTLD to Complainant’s mark may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i)); see additionally Cerner Corporation v. Zhichao Yang, FA2106001951370 (Forum July 28, 2021) (the Panel clearly finds that the disputed domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i), it incorporates the trademark in its entirety, adding only the misspelled descriptive word ‘healh’ and the gTLD ‘.com.’). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s 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 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or permitted Respondent to use the PANTERA mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). Here, the WHOIS information identifies “Smith Mason” as the registrant of the disputed domain name. Additionally, Complainant asserts that it has not licensed or permitted Respondent to use the PANTERA mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent may be conducting a phishing scheme and is using Complainant’s mark, logo, and the disputed domain name to pass off as Complainant via email. Use of a domain name as an email to pass off as the complainant and phish for Internet users’ personal information is not considered a bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see additionally DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant alleges and provides evidence the Respondent conducts a fraudulent scheme, in which Respondent contacts investors to solicit money under the false pretense that Respondent is Complainant. Complainant provides a copy of an email sent on June 25, 2021 to an investor, in which Respondent made use of the email address, presented itself as “Pantera Investor Relations,” replicated Complainant’s PANTERA logo, and attached fraudulent copies of Complainant’s subscription documents, Token Investment Agreement, and Limited Partnership Agreement. For comparison, Complainant provides the email address for its legitimate “Pantera Investor Relations” account. Complainant also provides the authentic documents which have been fraudulently duplicated by Respondent. Another email sent on October 19, 2021 to another investor also made use of the same email address forging Complainant’s legitimate email address, the “Pantera Investor Relations” account name, and Complainant’s PANTERA logo. This email invited the recipient to join a call from a meeting link. Thus, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent apparently registered the domain name primarily for the purpose of misleading the public and fraudulently obtaining private personal information and/or payment from Complainant’s investors. Use of a disputed domain name to send emails impersonating the complainant and fraudulent phishing for Internet users’ information is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see additionally Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). The Panel recalls that Complainant alleges and provides evidence that Respondent impersonated Complainant to correspond with Complainant’s investor, while by passing itself off as “Pantera Investor Relations” via the email address forging Complainant’s legitimate email address, and copying Complainant’s PANTERA logo, signatures, and documents. Therefore, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complaint argues that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the PANTERA mark, as evident by Respondent’s passing itself off as Complainant via email, copying Complainant’s logo Subscription Documents, Investment Agreement, and Limited Partnership Agreement, and forging Complainant’s signature. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the respondent’s use of the disputed domain name as an email address to impersonate complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant has provided evidence of Respondent’s use of the disputed domain name to impersonate Complainant, which included duplicating Complainant’s email, account name, logo and signature, in two emails sent to Complainant’s investors. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the PANTERA mark at the time of registering the disputed domain name, and thus it finds Respondent’s bad faith registration of the disputed domain name pursuant to Policy ¶ 4(a)(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 <panteracapltal.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 29, 2021
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