Coinbase, Inc. v. Sandro Ribeiro /tiago junior / tiago salvador
Claim Number: FA2111001974924
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondents are Sandro Ribeiro / tiago junior / tiago salvador (“Respondents”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coinbasse.com>, <coimbaze.com>, and <coinbase.net>, registered with Namecheap, Inc.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2021; the Forum received payment on November 29, 2021.
On November 30, 2021; Dec 02, 2021, Namecheap, Inc. confirmed by e-mail to the Forum that the <coinbasse.com>, <coimbaze.com>, and <coinbase.net> domain names are registered with Namecheap, Inc. and that Respondents are the current registrants of the names. Namecheap, Inc. has verified that Respondents are bound by the Namecheap, Inc. registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2021 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@coinbasse.com, postmaster@coimbaze.com, postmaster@coinbase.net. Also on December 7, 2021, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from any Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 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 Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, 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 disputed domain names are owned by the same entity and under common control. Complainant alleges since the domain names are constructed in the same manner, are registered through the same registrar, were registered at the same time, and are all passively inactive they are held by the same entity. Further, Complainant asserts all the WHOIS contact information provided is false and therefore further suggests the domains are controlled by the same Respondent. Finally, Complainant asserts one of the Respondents, Tiago Salvador, was previously involved in an action where 14 domain names were found to be controlled by a single respondent.
The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the listed entities are jointly controlled. Under the Forum’s Supplemental Rule 4(c), the Panel has determined to proceed against Sandro Ribeiro and the associated domain name <coinbasse.com> only. The other Respondents and associated domain names are dismissed from this arbitration hearing.
A. Complainant
Complainant provides a variety of services and technology in the cryptocurrency business. Complainant asserts 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 on July 15, 2014). Respondent’s domain name, <coinbasse.com>, is identical or confusingly similar to Complainant’s COINBASE mark, as it misspells the mark by adding the letter “s”.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the COINBASE mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website is currently inactive. Additionally, Respondent engages in typosquatting by misspelling the mark.
Respondent registered and uses the domain name in bad faith. Respondent engages in a pattern of bad faith registration and use. Additionally, Respondent also disrupts Complainant’s business by redirecting users to Respondent’s own website. Similarly, Respondent attempts to attract users for commercial gain by using a confusingly similar domain name and creating confusion regarding the association between Complainant and Respondent. Respondent also engages in typosquatting and fails to resolve the disputed domain name to an active website. Finally, Respondent had actual notice of Complainant’s rights in the COINBASE mark, evidenced by the typosquatting and misspelling of the mark in the disputed domain name.
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 <coinbasse.com> domain name.
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 asserts rights in the COINBASE mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,567,878, registered on July15, 2014). Registering a mark with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). The Panel finds that Complainant has sufficiently established rights in the COINBASE mark.
Complainant also argues it has common law rights in the COINBASE mark. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if the complainant can establish common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). The Panel agrees that Complainant need not provide evidence of trademark registration to show rights in the COINBASE mark.
Complainant claims common law rights in the COINBASE mark dating back to 2012 based on its use of the mark in commerce. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. 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.”). Complainant provides evidence that the COINBASE mark is well known in the financial industry dating back to 2012. The Panel finds that Complainant has sufficiently established common law rights in the COINBASE mark.
Complainant argues Respondent’s <coinbasse.com> domain name is confusingly similar to Complainant’s COINBASE mark, as it adds the letter “s.” Merely adding or replacing letters and adding a gTLD is not sufficnet to differentiate a disputed domain name from the mark. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”); see also Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark. The Panel finds that the <coinbasse.com> domain name is confusingly similar to Complainant’s COINBASE mark.
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 contends Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not authorized to use the COINBASE mark, nor is Respondent commonly known by the disputed domain name. To determine whether a respondent is commonly known by a disputed domain name, the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information identifies Respondent as “Sandro Ribeiro” and there is no evidence to suggest Complainant authorized Respondent to use the COINBASE mark in any way. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving websites are currently inactive. It is not a bona fide offering of goods and services or legitimate noncommercial or fair use to use a disputed domain name to resolve to an inactive website. 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).”); see also Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving website showing that it is inactive. The Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods and services.
Complainant further asserts Respondent lacks rights or legitimate interests in the disputed domain name because Respondent engages in typosquatting, misspelling Complainant’s mark to confuse users. Previously, panels have agreed typosquatting is indicates a respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”); see also Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”). The Panel agrees that Respondent engages in typosquatting and finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses the <coinbasse.com> domain name in bad faith because Respondent engages in a pattern of bad faith registration, by both registering multiple domain names in the present proceeding and having been found to act in bad faith in previous proceedings. Because two Respondents and their associated domain names have been dismissed, the Panel has not considered this allegation.
Complainant also asserts Respondent registered and uses the disputed domain name in bad faith because Respondent attempts to attract users for commercial gain by confusing them into believing there is an association between Complainant and Respondent and disrupts Complainant’s business. Using a disputed domain name to attract users for commercial gain and disrupt a complainant’s business may indicate bad faith. 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 Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see additionally Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business). This is evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also argues Respondent registered and uses the disputed domain name in bad faith because the resolving website is inactive. Using a disputed domain name only to host an inactive website, or one that lacks any substantive content, may lead to a finding of bad faith. 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 CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Complainant has provided a screenshot of the resolving website which resolves to an error message. This is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant argues Respondent’s typosquatting is an indication of bad faith. Typosquatting has been found my panels to indicate bad faith in and by itself. 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.”); see also Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). The Panel finds that Respondent engages in typosquatting, which is evidence of bad faith.
Complainant states Respondent acted in bad faith because Respondent had actual notice of Complainant’s rights in the COINBASE mark, evidenced by the misspelling of the COINBASE mark in the disputed domain name. Under Policy ¶ 4(a)(iii), actual notice is evidence of bad faith and may be indicated by a respondent’s typosquatting. 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 Expensify, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1942074 (Forum June 1, 2021) (finding Respondent had actual knowledge based on the inclusion of a typosquatted version of Complainant’s mark in the disputed domain name). The Panel finds from the fame of the mark and the use made of it that Respondent had actual notice of Complainant’s rights in the COINBASE mark and registered and uses the domain name in bad faith.
Complainant has proved this element.
Under paragraphs 3c and 4c of the Rules for the Uniform Domain Dispute Policy, it is ordered that Respondent Tiago Junior and the associated domain name <coimbaze.com> and Respondent Tiago Salvador and the associated domain name <coinbase.net> are dismissed from this arbitration proceeding without prejudice.
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 <coinbasse.com> domain name be TRANSFERRED from Respondent Sandro Riberio to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
January 11, 2022
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