Coinbase, Inc. v. tiago salvador
Claim Number: FA2202001982973
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is tiago salvador (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coiņbase.net> [<xn--coibase-mkb.net>], 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2022; the Forum received payment on February 2, 2022.
On February 2, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <coiņbase.net> [<xn--coibase-mkb.net>] domain name (the 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 February 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 23, 2022 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@xn--coibase-mkb.net. Also on February 3, 2022, 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 February 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading provider of financial infrastructure and technology for the cryptoeconomy. It has rights in the COINBASE mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <coiņbase.net> Domain Name is confusingly similar to Complainant’s COINBASE mark, as it incorporates Complainant’s mark in its entirety, merely substituting the Unicode character “ņ” for the nearly identical “n” and adding the “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is guilty of typosquatting, it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use because it is passively holding and makes no active use of the Domain Name, Respondent is not commonly known by the Domain Name, and Complainant did not authorize Respondent to use the COINBASE mark.
Respondent registered and uses the Domain Name in bad faith. It is guilty of typosquatting, it has engaged in a pattern of bad faith registration, it passively holds the Domain Name, it used false contact information on the registration record for the Domain Name, it disrupts Complainant’s business, and Respondent had actual knowledge of Complainant’s rights in the COINBASE mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The COINBASE mark was registered to Complainant with the USPTO. (Reg. No. 4,567,877) on July 15, 2014 (TESS report included in Complaint Exhibit 8). Complainant’s registration of its mark with the USPTO establishes its rights in the mark for the purposes of Policy ¶ 4(a)(i). BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
The Domain Name is an internationalized domain name (IDN). IDNs permit local language characters, including diacritical marks such as accent marks and umlauts, and Arabic and other scripts, to be used in the Unicode form of a domain name. Domain names are typically registered in an ASCII format, consisting of the Roman letters A through Z and the Arabic numerals 0 through 9. The local language characteristics described above do not appear in the ASCII format. If any element of a domain name contains a non-ASCII character, an algorithm system using Punycode is used to convert the Unicode or IDN form of that domain name to an ASCII format, and the result is pre-fixed with the three-character string “xn—.“ Thus, as seen in the WHOIS information of record submitted as Complaint Exhibit 1 and the information furnished to the Forum by the Registrar, the Domain Name in this case, <coiņbase.net>, appears as <xn—coibase-mkb.net>. Panels have routinely treated IDN or Unicode versions of domain names as interchangeable with their ASCII counterparts and have performed the Policy ¶ 4(a)(i) analysis based upon the Unicode or IDN format of the domain name at issue. Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy), Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar). In accordance with this practice, the Panel determines that analyzing the IDN <coiņbase.net> rather than its ASCII equivalent <xn—coibase-mkb.net> is proper.
Respondent’s <coiņbase.net> Domain Name is confusingly similar to Complainant’s COINBASE mark. It incorporates the mark in its entirety, merely substituting the Unicode character “ņ” for the almost identical Roman letter “n” and adds the “.net” gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding the <bıng.com> [xn--bng-jua.com] domain name confusingly similar to the BING mark and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”), MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the COINBASE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is guilty of typosquatting, (ii) it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use because it makes no active use of the Domain Name, (iii) Respondent is not commonly known by the Domain Name, and (iv) Complainant did not authorize Respondent to use the COINBASE mark. These allegations are addressed as follows:
By registering the Domain Name with a subtle misspelling, i.e., substituting the Unicode character “ņ” for the almost identical Roman letter “n,” Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Registering a typosquatted domain name has been held to evidence a lack of rights and legitimate interests in the domain name for the purposes of Policy ¶ 4(a)(ii). 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).”).
Complaint Exhibit 10 is a screenshot of the web page resolving from the Domain Name. The only material content of this page is the message “Hmm. We’re having trouble finding that site.” This is not an active use of the Domain Name. As such it is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). 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).”), 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
The WHOIS information furnished to the Forum by the registrar lists “tiago salvador” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), 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.”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, by registering a domain name so similar to Complainant’s mark, Respondent has prevented Complainant from reflecting its COINBASE mark in the Domain Name, which corresponds to that mark. Complainant submitted evidence that Respondent had registered two other domain names which also infringed upon Complainant’s mark and which were addressed in another UDRP proceeding (Declaration of Leslie Gutowski submitted as Complaint Exhibit 9). This is sufficient to establish a pattern for the purposes of Policy ¶ 4(b)(ii). Rolls-Royce PLC v. Ragnar Kallaste, Case No. D2014-2218 (WIPO March 3,2015) (finding that the respondent’s registration of the two domain names involved in that case, plus a history of registering at least three other domain names which also incorporated the names of automobile manufacturers, constituted a pattern for the purposes of Policy ¶ 4(b)(ii)). The WIPO Overview 3.0 notes that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. A pattern of abuse has been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. WIPO Overview 3.0 at ¶ 3.1.2.
Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name (emphasis added). The evidence is not clear whether the Respondent here registered the Domain Name to accomplish that specific objective, but Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Respondent’s motivation is less significant than the effect of its actions. Its having registered the Domain Name, which incorporates Complainant’s mark so closely, prevents Complainant from registering and using this Domain Name. Respondent clearly knew or should have known that its registration and continued holding of the Domain Name would have this effect and that it was wrongful as against Complainant. This is manifest evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).
Next, as discussed above, Respondent is guilty of typosquatting. Given the non-exclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Further, typosquatting inherently demonstrates that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. COINBASE is a unique and whimsical mark. It is not a name that would occur naturally to a person seeking to register a domain name for legitimate purposes not related to Complainant and its goodwill. Respondent copied that mark exactly into the Domain Name with a single, very subtle change in the spelling. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant alleges that Respondent’s conduct disrupts its business, which implicates the provisions of Policy ¶ 4(b)(iii). The disruption claimed consists of competing with Complainant for Internet traffic and interfering with Complainant’s ability to control the use of its mark. Its activities in this regard, Complainant alleges, are in opposition to Complainant and are sufficient to define Respondent as a competitor for the purposes of Policy ¶ 4(b)(iii). A number of UDRP panels have found that using a confusingly similar domain name to disrupt the business of a complainant is bad faith for the purposes of Policy ¶ 4(b)(iii), even when the respondent was not a competitor. Others have essentially by-passed the competition factor, focusing instead on disruption, and have simply found bad faith under ¶ 4(b)(iii), without further discussion or analysis.[i]
Policy ¶ 4(b)(iii) reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here is not vying with Complainant for customers in the cryptoeconomy services industry, offering its own wares as alternatives to those offered by Complainant. Indeed, as has already been discussed, Respondent is making no use of the Domain Name at all. The evidence does not disclose any commercial activity whatever on the part of Respondent.
Further, there is another aspect of the concept of competition that must be considered. In order for a respondent’s conduct to fall within ¶ 4(b)(iii), the competition must exist before the domain name is registered. Otherwise, the language of ¶ 4(b)(iii), paraphrased as “you registered the domain name primarily to disrupt the business of a competitor,” simply does not apply. The competition must exist before the registration. In this case the Complainant and the Respondent were not competitors when the Domain Name was registered In June 2021 (WHOIS report shows the creation date). Even if there were presently any actual competition between them, it would have arisen only after Respondent registered and began using the Domain Name in connection with some commercial activity. In the absence of actual commercial competition between Complainant and Respondent, Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii).
While passively holding a confusingly similar domain name can still disrupt a complainant’s business, in the absence of actual competition, Complainant has not proven that Respondent’s conduct fits within the circumstances stated in Policy ¶ 4(b)(iii).
Notwithstanding Complainant’s failure to demonstrate Policy ¶ 4(b)(iii) circumstances, for the reasons first set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <coiņbase.net> [<xn--coibase-mkb.net>] Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
March 2, 2022
[i] PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), 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. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
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